UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-01667
`PATENT 8,724,622
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`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`
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`
`
`

`

`
`I.
`Introduction ...................................................................................................... 1
`Related Matters of the ’622 Patent .................................................................. 1
`II.
`III. The ’622 Patent ................................................................................................ 2
`Effective Filing Date of the ’622 Patent ............................................... 2
`
`Overview of the ’622 Patent .................................................................. 2
`
`IV. PERSON OF ORDINARY SKILL IN THE ART .......................................... 5
`IV. PETITIONERS RELY ON INCORRECT CLAIM
`CONSTRUCTIONS ........................................................................................ 6
`“instant voice messaging application” .................................................. 7
`
`“client platform system” ...................................................................... 11
`“communication platform system” ..................................................... 14
`
`V. NO REASONABLE LIKELIHOOD THAT AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE ............... 16
`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) ....................................................... 18
`Zydney does not render obvious “wherein the instant
`voice message includes an object field” (independent claim 3) ......... 22
`No prima facie obviousness for “wherein the instant
`voice messaging application includes a message
`database storing the instant voice message, wherein
`the instant voice message is represented by a database
`record including a unique identifier” (dependent claims
`14-17 and 28-31) ................................................................................. 27
`1.
`Zydney and Clark both lack a database record in
`a message database, where that database record
`includes both a unique identifier and an instant
`voice message ........................................................................... 27
`There could not have been any motivation to
`combine Zydney with Clark to devise a database
` record that included a unique identifier ................................... 30
`
`2.
`
`
`
`
`
`
`
`IPR2017-01667
`U.S. Patent 8,724,622
`
`Tables of Contents
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`ii
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`

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`IPR2017-01667
`U.S. Patent 8,724,622
`No prima facie obviousness because Petitioners’
`proposed combination of Zydney with Clark
`results in messages being deleted once they are
`sent to the server ....................................................................... 32
` No prima facie obviousness for “a display [at the client
`device] displaying a list of one or more potential
`recipients” (claims 38-39) ................................................................... 35
`INTER PARTES REVIEW PROCEEDINGS ARE
`UNCONSTITUTIONAL. ............................................................................. 42
`VII. CONCLUSION .............................................................................................. 42
`
`
`
`VI.
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`3.
`
`
`
`iii
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`
`
`
`Exhibit No.
`2001
`2002
`
`List of Exhibits
`
`
`Description
`Declaration of William Easttom II
`Microsoft TechNet article showing Microsoft IIS 6.0
`enabled compression over HTTP
`
`iv
`
`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`
`I.
`
`Introduction
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`S.A. (“Patent Owner”) submits this Preliminary 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
`The ’622 patent was the subject of two requests for inter partes review
`
`(IPR2017-00223 and IPR2017-00224) filed by Apple Inc. on November 14, 2016,
`
`which were denied by the Board on May 25, 2017. Although it is understood that
`
`Facebook, Inc. and WhatsApp, Inc. collaborated in preparing the present Petition
`
`and are both part of a joint-defense group that includes Apple Inc., the present
`
`Petitioners claim to have not participated in the preparation of those denied petitions
`
`filed by another one of their joint-defense group members. Pet. 1.
`
`Concurrent with the filing of this Petition, the 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
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`
`III. The ’622 Patent
` Effective Filing Date of the ’622 Patent
`
`The ’622 patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`
`MESSAGING.” Ex. 1001. 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 December 18, 2003. The ’622
`
`patent issued on May 13, 2014. Petitioners do not contest that the ’622 patent is at
`
`least entitled to an effective filing date of December 18, 2003.
`
` Overview of the ’622 Patent
`
`The
`
`’622 patent
`
`recognized
`
`that
`
`conventional
`
`circuit-switched
`
`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.” Ex. 1001, 1:29-34. Ex.
`
`2001 ¶18.
`
`The ’622 patent expressly distinguishes circuit-switched networks from
`
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`
`2
`
`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
`
`also known as IP telephony or Internet telephony.”1 Ex. 1001., 1:35-36. Ex. 2001
`
`¶19.Because legacy 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. Ex. 1001., 2:8-18. Ex. 2001 ¶19.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.
`
`Ex. 1001., 2:8-21. Ex. 2001 ¶19.
`
`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
`
`
`1 Consistent with the ’622 patent specification, the USPTO has also recognized there
`are significant differences between circuit-switched and packet-switched networks
`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.
