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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`IPR2017-01668
`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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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`FACEBOOK, INC., WHATSAPP INC.,
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`
`
`IPR2017-01668
`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
`“communication platform system”
`PETITIONERS DO NOT MEET THEIR BURDEN TO PROVE
`OBVIOSNESS
` No prima facie obviousness for dependent Claims 4, 5 and 12
`1.
`Zydney does not render obvious “wherein the instant
`voice message includes an object field including a
`digitized audio file”
`Zydney teaches away from “wherein the instant voice
`message includes an action field identifying one of a
`predetermined set of permitted actions requested by
`the user” (claims 4 and 5)
`Zydney does not render obvious “wherein the messaging
`system receives connection object messages from the
`plurality of instant voice message client systems, wherein
`each of the connection object messages includes data
`representing a state of a logical connection with a given one
`of the plurality of instant voice message client systems”
`(claims 24-26)
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`V.
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`2.
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`IPR2017-01668
`U.S. Patent 8,724,622
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`Table of Contents
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`1
`1
`1
`1
`2
`4
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`5
`6
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`7
`8
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`9
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`18
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`20
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`ii
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`1.
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`2.
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`IPR2017-01668
`U.S. Patent 8,724,622
`Zydney expressly teaches away from use of
`“connection objects” as defined in the ’622 patent
`No motivation to combine Zydney with Hethmon
`because Zyndey’s transport mechanism would not have
`worked with HTTP at that time
`VI. CONCLUSION
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`
`20
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`21
`23
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`Patent Owner’s List of Exhibits
`
`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.
`
`iii
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`IPR2017-01668
`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
`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 both denied by the Board on May 25, 2017. The ’622 patent was also
`the subject of an inter partes review (IPR2017-2080, based primarily on the same
`Zydney reference asserted here), which the Board denied on March 19, 2018.
`Concurrent with the filing of this Petition, the Petitioner filed a second petition
`for inter partes review to address different claims of the ’622 patent. More
`specifically, the present Petition addresses claims 4, 5, 12, and 24-26, whereas the
`other petition (IPR2017-01667) addresses claims 3, 6-8, 10, 11, 13, 14-23, 27-35,
`38, and 39.
`The Petition provides what appears to be an accurate summary of pending
`litigation related to the ’622 patent. Pet. 1-3.
`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
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`1
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`IPR2017-01668
`U.S. Patent 8,724,622
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`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.
`EX2001 ¶18.
`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.”1 EX1001, 1:35-36. EX2001 ¶19.
`
`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-
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`2
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`IPR2017-01668
`U.S. Patent 8,724,622
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`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. EX1001, 2:8-18. EX2001 ¶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.
`EX1001, 2:8-21. EX2001 ¶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
`analog to leaving an instant voice message over a packet-switched network.
`EX1001, 2:22-53. EX2001 ¶20. 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.”
`EX1001, 2:26-33. EX2001 ¶20.
`
`
`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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`3
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`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.” EX1001, 2:47-51. EX2001 ¶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). EX1001, 12:13-14. EX2001 ¶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-switched
`network (e.g., network 204) “to the local IVM server 202.” EX1001, 8:8-11 and
`8:21-22. EX2001 ¶21.
`The Petition challenges one independent (claim 24) and five dependent claims
`(4, 5, 12, 25, and 26).
`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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`4
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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
`Petitioner seeks to construe two terms: (1) “connection object messages”; and
`(2) “communication platform system.” Patent Owner agrees with Petitioners’
`proposed construction of “connection object messages”. However, Petitioners’
`proposed definition of “communication platform system” should be rejected as
`violating fundamental canons of claim construction equally applicable in this forum
`when applying the broadest reasonable interpretation. Petitioner’s reliance on
`incorrect claim constructions taints the entire Petition and provides an independent
`basis for denial at the preliminary stage.
