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` Paper 8
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` Entered: December 4, 2017
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01428
`Patent 8,995,433 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`IPR2017-01428
`Patent 8,995,433 B2
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`INTRODUCTION
`I.
`The above-captioned Petitioner (Facebook, Inc. and WhatsApp Inc.)
`filed a Petition requesting inter partes review of claims 9−12, 14−17, 25,
`and 26 of U.S. Patent No. 8,995,433 B2 (Ex. 1101, “the ’433 patent”).
`Paper 2 (“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg S.A. (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review of claims 9−12, 14−17, 25, and 26 of the ’433 patent.
`
`A. Related Matters
`The parties indicate that the ’433 patent is involved in Uniloc USA,
`Inc. v. Facebook, Inc. and Uniloc USA, Inc. v. WhatsApp Inc., Case Nos.
`2-16-cv-00728-JRG (E.D. Tex.) and 2:16-cv-00645-JRG (E.D. Tex.).
`Pet. 1−2. The ’433 patent also is the subject of Case IPR2017-00225 (filed
`by Apple Inc.), in which we instituted inter partes review on May 25, 2016.
`Pet. 75–77; Paper 6. In addition, Petitioner filed a Petition and Motion
`seeking joinder with IPR2017-00225, both which were granted, and
`Petitioner has been joined with Apple in IPR2017-00225. See Case
`IPR2017-01634, Paper 10 (PTAB Oct. 3, 2017).
`
`B. The ’433 Patent
`The ’433 patent relates to Internet telephony, and more particularly, to
`instant voice over IP (“VoIP”) messaging over an IP network, such as the
`Internet. Ex. 1101, 1:19−23. The ’433 patent acknowledges that “instant
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`text messaging is [] known” in the VoIP and public switched telephone
`network (“PSTN”) environments, with its server presenting the user a “list
`of persons who are currently ‘online’ and ready to receive text messages on
`their own client terminals.” Id. at 2:35−42. In one embodiment, such as
`depicted in Figure 2 (reproduced below), the system of the ’433 patent
`involves an instant voice message (“IVM”) server and IVM clients. Id. at
`7:21−22.
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`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`local IVM server 202, where IVM client 206 is a VoIP telephone, and where
`legacy telephone 110 is connected to legacy switch 112 and further to media
`gateway 114. Id. at 7:27−49. The media gateway converts the PSTN audio
`signal to packets for transmission over a packet-switched IP network, such
`as local network 204. Id. at 7:49−53. In one embodiment, when in “record
`mode,” the user of an IVM client selects one or more IVM recipients from a
`list. Id. at 8:2−5. The IVM client listens to the input audio device and
`records the user’s speech into a digitized audio file at the IVM client. Id. at
`8:12−15. “Once the recording of the user’s speech is finalized, IVM
`client 208 generates a send signal indicating that the digitized audio file 210
`(instant voice message) is ready to be sent to the selected recipients.” Id. at
`8:19−22. The IVM client transmits the digitized audio file to the local IVM
`server, which, thereafter, delivers that transmitted instant voice message to
`the selected recipients via the local IP network. Id. at 8:25−26. Only the
`available IVM recipients, currently connected to the IVM server, will
`receive the instant voice message. Id. at 8:36−38. If a recipient “is not
`currently connected to the local IVM server 202,” the IVM server
`temporarily saves the instant voice message and delivers it to the IVM client
`when the IVM client connects to the local IVM server (i.e., is available). Id.
`at 8:38−43.
`The ’433 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:34−37. The specification states that the “intercom
`mode” represents real-time instant voice messaging. Id. at 11:37−38. In this
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`mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
`Id. at 11:38−41. Successive portions of the instant voice message are
`written to the one or more buffers, which, as they fill, automatically transmit
`their content to the IVM server for transmission to the one or more IVM
`recipients. Id. at 11:41−46. Buffering is repeated until the entire instant
`voice message has been transmitted to the IVM server. Id. at 11:46−59.
`
`C. Independent Claim
`Of the challenged claims, claim 9 is independent and is reproduced
`below. Each of claims 10−12, 14−17, 25, and 26 depends directly or
`indirectly from claim 9.