`
`3
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`analog to leaving an instant voice message over a packet-switched network. Ex.
`
`1001., 2:22-53. Ex. 2001 ¶20. Rather, “conventionally, leaving a voice message
`
`involves dialing the recipient’s telephone number (often without knowing whether
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`the recipient will answer), waiting for the connection to be established, speaking to
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`an operator or navigating through a menu of options, listening to a greeting message,
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`and recording the message for later pickup by the recipient. In that message, the user
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`must typically identify himself or herself in order for the recipient to return the call.”
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`Ex. 1001., 2:26-33. Ex. 2001 ¶20.
`
`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
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`messaging over an IP network.” Ex. 1001., 2:47-51. Ex. 2001 ¶21. 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). Ex. 1001., 12:13-14. Ex. 2001 ¶21.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-
`
`4
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`switched network (e.g., network 204) “to the local IVM server 202.” Ex. 1001., 8:8-
`
`11 and 8:21-22. Ex. 2001 ¶21.
`
`The Petition challenges two independent (claims 3, 27, and 38) and seventeen
`
`dependent claims (6-8, 10, 11, 13, 14-23, 28-35, and 39). For the convenience of the
`
`Board, independent claim 3 is 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
`wherein the instant voice message includes an object field
`including a digitized audio file.
`IV. PERSON OF ORDINARY SKILL IN THE ART
`Petitioners allege through its 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
`
`5
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`relating to network communication systems (or equivalent degree or experience).”
`
`Pet. 6 (citing Ex. 1002 ¶¶13-15). To 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. Mr. Easttom opines that a POSITA is someone
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`who would have possessed on the priority date a bachelor’s degree in electrical
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`engineering or computer science (or equivalent degree/experience) with at least two
`
`years of experience in computer programming and software development, including
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`the development of software for communication with other computers over a
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`network. Ex. 2001 ¶21. 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.
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`IV. PETITIONERS RELY ON INCORRECT CLAIM CONSTRUCTIONS
`Petitioner seeks 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
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`fundamental canons of claim construction equally applicable in this forum when
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`applying the broadest reasonable interpretation. Petitioners’ reliance on incorrect
`
`claim constructions taints the entire Petition and provides an independent basis for
`
`denial at the preliminary stage.
`
`6
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`
`
`
`“instant voice messaging application”
`
`A POSITA would have understood the term “application” in the context of
`
`the ’622 patent to mean a software program that performs a particular task or
`
`function(s). Ex. 2001 ¶23. Thus, a POSITA would have understood that whole
`
`phrase “instant voice messaging application” means “a software program that
`
`performs instant voice messaging tasks or functions. Ex. 2001 ¶23, 32.
`
`The Petitioners and
`
`their expert, Dr. Lavian, acknowledge
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`that a
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`POSITA would understand the term “application” means “computer software
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`for performing a particular function.” Pet. at 7 (citing Ex. 1002 at ¶ 53 [citing
`
`Ex. 1012, 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.”]). Ex. 2001 ¶24. However, the
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`Petitioners and Dr. Lavian then assert that, based on the written description of
`
`the ’622 patent, the term “instant voice messaging application” should not be
`
`limited to software. Pet. at 7-8; see also Ex. 1002 at ¶ 54. Petitioners’ sole motivation
`
`for taking such an expansive view is to argue that the Zydney reference discloses
`
`certain claim features.
`
`As explained by Mr. Easttom, a POSITA reading the’622 patent would NOT
`
`deviate from the Petitioners’ acknowledged and understood meaning. Ex. 2001 ¶23-
`
`32.
`
`7
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`The Petitioners assert that the ’622 patent discloses that functions associated
`
`with instant voice messaging are performed by the IVM client 208, which is a
`
`“general-purpose programmable computer.” Pet. at 7 (citing Ex. 1001 at 12:11-14).
`
`Ex. 2001 ¶26. The Petitioners also point to FIG. 3, reproduced below, which is “an
`
`exemplary illustration of the architecture in the IVM client 208 for enabling instant
`
`voice messaging according to the present invention.” Ex. 1001 at 12:4-6. A POSITA
`
`would have understood that “architecture” in the context of FIG. 3, means the
`
`structure and functions of the software in the client computer. Ex. 2001 ¶26
`
`FIG. 3 in the ’622 Patent: Client Architecture
`
`Referring to FIG. 3, the IVM client 208, which is a device that includes
`
`software running on a processor, “comprises a client platform 302 for generating
`
`
`
`8
`
`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`an instant voice message and a messaging system 320 for messaging between the
`
`IVM client 208 and the IVM server 202 for enabling instant voice messaging.” Ex.
