Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC., UNILOC LUXEMBOURG, S.A.,
`Patent Owners
`
`U.S. Patent No. 8,724,622
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,724,622
`(PETITION 2 OF 2 – CLAIMS 4, 5, 12, 24-26)
`
`
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`

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`Table of Contents
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`Page
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`I. Mandatory Notices Under 37 C.F.R. § 42.8(A)(1) ........................................ 1
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 3
`D.
`Service Information .............................................................................. 4
`E.
`Power of Attorney ................................................................................ 4
`Fee Payment - 37 C.F.R. § 42.103 ................................................................. 4
`II.
`III. Requirements for Inter Partes Review under 37 C.F.R. §§ 42.104 and
`42.108 ............................................................................................................. 5
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 5
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 5
`IV. Person of Ordinary Skill in the Art ................................................................. 6
`V.
`Claim Construction Under 37 C.F.R. § 42.104(B)(3) .................................... 6
`A.
`“connection object messages” .............................................................. 7
`B.
`“communication platform system” ...................................................... 8
`VI. The Challenged Claims Are Unpatentable ..................................................... 9
`A.
`Brief Summary and Date Qualification of the Prior Art ...................... 9
`
`Overview of Zydney (Ex. 1103) ................................................ 9
`
`Overview of Shinder (Ex. 1114) .............................................. 13
`
`Overview of Hethmon (Ex. 1109) ........................................... 14
`
`Overview of Microsoft (1991) (Ex. 1118) and Moghe
`(Ex. 1119) ................................................................................. 16
`B. Ground 1: Claims 4, 5, and 24-26 Are Obvious Over Zydney +
`Shinder + Hethmon ............................................................................ 20
`
`Claim 3 (From Which Challenged Claims 4 and 5
`Depend), Obviousness Over Zydney in view of Shinder ........ 21
`(a)
`“A system comprising:” (Preamble, Claim 3) ............... 21
`-i-
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`(c)
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`(d)
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`(e)
`
`(f)
`
`Table of Contents
`(continued)
`
`Page
`
`(b)
`
`“a network interface connected to a packet-
`switched network;” (Claim 3[a]) ................................... 21
`(i)
`“a network interface” .......................................... 21
`(ii)
`“…connected to a packet-switched
`network;” ............................................................. 26
`“a messaging system communicating with a
`plurality of instant voice message client systems
`via the network interface; and” (Claim 3[b]) ................ 27
`“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,”
`(Claim 3[c]) ................................................................... 31
`“wherein the messaging system receives an instant
`voice message from one of the plurality of instant
`voice message client systems, and” (Claim 3[d]) .......... 33
`“wherein the instant voice message includes an
`object field including a digitized audio file.”
`(Claim 3[e]) ................................................................... 34
`(i)
`“object field” ....................................................... 34
`(ii)
`“digitized audio file” ........................................... 36
`Claim 4 (Dependent): “The system according to claim 3,
`wherein the instant voice message includes an action
`field identifying one of a predetermined set of permitted
`actions requested by the user.”................................................. 37
`Claim 5 (Dependent): “The system according to claim 4,
`wherein the predetermined set of permitted actions
`includes at least one of a connection request, a
`disconnection request, a subscription request, an
`unsubscription request, a message transmission request,
`and a set status request.” .......................................................... 45
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`-ii-
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`Table of Contents
`(continued)
`
`Page
`
`(b)
`
`Claim 24 (Independent) ........................................................... 46
`(a)
`“A system comprising:” (Claim 24, Preamble) ............. 46
`“a network interface connected to a packet-switched
`network;” (Claim 24[a]) ................................................ 46
`“a messaging system communicating with a plurality of
`instant voice message client systems via the
`network interface; and” (Claim 24[b]) .......................... 46
