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.,
`Petitioners
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2017-01667
`PATENT 8,724,622
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`
`Introduction
`I.
`Related Matters of the ’622 Patent
`II.
`III. The ’622 Patent
`Effective Filing Date of the ’622 Patent
`Overview of the ’622 Patent
`IV. PERSON OF ORDINARY SKILL IN THE ART
`IV. PETITIONERS RELY ON INCORRECT CLAIM
`CONSTRUCTIONS
`“instant voice messaging application”
`“client platform system”
`“communication platform system”
`“wherein the instant voice messaging application includes a
`document handler system for attaching one or more
`files to the instant voice message” (independent claim
`27)
`PETITIONERS FAIL TO PROVE UNPATENTABILITY OF THE
`CHALLENGED CLAIMS
`Zydney does not render obvious “wherein the instant voice
`messaging application includes a document handler
`system for attaching one or more files to the instant
`voice message” (claim 27)
`Zydney does not render obvious “wherein the instant voice
`message includes an object field including a digitized
`audio file” (independent claim 3)
`No prima facie obviousness for “wherein the instant voice
`messaging application includes a message database
`storing the instant voice message, wherein the instant
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`V.
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`IPR2017-01667
`U.S. Patent 8,724,622
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`Table of Contents
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`1
`1
`2
`2
`2
`4
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`5
`6
`9
`10
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`11
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`13
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`15
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`21
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`ii
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`28
`34
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`IPR2017-01667
`U.S. Patent 8,724,622
`voice message is represented by a database record
`including a unique identifier” (dependent claims 14-17
`and 28-31)
`Clark teaches away from the proposed combination
`Petitioners’ proposed combination of Zydney with Clark
`results in messages being deleted once they are sent to
`the server
`No proof of obviousness for “a display [at the client device]
`displaying a list of one or more potential recipients”
`(claims 38-39)
`VI. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`VII. CONCLUSION
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`36
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`38
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`44
`44
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`Patent Owner’s List of Exhibits
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`Exhibit No.
`2001
`2002
`
`2003
`
`Description
`Declaration of William “Chuck” Easttom II
`Microsoft TechNet article showing Microsoft IIS 6.0
`enabled compression over HTTP
`Deposition Transcript of Dr. Tal Lavin.
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`
`iii
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`IPR2017-01667
`U.S. Patent 8,724,622
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`I.
`
`Introduction
`Pursuant to 37 C.F.R. § 42.120, Uniloc Luxembourg S.A. (“Uniloc” or
`“Patent Owner”) submits this Response to the Petition for Inter Partes Review (“the
`Petition”) of U.S. Patent No. 8,724,622 (“the ’622 patent”) filed by Facebook, Inc.
`and WhatsApp, Inc. (“Petitioners”).
`II. Related Matters of the ’622 Patent
`This is not the first time the Board has considered challenges against the ’622
`patent. On May 25, 2017, the Board denied institution of two petitions for inter
`partes review against the ’622 patent filed by Apple Inc. on November 14, 2016
`(IPR2017-00223 and IPR2017-00224). Even more relevant to the present Petition,
`the Board denied institution of two additional petitions for inter partes review
`(IPR2017-02080 and IPR2017-02081) challenging the same ’622 patent based
`primarily on the same Zydney reference at issue here.1
`Concurrent with the filing of the instant Petition, Petitioners filed a second
`petition for inter partes review to address different claims of the ’622 patent. More
`specifically, the present Petition addresses claims 3, 6-8, 10, 11, 13, 14-23, 27-35,
`38, and 39, whereas the other petition (IPR2017-01668) addresses claims 4, 5, 12,
`and 24-26.
`The Petition provides what appears to be an accurate summary of pending
`litigation related to the ’622 patent. Pet. 1-3.
`
`
`1 Trial is currently pending in two related inter partes review matters (IPR2017-
`01797 and IPR2017-01798) that challenge the ’622 patent based primarily on a
`reference (Griffin) not at issue here.