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`5
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`U.S. Patent 8,724,622
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`“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 8. Petitioners’
`construction fails because the claims themselves of the ’622 Patent defines
`“communication platform system”:
`
`“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”
`e.g. EX1001, 24:19-22 (emphasis added). EX2001 ¶23. Additionally, Fig. 8 of the
`’622 Patent illustrates:
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`6
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`IPR2017-01668
`U.S. Patent 8,724,622
`’622 Patent, Fig. 8 (red box added). Therefore, the claims of the ‘622 Patent define
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`the “communications platform system” to be required to perform the tasks of
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`“maintaining connection information for each of the plurality of instant voice
`
`message client systems” and “indicating whether there is a current connection to
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`each of the plurality of instant voice message client systems.” EX2001 ¶24.
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`V.
`
`PETITIONERS DO NOT MEET THEIR BURDEN TO PROVE
`OBVIOSNESS
`The instant petition presents the following obviousness grounds under 35
`U.S.C. § 103(a):
`
`Ground
`1
`2
`
`Claims
`4, 5, 24, 25, 26
`12
`
`Reference(s)
`Zydney2, Shinder3, Hethmon4
`Zydney, Shinder, and two other references
`
`Petitioner has 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
`of the challenged patent claims would have been obvious in view of the art cited in
`the Petition. Petitioner “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 should be denied as failing to meet this burden.
`
`
`2 EX1003, PCT Patent Application No. PCT/US00/21555 (“Zydney”).
`3 EX1014, Excerpts from Debra Littlejohn Shinder, Computer Networking
`Essentials (“Shinder”).
`4 EX1115, Paul S. Hethmon, Illustrated Guide to HTTP (“Hethmon”).
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`7
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`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).
` No prima facie obviousness for dependent Claims 4, 5 and 12
`Claims 4, 5 and 12 all ultimately depend from claim 3 (and claim 5
`additionally depends from claim 4). Accordingly, dependent claims 4, 5 and 12 are
`all patentable over the proposed combinations at least by virtue of their dependence
`on a nonobvious independent claim, as explained in Patent Owner’s Preliminary
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`8
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`Response filed in IPR2017-01667. In re Fine, 837 F.2d 1071 (Fed. Cir. 1988)
`(“Dependent claims are nonobvious under section 103 if the independent claims
`from which they depend are nonobvious.”). For the convenience of the Board, the
`deficiencies of IPR2017-01667 with respect to independent claim 3 are repeated
`below. Following that analysis addressing independent claim 3, Patent Owner
`identifies additional deficiencies of the present Petition with respect to claim
`language recited in dependent claims 4 and 5.
`
`1.
`
`Zydney does not render obvious “wherein the instant voice
`message includes an object field including a digitized audio file”
`In addressing independent claim 3, the Petition repeats the same error of
`IPR2017-01667 by primarily relying on Zydney’s voice container for the limitation
`“wherein the instant voice message includes an object field including a digitized
`audio file.” Pet. 34-46. The claim language, however, does not refer to a container
`for the “instant voice message” but rather refers to specific structure of the “instant
`voice message” itself.5 As explained in Patent Owner’s Response in IPR2017-01667
`(addressing independent claim 3), this deficiency is fatal to the Petition.
`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
`
`
`5 The dispute here does not turn on whether the instant voice message is correctly
`characterized as audio data only (particularly given that the claim language refers to
`“a digitized audio file” and therefore connotes structure beyond just audio data in
`the abstract). Rather, the deficiency of the Petition arises from the failure to identify
`any element in Zydney (or any other cited reference) that renders obviousness each
`and every structural limitation for the claimed “instant voice message”, as recited in
`independent claim 3 and hence its challenged dependent claims.
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`9
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`IPR2017-01668
`U.S. Patent 8,724,622
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`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,
`
`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.
`that Zydney expressly distinguishes “voice
`Both declarant’s agreed
`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
`26 ….” Id. ¶46 (quoting EX1003, 10:20-11:3). Moreover, Zydney uses reference
`number 26 to refer to the containers (which are used only for transmission); and
`Zydney refers, instead, to reference number 30 when referring to the voice messages.