`9. A system comprising:
`an instant voice messaging application comprising:
`a client platform system for generating an instant voice message;
`a messaging system for transmitting the instant voice message
`over a packet-switched network, and
`wherein the instant voice message application attaches one or
`more files to the instant voice message.
`
`Ex. 1101, 24:60−67.
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`D. Asserted Prior Art and Grounds of Unpatentability
`This proceeding relies on the following prior art references:
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001, filed in the record as Exhibit 1103 (with line numbers added
`by Petitioner);
`
`b) Greenlaw: RAYMOND GREENLAW & ELLEN HEPP, INTRODUCTION
`TO THE INTERNET FOR ENGINEERS 1−25 (1999), filed in the record
`as Exhibit 1110; and
`
`c) Newton: HARRY NEWTON, NEWTON’S TELECOM DICTIONARY (18th
`ed. 2002), filed in the record as Exhibit 1106.
`
`Petitioner asserts three grounds of unpatentability (Pet. 4):
`
`Basis
`Challenged Claim(s)
`9, 12, 14, 17, 25, and 26 § 103(a)
`11, 15, and 16
`§ 103(a)
`10
`§ 103(a)
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`Reference(s)
`Zydney
`Zydney and Greenlaw
`Zydney and Newton
`
`Petitioner also relies on a Declaration of Tal Lavian, Ph.D., filed as
`Exhibit 1102.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner proposes constructions for the terms “instant voice
`messaging application” and “client platform system.” Pet. 9−15. Patent
`Owner points out alleged deficiencies in Petitioner’s proposed constructions,
`but argues that “neither term requires any contrived construction.” Prelim.
`Resp. 6−12. Patent Owner further argues that we 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 recipients.” Id. at 12−17.
`Based on our review of the record, we determine that “instant voice
`messaging application” and “client platform system” do not require an
`express construction at this stage of the proceeding. We consider below
`whether to adopt Patent Owner’s construction for “receiving the instant
`voice message and an indication of one or more intended recipients.”
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`Claim 17 recites that the system of claim 9 further comprises “an
`instant voice messaging server receiving the instant voice message and an
`indication of one or more intended recipients of the instant voice message.”
`Ex. 1101, 25:25−28. Patent Owner argues that the ’433 patent Specification
`provides the context necessary for construing this limitation of claim 17.
`Particularly, Patent Owner relies on the ’433 patent description of how the
`user selects the intended recipients: “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 [and] the user selection is transmitted to the IVM
`server 202.” Ex. 1101, 8:5−8. After the user’s speech is recorded, the IVM
`client generates a send signal and “transmits the digitized audio file 210 and
`the send signal to the local IVM server 202.” Id. at 8:19−27. According to
`Patent Owner, the ’433 patent Specification consistently describes the
`selection of one or more intended recipients to be transmitted first,
`separately from the transmission of the instant voice message. Prelim. Resp.
`13−14.
`Patent Owner also argues that some dependent claims address the
`transmission of the instant voice message without mention of the list of
`selected recipients. Id. at 14−15 (indicating that claims 18−21 recite
`buffering that does not mention the indication of one or more intended
`recipients). Patent Owner reasons that the omission from the dependent
`claims of the transmission of selected recipients indicates that the claims
`contemplate that the intended recipient’s selection has already been
`communicated to the server. Id. at 15−16.
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`“[A] claim construction analysis must begin and remain centered on
`the claim language itself . . . .” Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The language of
`claim 17 recites that the server receives two things: the instant voice
`message and the indication of one or more intended recipients. The claim’s
`focus, thus, is on what the server receives, not when the server receives
`them. The claim language itself does not contain the separateness
`requirement featured in Patent Owner’s proposed construction. Rather,
`Patent Owner’s proposed construction repeats the claim language and adds
`the language “separately receiving.” Notably, the patentee could have
`included this language and, thus, a separateness requirement in claim 17—
`but did not.
`We cannot limit further the scope of the claim merely because
`embodiments in the Specification provides additional detail on the timing of
`the transmissions to the server. See SuperGuide Corp. v. DirecTV Enters.,
`Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citing Electro Med. Sys. S.A. v.
`Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“Though
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim. For example, a particular
`embodiment appearing in the written description may not be read into a
`claim when the claim language is broader than the embodiment.”). The
`language of claim 17 is broader than the embodiments Patent Owner proffers
`as support for its proposed construction. Moreover, Patent Owner points to
`nothing in the Specification that limits the claim language to the timing of
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`the transmissions to the server in these embodiments. Accordingly, for
`purposes of this Decision, we do not adopt Patent Owner’s proposed
`construction of claim 17 to require that the instant voice message and the
`indication of one or more intended recipients are received at the server
`separately.
`
`B. Analysis of Petitioner’s Contentions
`Petitioner points to Zydney as teaching all the limitations of
`independent claim 9 and several other dependent claims. Pet. 23−50. With
`respect to claims 11, 15, and 16, Petitioner relies on Greenlaw for its
`teaching that a sender could become a recipient of her own message by
`“copying” herself. Id. at 53. Finally, Petitioner relies on Newton, as to
`claim 10, for its disclosure of WiFi as an IEEE 802.11b standard as “the
`most common wireless local area network.” Id. at 60−61.
`
`1. Claim 9
`Petitioner asserts that Zydney’s software agent running on a computer
`device or personal computer of the sender discloses the recited “instant voice
`messaging application.” Pet. 23. For the “client platform system” and
`“messaging system,” Petitioner relies on Zydney’s disclosure of the software
`agent function of recording a voice container and transport process. Id. at
`26−31. For the limitation of “attach[ing] one or more files to the instant
`voice message,” Petitioner points to a passage of Zydney that states:
`“Another important application of the present invention system and method
`for voice exchange and voice distribution is attaching other media to the
`voice containers.” Id. at 32 (citing Ex. 1103, 19:1−7). Petitioner also
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`proffers Zydney’s Figures 6 and 16 as showing that after the client builds a
`voice container with the voice message, the user is asked “what multimedia
`file to associate this voice container,” and the originator associates the
`multimedia file with the voice container. Pet. 33−34.
`Patent Owner challenges Petitioner’s showings regarding claim 9 with
`two arguments: (1) that Zydney does not attach files to the instant voice
`message because Zydney’s voice container is not analogous to the recited
`“instant voice message”; and (2) that Zydney teaches away from attaching
`one or more files to the voice message itself. Prelim. Resp. 17−23. We are
`not persuaded by any of Patent Owner’s arguments on the record developed
`at this stage of the proceeding. Both of these arguments are premised on an
`implied construction of “instant voice message” as encompassing only the
`voice message and excluding all else. Indeed, Patent Owner’s expert
`testimony makes a distinction between Zydney’s voice container and the
`“instant voice message” that appears to be rooted in characterizing the
`“instant voice message” as audio data only. Id. at 19 (citing Ex. 2001
`¶¶ 65−68, 73−74).
`This is an argument of claim construction that is underdeveloped at
`this juncture and has been presented only in connection with arguments
`distinguishing Zydney. On the present record, we do not have sufficient
`evidence or argument from either party to render even a preliminary
`construction for the term “instant voice message.” Accordingly, at this time,
`none of Patent Owner’s arguments distinguishing the prior art with regard to
`the scope of the “instant voice message” are persuasive. The parties will
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`have an opportunity during trial to present fully claim construction briefing
`for the term “instant voice message.”
`Accordingly, we determine that on this record, Petitioner has
`demonstrated a reasonable likelihood of prevailing in its contention that
`claim 9 is unpatentable as obvious over Zydney.
`
`2. Claim 12
`Claim 12 depends from claim 9 and recites “wherein the instant voice
`messaging application encrypts the instant voice message.” Petitioner relies
`on Zydney’s disclosure of the software agent including “codecs” used for the
`encryption and decryption of the voice container. Pet. 37. Patent Owner
`does not present arguments regarding this claim, beyond its arguments
`regarding claim 9, addressed above. Based on our reasoning in our analysis
`of claim 9 above and our review of Petitioner’s assertions and evidence for
`the additional limitations of claim 12, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing in its contention that
`claim 12 would have been obvious over Zydney.