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`1
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`IPR2017-01667
`U.S. Patent 8,724,622
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`III. The ’622 Patent
` Effective Filing Date of the ’622 Patent
`The ’622 patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`MESSAGING.” EX1001. The ’622 patent issued from U.S. Patent Application No.
`13/546,673, which is a continuation of U.S. Patent No. 8,243,723, which is a
`continuation of U.S. Patent No. 7,535,890, filed on Dec. 18, 2003. The ’622 patent
`issued on May 13, 2014. Petitioner does not contest that the ’622 patent is at least
`entitled to an effective filing date of Dec. 18, 2003.
` Overview of the ’622 Patent
`circuit-switched
`conventional
`that
`The
`’622 patent
`recognized
`communications enabled traditional telephony yet had a variety of technical
`disadvantages that limited developing other forms of communication over such
`networks. According
`to the ’622 patent, “[c]ircuit switching provides a
`communication path (i.e., dedicated circuit) for a telephone call from the telephone
`terminal to another device 20 over the [public switched telephone network or] PSTN,
`including another
`telephone
`terminal. During
`the
`telephone call, voice
`communication takes place over that communication path.” EX1001, 1:29-34.
`The ’622 patent expressly distinguishes circuit-switched networks from
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
`also known as IP telephony or Internet telephony.”2 Id., 1:35-36. Because legacy
`
`2 Consistent with the ’622 patent specification, the USPTO has also recognized there
`are significant differences between circuit-switched and packet-switched networks
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`2
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`IPR2017-01667
`U.S. Patent 8,724,622
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`circuit-switched devices were unable to communicate directly over packet-switched
`networks, media gateways (114) were designed to receive circuit-switched signals
`and packetize them for transmittal over packet-switched networks, and vice versa.
`Id., 2:8-18. The conversion effected by media gateways (e.g., 114 and 118)
`highlights the fact that packetized data carried over packet-switched networks (e.g.,
`IP network 102) are different from, and are incompatible with, an audio signal
`carried over a dedicated packet-switched circuit. Id., 2:8-21.
`The ’622 patent further recognized that, notwithstanding the advent of instant
`text messages, at the time of the claimed invention there was no similarly convenient
`analog to leaving an instant voice message over a packet-switched network. Id.,
`2:22-53. Rather, “conventionally, leaving a voice message involves dialing the
`recipient’s telephone number (often without knowing whether the recipient will
`answer), waiting for the connection to be established, speaking to an operator or
`navigating through a menu of options, listening to a greeting message, and recording
`the message for later pickup by the recipient. In that message, the user must typically
`identify himself or herself in order for the recipient to return the call.” Id., 2:26-33.
`
`during the relevant timeframe. See, e.g., U.S. Application No. 90/012,728 and
`90/012,789 (Notice of Intent to Issue Ex Parte Reexamination Certificate, dated
`April 10, 2014) at page 9, where the USPTO confirmed the following:
`Ethernet packet switching protocol, including TCP/IP, are very specific
`connectionless/packet switched protocols. In contrast to connection-
`oriented protocols, connectionless/packet switched protocols do not
`need to set up a dedicated path in advance. Rather, routers send
`fragmented messages or “packets” to their destination independently.
`Connectionless protocols have a number of advantages over
`connection-oriented protocols, including better use of available
`bandwidth.
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`IPR2017-01667
`U.S. Patent 8,724,622
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`The inventor observed, therefore, that “notwithstanding the foregoing
`advances in the VoIP/PSTN voice communication and voice/text messaging, there
`is still a need in the art for providing a system and method for providing instant VoIP
`messaging over an IP network.” Id., 2:47-51. In certain disclosed embodiments, the
`’622 patent addressed that need, in part, by providing a user-accessible client (208)
`that is specially configured for instant voice message (IVM) and for direct
`communication over a packet-switched network (e.g., through an Ethernet card). Id.,
`12:13-14. More specifically, the ’622 patent teaches that certain clients (208) are
`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
`client 208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
`server 202.” Id., 8:8-11 and 8:21-22.
`The Petition challenges three patentably-distinct independent (claims 3, 27,
`and 38) and seventeen dependent claims (6-8, 10, 11, 13, 14-23, 28-35, and 39).