`
`1001 at 12:7-10 (emphasis added). Ex. 2001 ¶27. The Petitioners appear to contend
`
`that because the “written description does not identify any particular software
`
`program capable of performing all of the functions associated with the ‘instant voice
`
`messaging application’ recited in the claims,” and because the “client” is a computer
`
`system that the “application” may be hardware. Pet. at 7. This argument is incorrect.
`
`Ex. 2001 ¶¶27-32.
`
`A patent need not include every detail of an invention if the descriptions are
`
`adequate for a POSITA to understand it. FIG. 3 is such a case because it does not
`
`explicitly show a labeled box for the “application” that comprises a “client platform
`
`302” and a “messaging system 320,” but a POSITA would have understood that,
`
`despite the lack of an explicit application label in FIG. 3, the application as claimed
`
`is an implied box around client platform 302 and messaging system 320. Ex. 2001
`
`¶28. Furthermore, the application is software (and not hardware) because it is
`
`comprised of two software blocks, the client platform 302 and the messaging system
`
`320. Ex. 2001 ¶28.
`
`First, the ’622 patent teaches that “[the] messaging system and the client
`
`engine 304 communicate via standard
`
`inter-process communication.” Ex.
`
`1001 at 12:21-23. A POSITA would have understood the term “inter-process
`
`9
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`communication” as a term of art that refers to different parts of a software
`
`application, known as “processes,” often executing simultaneously and
`
`communicating information with each other. Thus, the messaging system and the
`
`client platform must be software. Ex. 2001 ¶29.
`
`Second, referring to FIG. 3, the term CLIENT ENGINE 304 informs a
`
`POSITA that CLIENT ENGINE is software because the term “engine” is a
`
`well-known term of art to describe software. Ex. 2001 ¶30. Each of the blocks in
`
`client platform 302—Document Handler 306, Audio File 210, Audio File Creation
`
`312, File Manager 308, and Msg Database 310—inform a POSITA that they are
`
`software because their functions are clearly implemented in software in view of the
`
`written description. The document handler 306 “oversees the retrieving, sending,
`
`receiving and storing of one or more documents (or files) attached to instant voice
`
`messages ...” Ex. 1001 at 12:26-28. Ex. 2001 ¶30. The file manager and database
`
`“accesses a message database,” and “services requests from the user to record,
`
`delete, or retrieve messages to/from the message database 310.” Ex. 1001 at 12:34-
`
`35 and 12:38-40. “Audio file creation 312 creates an instant voice message as audio
`
`file 210, and is responsible for ... storing the input speech into audio file 210.”
`
`Id. at 12:40-44. The ’622 patent includes similar descriptions for the signal
`
`processing, encryption/decryption, and compression/decompression functions of the
`
`client engine 304. Id. at 12:44-50. Ex. 2001 ¶30.
`
`10
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`
`
`
`Third, the Petitioners do not point to any support in the ’622 patent that
`
`discloses hardware that performs any function of the messaging system or the client
`
`platform. Ex. 2001 ¶31.
`
`Overall, for at least the reasons presented in the section above and in the
`
`totality of the ’622 patent, the term “instant voice message application” means “a
`
`software program that performs instant voice messaging tasks and functions.” Ex.
`
`2001 ¶32.
`
`In the absence of “persuasive evidence” that a term or word has “a specially
`
`defined meaning in the field of art” encompassed by the patent, “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.’” Cat Tech LLC v. TubeMaster, Inc., 528
`
`F.3d 871, 884 (Fed. Cir. 2008) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314
`
`(Fed. Cir. 2005)).
`
`
`
`“client platform system”
`
`Petitioners also incorrectly propose to construe “client platform system” as
`
`“hardware and/or software on a client for generating an instant voice message.” Pet.
`
`at 9. Again, Petitioners rely upon its incorrect construction to argue that the claimed
`
`11
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`client platform system is disclosed by Zydney. However, a POSITA would have
`
`realized that this construction cannot be correct. Ex. 2001 ¶33.