`
`3. Claim 14
`Claim 14 depends from claim 9 and recites “wherein the instant voice
`messaging application invokes a document handler to create a link between
`the instant voice message and the one or more files.” Petitioner argues that
`Zydney’s disclosure of “an association between a voice container (the
`instant voice message) and the attached file, [] discloses creating a link
`between the instant voice message and the file.” Id. at 38 (emphases
`omitted). According to Petitioner, Zydney’s software agent is the
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`“document handler.” Id. at 42. In support of this argument, Petitioner
`proffers the testimony of Dr. Lavian who opines that “[i]t would have been
`understood and obvious that the software agent is a component of the client
`platform that oversees the retrieving, sending, receiving and storing of one
`or more documents (or files) attached to instant voice messages from/to the
`one or more selected IVM recipients that may be communicating with the
`IVM client.” Id. at 42−43 (citing Ex. 1102 ¶ 123).
`Patent Owner does not dispute Petitioner’s interpretation of the
`“document handler” but takes issue with the mapping to Zydney’s voice
`container for the same reasons as stated with respect to claim 9. Prelim.
`Resp. 23−24. Specifically, Patent Owner argues that “Zydney’s voice
`container and the inclusion of additional data in the voice containers cannot
`disclose, an[d] in fact teach way from, the claimed instant voice message
`and attaching one or more files to the instant voice message.” Id. at 24. As
`stated above with respect to claim 9, however, these arguments are
`underdeveloped and, thus, unpersuasive on the present record.
`After consideration of the information presented by both parties, we
`determine that, based on the current record, Petitioner has demonstrated a
`reasonable likelihood of prevailing in its contention that claim 14 is
`unpatentable as obvious over Zydney.
`
`4. Claim 17
`Claim 17 depends from claim 9 and recites “an instant voice
`messaging server receiving the instant voice message and an indication of
`one or more intended recipients of the instant voice message.” Petitioner
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`relies on Zydney’s central server as disclosing the recited server.
`Pet. 44−45. Petitioner argues that Zydney’s central server receives the voice
`container (id.) and that the recipient information is encoded in the instant
`voice message as part of the voice container (id. at 46). Patent Owner,
`relying on its proposed construction of the additional limitation of claim 17,
`argues that Zydney’s central server receives the voice container, thereby
`simultaneously receiving the voice data and the recipient information.
`Prelim. Resp. 25. We have rejected above Patent Owner’s proposed
`construction that this claim requires separate receipt of the instant voice
`message and the intended recipients. Accordingly, we determine that, based
`on the current record, Petitioner has demonstrated a reasonable likelihood of
`prevailing in its contention that claim 17 is unpatentable as obvious over
`Zydney.
`
`5. Claim 25
`Claim 25 depends from claim 17 and recites that the “instant voice
`messaging server determines availability of the one or more intended
`recipients for receipt of the instant voice message.” Petitioner relies on
`Zydney’s disclosure of tracking “the core states of whether the recipient is
`online or offline. Pet. 46 (citing Ex. 1103, 14:17−15:1). Petitioner also
`points out that based on “status information received from the central server,
`the agent then decides on whether to transport the voice containers to a
`central file system and/or sends it directly to another software agent.” Id. at
`47 (citing Ex. 1103, 16:1−10). Patent Owner does not present separate
`arguments regarding this claim. We determine that Petitioner has
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`demonstrated a reasonable likelihood of prevailing in its contention that
`claim 25 would have been obvious over Zydney.
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`6. Claim 26
`Claim 26 depends from claim 25. Claim 26 is reproduced below.
`26. The system of claim 25, wherein the instant
`voice messaging server:
`
`delivers the instant voice message to the one
`or more intended recipients who are determined to
`be currently available;
`
`stores the instant voice message for the one
`or more intended recipients who are not currently
`available; and
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`delivers the instant voice message for the one
`or more intended recipients who are not currently
`available when the instant voice messaging server
`determines that the not currently available one or
`more intended recipients becomes available.
