Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 8
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`
` Entered: January 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01667
`Patent 8,724,622 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 8
`
`
` Entered: January 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01667
`Patent 8,724,622 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01667
`Patent 8,724,622 B2
`
`
`INTRODUCTION
`I.
`The above-captioned Petitioner (Facebook, Inc. and WhatsApp Inc.)
`filed a Petition requesting inter partes review of claims 3, 6–8, 10, 11, 13–
`23, 27–35, 38, and 39 of U.S. Patent No. 8,724,622 B2 (Ex. 1001, “the
`’622 patent”). Paper 2 (“Pet.”). Uniloc Luxembourg S.A. (“Patent
`Owner”)1 filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review of claims 3, 6–8, 10, 11, 13–23, 27–35, 38, and 39 of the
`’622 patent.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’622 patent is involved in Uniloc USA,
`Inc. v. Facebook, Inc., No. 2:16-cv-00728-JRG (E.D. Tex.), and Uniloc
`USA, Inc. v. WhatsApp Inc., No. 2:16-cv-00645-JRG (E.D. Tex.), among
`numerous other actions in the United States District Court for the Eastern
`
`
`1 Patent Owner’s Mandatory Notice filed pursuant to 37 C.F.R. § 42.8
`identifies Uniloc Luxembourg S.A. as the owner of the challenged patent
`and identifies Uniloc USA, Inc. only as licensee and additional real party in
`interest. Paper 4, 1. Accordingly, we have removed Uniloc USA, Inc. from
`the case caption as Patent Owner. We note, however, that this identification
`varies from earlier cases involving the challenged patent and certain related
`patents, in which Uniloc USA, Inc. and Uniloc Luxembourg S.A. both were
`identified in mandatory notices as “Patent Owner.” See, e.g.,
`IPR2017-00221, Paper 4, 1; IPR2017-00222, Paper 4, 1; IPR2017-00225,
`Paper 4, 1; IPR2017-01427, Paper 4, 1; IPR2017-01428, Paper 4, 1. The
`parties are reminded of their ongoing obligation under 37 C.F.R. § 42.8(a)(3)
`to keep mandatory notices updated.
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`District of Texas. Pet. 1−3; Paper 4, 2. The ’622 patent also was the subject
`of two requests for inter partes review filed by Apple Inc. (“Apple”) on
`November 14, 2016 (Cases IPR2017-00223 and IPR2017-00224), both of
`which were denied. See IPR2017-00223, Paper 7 (PTAB May 25, 2017);
`IPR2017-00224, Paper 7 (PTAB May 25, 2017).
`Concurrently with the instant Petition, Petitioner additionally filed a
`petition requesting inter partes review of claims 4, 5, 12, and 24–26 of the
`’622 patent (Case IPR2017-01668). IPR2017-01668, Paper 2. Further,
`Samsung Electronics America, Inc. filed two requests for inter partes review
`of certain claims of the ’622 patent on July 20, 2017 (Cases IPR2017-01797
`and IPR2017-01798); Apple filed two additional requests for inter partes
`review, also on July 20, 2017, challenging the same claims as the instant
`Petition and the petition in Case IPR2017-01668, respectively (Cases
`IPR2017-01804 and IPR2017-01805); Huawei Device Co., Ltd. (“Huawei”)
`filed a request for inter partes review of the same claims as the instant
`Petition on September 11, 2017 (Case IPR2017-02090); and Google Inc.
`filed two requests for inter partes review of certain claims of the ’622 patent
`on September 12, 2017 (Cases IPR2017-02080 and IPR2017-02081).
`Huawei additionally filed a motion for joinder to the instant proceeding
`concurrently with its petition in Case IPR2017-02090, and Apple indicated
`in its petition in Case IPR2017-01804 that it intends to seek joinder with the
`instant proceeding “when appropriate.” IPR2017-02090, Paper 3;
`IPR2017-01804, Paper 2, 76.
