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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`IPR2017-01523
`PATENT 7,535,890
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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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`
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`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
`
`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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`IPR2017-01523
`PATENT 7,535,890
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-1523
`U.S. Patent 7,535,890
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`Table of Contents
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`INTRODUCTION
`I.
`RELATED MATTERS
`II.
`III. THE ʼ890 PATENT
`Effective Filing Date of the ʼ890 Patent
`Overview of the ʼ890 Patent
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
`1.
`The Board Should Construe “Transmitting the Selected
`Recipients and
`the
`Instant Voice Message” as
`“Transmitting the Selected Recipients and Separately
`Transmitting the Instant Voice Message”
`The Board Should Construe “Receiving the Selected
`Recipients and
`the
`Instant Voice Message” as
`“Receiving the Selected Recipients and Separately
`Receiving the Instant Voice Message”
`Petitioner Fails to Provide Prima Facie Evidence that Zydney
`Renders Obvious Independent Claims 1 and 40.
`1.
`Zydney Does Not Disclose or Render Obvious a Client
`“Transmitting the selected recipients and the instant
`voice message” or a “Server Receiving the Selected
`Recipients and the Instant Voice Message”
`Zydney Does Not Disclose or Render Obvious
`“Delivering the Instant Voice Message to the Selected
`Recipients Over the Network”
`The Challenged Independent Claims are not Obvious
`Over Zydney
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`2.
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`2.
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`3.
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`ii
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`1
`2
`2
`2
`2
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`4
`5
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`6
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`10
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`11
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`11
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`13
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`20
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`IPR2017-1523
`U.S. Patent 7,535,890
`Dependent Claims 3, 6, and 43 are Not Obvious Over Zydney
`21
` Dependent Claims 5 and 42 are Not Obvious Over Zydney
`23
`Dependent Claims 9 and 46 are Not Obvious Over Zydney
`25
`Dependent Claim 2 is Not Obvious Over Zydney in View of
`Shinder
` Dependent Claims 4 and 41 are Not Obvious Over Zydney in
`View of Appelman and Martin-Flatin
`CONCLUSION
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`27
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`29
`35
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`V.
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`iii
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`IPR2017-1523
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`US. Patent 7,535,890
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`List of Exhibits
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`Exhibit No. Declaration of Dr. Val DiEuliis
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`iv
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`IPR2017-1523
`U.S. Patent 7,535,890
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`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. (“Patent Owner”) submit this Preliminary Response to the
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`Petition for Inter Partes Review (“the Petition”) of U.S. Patent No. 7,535,890 (“the
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`ʼ890 Patent”) filed by FACEBOOK, INC. and WHATSAPP INC. (“Petitioner”).
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety as failing to meet the threshold burden of proving there is a reasonable
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`likelihood that at least one challenged claim is unpatentable. As a general overview,
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`the Petition asserts a single-reference obviousness challenge against all but three
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`challenged claims; the Petition adds additional references in proposed combinations
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`for the other three challenged claims. The Petition fails to provide a prima facie case
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`of obviousness for the single-reference and combination challenges. Additionally,
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`Petitioner offers no analysis for expanding the single reference for obviousness
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`purposes, and ignores the plain language of its own references in an attempt to
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`impermissibly combine those references. Such an approach invites reversible error
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`and should be rejected outright.
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`1
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`IPR2017-1523
`U.S. Patent 7,535,890
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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 ʼ890 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
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`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 ʼ890 PATENT
` Effective Filing Date of the ʼ890 Patent
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`The ʼ890 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” The
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`ʼ890 Patent
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`issued
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`from U.S. Patent Application
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`No. 10/740,030, filed December 18, 2003. The ʼ890 Patent issued May 19, 2009.
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` Overview of the ʼ890 Patent
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`The
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`ʼ890 Patent
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`recognizes
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`that
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited development of other forms of communication over such
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`networks. According
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`to
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`the ʼ890 Patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the telephone
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`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`2
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`including another
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`telephone
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`terminal. During
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`the
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`IPR2017-1523
`U.S. Patent 7,535,890
`telephone call, voice
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`communication takes place over that communication path.” EX1001, 1:18–23.
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`The ʼ890 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.” 1:24–26. Because legacy circuit-
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`switched devices were unable to communicate directly over packet-switched
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`networks, media gateways (114) were designed to receive circuit-switched signals
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`and packetize them for transmittal over packet-switched networks, and vice versa.