`Id. ¶ 71 (citing EX1003, 11:1-6).
`Petitioners’ declarant, Dr. Lavian, offered similar testimony undermining
`Petitioners’ attempt to equate Zydney’s voice container with its expressly
`distinguished voice message. For example, Dr. Lavian testified that Zydney’s voice
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`10
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`IPR2017-01668
`U.S. Patent 8,724,622
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`message is digitally recorded into a file that is compressed and stored in temporary
`memory, and only thereafter is the voice message placed within a distinct voice
`container:
`
`The sender also “digitally records messages for one or more
`recipients using a microphone-equipped device and the software
`agent. 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., 16:1-4; see also id., 20:11-14, 21:11-16 (describing
`“the recording of one or more voice packet messages on a personal
`computer” as “voice files [that] can be played and recorded using
`voice container enabled devices.”).) The voice message is placed
`into a “voice container,” which can be transmitted to the destination.
`(Id., 10:20-11:3.)
`EX1002, ¶ 74 (underlining added). Thus, both testifying experts agree that the
`Zydney application discloses the digitally-recorded voice message and the voice
`container are distinct and distinguishable elements.
`The record evidence confirms, therefore, that Zydney’s voice container and
`voice message are not one and the same. Consequently, Petitioners’ focus on alleged
`teachings in Zydney directed to the voice container does not render obvious the
`recitation “wherein the instant voice message includes an object field including a
`digitized audio file,” which expressly refers to the structure of the “instant voice
`message” itself. Parsing this claim language into constitutes parts reveals further
`deficiencies in the Petition.
`Petitioners concede that “Zydney does not use the word ‘field’ in relation to
`storage of voice data ….” Pet. 35. Notwithstanding this conceded deficiency,
`Petitioners speculate through its declarant, outside the four corners of the reference,
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`11
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`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. (citation omitted). Petitioners’
`conclusory speculation should be rejected for each one of the numerous reasons that
`follow.
`First, Petitioners’ ipse dixit statement concerning purported, yet undisclosed,
`knowledge of a person of ordinary skill in the art runs afoul of the admonishment
`against basing legal determinations of obviousness on “mere speculation or
`conjecture.” Alza Corp., 464 F.3d at 1290 (Fed. Cir. 2006); see also 37 C.F.R. §
`42.104(b)(4); In re Sang Su Lee, 277 F.3d at 1345; K/S HIMPP, 751 F.3d at 1365-
`66; W.L. Gore & Assocs., 721 F.2d at 1553.
`Second, the claim language does not recite “a field” in the abstract, as
`Petitioners suggest. Pet. 35 (“a person of ordinary skill in the art would have
`understood that the voice data is contained in a field of the voice container.”)
`(emphasis added). Rather, the claim language identifies a specific type of field—
`namely, an “object field.” This explicit qualification reflects teachings in the ’622
`patent addressing a significant number of different types of fields, each serving its
`respective and distinct purpose. See, e.g., EX1001, 14:6-63. The Petition should be
`rejected as impermissibly reducing the claimed “object field” (and its inherent
`connotation, as confirmed in the specification) to simply any “field” in the abstract.
`Third, Zydney does not describe any of the “structural components” of its
`voice container as fields, let alone as the specifically-claimed “object field.” Indeed,
`Zydney does not use the word “field” at all in relation to its voice container. While
`Zydney describes the “voice container structural components” with reference to
`
`12
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`IPR2017-01668
`U.S. Patent 8,724,622
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`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.” EX1003, 23:1-12. Petitioners concede that none of the disclosed “structural
`components” in Zydney is an “object field” as claimed. Pet. 34-36. Nevertheless,
`Petitioner appears to raise an inherency argument that Zydney’s voice container
`necessarily includes “a digitized audio file” in a distinct “object field.” Id. If such a
`feature had been a necessary component of the voice container, surely Zydney would
`so state. It does not.6
`Zydney’s alleged disclosure that the voice container may be formatted
`according to the MIME format does not save Petitioners’ inherency argument. See
`Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLC, IPR2014-
`01002, Paper 64, Final Written Decision, (P.T.A.B. Nov. 2, 2015) (“In order to rely
`on inherency to establish the existence of a missing claim limitation in an
`obviousness analysis, ‘the limitation at issue necessarily must be present, or the
`natural result of the combination of elements explicitly disclosed by the prior art.’”