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`3
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`
`B. The ’622 Patent
`The ’622 patent, titled “System and Method for Instant VoIP
`Messaging,” relates to Internet telephony, and more particularly, to instant
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`Ex. 1001, [54], 1:18–22. The ’622 patent acknowledges that “[v]oice
`messaging” and “instant text messaging” in both the VoIP and public
`switched telephone network environments were previously known. Id.
`at 2:22–46. In prior art instant text messaging systems, according to the
`’622 patent, a server would present a user of a client terminal with a “list of
`persons who are currently ‘online’ and ready to receive text messages,” the
`user would “select one or more” recipients and type the message, and the
`server would immediately send the message to the respective client
`terminals. Id. at 2:34–46. According to the ’622 patent, however, “there is
`still a need in the art for . . . a system and method for providing instant VoIP
`messaging over an IP network,” such as the Internet. Id. at 1:18–22, 2:47–
`59, 6:47–49.
`In one embodiment, the ’622 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1001,
`6:22–24.
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`As illustrated in Figure 2, local packet-switched IP network 204,
`which may be a local area network (“LAN”), “interconnects” IVM
`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
`at 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
`instant voice messaging functionality over network 204. Id. at 7:61–65.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Ex. 1001, 7:57–59, 7:65–8:4. IVM
`client 208 then transmits the selections to IVM server 202 and “records the
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`user’s speech into . . . digitized audio file 210 (i.e., an instant voice
`message).” Id. at 8:4–11.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Ex. 1001, 8:15−29. “[O]nly the
`available IVM recipients, currently connected to . . . IVM server 202, will
`receive the instant voice message.” Id. at 8:33−34. IVM server 202
`“temporarily saves the instant voice message” for any IVM client that is “not
`currently connected to . . . local IVM server 202 (i.e., is unavailable)” and
`“delivers it . . . when the IVM client connects to . . . local IVM server 202
`(i.e., is available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the
`instant voice message, the recipients can audibly play the message. Id.
`at 8:29–32.
`
`C. Illustrative Claims
`Of the challenged claims, claims 3, 27, and 38 are independent.
`Claims 3 and 27 are illustrative of the challenged claims and are reproduced
`below.
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
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`
`wherein the instant voice message includes an object field
`including a digitized audio file.
`27. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`wherein the instant voice messaging application includes a
`document handler system for attaching one or more files to
`the instant voice message.
`Ex. 1001, 24:12–27, 26:17–30.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts three grounds of unpatentability (Pet. 5):
`
`Challenged Claims
`3, 6–8, 10, 11, 13, 18–21,
`23, 27, 32–35, 38
`
`Basis
`
`References
`
`§ 103(a) Zydney2 and Shinder3
`
`14–17, 28–31
`
`§ 103(a) Zydney, Shinder, and Clark4
`
`
`2 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (filed with line
`numbers added by Petitioner as Exhibit 1003).
`3 Excerpts from Debra Littlejohn Shinder, Computer Networking Essentials
`(2002) (Ex. 1014).
`4 Clark et al., US 6,725,228 B1, issued Apr. 20, 2004 (Ex. 1008).
`
`7
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`
`Challenged Claims
`
`22, 39
`
`References
`Basis
`§ 103(a) Zydney, Shinder, and
`Appelman5
`
`Petitioner also relies on a Declaration of Tal Lavian, Ph.D., filed as
`Exhibit 1002.
`
`III. 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.,
`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).
`
`
`5 Appelman, US 6,750,881 B1, issued June 15, 2004 (Ex. 1004).
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`
`Petitioner proposes constructions for the terms “instant voice
`messaging application,” as recited in claims 13, 27, and 38; “client platform
`system,” as recited in claims 27 and 38; and “communication platform
`system,” as recited in claim 3. Pet. 6−11. Patent Owner points out alleged
`deficiencies in Petitioner’s proposed constructions and proposes alternative
`constructions for each. Prelim. Resp. 7−16. Because our determination to
`institute review in this case does not turn on the construction of any of the
`terms for which the parties offer a construction, we do not construe
`expressly any term at this time.