`IV. PERSON OF ORDINARY SKILL IN THE ART
`Petitioners allege through their declarant, Dr. Lavian, 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 EX1002 ¶¶13-15).
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`U.S. Patent 8,724,622
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`Uniloc’s declarant, Chuck Easttom, testified that a person of ordinary skill in
`the art “is someone who would have possessed on the priority date a bachelor’s
`degree
`in electrical engineering or computer
`science
`(or equivalent
`degree/experience) with at least two years of experience in computer programming
`and software development,
`including
`the development of software
`for
`communication with other computers over a network.” EX2001 ¶ 13. Mr. Easttom
`believes Dr. Lavian’s opinions concerning a POSITA are essentially the same as his,
`and any differences are inconsequential to the dispute before the Board. Id. ¶ 15.
`As should be apparent from his declaration and attached curriculum vitae, Mr.
`Easttom testified that his “qualifications and experience exceed those of the
`hypothetical person having ordinary skill in the art defined above.” Id. ¶ 16.
`Nevertheless, his “analysis and opinions regarding the ’622 Patent have been based
`on the perspective of a person of ordinary skill in the art as of December 2003.” Id.
`IV. PETITIONERS RELY ON INCORRECT CLAIM CONSTRUCTIONS
`Petitioners seek to construe three terms: (1) “instant voice messaging
`application”; (2) “client platform system”; and (3) “communication platform
`system.” Petitioners’ proposed definitions should be rejected as violating
`fundamental canons of claim construction equally applicable in this forum when
`applying the broadest reasonable interpretation. Petitioners’ reliance on incorrect
`claim constructions taints the Petition and provides an independent basis for denial.
`The Petition also injects a dispute over the proper construction of the recitation
`“wherein the instant voice messaging application includes a document handler
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`U.S. Patent 8,724,622
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`system for attaching one or more files to the instant voice message”, as recited in
`independent claim 27.
`“instant voice messaging application”
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`It is undisputed that “application” is a commonly understood word with a
`widely accepted meaning. See Cat Tech LLC v. TubeMaster, Inc., 528 F.3d 871, 884
`(Fed. Cir. 2008) (“the ordinary and customary meaning attributed to this term by
`those of ordinary skill in this art at the time of invention ‘involves little more than
`the application of the widely accepted meaning of commonly understood words.’”)
`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)).
`Uniloc’s declarant testified that a person of ordinary skill in the art would have
`understood the term “application” in the context of the ’622 patent to mean “a
`software program that performs a particular task(s) or function(s).” EX2001 ¶¶ 23-
`32. Similarly, Petitioners and their declarant acknowledged that the ordinary
`meaning of “application” is “computer software for performing a particular
`function.” Pet. at 7 (citing EX1002 at ¶ 53 [citing EX1012, the Microsoft Computer
`Dictionary defining “application as “[a] program designed to assist in the
`performance of a specific task, such as word processing, accounting, or inventory
`management.”]). It follows that in the context of the phrase the “instant voice
`messaging application” the term means “a software program that performs instant
`voice messaging tasks or functions.” EX2001 ¶¶ 23-32.
`The ’622 patent does not offer an explicit definition for the term “application”,
`much less one that deviates from the well-understood meaning of this term of art.
`Nevertheless, Petitioners seek to depart from this acknowledged meaning, without
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`6
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`IPR2017-01667
`U.S. Patent 8,724,622
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`pointing to any explicit and unambiguous lexicography within the ’622 patent
`specification. Petitioners and Dr. Lavian assert that the term “instant voice
`messaging application” could, instead, refer exclusively to hardware (i.e., no
`software whatsoever) or to a combination requiring both specific hardware and
`software. Pet. at 7-8 (offering the construction “hardware and/or software used for
`instant voice messaging”) (underlining added); see also EX1002 at ¶ 54. According
`to Petitioners, such an interpretation is justified here ostensibly because the ’622
`patent “equates the claimed ‘instant voice messaging application’ with the IVM
`client 208.” Id. Petitioners are wrong.