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`Id. at 1:54–2:10. The conversion effected by media gateways (e.g., 114 and 118)
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`highlights the fact that packetized data carried over packet-switched networks (e.g.,
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`IP network 102) are different from and are incompatible with an audio signal carried
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`over a dedicated packet-switched circuit. Id. at 1:18–23.
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`The ʼ890 Patent further recognizes that, notwithstanding the advent of instant
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`text 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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`2:11–43. Rather, “conventionally, leaving a voice message involves dialing the
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`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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`3
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`U.S. Patent 7,535,890
`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 2:15–
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`22.
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`In certain disclosed aspects the ʼ890 Patent describes a user-accessible client
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`(208) that is specially configured for instant voice message (IVM) and for direct
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`communication over a packet-switched network (e.g., through an Ethernet card) Id.
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`at 12:4–5. More specifically, the ʼ890 Patent teaches that certain clients (208) are
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`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
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`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
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`client 208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
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`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
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`server 202.” Id. at 7:65–8:1.
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`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`The Petition presents the following grounds, which are all based on
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`obviousness theories. As Ground 1, Petitioner alleges obviousness of Claims 1, 3, 5,
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`6, 9, 40, 42, 43, and 46 under 35 U.S.C. § 103 over International Patent Application
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`Publication Number WO 01/11824 to Herbert Zydney et al. (“Zydney”). As Ground
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`2, the Petition alleges obviousness of Claim 2 under 35 U.S.C. § 103 over Zydney in
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`view of Debra Littlejohn Shinder, COMPUTER NETWORKING ESSENTIALS (Cisco
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`Press, 2002) (“Shinder”). Ground 3 alleges obviousness of Claims 4 and 41 under
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`4
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`IPR2017-1523
`U.S. Patent 7,535,890
`35 U.S.C. § 103 over Zydney in view of U.S. Patent No. 6,750,881 to Barry
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`Appelman (“Appelman”) and J.P. Martin-Flatin, Push vs Pull in Web-Based Network
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`Management, Proceedings of the Sixth IFIP/IEEE International Symposium on
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`Network Management, 1999 (“Martin-Flatin”).
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`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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`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
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`Petitioners “do not contend that any term from the ʼ890 patent requires an
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`explicit construction” and “respectfully request that the Board adopt the broadest
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`reasonable construction consistent with the ordinary and customary meaning of the
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`challenged claims.” Pet., p. 9.
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`Patent Owner requests that the Board adopt the broadest reasonable
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`construction consistent with the ordinary and customary meaning of the challenged
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`claims and with the specification as a whole.
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`5
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`U.S. Patent 7,535,890
`Under the broadest reasonable interpretation standard used by the Board,
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`claim terms carry their ordinary and customary meaning, as would be understood by
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`one of ordinary skill in the art in the context of the entire disclosure. See In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also Cuozzo Speed
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use in IPRs of
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`the broadest reasonable interpretation).
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`1.
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`The Board Should Construe “Transmitting the Selected
`Recipients and the Instant Voice Message” as “Transmitting the
`Selected Recipients and Separately Transmitting the Instant
`Voice Message”
`Independent Claim 1 recites “a client connected to the network, the client
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`selecting one or more recipients, generating an instant voice message therefor, and
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`transmitting the selected recipients and the instant voice message therefor over the
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`network.” EX1001, 23:58–61 (emphasis added). The proper construction for this
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`“transmitting” limitation reflects that the transmitting of the selected recipients and
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`the instant voice message are done separately.
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`In order to properly construe the “transmitting” limitation, the Board must
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`consider the specification as a whole. See, e.g., Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005) (en banc) (claims must be construed as a whole
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`consistent with the entire specification); Playtex Prods., Inc. v. Procter & Gamble
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`Co., 400 F.3d 901, 906 (Fed. Cir. 2005) (“[C]laims must be construed so as to be
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`consistent with the specification, of which they are a part . . . .”) (citation omitted).
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`6
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`U.S. Patent 7,535,890
`The ʼ890 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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`EX1001, 7:55–61 (internal citations omitted). Once this selection is made, the “user
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`selection is transmitted to the IVM server.” Id. at 7:61. This selection also triggers
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`the process by which the user may record the instant voice message. Id. at 7:62–8:4.