`“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,”
`(Claim 24[c]) ................................................................. 46
`“wherein the messaging system receives
`connection object messages from the plurality of
`instant voice message client systems,” (Claim
`24[d]) ............................................................................. 46
`“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.” (Claim
`24[d1]) ........................................................................... 53
`Claim 25 (Dependent): “The system according to claim
`24, wherein the connection object messages identifies at
`least one of a socket, a size of data to be transferred and a
`priority of the data.” ................................................................. 54
`Claim 26 (Dependent): “The system according to claim
`24, wherein the communication platform system
`populates a connection list for the plurality of instant
`voice message client systems with the data in the
`connection object messages received from each of the
`plurality of instant voice message client systems.” ................. 54
`
`(c)
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`-iii-
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`Table of Contents
`(continued)
`
`Page
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`
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`C. Ground 2: Claim 12 Is Obvious Over Zydney + Shinder +
`Microsoft (1991) + Moghe ................................................................. 57
`
`Claim 12 (Dependent): “The system according to claim
`3, wherein the communication platform system updates
`the connection information for each of the instant voice
`message client systems by periodically transmitting a
`connection status request to the given one of the plurality
`of instant voice message client systems.” ................................ 57
`VII. Conclusion .................................................................................................... 64
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`-iv-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`List of Exhibits
`
`
`
`
`
`
`
`Description of Document
`Ex. No
`1101 U.S. Patent No. 8,724,622 to Michael J. Rojas (filed July 11, 2012,
`issued May 13, 2014)
`
`1102 Declaration of Tal Lavian, Ph.D.
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et
`1103
`al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (“Zydney”) (with line numbers added)
`
`1104 U.S. Patent No. 6,750,881 to Barry Appelman (filed February 24,
`1997, issued June 15, 2004) (“Appelman”)
`
`1105
`
`Excerpts from MARGARET LEVINE YOUNG, INTERNET: THE
`COMPLETE REFERENCE (McGraw-Hill/Osborne, 2d ed. 2002)
`1106 N. Borenstein et al., Request for Comments (RFC) 1521: MIME
`(Multipurpose Internet Mail Extensions) Part One: Mechanisms for
`Specifying and Describing the Format of Internet Message Bodies,
`September 1993 (“RFC 1521”)
`1107 U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (filed October 16,
`2000, issued June 29, 2004)
`
`1108 U.S. Patent No. 6,725,228 to David Morley Clark et al. (filed Oct.
`31, 2000, issued April 20, 2004) (“Clark”)
`
`1109
`
`Excerpts from PAUL S. HETHMON, ILLUSTRATED GUIDE TO HTTP
`(Manning Publications Co., 1997) (“Hethmon”)
`
`1110
`
`Excerpts from CRAIG HUNT, TCP/IP NETWORK ADMINISTRATION
`(O’Reilly, 2d Ed. 1998) (“Hunt”)
`1111 HTTP Working Group, Hypertext Transfer Protocol – HTTP/1.1,
`Nov. 22, 1995 (draft-ietf-http-v11-spec-00.txt)
`
`1112
`
`Excerpts from MICROSOFT COMPUTER DICTIONARY (Microsoft Press,
`3d ed. 1997)
`
`-v-
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`List of Exhibits
`
`
`
`Ex. No
`1113
`
`Description of Document
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et
`al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (as-published version without added line numbers)
`
`1114
`
`1115
`
`1116
`
`1117
`
`Excerpts from DEBRA LITTLEJOHN SHINDER, COMPUTER
`NETWORKING ESSENTIALS (Cisco Press, 2002) (“Shinder”)
`
`Library of Congress stamped/dated copy of PAUL S. HETHMON,
`ILLUSTRATED GUIDE TO HTTP (Manning Publications Co., 1997)
`
`Library date stamped copy of CRAIG HUNT, TCP/IP NETWORK
`ADMINISTRATION (O’Reilly, 2d Ed. 1998)
`
`Library of Congress stamped/dated copy of DEBRA LITTLEJOHN
`SHINDER, COMPUTER NETWORKING ESSENTIALS (Cisco Press, 2001)
`
`1118
`
`Excerpts from Microsoft Press Computer Dictionary (1991)
`(“Microsoft (1991)”)
`1119 U.S. Patent No. 6,173,323 to Pratyush Moghe (filed Dec. 24, 1997,
`issued Jan. 9, 2001) (“Moghe”)
`
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`-vi-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`This is a petition for Inter Partes Review of claims 4, 5, 12, and 24-26 of
`
`U.S. Patent No. 8,724,622 (Ex. 1101) (“’622 patent”).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Facebook, Inc. and WhatsApp Inc. (“Petitioners”) are the real parties-in-
`
`interest to this inter partes review petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`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. The Petitioners herein were not
`
`parties to and did not participate in the preparation of those petitions.