`The claim language itself proscribes such an unreasonable interpretation. For
`example, the two independent claims which recite the disputed term (claims 27 and
`38) expressly distinguish the claimed “client device” from the claimed “instant voice
`messaging application” by requiring both elements. EX1001 26:18-22; 27:12-16. It
`would be erroneous to conflate what the claim language separately identifies as
`distinct elements. Further, the claim language unambiguously confirms that the
`“instant voice messaging application” refers to installable software by requiring that
`it be “installed on the client device.” Id.
`Petitioners have not justified their departure from the unambiguous claim
`language by their citation to FIG. 3 of the ’622 patent specification. Cf. Pet. 7-8.
`Nothing in FIG. 3 (copied below) and its corresponding description compel a
`construction that the “instant voice messaging application” can refer to hardware
`alone or that the claimed “client” and the claimed “instant voice messaging
`application” are one and the same.
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`7
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`IPR2017-01667
`U.S. Patent 8,724,622
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`The ’622 patent describes FIG. 3 as “an exemplary illustration of the
`architecture in the IVM client 208 for enabling instant voice messaging according to
`the present invention.” EX1001 at 12:4-6. A person of ordinary skill in the art would
`have understood that the word “architecture”, in the context of the description of
`FIG. 3 and the corresponding claim limitations, refers to the structure and functions
`of the software installed and operable on the client computer. EX2001 ¶¶ 26-32.
`Indeed, the “architecture” identified in FIG. 3 is illustrated as representative blocks,
`with one of them identified as an “audio file 210” (among other blocks also
`implemented in software). This further unmistakably confirms that the blocks of
`FIG. 3 refer to various example software features, which are installed on the client
`208 for the express purpose of enabling instant voice messaging. Id.
`Petitioners do not dispute that the blocks in FIG. 3 of the ’622 patent refer to
`software functionality. Rather, Petitioners essentially argue that because FIG. 3 does
`not draw an additional software box that encompasses blocks 302 and 320 the
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`IPR2017-01667
`U.S. Patent 8,724,622
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`claimed “instant voice messaging application” must refer to the client 208 in its
`entirety. Pet. 8 (arguing that the ’622 patent “equates the claimed ‘instant voice
`messaging application’ with the IVM client 208”). As explained above, Petitioners’
`untenable conclusion cannot be reconciled with the unambiguous claim language.
`Moreover, given that it is undisputed that the claimed “client platform system” and
`a “messaging system” (as recited in independent claims 27 and 38) both refer to
`software, Petitioners’ construction should be rejected at least in that its use of the
`dual conjunctives “and/or” would unreasonably extend the scope of “instant voice
`messaging application” to refer to hardware alone.
`Petitioners cannot prove obviousness through application of an erroneous
`construction. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015
`WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys,
`Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (finding
`Petitioner’s claim construction unreasonable in light of the specification, and
`therefore, denying Petition as tainted by reliance on an incorrect claim construction).
`“client platform system”
`
`Petitioners double-down on their error (equating the “instant voice messaging
`application” to the “client device” in its entirety) by similarly interpreting the “client
`platform system” to refer to hardware. Pet. at 9 (offering the construction “hardware
`and/or software on a client for generating an instant voice message.”). This is
`unreasonable for the reasons set forth above.
`The claim language unambiguously requires that the “instant voice messaging
`application” must be “installed on the client device” and must itself include “a client
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`IPR2017-01667
`U.S. Patent 8,724,622
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`platform system for generating an instant voice message”. EX1001 26:22-25; 27:16-
`19. There can be no question, therefore, that the claimed “client platform system”
`refers to special-purpose software that is part of, and fully encompassed by, the
`installed computer program recited as the “instant voice messaging application.”
`Petitioners incorrect construction taints its challenge of the claims reciting
`these terms. See Synopsys, 669 Fed. Appx. 569 (Fed. Cir. 2016).