`
`B. Analysis of Asserted Grounds of Unpatentability
`1. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art;6 and (4) objective evidence of
`
`
`6 Citing the testimony of Dr. Lavian, Petitioner asserts that a person of
`ordinary skill in the art for purposes of the ’622 patent “would have
`possessed at least a bachelor’s degree in computer science, computer
`engineering, or electrical engineering with at least two years of experience in
`development and programming relating to network communication systems
`(or equivalent degree or experience).” Pet. 6 (citing Ex. 1002 ¶¶ 13–15).
`9
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`nonobviousness, i.e., secondary considerations.7 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving
`obviousness, a petitioner cannot employ mere conclusory statements. The
`petitioner must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.” In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the
`asserted grounds with the principles stated above in mind.
`
`2. Ground 1: Obviousness over Zydney and Shinder
`(Claims 3, 6–8, 10, 11, 13, 18–21, 23, 27, 32–35, and 38)
`a. Overview of Zydney
`Zydney, titled “Method and System for Voice Exchange and Voice
`Distribution,” relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
`Ex. 1003, [54], [57], 1:4–5. While acknowledging that e-mail and instant
`messaging systems were well-known text-based communication systems
`utilized by users of online services and that it was possible to attach files for
`
`
`Patent Owner acknowledges Petitioner’s assertion and states that “[t]o
`simplify the issues before the Board at this preliminary stage, Patent Owner
`does not presently offer a different definition for a person of ordinary skill in
`the art.” Prelim. Resp. 6. Patent Owner further cites its own expert, William
`Easttom II, as providing a slightly different definition, but notes that
`“Mr. Easttom believes Dr. Lavian’s opinions concerning the [person of
`ordinary skill in the art] are essentially the same as his, and any differences
`are inconsequential to the dispute before the Board. Id. (citing Ex. 2001
`¶ 21). For purposes of this Decision and to the extent necessary, we adopt
`Petitioner’s assessment.
`7 Patent Owner does not contend in its Preliminary Response that any such
`secondary considerations are present.
`
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`the transfer of non-text formats via those systems, Zydney states that the
`latter technique “lack[ed] a method for convenient recording, storing,
`exchanging, responding and listening to voices between one or more parties,
`independent of whether or not they are logged in to their network.” Id.
`at 1:7–17. Zydney thus describes a method in which “voice containers”—
`i.e., “container object[s] that . . . contain[] voice data or voice data and voice
`data properties”—can be “stored, transcoded and routed to the appropriate
`recipients instantaneously or stored for later delivery.” Id. at 1:19–22; 12:6–
`8. Figure 1 of Zydney is reproduced below.
`
`
`Figure 1, above, illustrates a high-level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
`Referring to Figure 1, system 20 allows software agent 22, with a user
`interface, in conjunction with central server 24 to send messages using voice
`
`11
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`containers illustrated by transmission line 26 to another software agent 28,
`as well as to receive and store such messages, in a “pack and send” mode of
`operation. Id. at 10:20–11:1. Zydney explains that a pack and send mode of
`operation “is one in which the message is first acquired, compressed and
`then stored in a voice container 26 which is then sent to its destination(s).”
`Id. at 11:1–3. The system has the ability to store messages both locally and
`centrally at server 24 whenever the recipient is not available for a prescribed
`period of time. Id. at 11:3–6.
`In the use of Zydney’s system and method, the message originator
`selects one or more intended recipients from a list of names that have been
`previously entered into the software agent. Ex. 1003, 14:17–19. The agent
`permits distinct modes of communication based on the status of the
`recipient, including the “core states” of whether the recipient is online or
`offline and “related status information” such as whether the recipient does
`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
`software agent offers the originator alternative ways to communicate with
`the recipient, the choice of which can be either dictated by the originator or
`automatically selected by the software agent, according to stored rules. Id.
`at 15:3–6. If the recipient is online, the originator can either begin a
`real-time “intercom” call, which simulates a telephone call, or a voice instant
`messaging session, which allows for an interruptible conversation. Id.