`
`Concurrent with the filing of this Petition, the Petitioners are filing another
`
`petition for inter partes review to address claims not covered by the present
`
`Petition. More specifically, the present Petition addresses claims 4, 5, 12, and 24-
`
`26, whereas the other petition addresses claims 3, 6-8, 10, 11, 13, 14-23, 27-35, 38,
`
`and 39. The Petitioners filed their challenges against these claims in two separate
`
`petitions to provide a more complete and thorough treatment of each claim.
`
`The ’622 patent is also the subject of two pending litigations involving the
`
`Petitioners: Uniloc USA, Inc. et al. v. Facebook, Inc., Case No. 2:16-cv-00728-
`
`JRG (E.D. Tex. filed July 5, 2016 and served July 11, 2016) and Uniloc USA, Inc.
`
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`-1-
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`et al. v. WhatsApp, Inc., Case No. 2:16-cv-00645-JRG (E.D. Tex. filed June 14,
`
`2016 and served July 21, 2016), which have been consolidated for pretrial
`
`purposes with Uniloc USA, Inc. et al. v. Samsung Electronics America, Inc., Case
`
`No. 2:16-cv-00642-JRG (E.D. Tex.). These petitions are timely under the one year
`
`statute of limitations in 35 U.S.C. § 315(b). Currently, these litigations are stayed
`
`pending the outcome of IPR petitions filed by third party Apple Inc.
`
`The Petitioners are also aware of the following additional pending litigations
`
`involving the ’622 patent: Uniloc USA, Inc. et al. v. Apple Inc., Case No. 2:16-cv-
`
`00638-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Blackberry Corporation et al.,
`
`Case No. 2:16-cv-00639-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Snap Inc.,
`
`Case No. 2:16-cv-00696-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. AOL Inc.,
`
`Case No. 2:16-cv-00722-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Green Tomato
`
`Limited, Case No. 2:16-cv-00731-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Sony
`
`Interactive Entertainment LLC., Case No. 2:16-cv-00732-JRG (E.D. Tex.); Uniloc
`
`USA, Inc. et al. v. Avaya Inc., Case No. 2:16-cv-00777-JRG (E.D. Tex.); Uniloc
`
`USA, Inc. et al. v. Telegram Messenger, LLP, Case No. 2:16-cv-00892-JRG (E.D.
`
`Tex.); Uniloc USA, Inc. et al. v. HTC America, Inc., Case No. 2:16-cv-00989-JRG
`
`(E.D. Tex.); Uniloc USA, Inc. et al. v. Kyocera America, Inc. et al., Case No. 2:16-
`
`cv-00990-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. LG Electronics U.S.A., Inc.,
`
`Case No. 2:16-cv-00991-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Motorola
`
`
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`-2-
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`Mobility LLC, Case No. 2:16-cv-00992-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v.
`
`ZTE (USA), Inc. et al., Case No. 2:16-cv-00993-JRG (E.D. Tex.); Uniloc USA, Inc.