`(quoting PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed.
`Cir. 2014)). Zydney states that using the MIME format “allows non-textual
`messages and multipart message bodies attachments [sic] to be specified in the
`message headers.” EX1003, 19:7-10. Merely specifying something in a message
`
`
`6 In its Decision Denying Institution in related-matter IPR2017-02080, the Board
`considered and rejected a similar, if not identical, Zydney-based inherency argument
`also challenging independent claim 3 of the ’622 patent. Google LLC v. Uniloc,
`IPR2018-02080 (Paper 10) at 17 (PTAB March 19, 2018).
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`IPR2017-01668
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`header does not expressly or inherently disclose that the header itself is an “object
`field” that contains the “digitized audio file.”
`Petitioners also point to Zydney’s citation to RFC 1521, entitled “Mechanisms
`for Specifying and Describing the Format of Internet Message Bodies.” Pet. 35.
`According to Petitioners, RFC 1521 “explains that a MIME message can contain
`audio or voice data in the ‘body,’ the field of the message containing the content
`being conveyed.” Id.7 However, the Petition and its attached declaration fail to
`identify any portion of RFC 1521 (EX1006) equating the so-called “body” of a
`message to an “object field”, let alone that one that must include an “audio file” (as
`opposed to just audio data). Petitioners could not do so because the RFC 1521
`reference (EX1006) uses the word “fields” only in connection with “headers” that
`merely specify information types and that are distinct from the “body” of the
`message—i.e., “MIME-Version header field” (p. 1); “Conteny-Type header field (p.
`2); “Content-Transfer-Encoding header field” (id.); and “Two additional header
`fields that can be used to further describe the data in a message body” (id.).
`Thus, the RFC 1521 reference states its “fields” merely describe the data in a
`distinct message body. The RFC 1521 reference does not, however, state that any
`of the identified “fields” itself includes the data in a message body, let alone data in
`the form of an “audio file” as claimed. This is distinguishable on its face from the
`
`
`7 In its Decision Denying Institution in related matter IPR2017-0280 (at p. 15), the
`Board considered and rejected a similar petitioner argument that “Zydney teaches
`that the voice container ‘includes a ‘body,’ which . . . holds the digitized voice
`message’ and ‘corresponds to the claimed ‘object field’ in an instant voice message
`to carry a digitized audio file.’”
`
`14
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`IPR2017-01668
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`
`recitation in independent claim 3, “… an object field including a digitized audio
`file.”
`
`Fourth, Petitioners mapping further breaks down because the Petition
`presents inconsistent theories under the guise of allegedly “independent” theories.
`For example, the Petition initially argues that Zydney’s voice container itself has the
`structure that maps onto the claimed “object field including a digitized audio file.”
`Pet. 35 (“the voice data is contained in a field of the voice container.”) (emphasis
`added). However, in presenting its arguments with respect to the “MIME message”
`disclosed in RFC 1521, the Petition argues, instead, that the message itself has the
`structure that maps onto the claimed “object field including a digitized audio file.”
`Id. 36 (referring, instead, to “the field of the message”). Petitioners cannot have it
`both ways; and the presentation of inconsistent theories only undermines both.
`Indeed, in related matters the Board has repeatedly rejected similar obviousness
`theories that similarly vacillated between relying on both Zydney’s voice container
`and, instead, its distinct voice message. See, e.g., Decisions Denying Institution in
`IPR2017-02080, IPR2017-02081, IPR2017-02082, IPR2017-02083, IPR2017-
`02084, etc.