`at 15:8–10. If the recipient is offline, the originator can either begin a voice
`mail conversation that will be delivered the next time the recipient logs in or
`can be delivered to the recipient’s e-mail as a digitally encoded
`Multipurpose Internet Mail Extension (“MIME”) attachment. Id. at 15:15–
`17. Zydney explains that the choice of the online modes “depends on the
`
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`activities of both parties, the intended length of conversation and the quality
`of the communications path between the two individuals, which is generally
`not controlled by either party,” and that the choice of the offline delivery
`options “is based on the interests of both parties and whether the recipient is
`sufficiently mobile that access to the registered computer is not always
`available.” Id. at 15:10–14, 15:17–19.
`Once the delivery mode has been selected, the originator digitally
`records messages for one or more recipients using a microphone-equipped
`device and the software agent. Ex. 1003, 16:1–3. 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. at 16:3–4. If the real-time
`“intercom” mode has been invoked, a small portion of the digitized voice is
`stored to account for the requirements of the Internet protocols for
`retransmission and then transmitted before the entire conversation has been
`completed. Id. at 16:4–7. Based on status information received from the
`central server, the agent then decides whether to transport the voice
`container to a central file system and/or to send it directly to another
`software agent using the IP address previously stored in the software agent.
`Id. at 16:7–10. If the intended recipient has a compatible active software
`agent online after log on, the central server downloads the voice recording
`almost immediately to the recipient. Id. at 16:10–12. The voice is
`uncompressed and the recipient can hear the recording through the speakers
`or headset attached to its computer. Id. at 16:12–14. The recipient can reply
`in a complementary way, allowing for near real-time communications. Id.
`at 16:14–15. If the recipient’s software agent is not online, the voice
`recording is stored in the central server until the recipient’s software agent is
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`active. Id. at 16:15–17. “In both cases, the user is automatically notified of
`available messages once the voice recordings have been downloaded to
`storage on their computer.” Id. at 16:17–19. The central server coordinates
`with software agents on all computers continuously, updating addresses,
`uploading and downloading files, and selectively retaining voice recordings
`in central storage. Id. at 16:19–21.
`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Ex. 1003, 19:6–7. Formatting the container
`using MIME format, for example, “allows non-textual messages and
`multipart message bodies attachments [sic] to be specified in the message
`headers.” Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
`
`
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`
`Figure 3, above, illustrates an exemplary embodiment of Zydney’s
`voice container structure, including voice data and voice data properties
`components. Ex. 1003, 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
`
`b. Overview of Shinder
`Shinder provides an overview of the “fundamentals of computer
`networking concepts and implementation.” Ex. 1014, 5. According to
`Shinder, it is “becom[ing] vital to business interests that a LAN be able to
`communicate with the outside” and, thus, to connect to a wide area network
`(“WAN”), such as the Internet. Id. at 31.
`
`c. Arguments and Analysis
`i. Claims 3, 6–8, 10, 11, 13, 18–21, and 23
`Petitioner points to Zydney as disclosing all limitations of
`independent claim 3, as well as dependent claims 6–8, 10, 11, 13, 18–21,
`and 23, except that it relies on Shinder’s disclosure of network interface
`controllers (“NICs”) (Ex. 1014, 42–43) as rendering obvious the “network
`interface” recited in claim 3 and on Shinder’s disclosure that “[a]n example
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`of a packet-switched network is the Internet” (id. at 19) as rendering obvious
`that the Internet as disclosed in Zydney would have been a packet-switched
`network, also as recited in claim 3. Pet. 18–50.
`Patent Owner disputes Petitioner’s evidence with regard to claim 3,
`arguing in particular that Zydney does not render obvious the claim 3
`limitation “wherein the instant voice message includes an object field.”
`Prelim. Resp. 22–26. Notwithstanding Patent Owner’s arguments, we are
`persuaded for the reasons that follow that Petitioner has established a
`reasonable likelihood of prevailing in showing that claims 3, 6–8, 10, 11, 13,
`18–21, and 23 are unpatentable over Zydney and Shinder.