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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 8:5–8. The client then sends the
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`instant voice message to a local IVM server. Id. at 8:11–12. Thus, the client transmits
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`the selected recipients and the instant voice message separately.
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`Indeed, the ʼ890 Patent only mentions the client transmitting the instant voice
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`message without regard to communication of the selected recipients. E.g., EX1001,
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`8:11–12 (“The IVM client 208 transmits the digitized audio file 210 and the send
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`signal to the local IVM server 202.”); 9:56–58 (“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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`to the selected one or more IVM recipients.”); 10:37–40 (“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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`7
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`IPR2017-1523
`U.S. Patent 7,535,890
`audio file (instant voice message) to the selected one or more IVM recipients.”);
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`11:32–35 (“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: 17–21
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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 of the instant voice message takes place after, and separate from,
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`the transmission of the selected recipients. See id.
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`Further, other claims of the ʼ890 Patent provide additional context that
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`supports a construction of the instant voice message and the selected recipients being
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`transmitted, received, and generally processed separately. For example, Claims 8
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`and 45 recite buffering operations that are performed with respect to the instant voice
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`message or portions thereof (and not performed with respect to the selected
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`recipients). EX1001, 25:28–35, 29:1–10.
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`It is notable that the above referenced dependent claims do not recite that any
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`buffering operations are performed with respect to the selected recipients. The
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`specification makes it clear that such buffering operations are not performed with
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`respect to the selected recipients. This is because by the time buffering operations
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`on the instant voice message (or portions thereof) are even possible, the selected
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`8
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`IPR2017-1523
`U.S. Patent 7,535,890
`recipients have already been communicated from the client to the server. That
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`is, the selected recipients are communicated from the client to the server first, and
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`only thereafter is the instant voice message buffered and communicated from the
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`client to the server.
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`For example, the specification states “[i]n the ‘intercom mode,’ instead of
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`creating an audio file 210, one or more buffers (not shown) of a predetermined size
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`are generated in the IVM client 206, 208 or local IVM server 202. The one or more
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`buffers are used to automatically write successive portions of the instant voice
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`message.” EX1001, 11:27–32. This passage makes it clear that the buffering
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`operations are the intercom mode’s alternative to the record mode’s creation of the
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`audio file. However, creation of the audio file does not happen until a start signal is
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`generated, and the start signal is not generated until after the selected recipients are
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`transmitted from the client to the server: “The user operates the IVM client 208 by
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`using the input device 218 to indicate a selection of one or more IVM recipients from
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`the list. The user selection is transmitted to the IVM server 202. The user selection
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`also generates a start signal to the IVM client 208 that the user is ready to begin
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`instant voice messaging according to the present invention. In response to the start
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`signal, the IVM client (softphone) 208 listens to the input audio device 212 and
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`records 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.” Id. at 7:58–8:1 (emphases added).
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`9
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`U.S. Patent 7,535,890
`Therefore, the buffering operations recited in the above-referenced dependent
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`claims, though not challenged in the Petition, provide additional context that
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`demonstrates the appropriate construction of transmitting the instant voice message
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`and separately transmitting the selected recipients.
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`For at least these reasons, the Board should properly construe “transmitting
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`the selected recipients and the instant voice message” as “transmitting the selected
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`recipients and separately transmitting the instant voice message.”
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`2.
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`The Board Should Construe “Receiving the Selected Recipients
`and the Instant Voice Message” as “Receiving the Selected
`Recipients and Separately Receiving the Instant Voice Message”
`Independent Claim 1 recites “a server connected to the network, the server
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`receiving the selected recipients and the instant voice message therefor, and
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`delivering the instant voice message to the selected recipients over the network . . . .”
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`EX1001, 23:62–65 (emphasis added). It is noted that this limitation is the server-
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`side “receiving” analogue of the client-side “transmitting” limitation discussed
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`above in Section IV.A.1. Section IV.A.1 explains that the proper construction for
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`that “transmitting” limitation reflects that the transmission of the selected recipients
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`and the instant voice message are done separately. For analogous reasons, the proper
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`construction for the “receiving” limitation reflects that the receiving of the selected
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`recipients and the instant voice message are done separately.
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`10
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`IPR2017-1523
`U.S. Patent 7,535,890
`Petitioner Fails to Provide Prima Facie Evidence that Zydney
`Renders Obvious Independent Claims 1 and 40.