`“communication platform system”
`
`The term “communication platform system” requires no construction because
`it is expressly defined within the claim language itself: “a communication platform
`system maintaining connection information for each of the plurality of instant voice
`message client systems”. See, e.g., EX1001, 24:19-22 (underlining added). The
`couplet “connection information” is itself further defined as “indicating whether
`there is a current connection to each of the plurality of instant voice message client
`systems”. Id.
`Departing from this unambiguous claim language, the Petition erroneously
`construes “communication platform system” to mean a “system of the server which
`relays communications and/or tracks client connection information.” Pet. 10. As with
`the other disputed terms, Petitioners’ use of the dual conjunction “and/or” in their
`construction for this term unreasonably expands the claim scope to encompass any
`server system that simply “relays communications”.
`Petitioners’ proposed construction would render the claim limitation a nullity
`as virtually all servers relay communications. Indeed, a server may relay
`communications without performing what the claim language actually requires—i.e.,
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`10
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`IPR2017-01667
`U.S. Patent 8,724,622
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`“maintaining connection information ….” The Petition offers no cognizable
`explanation for such an unreasonably broad construction that is wholly untethered to
`the claim language. Petitioners also fail to explain why their distinct word choice
`“tracks client connection information” should be substituted for what the claim
`language actually recites. It should not.
`Petitioners’ incorrect construction taints its challenge of the claims reciting
`these terms. See Synopsys, 669 Fed. Appx. 569 (Fed. Cir. 2016).
`
`
`
`“wherein the instant voice messaging application includes a
`document handler system for attaching one or more files to the
`instant voice message” (independent claim 27)
`Independent claim 27 recites “wherein the instant voice messaging application
`includes a document handler system for attaching one or more files to the instant
`voice message.” The Petition injects a dispute as to whether this requirement is
`satisfied by only attaching files to a container used to transport a distinct voice
`message, as opposed to attaching to an instant voice message itself. The claim
`language unambiguously provides the answer—i.e., “attaching one or more files to
`the instant voice message”.
`Nothing in independent claim 27 or its dependent claims supports construing
`“instant voice message” to mean, instead, a container used only to transmit a distinct
`voice message. On the contrary, claim 29 (which depends from claim 27) confirms
`that instant voice messages are embodied as digitally-recorded files by reciting “a
`plurality of instant voice messages recorded by a user ….” In addition, dependent
`claim 32 (which depends from claim 27) further confirms that the instant voice
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`IPR2017-01667
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`message is digitally-embodied as an audio file by introducing the element “an audio
`file creation system”, which is explicitly defined as creating the audio file for the
`instant voice message.
`The term “instant voice message” recited in claim 27 must also be understood
`in light of the ’433 patent specification, which, consistent with the claim language,
`repeatedly and consistently characterizes the claimed instant voice message as being
`digitally-recorded into an audio file 210. Profoot, Inc. v. Merck & Co., 663 F. App’x
`928, 932 (Fed. Cir. 2016) (“‘When a patent ‘repeatedly and consistently’
`characterizes a claim term in a particular way, it is proper to construe the claim term
`in accordance with that characterization.’”) (quoting GPNE Corp. v. Apple Inc., 830
`F.3d 1365, 1370 (Fed. Cir. 2016)).
`This repeated and consistent characterization of the “instant voice message” is
`reaffirmed over a dozen times in the ’622 patent. See, e.g., EX1001, 12:40-41
`(“Audio file creation 312 creates an instant voice message as audio file 210.”); 8:7-
`11 (“In response to the start signal, the IVM client (softphone) 208 listens to the
`input audio device 212 and records the user’s speech into a digitized audio file 210
`(i.e., instant voice message) stored on the IVM client 208.”); 8:26-17 (“the digitized
`audio file 210 (instant voice message)”); 9:64-65 (“the recorded audio file 210
`(instant voice message)”); 10:38-39 (“the digitized audio file 210 (i.e., instant voice
`message)”); 10:45-46 (“recorded audio file (instant voice message)”); 16:22 (“the
`digitized audio file 210 (instant voice message)”); 17:23-24 (“the recorded audio file
`210 (instant voice message)”); 18:6-7 (“the recorded audio file 210 (instant voice
`message)”); 18:58 (“the digitized audio file 210 (i.e., instant voice message)”);
`
`12
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`U.S. Patent 8,724,622
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`18:64-65 (“the recorded audio file 210 (instant voice message)”); 19:46-57 (“the
`digitized audio file 210 (i.e., instant voice message)”); 19:53 (“the digitized audio
`file 210 (i.e., instant voice message)”); etc.; see also EX2001 ¶ 70.