`Petitioners compound their error by conflating their divergent theories into
`one when addressing the term “digitized audio file.” Pet. 36. The Petition
`ambiguously states that “Zydney further discloses that the object field includes a
`‘digitized audio file’” (Pet. 36), without specifying which one of Petitioner’s
`theories it had intended to rely on for the “object field” limitation—i.e., whether the
`voice container itself or, instead, the MIME message itself, has the structure
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`IPR2017-01668
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`allegedly mapping onto the “object field” term. The Board and Patent Owner should
`not be required to guess how Petitioners’ obviousness theory for “digitized audio
`file” fits into each one of Petitioners’ divergent theories for an “object field” which
`must itself include the claimed file.
`Given that the Petition mentions “voice data for the voice container” and
`quotes Zydney’s disclosure that “[t]he software agent compresses the voice and
`stores the file temporarily on the PC,”8 it appears the section of the Petition
`addressing the term “digitized audio file” (Pet. 36) focuses exclusively on
`Petitioner’s voice container theory, without presenting any corresponding argument
`for Petitioner’s separate MIME message theory. This results in at least a tacit
`abandonment of Petitioners’ MIME message theory.
`Fifth, Zydney refutes Petitioner’s speculation that Zydney must have used an
`undisclosed “structural component” dedicated exclusively to an “audio digital file”
`ostensibly “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.” Pet. 35; cf. EX2001 ¶50.
`Evidently Petitioner overlooked what is plain in Figure 3 of Zydney and its
`accompanying description. That disclosure provides no less than four different
`examples of “structural components” that each group together multiple items of
`information (e.g., elements 316, 318, and 320 are grouped underneath element 314).
`Clearly, Zydney did not share Petitioner’s contrived concern about a recipient client
`
`
`8 Pet. 33 (quoting EX1006, 16:1-4) (emphasis added).
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`being unable to separate different items of information that are structurally grouped
`together. See In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008)
`(affirming a finding of nonobviousness because the alleged flaws in the prior art that
`ostensibly prompted the modification had not been recognized in the art itself).
`Sixth, the distinction between Zydney’s “structural components” and the
`claimed “object field” is not mere semantics but rather reflects fundamentally
`different technologies. A person of ordinary skill in the art (as of the effective filing
`date of December 18, 2003) 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. EX2001 ¶48. More specifically, such a person would have
`recognized that network packets have headers with various fields describing things
`such as source address, destination address, port, protocol, etc. Id. Independent
`claim 3 structurally defines the instant voice message as requiring a specific “object
`field.” This claim language reflects, for example, the teachings in the specification
`that “[t]he content of the object field is a block of data ….” EX1001, 14:37-38.
`Seventh, not only does Zydney fail to disclosure or suggest the claim
`language, 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). EX2001 ¶51. Zydney purports to
`utilize transport mechanisms that rely on data compression of then-existing
`hardware and software available to the client: “[t]he present invention is designed
`to adapt to the voice and data compression capabilities of the user’s existing
`hardware and software.” EX1003, 11:14-16. The only specific form of compression
`
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`mentioned in Zydney is GSM compression. EX2001 ¶51 (citing EX1003, 25:11). It
`is not surprising that Zydney does not mention using HTTP in connection with any
`specification implementation because at that time (August 2000) HTTP did not have
`compression. See EX2001 ¶51 (explaining that in 2003, Microsoft added
`compression to its IIS webserver because HTTP could not natively compress) (citing
`EX2002,
`at
`https://www.microsoft.com/technet/prodtechnol/
`available
`WindowsServer2003/Library/IIS/d52ff289-94d3-4085-bc4e-24eb4f312e0e.mspx?
`=true).
`Each one of the foregoing reasons provides an independent basis to deny the
`Petition as failing to establish prima facie obviousness for “wherein the instant voice
`mes
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