`Zydney Does Not Disclose or Render Obvious a Client
`“Transmitting the selected recipients and the instant voice
`message” or a “Server Receiving the Selected Recipients and the
`Instant Voice Message”
`As detailed above in Section IV.A, the proper construction of these limitations
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`1.
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`reflects that the transmission and receipt of the selected recipients and the instant
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`voice message occur separately. The Petition relies exclusively on Zydney’s
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`disclosure of transmitting and receiving a “voice container” for these limitations.
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`Pet., 35–38, 40; EX2001, ¶¶ 70–71. Petitioner states this position plainly and counts
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`on it throughout the Petition: “Zydney discloses this limitation because . . . both of
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`these pieces of information are stored in the voice container, which is transmitted
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`by the client over the network . . . .” Pet., 35 (emphasis added); EX2001, ¶¶ 70–71.
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`Petitioner relies on an incorrect and improper construction of the
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`“transmitting” limitation, paying no heed to the ʼ890 Patent’s language regarding the
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`manner in which the claimed selected recipients and instant voice message are
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`actually transmitted by the client.
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`The Petition does not allege, and Zydney does not disclose, that a voice
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`container is transmitted piecemeal such that recipient information and voice data are
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`transmitted separately. See EX2001, ¶¶ 77–79. Zydney’s “invention is a system and
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`method for voice exchange and voice distribution utilizing a voice container.”
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`11
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`IPR2017-1523
`U.S. Patent 7,535,890
`EX1003, 1:19–20 (Summary of the Invention). Figure 1 of Zydney illustrates the
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`“voice container” (26) as the actual information communicated between client and
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`server. See also, e.g., id. at 10:20–11:3. Figure 3 of Zydney shows that the structure
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`of the “voice container” includes both the recipient information and the voice data.
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`EX2001, ¶ 51, 76–79. Thus, any “transmission” of the voice container by a client in
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`Zydney is a simultaneous transmission of both the recipient information and the
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`voice data. Id. Zydney does not, therefore, disclose or render obvious the
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`“transmitting the selected recipients and the instant voice message” limitation of
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`Claim 1 when construed properly.
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`Petitioner relies exclusively on Zydney’s “voice container” for the limitation
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`of the server receiving the selected recipients and the instant voice message: “This
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`limitation does not add any features not already covered by the discussion of claim
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`1[a] [“transmitting the selected recipients and the instant voice message”] above.”
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`Pet., 40. Petitioner again relies on an incorrect and improper construction of the
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`“receiving limitation,” ignoring the ʼ890 Patent’s language regarding the manner in
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`which the claimed selected recipients and instant voice message are actually
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`received by the server.
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`The Petition does not allege, and Zydney does not disclose, that a voice
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`container is received piecemeal such that recipient information and voice data are
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`received separately. EX2001, ¶¶ 77–79. Thus, any “receiving” of the voice container
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`12
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`U.S. Patent 7,535,890
`by a server in Zydney is a simultaneous receipt of both the recipient information and
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`the voice data. Id. ¶¶ 51, 76–79.
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`Furthermore, it is clear from the claim language that “the selected recipients”
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`in this claim limitation are the same as the “one or more recipients” selected by the
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`client. Thus, the plain language of the claim requires that the selected recipients be
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`each and every recipient that is selected by the client. Zydney does not disclose or
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`suggest that each and every selected recipient is communicated to the server, and
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`actually discloses the opposite. EX2001, ¶¶ 69–74. Peer-to-peer messages, which
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`travel from the originator to a format-compatible recipient that is available at the
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`time of selection, do not pass through the server in Zydney. See EX2001, ¶ 58–63.
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`Therefore, a voice container received by Zydney’s server would not include the
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`recipient code of any such peer-to-peer recipients. EX2001, ¶ 69–74. Rather, each
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`particular peer-to-peer recipient would receive a separate voice container, which
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`would include only that particular recipient’s recipient code. Id.
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`Zydney does not, therefore, disclose or render obvious the “receiving the
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`selected recipients and the instant voice message” limitation of Claim 1 when
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`construed properly.
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`2.
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`Zydney Does Not Disclose or Render Obvious “Delivering the
`Instant Voice Message to the Selected Recipients Over the
`Network”
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`13
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`U.S. Patent 7,535,890
`Independent Claim 1 recites a server “delivering the instant voice message to
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`the selected recipients over the network.” EX1001, 23:62–65 (emphasis added). By
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`its express terms, this is the same instant voice message transmitted by the client. Id.