`
`First, just as the Petitioners unreasonably include “hardware” in the
`
`construction of “application,” they unreasonably include “hardware” in their
`
`proposed construction of “client platform system.” As explained above concerning
`
`the construction of “application,” the “client platform” is described in FIG. 3 and is
`
`understood to be software. For the same reasons that an “application” is software, a
`
`“client platform,” and thus, “client platform system,” is also software. Ex. 2001 ¶34.
`
`Second, the Petitioners specialize their proposed construction of “client
`
`platform system” to the function “for generating an instant voice message.” This
`
`construction conflicts with the specification that defines the “client platform
`
`system”:
`
`“the instant voice message client 208 comprises a client
`platform 302 for generating an instant voice message. . ..
`The client platform 302 comprises a client engine 304,
`which controls other components, namely the document
`handler 306, file manager 308, audio file creation 312,
`signal processing 314, encryption/decryption 316, and
`compression/decompression 318.”
`
`Ex. 1001, 12:18-21 (emphasis added). Ex. 2001 ¶34. Fig. 3 of the ’622 Patent
`
`illustrates:
`
`12
`
`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`
`
`
`’622 Patent, Fig. 3 (red box added). Thus, Fig. 3 illustrates that the instant voice
`
`messaging client 208 includes a client platform 302 for generating an instant voice
`
`message. The client platform 302 includes a client engine 304 which controls other
`
`components, including the document handler 306 and the file manager 308 and
`
`components which handle audio file creation 312, signal processing 314, encryption
`
`and decryption 316, and compression and decompression 318.
`
`The “client platform system” is not limited to generating an instant voice
`
`message. Ex. 2001 ¶36. The Petitioners’ inclusion of the recited further limitation
`
`of “for generating an instant voice message” unnecessarily narrows the construction
`
`13
`
`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`of the more general term “client platform system” by requiring the further “for
`
`generating ...” limitation recited in the claim. Ex. 2001 ¶34.
`
`For at least the reasons presented above, “client platform system” means
`
`“software on a client,” and the Petitioners’ construction conflicts how a POSITA
`
`would have understood this term. Ex. 2001 ¶37.
`
`The Board
`
`therefore should
`
`reject Petitioners’
`
`incorrect proposed
`
`construction.
`
`
`
` “communication platform system”
`
`Petitioners’ argument that “communication platform system” should be
`
`construed to mean a “system of the server which relays communications and/or tracks
`
`client connection information” should also be rejected. See Pet. at 10. Petitioners’
`
`construction fails because the claims of the ’622 Patent themselves define
`
`“communication platform system”:
`
`connection
`system maintaining
`communication platform
`“a
`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”
`
`
`
`14
`
`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`e.g. Ex. 1001, 24:19-22 (emphasis added). Additionally, Fig. 8 of the ’622 Patent
`
`illustrates:
`
`
`
`’622 Patent, Fig. 8 (red box added). Therefore, the claims of the ‘622 Patent define
`
`the “communications platform system” to be required to perform the tasks of
`
`“maintaining connection information for each of the plurality of instant voice
`
`message client systems” and “indicating whether there is a current connection to
`
`each of the plurality of instant voice message client systems”. Ex. 2001 ¶39.
`
`15
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`For at least the reasons presented above, “client platform system” means “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.” Ex. 2001
`
`¶40.
`
`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`This petition challenges 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)
`Zydney2 and Shinder3
`
`Zydney, Shinder, and Clark4
`Zydney, Shinder, Appelman5
`
`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, Petitioners must demonstrate a reasonable likelihood that at least
`
`one 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
`
`
`2 Ex. 1003, PCT Patent Application No. PCT/US00/21555 (“Zydney”).
`3 Ex. 1014, Excerpts from Debra Littlejohn Shinder, Computer Networking
`Essentials (“Shinder”).
`4 Ex. 1007, U.S. Patent No. 6,725,228 (“Clark”).
`5 Ex. 1008, U.S. Patent No. 6,750,881 (“Appelman”).
`
`16
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`IPR2017-01667
`U.S. Patent 8,724,622
`in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`The Petition should be denied as failing to meet this burden.6
`
`A patent is obvious “if the differences between the subject matter sought to
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`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
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`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
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`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.
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`City, 383 U.S. 1, 17-18 (1966)).
`
`If a single limitation of a claim is absent from the prior art, the claim cannot
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`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
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`teach or suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed
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`
`6 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response (and with the support of its own expert) if an inter partes review is
`instituted.