`With respect to the disputed claim 3 limitation “wherein the instant
`voice message includes an object field,” Petitioner contends that, although
`the ’622 patent does not expressly define the term “object field,” the
`meaning of that term “is reasonably clear from the specification, which
`explains that ‘[t]he content of the object field is a block of data being carried
`by the message object, which may be, for example, a digitized instant voice
`message.’” Pet. 31 (emphasis omitted) (quoting Ex. 1001, 14:37–40).
`Relying on Dr. Lavian’s testimony as to what a person of ordinary skill in
`the art would have understood from that disclosure, Petitioner argues
`Zydney discloses the object field in at least two independent ways. Id.
`(citing Ex. 1002 ¶¶ 137–138, 141–144).
`First, according to Petitioner, “Zydney expressly refers to [its] voice
`container,” which Petitioner maps to the recited instant voice message, “as
`an ‘object’ that contains voice data: ‘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.’”
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`Pet. 31–32 (emphasis omitted) (quoting Ex. 1003, 12:6–8). While
`conceding that Zydney does not use the specific word “field” in relation to
`storage of voice data, Petitioner asserts that a person of ordinary skill in the
`art “would have understood that the voice data is contained in a field of the
`voice container.” Id. at 32 (citing Ex. 1002 ¶¶ 137–138). Petitioner further
`contends it would also have been obvious that the Zydney voice container
`would contain an object field “because, without one, the recipient device
`could not separate the voice data from the other fields of data in the voice
`container and play back the voice data for the user – a capability the
`recipient in Zydney has.” Id. (citing Ex. 1002 ¶ 138 n.13).
`Second, Petitioner argues, Zydney discloses that voice containers can
`be encoded using the industry-standard MIME format, “which ‘allows
`non-textual messages and multipart message bodies [sic] attachments to be
`specified in the message headers,’” and Zydney also specifically refers to
`and incorporates by reference Request for Comments (“RFC”) 1521
`(Ex. 1006), which “explains that a MIME message can contain audio or
`voice data in the ‘body,’ the field of the message containing the content
`being conveyed.” Pet. 32 (emphasis omitted) (citing Ex. 1002 ¶ 143;
`Ex. 1003, 19:7–10, 19:13–20:9; Ex. 1006). Relying on Dr. Lavian’s
`testimony, Petitioner contends that because Zydney itself discloses that
`voice containers can be encoded using MIME and directly cites to
`RFC 1521, “it would have been plainly obvious to a person of ordinary skill
`in the art to provide the receiving software agent with the ability to format
`the voice container according to RFC 1521, thus encoding the voice data in
`the body (an ‘object field’) of the message.” Id. at 32–33 (emphasis
`omitted) (citing Ex. 1002 ¶¶ 141–144).
`
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`Patent Owner responds that Petitioner errs by relying on Zydney’s
`voice container for this limitation, contending that “Zydney distinguishes its
`voice container from its voice message.” Prelim. Resp. 22 (emphasis
`omitted). Further, Patent Owner contends, Petitioner’s “conclusory
`speculation” that “a person of ordinary skill in the art would have
`understood that the voice data is contained in a field of the voice container”
`“should be rejected for at least . . . six reasons.” Id. at 22–23. First,
`according to Patent Owner, Petitioner’s statements are based on “mere
`speculation or conjecture.” Id. at 23. Second, the claim language does not
`recite “‘a field’ in the abstract,” but instead “identifies a specific type of
`field—namely, an ‘object field.’” Id. Third, “Zydney does not use the word
`‘field’ at all in relation to its voice container,” and “[w]hile Zydney
`describes the ‘voice container structural components’ with reference to
`Figure 3, notably absent from the list of twenty-five structural components
`(elements 302 through 338) is anything resembling ‘an object field including
`a digitized audio file.’” Id. at 23–24 (emphasis omitted) (citing Ex. 1003,
`23:1–12). Fourth, Patent Owner contends Zydney itself “refutes
`Petitioner[’s] speculation that Zydney must have used an undisclosed
`‘structural component’ dedicated exclusively to an ‘audio digital file.’” Id.