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`at 23:57–61 (“a client connected to the network . . . generating an instant voice
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`message . . . and transmitting the selected recipients and the instant voice message”)
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`(emphasis added).
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`Zydney simply does not disclose this limitation. Petitioner argues that Zydney
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`teaches “delivering” solely because the “voice container” ends up at a recipient. Pet.,
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`p. 40. Petitioner’s entire argument is that “Figure 1A of Zydney . . . shows
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`transmission of voice container 26 from the central server in Zydney to the recipient
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`over the Internet.” Id. However, an examination of the relevant portions of Zydney—
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`including those cited to by Petitioner—reveals that a voice container identical to the
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`one transmitted by the client never reaches the recipient through the server.
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`Independent Claim 1 recites that the server: (1) delivers the instant voice
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`message, and (2) when the recipient is unavailable, temporarily stores the instant
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`voice message and then delivers the stored instant voice message once the recipient
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`becomes available. EX1001, 23:62–24:3. The former applies to situations in which
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`the recipient is available at the time the recipient is selected by the sender, the latter
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`when the recipient is unavailable. See EX2001, ¶ 58–63, 88. However, in both
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`U.S. Patent 7,535,890
`situations Claim 1 requires that it is the server that delivers the instant voice message
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`to the recipient.
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`Zydney discloses three methods of communicating a voice container between
`
`source and recipient clients on a packet network: (1) communication via the central
`
`server when one or more of the intended recipients is offline; (2) communication via
`
`the central server when both the source and recipient clients are online and the voice
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`container requires translation; and (3) peer-to-peer communication when both the
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`source and recipient clients are online and the voice container does not require
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`translation. EX2001, ¶¶ 58–63. Method (1) above applies only to the situation in
`
`which the intended recipient is offline. Id., ¶ 63. This discussion, therefore, only
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`focuses on methods (2) and (3).
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`Zydney’s systems support clients with “different voice and compression
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`applications and data formats [that] may be available as dictated by the hardware
`
`platform and software residing thereon.” EX1003, 11:18–20. “The present invention
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`includes a voice/compression software detector 38 and 40 that communicates the
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`format of the voice data to be transmitted and/or received.” Id. at 11:20–22. “Voice
`
`containers transmitted from a sending agent to a receiving agent hav[ing] different
`
`data formats are routed through the server in which a translator 421 converts the
`
`
`1 Patent Owner notes that item 42 of Figure 1A is labeled as “Voice/Compressor
`Transport.”
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`15
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`IPR2017-1523
`U.S. Patent 7,535,890
`voice data in the voice containers from the sender’s data format to the receiver’s data
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`format.” Id. at 12:20–23. A central server includes “a transcoding server (translator)
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`70,” as illustrated in Figure 2. Id. at 13:7–10. Various methods include transcoding
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`“voice container data between a first data format and a second voice data format”
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`for “user having different hardware and software platforms.” Id. at 37 (Claims 3 and
`
`5, which depends from Claim 3).
`
`This extensive description illustrates the importance to Zydney of supporting
`
`multiple hardware and software environments and the ability to convert data from
`
`one environment to another. As a result, Zydney locates the “transcoding”
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`functionality in the central server. Id. at 13:7–10. Thus, when a voice container
`
`requires translating, the voice container is first sent to the central server. EX2001,
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`¶¶ 61, 89. Once translation is complete, the central server may then communicate
`
`the voice container to one or more recipients. Id.
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`However, what is communicated to the recipient(s) after translation is no
`
`longer the voice data transmitted by the client. The voice data has been
`
`fundamentally altered. The transcoding server “converts the voice data in the voice
`
`containers from the sender’s data format to the receiver’s data format.” EX1003, at
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`12:20–23. The conversion performed at the server fundamentally alters the voice
`
`data. By its very nature, it is no longer even intelligible by the source client—if the
`
`recipient client’s data format were compatible with the source client, then there
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`IPR2017-1523
`U.S. Patent 7,535,890
`would not have been a need for format conversion. See EX2001, ¶¶ 61, 89. No
`
`reasonable interpretation of “delivering the instant voice message” (i.e., the same
`
`instant voice message that was transmitted by the client) could include a situation in
`
`which the delivered data is so fundamentally different from the instant voice
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`message generated by the client that the client could not even access that data. See
`
`id. Therefore, Zydney’s communication method (2) cannot disclose “delivering the
`
`instant voice message” as recited by independent Claim 1.