`
`et al. v. Huawei Device USA, Inc. et al., Case No. 2:16-cv-00994-JRG (E.D. Tex.);
`
`Uniloc USA, Inc. et al. v. Google, Inc., Case No. 2:17-cv-00214-JRG (E.D. Tex.);
`
`Uniloc USA, Inc. et al. v. Google, Inc., Case No. 2:17-cv-00224-JRG (E.D. Tex.);
`
`Uniloc USA, Inc. et al. v. Google, Inc., Case No. 2:17-cv-00231-JRG (E.D. Tex.);
`
`and Uniloc USA, Inc. et al. v. KIK Interactive, Inc., Case No. 2:17-cv-00347-JRG
`
`(E.D. Tex.); Uniloc USA, Inc. et al. v. Hike Ltd., Case No. 2:17-cv-00349-JRG
`
`(E.D. Tex.). Although the Petitioners are not parties to those other litigations,
`
`because they involve allegations of infringement of the ’622 patent, they may be
`
`impacted by a decision by the Board in this IPR proceeding.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`FB_Uniloc2_622_PTAB_IPR@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`FB_Uniloc2_622_PTAB_IPR@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (703) 456-8668
`Fax: (703) 456-8100
`
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`-3-
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`
`LEAD COUNSEL
`
`
`
`
`
`BACK-UP COUNSEL
`
`Mark R. Weinstein (Admission pro hac
`vice pending)
`mweinstein@cooley.com
`Tel: (650) 843-5007
`Fax: (650) 849-7400
`
`Service Information
`D.
`This Petition is being served to the current correspondence address for the
`
`’622 patent, Legacy Town Center, 7160 Dallas Parkway, Suite 380, Plano, Texas
`
`75024. The Petitioners consent to electronic service at the addresses provided
`
`above for lead and back-up counsel.
`
`Power of Attorney
`E.
`Filed concurrently in accordance with 37 C.F.R. § 42.10(b).
`
`II.
`
`FEE PAYMENT - 37 C.F.R. § 42.103
`This Petition requests review of six claims and addresses one unchallenged
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`independent claim (claim 3) from which three challenged claims depend. A
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`payment of $23,000 is submitted herewith, based on a $9,000 request fee (for up to
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`20 claims), and a $14,000 post-institution fee (for up to 15 claims). This Petition
`
`meets the fee requirements of 35 U.S.C. § 312(a)(1). If additional fees are due at
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`any time during this proceeding, the Director is hereby authorized to charge such
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`fees to Cooley LLP’s deposit account number 50-1283.
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`-4-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104
`AND 42.108
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`The Petitioners certify that the ’622 patent is available for inter partes
`
`review and that the Petitioners are not barred or otherwise estopped from
`
`requesting inter partes review on the grounds identified herein.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`The Petitioners respectfully request that the Board initiate inter partes
`
`review on the following grounds (bold underlining showing the independent
`
`claim):
`
`Ground
`1
`
`2
`
`Claims
`4, 5, 24,
`25, 26
`12
`
`Basis for Challenge
`Unpatentable over Zydney (Ex. 1103) in view of Shinder
`(Ex. 1114) and Hethmon (Ex. 1109) under § 103(a)
`Unpatentable over Zydney (Ex. 1103) in view of Shinder
`(Ex. 1114), Microsoft (1991) (Ex. 1118), and Moghe
`(Ex. 1119), under § 103(a)
`
`Grounds 1 and 2 challenge dependent claims 4, 5 and 12, which depend
`
`from independent claim 3. As explained in Part I.B, the Petitioners are
`
`concurrently filing a separate petition that addresses other claims of the ’622
`
`patent. That Petition challenges independent claim 3 as being obvious over
`
`Zydney (Ex. 1103) in view of Shinder (Ex. 1109), and as such, the present Petition
`
`does not directly challenge that claim. Nevertheless, because claims 4, 5, and 12
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`-5-
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`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`depend from – and thus incorporate the limitations of – claim 3, this Petition will
`
`also set forth the invalidity analysis of claim 3 from the other Petition to provide a
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`foundation for Grounds 1 and 2 as to claims 4, 5, and 12.
`
`Part VI below explains why the challenged claims are unpatentable based
`
`on the grounds identified above. The references cited above were not cited during
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`the original prosecution of the ’622 patent, and were not cited in the separate IPR
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`petitions filed by Apple Inc. (IPR2017-00223 and IPR2017-00224) that were
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`denied by the Board on May 25, 2017. Submitted with the Petition is the
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`Declaration of Tal Lavian, Ph.D. (Ex. 1102) (“Lavian”), a technical expert with
`
`decades of relevant technical experience. (Lavian, Ex. 1102, ¶¶1-10, Ex. A.)