`
`17
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`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
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`did not disclose all claim limitations).
`
` 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)
`
`The Petition relies solely on Zydney for the limitation “wherein the instant
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`voice messaging application includes a document handler system for attaching one
`
`or more files to the instant voice message” (recited in independent claim 27 and its
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`challenged dependent claims). The Petition should be denied because Zydney does
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`not disclose or suggest this limitation.
`
`The Petition points to a disclosure in Zydney that allegedly teaches attaching
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`additional files (other than the digitally-recorded voice message) to a voice
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`container. Pet. 54-55. That teaching is inapposite because the claim language
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`requires that the one or more files be attached to the instant voice message itself. Ex.
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`2001 ¶70.The ’622 patent repeatedly and consistently equates the “instant voice
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`message” to the recorded audio file. Ex. 2001 ¶70. Ex. 1001, 8:7-11 (“In response
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`to the start signal, the IVM client (softphone) 2008 listens to the input audio device
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`212 and records the user’s speech into a digitized audio file 210 (i.e., instant voice
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`message) stored on the IVM client 208.”); see also 8:16-17; 9:63-66; 10:36-39;
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`10:44-47; 12:40-41; 16:14-17; 16:20-23; 17:22-26; 18:6-9; 18:56-58; 18:62-66;
`
`18
`
`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`
`19:45-48; 20:48-51.
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`Evidently recognizing the deficiency of attaching additional files to a
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`container, as opposed to the instant voice message itself, Petitioners erroneously
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`suggest Zydney’s voice container and voice message are one and the same. Indeed,
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`according to Petitioners, Zyndey “calls” voice messages by the name of voice
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`containers.7 Even a cursory review of the refence, however, confirms that Zydney
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`(not surprisingly) refers to its “voice messages” as “voice messages” and expressly
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`distinguishes “voice containers” from the “voice messages” contained therein. Ex.
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`2001 ¶71. For example, Zydney teaches a voice message is stored in a distinct
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`container only after the voice message is generated and compressed: “the [voice]
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`message is first acquired, compressed and then stored in a voice container 26 ….”
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`Ex. 2001 ¶71. Moreover, Zydney uses reference number 26 to refer to the containers
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`(which are used only for transmission); and Zydney refers, instead, to reference
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`number 30 when referring to the voice messages. Ex. 1003, 11:1-6. Ex. 2001 ¶71.
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`At least the above disclosures confirm that Zydney’s voice container and
`
`
`7 Pet. 11. Notably, the only citation Petitioners offer 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 an envelope may be used to
`mail a folded sheet of paper, though the envelope and the paper contained therein
`are readily distinguishable from one another.
`
`19
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`voice message are not one and the same. Consequently, Petitioners’ exclusive
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`reliance on alleged teachings in Zydney directed to attaching one or more files to
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`Zydney’s voice container does not render obvious the distinguishable limitation “a
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`document handler system for attaching one or more files to the instant voice
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`message” (as recited in independent claim 27).
`
`Yet another independent deficiency of the Petition arises from the specific
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`limitations directed to what exactly must effect the attaching: “wherein the instant
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`voice messaging application includes a document handler system for attaching one
`
`or more files to the instant voice message.” Petitioners concede that “Zydney does
`
`not appear to explicitly describe which part of the software on the client system
`
`attaches files to voice containers.” Pet. 55.
`
`While Petitioners speculate through its declarant, outside the four corners of
`
`the reference, that Zydney’s software agent “could also handle attachment of files to
`
`the voice container,”8 the Federal Circuit has instructed that “legal determinations
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`of obviousness, as with such determinations generally, should be based on evidence
`
`rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464
`
`F.3d 1286, 1290 (Fed. Cir. 2006); see also 37 C.F.R. § 42.104(b)(4) (requiring
`
`petitions to “specify where each element of the claim is found in the prior art patents
`
`or printed publications relied upon”) (emphasis added); In re Sang Su Lee, 277 F.3d
`
`
`8 Pet. 55.
`
`20
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`

`

`IPR2017-01667
`U.S. Patent 8,724,622
`1338, 1345 (Fed. Cir. 2002); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362,
`
`1365-66 (Fed. Cir. 2014) (finding the P.T.A.B. correctly rejected conclusory
`
`assertions of what wo