`Petitioner relies on the following Zydney disclosures, among others,
`for this limitation (Pet. 47−50):
`a) forwarding the message to the recipient if the recipient is available
`(Ex. 1103, Abstract);
`b) storing the voice message at the central server when the recipient is
`not available (id. at claim 1, 13:12−15); and
`c) “[o]nce a software agent has been authenticated[,] all messages that
`have been stored on the message server will be sent to the appropriate
`software agent” (id. at 25:1−4).
`Patent Owner argues that Zydney does not deliver the same instant
`voice message generated by the client because of transcoding. Prelim.
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`Resp. 26−27. According to Patent Owner, communication of voice
`containers through the central server only occurs when both the source and
`recipient clients are online and the voice container requires translation. Id.
`at 27. Patent Owner explains that “a transcoding server ‘converts the voice
`data in the voice containers from the sender’s data format to the receiver’s
`data format.’” Id. at 27. We are not persuaded by Patent Owner’s
`arguments that after translation, the recipient no longer receives “the voice
`data transmitted by the client.” Id. at 29.
`As Zydney explains, and Patent Owner points out, “[v]oice containers
`transmitted from a sending agent to a receiving agent hav[ing] different data
`formats are routed through the server in which a translator 42 converts the
`voice data in the voice containers from the sender’s data format to the
`receiver’s data format.” Ex. 1103, 12:20−23. Although we can infer from
`this passage that the voice data is converted into a different format
`compatible with the receiver, we also infer that the message has not
`changed. To the extent the claims do not require an identical format of the
`sent and received instant voice message, Petitioner has reasonably relied on
`Zydney’s disclosure of the central server delivering voice containers to
`available recipients. We see no basis at this juncture to read the claims as
`narrowly as Patent Owner argues. Indeed, contrary to Patent Owner’s
`position, the ’433 patent Specification expressly discloses the server making
`format changes to an audio file, such as compressing and encrypting the file,
`before delivering the file to the selected recipients. See Ex. 1101, 11:2–5,
`11:24–27. Because this is an issue of claim scope, Patent Owner has the
`opportunity to brief the claim construction of this claim during trial.
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`After consideration of the information presented by both parties, we
`determine that, based on the current record, Petitioner has demonstrated a
`reasonable likelihood of prevailing in its contention that claim 26 is
`unpatentable as obvious over Zydney.
`
`7. Claims 11, 15, and 16
`Claims 11, 15, and 16 depend from claim 9 and all recite various
`“display” limitations. Petitioner relies on Zydney’s software agent as
`disclosing all the limitations of these claims. Pet. 50−59. But because the
`Petitioner-identified features occur on the recipient software agent in
`Zydney, Petitioner relies on Greenlaw for the proposition that senders could
`copy themselves on a sent message in order to conclude that an originating
`software agent allows use of the same tools available in a recipient software
`agent. See id. at 53−54.
`Patent Owner challenges Petitioner’s argument and evidence
`separately for each these claims. Prelim. Resp. 30−35. According to Patent
`Owner, Petitioner’s theory of obviousness “is silly and totally defeats the
`primary purpose” of the claim element. Id. at 31. For claim 11, Patent
`Owner contends that copying yourself on a message defeats the purpose of
`providing controls for playing the message before the message is sent. Id. at
`33. As to claim 15, Patent Owner argues that a sender can only display the
`attachment after it has already been sent with a “copy” to the sender,
`defeating the purpose and the clear reference to claim 9, of referring to the
`attachment before it is sent. Id. at 34. Finally, with regard to claim 16,
`Patent Owner argues that copying yourself on a message defeats the purpose
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`of providing controls for reviewing, re-recording, and deleting the instant
`voice message before sending the message. Id. at 31.
