Atty Docket No. FABO-070/01US
`(309101-2194)
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`IPR2017-01668
`U.S. Patent No. 8,724,622
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`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., and APPLE INC.,
`Petitioners
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`_____________________
`
`Case No. IPR2017-01668
`Patent 8,724,622
`_________________
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`PETITIONERS’ NOTICE OF APPEAL
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`
`(309101-2194)
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`IPR2017-01668
`U.S. Patent No. 8,724,622
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`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., and APPLE INC.,
`Petitioners
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`_____________________
`
`Case No. IPR2017-01668
`Patent 8,724,622
`_________________
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`PETITIONERS’ NOTICE OF APPEAL
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`
`
`Atty Docket No. FABO-070/01US
`(309101-2194)
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`
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`IPR2017-01668
`U.S. Patent No. 8,724,622
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`Pursuant to 37 C.F.R. § 90.2(a) and 35 U.S.C. § 142, Petitioners Facebook,
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`Inc. and WhatsApp Inc. (“Petitioners”) hereby appeal to the United States Court of
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`Appeals for the Federal Circuit from the Patent Trial and Appeal Board’s Final
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`Written Decision entered January 16, 2019 (Paper 35) and Denial of Request for
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`Rehearing entered May 15, 2019 (Paper 37), and from all underlying and related
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`findings, orders, decisions, rulings and opinions. A copy of the Board’s Final
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`Written Decision and Denial of Request for Rehearing are attached hereto as Exhibit
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`A and B respectively.
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), Petitioners further indicate that the issues on
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`appeal may include, but are not limited to the Board’s determination that claims 4
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`and 5 of U.S. Patent No. 8,724,622 have not been shown to be unpatentable under
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`35 U.S.C. § 103, the findings, rulings and conclusions supporting or relating to those
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`determinations, and any other issues decided adversely to Petitioners in any orders,
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`decisions, ruling, or opinions.
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`Simultaneous with this submission, this Notice of Appeal is being
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`electronically filed with the Clerk of the United States Court of Appeals for the
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`Federal Circuit, together with the requisite fee at the following address
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`http://ecf.cafc.uscourts.gov. In addition, a copy of this Notice of Appeal is being
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`
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`Atty Docket No. FABO-070/01US
`(309101-2194)
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`filed with the Patent Trial and Appeal Board and served upon counsel of record for
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`IPR2017-01668
`U.S. Patent No. 8,724,622
`
`
`
`
`the patent owner.
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`
`
`Dated: July 16, 2019
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 949-7400
`Email: hkeefe@cooley.com
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`By:
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`Respectfully submitted,
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`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
`Facebook, Inc. and WhatsApp
`Inc.
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`
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`EXHIBIT A
`
`EXHIBIT A
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`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
` Entered: January 16, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., HUAWEI DEVICE CO., LTD.,
`LG ELECTRONICS, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-016671
`Patent 8,724,622 B2
`__________________________________________
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`FACEBOOK, INC., WHATSAPP INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-016682
`Patent 8,724,622 B2
`
`1 Huawei Device Co., Ltd. and LG Electronics, Inc., which filed a petition in
`Case IPR2017-02090, and Apple Inc., which filed a petition in Case
`IPR2018-00579, have been joined as petitioners in IPR2017-01667.
`2 Apple Inc., which filed a petition in Case IPR2018-00580, has been joined
`as a petitioner in IPR2017-01668.
`
`
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318
`
`
`
`INTRODUCTION
`I.
`Facebook, Inc. and WhatsApp Inc. filed a Petition in each of the
`captioned proceedings on June 22, 2017, collectively requesting inter partes
`review of claims 3–8, 10–35, 38, and 39 of U.S. Patent No. 8,724,622 B2
`(“the ’622 patent”). IPR2017-01667, Paper 2 (“1667 Petition” or “1667
`Pet.”); IPR2017-01668, Paper 2 (“1668 Petition” or “1668 Pet.”). Each
`proceeding challenges a different set of claims, as follows:
`
`Proceeding
`
`Challenged Claim Set of the ’622 Patent
`
`IPR2017-01667
`
`3, 6–8, 10, 11, 13–23, 27–35, 38, 39
`
`IPR2017-01668
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`4, 5, 12, 24–26
`
`See 1667 Pet. 1; 1668 Pet. 1. Patent Owner3 filed a Preliminary Response to
`each Petition. IPR2017-01667, Paper 6 (“1667 Prelim. Resp.”); IPR2017-
`
`
`3 Uniloc Luxembourg S.A. was initially identified as the owner of the
`’622 patent. See, e.g., IPR2017-01667, Paper 3, 1. In Updated Mandatory
`Notices filed August 25, 2018, Uniloc 2017 LLC is identified as the owner
`of the ’622 patent. IPR2017-01667, Paper 30; IPR2017-01668, Paper 28.