`at 24 (emphasis omitted). More particularly, according to Patent Owner,
`“Figure 3 of Zydney and its accompanying description . . . provide no less
`than four different examples of ‘structural components’ that each group
`together multiple items of information.” Id. (emphasis omitted). Fifth,
`Patent Owner contends, “the distinction between Zydney’s ‘structural
`components’ and the claimed ‘object field’ is not mere semantics but rather
`reflects fundamentally different technologies.” Id. at 25 (emphasis omitted).
`
`18
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`More specifically, “[a] person of ordinary skill in the art . . . would have
`recognized the word ‘field’ as a term of art in the context of packet-switched
`networks, particularly in light of the teachings of the ’622 patent,” and
`“would have recognized that network packets have headers with various
`fields describing things such as source address, destination address, port,
`protocol, etc.” Id. (emphasis omitted) (citing Ex. 2001 ¶ 77). Sixth, Patent
`Owner contends, “Zydney does not enable, and indeed could not even have
`functioned as described, using packet-switched fields of hypertext transfer
`protocol (‘HTTP’), as it existed in August 7, 2000 (Zydney’s filing date).”
`Id. at 26 (emphasis omitted) (citing Ex. 2001 ¶ 80).
`Having considering the parties’ respective arguments and evidence,
`we are persuaded that Petitioner sufficiently demonstrates a reasonable
`likelihood at this juncture that claim 3 is unpatentable over the combination
`of Zydney and Shinder. As a preliminary matter, although Patent Owner
`disputes Petitioner’s mapping of Zydney’s voice container to the claimed
`instant voice message (Prelim. Resp. 22), we find Petitioner’s evidence
`sufficient at this stage of the proceeding. Patent Owner’s 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. (citing
`Ex. 2001 ¶ 76). 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
`
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`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 have an opportunity during trial to present fully claim
`construction briefing for the term “instant voice message.”
`Regarding the instant voice message including “an object field
`including a digitized audio file,” Patent Owner does not persuasively rebut
`Petitioner’s evidence. Notwithstanding Patent Owner’s arguments that
`Petitioner’s statements are based on “mere speculation or conjecture” and
`that an object field is a “specific type of field” (Prelim. Resp. 23 (emphasis
`omitted)), we are sufficiently persuaded at this stage by Petitioner’s
`evidence, including Dr. Lavian’s testimony, that it would have been obvious
`to a person of ordinary skill in the art at the time of the alleged invention to
`include an object field in Zydney’s voice container for storage of voice data.
`Zydney expressly discloses voice data is transmitted in a voice container,
`where the term voice container “refers to a container object” that may be
`formatted according to industry standards such as MIME format. Ex. 1003,
`12:6–7 (emphasis added), 19:6–20:9 (citing, e.g., Ex. 1006). Although
`Zydney does not utilize the term “field” ipssisimis verbis, at this time we
`credit Dr. Lavian’s testimony, supported by RFC1521 and unrebutted on the
`record before us, that when in MIME format, Zydney’s voice container
`would contain the digitized audio file in an object field. Ex. 1002 ¶¶ 141–
`144.
`
`Accordingly, we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing in its contention that claim 3 is
`unpatentable over Zydney and Shinder. Patent Owner does not argue
`
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`dependent claims 6–8, 10, 11, 13, 18–21, and 23 separately from claim 3.
`For the same reasons as stated regarding claim 3 and based on our review of
`Petitioner’s arguments and evidence directed to the additional limitations of
`claims 6–8, 10, 11, 13, 18–21, and 23, we also determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing in its contention that
`those claims are unpatentable over Zydney and Shinder.
`ii. Claims 27 and 32–35
`In a similar manner as for claim 3 and its dependent claims, Petitioner
`relies on Shinder as teaching the “network interface” and “packet-switched
`network” recited in claim 27 and on Zydney for all other limitations of
`claims 27 and 32–35. Pet. 50–56. Petitioner maps the “instant voice
`messaging application” of claim 27 to the software agent running on a client
`computer of the sending user of Zydney. Pet. 52 (citing Ex. 1003, 11:16–18,
`13:2–6, 14:2–12); see also id. at 43–44 (regarding the sa
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