`In view of the unambiguous intrinsic evidence, including the claim language
`and the corresponding description, the recitation “attaching one or more files to the
`instant voice message” requires attaching one or more files to the audio file recording
`voice data.
`
`V.
`
`PETITIONERS FAIL TO PROVE UNPATENTABILITY OF THE
`CHALLENGED CLAIMS
`As shown in the table below, Petitioners have filed two inter partes review
`petitions that collectively challenge the patentability of claims 3, 6-8, 10, 11, 13, 14-
`23, 27-35, 38, and 39 under 35 U.S.C. § 103(a) over the following grounds:
`
`Ground
`1
`
`2
`3
`
`
`
`Claims
`3, 6-8, 10, 11, 13, 18-21,
`23, 27, 32-35, 38
`14-17, 28-31
`22, 39
`
`Reference(s)
`Zydney3 and Shinder4
`
`Zydney, Shinder, and Clark5
`Zydney, Shinder, Appelman6
`
`Petitioners have the burden of proof to establish they are entitled to their
`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
`
`3 EX1003, PCT Patent Application No. PCT/US00/21555 (“Zydney”).
`4 EX1014, Excerpts from Debra Littlejohn Shinder, Computer Networking
`Essentials (“Shinder”).
`5 EX1007, U.S. Patent No. 6,725,228 (“Clark”).
`6 EX1008, U.S. Patent No. 6,750,881 (“Appelman”).
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`IPR2017-01667
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`of the challenged patent claims would have been obvious in view of the art cited in
`the Petition. Petitioners “must specify where each element of the claim is found in
`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`The Petition does not meet this burden.
`A patent is obvious “if the differences between the subject matter sought to
`be patented 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.” 35 U.S.C. § 103(a). An obviousness
`determination must be based on four factual inquiries: (1) the scope and content of
`the prior art; (2) the differences between the claims and the prior art; (3) the level of
`ordinary skill in the art; and (4) objective indicia of non-obviousness. KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co. of Kan.
`City, 383 U.S. 1, 17-18 (1966)).
`If a single limitation of a claim is absent from the prior art, the claim cannot
`be considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim.”)
`(citing In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d
`1531, 1534 (Fed. Cir. 1993) (reversing obviousness rejection where prior art did not
`teach or suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed
`Techs. LLC, Case No. IPR2012-00001, slip op. at 15 (P.T.A.B. Jan. 9, 2013)
`(refusing to institute an inter partes review under 35 U.S.C. § 103 where prior art
`did not disclose all claim limitations).
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`IPR2017-01667
`U.S. Patent 8,724,622
`Zydney does not render obvious “wherein the instant voice messaging
`application includes a document handler system for attaching one or
`more files to the instant voice message” (claim 27)
`As explained above in addressing claim construction, to prevail on its
`patentability challenge, Petitioners have the burden to prove that Zydney (the sole
`reference relied upon for this limitation) discloses or suggests an “instant voice
`messaging application [that] includes a document handler system for attaching one
`or more files to the instant voice message” itself (i.e., to the audio file recording
`voice data). Petitioners failed to meet this burden.
`The Petition points to disclosure in Zydney which allegedly teaches attaching
`additional files (other than the digitally-recorded voice message) to a so-called
`“voice container” used to transport the message. Pet. 54-55. That teaching is
`inapposite because the claim language requires that the one or more files be attached
`to the instant voice message itself, not to a distinct container for that message.
`EX2001 ¶¶ 69-75.