`2
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`
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`
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
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`01668, Paper 6 (“1668 Prelim. Resp.”). We instituted inter partes review
`pursuant to 35 U.S.C. § 314 as to all challenged claims. IPR2017-01667,
`Paper 8 (“1667 Dec. on Inst.”); IPR2017-01668, Paper 8 (“1668 Dec. on
`Inst.”). During the pendency of the proceedings, Huawei Device Co., Ltd.
`and LG Electronics, Inc. filed a petition and motion for joinder requesting to
`join IPR2017-01667, which we granted. IPR2017-01667, Paper 12.
`Similarly, Apple Inc. filed petitions and motions for joinder requesting to
`join IPR2017-01667 and IPR2017-01668, which we also granted. IPR2017-
`01667, Paper 29; IPR2017-01668, Paper 27.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response in each case. IPR2017-01667, Paper 17 (“1667 PO Resp.”);
`IPR2017-01668, Paper 16 (“1668 PO Resp.”). Petitioner4 then filed Replies.
`IPR2017-01667, Paper 24 (“1667 Reply”); IPR2017-01668, Paper 22 (“1668
`Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in each
`case (“Mot. Excl.”), and Petitioner filed an Opposition as Paper 24 in each
`case (“Opp’n”). We held a consolidated oral argument in both proceedings,
`as well as in related proceeding IPR2017-01428, on August 30, 2018. A
`transcript of the oral hearing (“Tr.”) has been entered into the record of
`IPR2017-01667 as Paper 31 and into the record of IPR2017-01668 as
`Paper 29.
`
`
`4 References herein to “Petitioner” refer to Facebook, Inc., WhatsApp Inc.,
`Huawei Device Co., Ltd., LG Electronics, Inc, and Apple Inc., collectively,
`where reference is made to IPR2017-01667, and to Facebook, Inc.,
`WhatsApp Inc., and Apple Inc., collectively, where reference is made to
`IPR2017-01668.
`
`
`
`3
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 3, 6–8, 10–35, 38, and 39 of the
`’622 patent are unpatentable, but has not shown that claims 4 and 5 are
`unpatentable.
`
`II. CONSOLIDATION OF PROCEEDINGS
`The two captioned proceedings involve the ’622 patent. Although
`each proceeding challenges the patentability of a different set of claims,
`there are disputed claim terms across the challenged claims and the primary
`prior art is identical. For instance, all the claims recite the term “instant
`voice message,” which we construe below, and the “Zydney” reference
`(identified with particularity below) is asserted as prior art in both
`proceedings. Consolidation is appropriate where, as here, the Board can
`more efficiently handle the common issues and evidence and also remain
`consistent across proceedings. Under 35 U.S.C. § 315(d) the Director may
`determine the manner in which these pending proceedings may proceed,
`including “providing for stay, transfer, consolidation, or termination of any
`such matter or proceeding.” See also 37 C.F.R. § 42.4(a) (“The Board
`institutes the trial on behalf of the Director.”). There is no specific Board
`Rule that governs consolidation of cases. But 37 C.F.R. § 42.5(a) allows the
`Board to determine a proper course of conduct in a proceeding for any
`situation not specifically covered by the rules and to enter non-final orders to
`administer the proceeding. Therefore, on behalf of the Director under
`
`
`
`4
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`
`
`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`
`§ 315(d), and for a more efficient administration of these proceedings, we
`consolidate IPR2017-01667 and IPR2017-01668 for purposes of rendering
`this Final Written Decision in which we construe the term “instant voice
`message” and determine whether the asserted prior art teaches the properly
`construed “instant voice message.”
`
`III. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’622 patent is involved in Uniloc USA,
`Inc. v. Apple Inc., No. 2:16-cv-00638 (E.D. Tex.), Uniloc USA, Inc. v.
`WhatsApp Inc., Case and 2:16-cv-00645 (E.D. Tex.), Uniloc USA, Inc. v.
`Facebook, Inc., No. 2:16-cv-00728 (E.D. Tex.), Uniloc USA, Inc. v. LG
`Electronics USA, Inc., No. 2:16-cv-00991 (E.D. Tex.), and Uniloc USA, Inc.