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`As explained by Dr. Lavian, 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
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`experience in development and programming relating to network communication
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`systems (or equivalent degree or experience). (Lavian, ¶¶13-15.)
`
`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`The constructions below provide the broadest reasonable interpretation in
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`light of the specification to a person of ordinary skill in the art.
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`-6-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
`
`“connection object messages”
`A.
`The Petitioners respectfully request that the Board interpret “connection
`
`object messages” in the context of claim 24 of the ’622 patent as “messages
`
`containing data representing the state of the connection and code (one or
`
`more methods) for establishing and maintaining the logical connections
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`between an instant voice messaging server and instant voice messaging
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`clients.” This is the construction to which the Petitioners and the Patent Owner
`
`have stipulated in the concurrent litigation, and is also consistent with the meaning
`
`of “connection object messages” based on the specification. (Lavian, ¶¶66-68.)
`
`The proposed construction comes almost directly from the specification of
`
`the ’622 patent, which provides the following description of connection objects:
`
`Connection objects maintain the logical connections between the IVM
`server 202 and IVM clients 206, 208 connected to the IVM server
`202. More specifically, a connection object comprises data
`representing the state of the connection and code (one or more
`methods) for establishing and maintaining the logical connections
`between the IVM server 202 and the IVM clients 206, 208 within the
`IVM system 200 of FIG. 2. The connection object can contain both
`data and/or commands, including information that describes the
`socket, the size of the data to be transferred, and the priority of the
`transfer (e.g., high, normal, low, unknown). On start up the local
`IVM server 202 generates and maintains a list for each IVM
`client 206, 208. The local IVM server 202 then waits to receive
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`-7-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`connection objects from the IVM clients 206, 208 that are stored in
`the respective lists, decodes the received connection objects to obtain
`specific requests, and then services the specific requests from the IVM
`clients 206, 208.
`
`(’622, 14:47-63.)1 The Board should therefore construe “connection object
`
`messages” as “messages containing data representing the state of the
`
`connection and code (one or more methods) for establishing and maintaining
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`the logical connections between an instant voice messaging server and instant
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`voice messaging clients,” which tracks the underlined text above.
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`“communication platform system”
`B.
`Claims 3 and 24 recite “a communication platform system maintaining
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`connection information for each of the plurality of instant voice message client
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`systems indicating whether there is a current connection to each of the plurality of
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`instant voice message client systems.”
`
` The specification describes
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`the
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`“communication platform” as being a part of the IVM server 202. (Lavian, ¶¶64-
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`65 (citing ’622, 13:46-55, Fig. 4 (item 402).) Accordingly, the broadest reasonable
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`construction of
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`this
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`term
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`is a “system of the server which relays
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`1 Unless otherwise indicated, all underlining or boldface type in quotations
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`appearing in this Petition has been added for emphasis.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`communications and/or tracks client connection information,” which is
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`consistent with the description of the function of the communication platform
`
`system in the claim. (Lavian, ¶¶63-65.)2
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`The challenged claims are unpatentable based on the grounds identified in
`
`Part III.B above. This Petition will first provide an overview of each prior art
`
`reference and will then describe the proposed grounds in detail.
`
`A. Brief Summary and Date Qualification of the Prior Art
` Overview of Zydney (Ex. 1103)
`Zydney is a published PCT application that describes a system for voice
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`communication that enables a user to send instant voice messages, which Zydney
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`calls “voice containers.” (Zydney, Ex. 1103, 2:2-3.) The system transmits the
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`voice containers “instantaneously or stored for later delivery,” depending on
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`whether or not the recipient is currently online. (Id., 1:19-22, 15:8-21.) Zydney
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`qualifies as prior art under 35 U.S.C. § 102(b) (pre-AIA).