`We are not persuaded by any of Patent Owner’s arguments on this
`record. First, claim 16 recites “the instant voice messaging application
`displays one or more controls for performing at least one of reviewing,
`re-recording or deleting the instant voice message.” These controls are
`described in the ’433 patent Specification: “Before the transmission of the
`instant voice message (i.e., before the send signal), the user has the option to
`review the instant voice message, re-record the instant voice message, delete
`the instant voice [message], as well as attach one or more files (i.e.,
`documents).” Ex. 1101, 13:30−35. Thus, it appears that the claim language
`and the Specification support Patent Owner’s argument that reviewing the
`instant voice message after it has been sent does not meet the claim
`limitation that addresses “controls” provided to the user in the process of
`sending the instant voice message. However, the Specification also
`describes “deleting” more generally, such as the disclosure in column 12,
`lines 40−41: “the file manager 308 services requests from the user to record,
`delete or retrieve messages to/from the message database 310.” Therefore, it
`appears reasonable, at this juncture, that the displayed controls for “deleting”
`are not solely tied to pre-sending functions, as Patent Owner argues.
`Petitioner has relied on Zydney’s disclosure of allowing “controls for saving,
`deleting, or resending recorded containers from the recipient’s computer.”
`Pet. 59 (citing Ex. 1103, Fig. 9). Accordingly, on the present record, we are
`persuaded that Petitioner’s contention that claim 16 is unpatentable has
`merit.
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`With regard to claims 11 and 15, we likewise are not persuaded by
`Patent Owner’s arguments. Claim 11 recites “the instant voice messaging
`application displays one or more controls for audibly playing the instant
`voice message.” The plain language of this claim, together with the
`language of claim 9, does not compel us to read the claims narrowly for
`audibly playing the instant voice message solely as a pre-sending feature of
`the claims. See, e.g., id. at 8:33−36, 9:18−21 (“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”). Likewise, claim 15,
`which recites “the instant voice messaging application displays the
`attachment,” does not appear to be limited to pre-sending displays of the
`attachment. See, e.g., id. at 12:32−36 (“when an instant voice message is to
`be transmitted to the one or more IVM recipients, one or more documents
`may be attached to the instant voice message to be[] stored or displayed by
`the one or more selected IVM recipients”).
`Accordingly, we determine that, on the current record, Petitioner has
`demonstrated a reasonable likelihood of prevailing in its contention that
`claims 11, 15, and 16 would have been obvious over Zydney in view of
`Greenlaw.
`
`8. Claim 10
`Claim 10 depends from claim 9 and recites “wherein the
`
`packet-switched network comprises a WiFi network.” Petitioner relies on
`Zydney disclosing that its software agent “may be adapted to work on a
`personal computer, wireless handheld computer such [as] a personal data
`
`19
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`assistant (PDA), digital telephone, or beeper.” Pet. 60; Ex. 1103, 11:16−18.
`Petitioner further points out that Zydney utilizes the Internet. Pet. 60;
`Ex. 1103, 15:1−2. Zydney does not mention WiFi, but Newton explains that
`WiFi is the commercial name for wireless networking using the
`IEEE 802.11 standard. According to Petitioner, Newton confirms the
`“well-known nature of WiFi.” Pet. 61. And Petitioner argues that it would
`have been obvious to implement the packet-switched network to include a
`WiFi network for connecting the computer to the Internet. Id.
`Patent Owner does not challenge Petitioner’s arguments or evidence
`at this time. We determine that Petitioner has demonstrated a reasonable
`likelihood of prevailing in its assertion that claim 10 is unpatentable over
`Zydney and Newton.
`
`III. CONCLUSION
`We have noted above the expectation that full briefing on claim
`
`construction issues will be forthcoming during trial concerning, at a
`minimum, the term “instant voice message.” We have also determined that,
`based on the current record, Petitioner has demonstrated a reasonable
`likelihood of prevailing in its contention that the following claims of the
`’433 patent are unpatentable:
`
`Challenged Claim(s)
`9, 12, 14, 17, 25, and 26
`11, 15, and 16
`10
`
`
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`20
`
`Reference(s)
`Zydney
`Zydney and Greenlaw
`Zydney and Newton
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted for claims 9−12, 14−17, 25, and 26 of the ’433 patent
`under the grounds identified above in the Conclusion; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’433 patent is hereby instituted with trial commencing
`on the entry date of this decision, and pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of review.
`
`
`
`
`
`
`21
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`COOLEY LLP
`Hkeefe@cooley.com
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`22
`
`
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