`
`That leaves only method (3), peer-to-peer communication. Zydney repeats
`
`throughout that the simplest communication—occurring between source and
`
`destination clients when both clients online and use the same data format—occurs
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`solely in a peer-to-peer fashion. Id. ¶¶ 58–63. Once a software agent has been
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`authenticated, Zydney’s central server “will notify the software agent to send the
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`voice container directly to the recipient if the recipient is available or it will store
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`the voice container for the intended recipient if the recipient is not available.”
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`EX1003, 14:9–11 (emphasis added). “Other software agents will be able to send
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`messages directly to the software agent that has been authenticated. This will be
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`done on a peer-to-peer software agent basis.” Id. at 33:10–12 (emphasis added).
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`The peer-to-peer communication is enabled by sending the IP address of the
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`recipient to the originating client. Id. at 15.:1–2 (“For online recipients, the software
`
`agent is also notified of the recipients Internet Protocol (IP) address.”). The IP
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`U.S. Patent 7,535,890
`address itself comes from the recipient client when that client authenticates with the
`
`central server and announces its availability. Id. at 24:21–23 (“The software agent
`
`will notify the server with the Internet address that they are currently using for the
`
`session to identify where the messages should be sent.”). There would be no need to
`
`provide the IP addresses other than to allow peer-to-peer client communications.
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`EX2001, ¶ 63, n. 4.
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`All of this peer-to-peer communication of the voice data is done without the
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`intercession of the central server. Id. ¶¶ 58–63. “Since a message may go from one
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`peer to another without the messaging server being involved[,] a message will be
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`sent to the server with all of the pertinent information about the message but not the
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`body. This information will be used for monitoring of the service, guaranteeing
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`service levels, and verifying end user software agent functions.” EX1003, 34:8–12
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`(emphasis added). Zydney states that messages are only stored at the central server
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`“whenever the recipient is not available.” Id. at 11:3–6.
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`Thus, for situations in which both source and recipient clients are online and
`
`available and the message does not require translating, Zydney only discloses peer-
`
`to-peer communication of messages. EX2001, ¶ 63. In contrast, independent Claim
`
`1 states that, when a client and a recipient are online, the same instant voice message
`
`generated by the client must be delivered by the server. Therefore, Zydney does not
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`U.S. Patent 7,535,890
`disclose a server “delivering the instant voice message to the selected recipient,” as
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`recited by independent Claim 1.
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`Further, Petitioner’s own expert notes that the only context in which a voice
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`container is passed from a source client, through the central server, to a recipient
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`client when both clients are online is when the voice container needs to be translated
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`from one data format to another. Id. ¶ 60 (citing EX1002, ¶¶ 115, 123). This
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`position, however, ignores the plain language of the claim. Claim 1 requires that the
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`same instant voice message transmitted by the client be then delivered to the selected
`
`recipients. Claim 1 recites a client “generating an instant voice message” and then
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`“transmitting the selected recipients and the instant voice message.” Claim 1 then
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`recites a server “receiving the selected recipients and the instant voice message” and
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`then “delivering the instant voice message to the selected recipients.” EX1001,
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`23:58–65. All limitations of independent Claim 1 require the handling of the same
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`instant voice message. See, e.g., See Medrad, Inc. v. MRI Devices Corp., 401 F.3d
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`1313, 1319 (Fed. Cir. 2005) (“We cannot look at the ordinary meaning of the
`
`term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context
`
`of the written description and the prosecution history.”).
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`Finally, Petitioner simply ignores large portions of Zydney in an attempt to
`
`apply it to inapposite situations. Petitioner acknowledges that Zydney discloses the
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`client transmitting the voice container peer-to-peer, but chooses to ignore it. Pet., 36
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`(“For purposes of this claim, this Petition will focus on method (2) [purported
`
`transmission to the central server] because it more closely aligns with the subsequent
`
`claim limitations . . . .”). This is nothing more than Petitioner misinterpreting its own
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`prior art. Zydney does not disclose a server delivering an instant voice message to a
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`recipient that is available at the time the recipient is selected, where that instant
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