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`2 The Petitioners do not contend that any term herein, under its broadest
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`reasonable construction, is a “means-plus-function” limitation subject to 35 U.S.C.
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`§ 112, ¶6 (pre-AIA). The Petitioners reserve their right to argue that terms are
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`indefinite under narrower litigation claim construction standards.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`The Petitioners also note that the Zydney reference contains page numbers
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`but does not contain line numbers. Accordingly, for convenience of the Board and
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`ease of reference, Exhibit 1103 to this Petition contains a copy of Zydney in which
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`line numbers have been added to the left of each page (beginning on page 1), to
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`facilitate precise citation to the passages of the reference cited in this Petition. Any
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`citations to line numbers of Zydney in this Petition and in the Lavian Declaration,
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`therefore, refer to these added line numbers as shown in Exhibit 1103. A copy of
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`the original Zydney reference without line numbers is submitted as Exhibit 1113.
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`The system of Zydney is generally shown in Figure 1A, reproduced below.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`(Zydney, Fig. 1A (highlighting added).)
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`Three key components of
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`the system
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`include
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`the “SENDER PC
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`SOFTWARE AGENT” shown on the left (22), the “RECIPIENT PC SOFTWARE
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`AGENT” shown on the right (28), and the “CENTRAL SERVER” shown in the
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`middle (24) of Figure 1A. (Id., 10:19-11:1.) Zydney explains that the sender and
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`recipient software agents may work on any suitable client device such as “a
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`personal computer, wireless handheld computer such a personal data assistant
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`(PDA), digital telephone, or beeper.” (Id., 11:14-20.) Central server (24)
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`facilitates instant voice messaging between the sender and the recipient. (Id.,
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`10:20-11:1.) The sender, recipient, and central server communicate with each
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`other over a network, as shown with the bottom cloud of Figure 1A labeled
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`“INTERNET.” (Id., Fig. 1A; see also id., 5:4-5, 5:15-18, 10:11-14, 14:2-5.)
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`Sending an instant voice message from a sender to a recipient in Zydney is
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`straightforward. A message sender (originator) “selects one or more intended
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`recipients from a list of names that have been previously entered into the software
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`agent.” (Id., 14:17-19.) The sender also “digitally records messages for one or
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`more recipients using a microphone-equipped device and the software agent. The
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`software agent compresses the voice and stores the file temporarily on the PC if the
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`voice will be delivered as an entire message.” (Id., 16:1-4; see also id., 20:11-14,
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`21:11-16 (describing “the recording of one or more voice packet messages on a
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`personal computer” as “voice files [that] can be played and recorded using voice
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`container enabled devices.”).) The voice message is placed into a “voice
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`container,” which can be transmitted to the destination. (Id., 10:20-11:3.) Once
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`the recipient’s software agent receives the voice container, it unpacks the voice
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`container and presents it to the recipient. (Id., Fig. 18, 35:20-22.) The software
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`agent can then audibly play the voice message to the recipient through the speakers
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`or headset attached to the device. (Id., 13:19-22, 14:14-16, 16:10-14.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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` Overview of Shinder (Ex. 1114)
`Shinder, entitled “Computer Networking Essentials,”
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`is a
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`textbook
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`published by Cisco Systems, a well-known supplier of networking equipment.
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`(Lavian, ¶81.) The book was written to provide an overview of the fundamentals
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`of computer networking. (Shinder, Introduction, p.xxii.) This Petition cites
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`Shinder primarily in connection with the “network interface” recited in
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`independent claim 3 that facilitates communication with a network. Shinder
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`qualifies as prior art to the ’622 patent under 35 U.S.C. § 102(b) (pre-AIA).
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`Zydney does not specifically describe the computing hardware for
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`connecting clients and the central server to a network. This Petition accordingly
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`cites Shinder to demonstrate that providing a “network interface” in the manner
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`recited in the claims was well-known and obvious. For example, one well-known
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`example of a network interface was known as a network interface controller
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`(“NIC”), which was widely available. (Shinder, p.195.) Shinder further teaches:
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`Some sort of network interface is always required to communicate
`over a network. . . . The NIC is the basic hardware component of
`network communications. It translates the parallel signal produced by
`the computer into the serial format that is sent over the network cable.