`It is undisputed the “voice container” of Zydney encapsulates and transports
`what Zydney refers to as the “voice message.” Id. ¶¶ ¶¶ 44-47, 67-72. Zydney
`describes its system as including a “central server to send, receive and store
`messages using voice containers.” EX1003, 2:2-3. Zydney also provides that “the
`message is first acquired, compressed and then stored in a voice container 26 which
`is then sent to its destination(s).” id. at 11:2-3. Zydney explains that using a voice
`container that is distinct from the voice message enables accommodation of various
`voice data “formats” and “voice compression formats”. Id. at 10-11. Specifically,
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`IPR2017-01667
`U.S. Patent 8,724,622
`The server is adapted to recognize[] the voice format of voice data
`contained in the voice containers, this information may be
`communicated by the agent prior to a voice container transmission,
`included in the voice container or provided to the server from the
`agent when polled by the server.
`Id. at 12:13-17.
`Zydney does not attach “one or more files” to the message itself. At most,
`Zydney attaches “media” to only the encapsulating package, i.e., the voice
`container.7 This too is undisputed. Presumably that is why the Petition points
`exclusively to the container in an attempt to fit a square peg into a round hole.
`Specifically, Petitioners cite the following passage from Zydney for the proposition
`of “attaching other media to the voice containers” (as opposed to an audio file):
`
`Another important application of the present invention . . . is
`attaching other media to the voice containers to provide a richer
`communications environment. For example, voice containers may
`have digitized greeting cards appended to them to present a
`personalized greeting. [¶] The voice container has the ability to have
`other data types attached to it and thus be transported to the
`recipient.
`Pet. 54 (underlining altered) (citing Zydney, EX1003, 14:17-22).
`Notably, the same Petitioners presented virtually identical Zydney-based
`arguments (in related-matter IPR2017-01257) when addressing similar claim
`language recited in U.S. Patent 8,199,747. In its decision denying institution, the
`Board observed that Zydney discloses “attaching additional files (e.g., a multimedia
`file) to a voice container, rather than to an audio file.” Facebook et al. v. Uniloc
`
`7 See Google LLC v. Uniloc, IPR2017-02080 (Institution Decision, Paper 10) (PTAB
`March 19, 2018) “(Zydney discloses that the voice container also has the ability to
`have other data types attached to it. Ex. 1005, 19:6–7.”).
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`IPR2017-01667
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`
`Luxemburg S.A., IPR2017-01257 (Paper 8) at 18 (PTAB Dec. 4, 2017) (underlining
`added).8 The Petition here raises no cognizable evidence that disputes the Board’s
`observation.
`Evidently recognizing the deficiency of attaching additional files to a
`container, as opposed to an instant voice message itself, Petitioner erroneously
`suggests Zydney’s voice container and voice message are one and the same. Indeed,
`according to Petitioner, Zyndey “calls” voice messages by the name of voice
`containers.9 Petitioners are wrong.
`Even a cursory review of the refence confirms that Zydney (not surprisingly)
`refers to its “voice messages” as “voice messages” and expressly distinguishes
`“voice containers” from the “voice messages” contained therein. EX2001 ¶¶ 44-47.
`For example, as Mr. Easttom observed, Zydney teaches a voice message is stored in
`a distinct container only after the voice message is generated and compressed: “the
`[voice] message is first acquired, compressed and then stored in a voice container
`
`8 The Board also at least implicitly called into question whether Zydney teaches its
`“voice data” is organized as an audio file. See id. (“Even if we regard Zydney’s voice
`data as being an audio file ….”) (underlining added). Here, setting aside the
`undisputed fact that Zydney does not disclose or suggest attaching one or more files
`to an audio file, Petitioner makes no attempt to prove that the “voice data” in Zydney
`is even organized as an audio file.
`9 Pet. 11. Notably, the only citation Petitioner offers as alleged support for conflating
`Zyndey’s “voice container” with its distinct “voice message” is that Zydney’s system
`“allows a software agent … to send, receive and store messages using voice
`containers.” Id. (citing EX1003, 2:2-3). However, that statement from Zydney
`(consistent with the remainder of the specification) in fact distinguishes the container
`from the message. One is used to send the other, just as a