`The 1s and 0s of binary communications are turned into electrical
`impulses, pulses of light, radio waves, or whatever signaling scheme
`is used by the network media.
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`(Id., pp.195-196.) Shinder confirms that the claimed “network interface” is a
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`well-known and off-the-shelf computing component that provides no meaningful
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`distinction over Zydney. Shinder confirms, in fact, that a networked system such
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`as the voice instant messaging system of Zydney could not even function without a
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`network interface for connecting to the network. (Lavian, ¶¶82, 114-116.)
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` Overview of Hethmon (Ex. 1109)
`Hethmon, entitled “Illustrated Guide to HTTP,” is a book published in 1997
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`that describes the HyperText Transfer Protocol version 1.1 (HTTP/1.1). This
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`Petition cites Hethmon in connection with the “action field” limitations of claims
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`4-5 and the “connection object messages” limitations of claims 24-26. As this
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`Petition will demonstrate, these limitations recite nothing more than basic features
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`that were built into HTTP and were known to persons of ordinary skill in the art.
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`Hethmon qualifies as prior art under 35 U.S.C. § 102(b) (pre-AIA).
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`HTTP is a well-known protocol used to send and receive messages between
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`clients and servers on the Internet. (Lavian, ¶95.) Although HTTP is commonly
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`used in connection with requesting and delivering pages from the World Wide
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`Web, it is a generic protocol not limited to the delivery of web pages. (Id., ¶313,
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`n.15.) As Zydney explains, HTTP “is a generic, stateless, object-oriented protocol
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`which can be used for many tasks, such as name servers and distributed object
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`management systems, through extension of its request methods (commands). A
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`feature of HTTP is the typing and negotiation of data representation, allowing
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`systems to be built independently of the data being transferred.” (Zydney, 7:21-
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`8:3.) HTTP was the subject of published standards, including an Internet
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`Engineering Task Force (IETF) document cited by and incorporated-by-reference
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`in Zydney. (Id., 8:3-6.)
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`Although Zydney discloses the use of HTTP, it does not disclose the details
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`of how HTTP operates, presumably because those details were already well-known
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`as noted. (Lavian, ¶95.) This Petition accordingly cites Hethmon for its explicit
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`teachings of those HTTP details, which show that the “action field” and
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`“connection object messages” limitations in claims 4-5 and 24-26, respectively,
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`are nothing more than features that were built-in to HTTP/1.1.
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`HTTP is commonly referred to as a “request-response” protocol, which
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`refers to a communications protocol in which a client application sends a “request
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`message” to a server, which responds by sending back a “response message.”
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`(Hethmon, p.10.) This basic interaction is illustrated Figure 2.2 of Hethmon:
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`(Hethmon, Figure 2.2 at p.11.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,724,622
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`A key aspect of HTTP for purposes of this Petition is the HTTP “request
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`message” shown in the figure above. Hethmon explains that each HTTP request
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`message contains a “Request-Line,” which contains a field known as a “Method.”
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`Hethmon explains that the Method is a keyword “to indicate the type [of] action
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`the request is asking the server to execute.” (Id., p.55.) Furthermore, in HTTP/1.1,
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`the Request can specify any one of a predetermined set of seven different methods,
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`namely OPTIONS, GET, HEAD, POST, PUT, DELETE, and TRACE. (Id., p.55-
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`61 (“With HTTP/1.1, there are seven basic methods . . .”).) As will be shown
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`below, the Request-Line and Method disclose an action field identifying one of a
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`predetermined set of permitted actions requested by the user.
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`Another aspect of HTTP that is pertinent to this Petition relates to the
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`“connection object messages” of claims 24-26. Hethmon discloses that in HTTP,
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`the request message sent to the server can result in establishing and maintaining a
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`connection. (Hethmon, pp.10-1