`v. Huawei Device USA, Inc., No. 2:16-cv-00994 (E.D. Tex.), among
`numerous other actions in the United States District Court for the Eastern
`District of Texas. See, e.g., IPR2017-01667, Paper 30, 3.
`The ’622 patent also has been the subject of petitions for inter partes
`review in Cases IPR2017-00223, IPR2017-00224, IPR2017-01804, and
`IPR2017-01805 (filed by Apple Inc.), all of which were denied; Cases
`IPR2017-01797 and IPR2017-01798 (filed by Samsung Electronics
`America, Inc.), in which we instituted inter partes review on February 6,
`2018; and Cases IPR2017-02080 and IPR2017-02081 (filed by Google,
`Inc.), which we denied.
`
`
`
`5
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
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`
`B. Overview of the ’622 Patent5
`The ’622 patent, titled “System and Method for Instant VoIP
`Messaging,” relates to Internet telephony, and more particularly, to instant
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`Ex. 1001, [54], 1:18–22. The ’622 patent acknowledges that “[v]oice
`messaging” and “instant text messaging” in both the VoIP and public
`switched telephone network environments were previously known. Id.
`at 2:22–46. In prior art instant text messaging systems, according to the
`’622 patent, a server would present a user of a client terminal with a “list of
`persons who are currently ‘online’ and ready to receive text messages,” the
`user would “select one or more” recipients and type the message, and the
`server would immediately send the message to the respective client
`terminals. Id. at 2:34–46. According to the ’622 patent, however, “there is
`still a need in the art for . . . a system and method for providing instant VoIP
`messaging over an IP network,” such as the Internet. Id. at 1:18–22, 2:47–
`59, 6:47–49.
`In one embodiment, the ’622 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1001,
`6:22–24.
`
`
`5 Reference to the ’622 patent is always to the exhibit number in IPR2017-
`01667.
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`6
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
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`
`
`As illustrated in Figure 2, local packet-switched IP network 204,
`which may be a local area network (“LAN”), “interconnects” IVM
`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
`at 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
`instant voice messaging functionality over network 204. Id. at 7:61–65.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Ex. 1001, 7:57–59, 7:65–8:4. IVM
`client 208 then transmits the selections to IVM server 202 and “records
`
`
`
`7
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
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`the user’s speech into . . . digitized audio file 210 (i.e., an instant voice
`message).” Id. at 8:4–11.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Ex. 1001, 8:15−29. “[O]nly the
`available IVM recipients, currently connected to . . . IVM server 202, will
`receive the instant voice message.” Id. at 8:33−34. IVM server 202
`“temporarily saves the instant voice message” for any IVM client that is “not
`currently connected to . . . local IVM server 202 (i.e., is unavailable)” and
`“delivers it . . . when the IVM client connects to . . . local IVM server 202
`(i.e., is available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the
`instant voice message, the recipients can audibly play the message. Id.
`at 8:29–32.
`
`C. Illustrative Claims
`Of the challenged claims, claims 3, 24, 27, and 38 are independent.
`Claims 3, 24, and 27 are illustrative of the challenged claims and are
`reproduced below.
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`
`
`
`8
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`
`
`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.
`24. 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 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.
`27. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`wherein the instant voice messaging application includes a
`document handler system for attaching one or more files to
`the instant voice message.
`Ex. 1001, 24:12–27, 25:59–26:8, 26:17–30.
`
`
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`9
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
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`
`D. Asserted Prior Art and Instituted Grounds of Unpatentability
`These proceedings rely on the following prior art references:
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001, filed in IPR2017-01667 as Exhibit 1003 and in IPR2017-
`01668 as Exhibit 1103, with line numbers added by Petitioner;
`b) Shinder: Excerpts from Debra Littlejohn Shinder, Computer
`Networking Essentials (2002), filed in IPR2017-01667 as
`Exhibit 1014 and in IPR2017-01668 as Exhibit 1114;
`c) Clark: U.S. Patent No. 6,725,228 B1, issued Apr. 20, 2004, filed
`in IPR2017-01667 as Exhibit 1008 and in IPR2017-01668 as
`Exhibit 1108;
`d) Appelman: U.S. Patent No. 6,750,881 B1, issued June 15, 2004,
`filed in IPR2017-01667 as Exhibit 1004 and in IPR2017-01668 as
`Exhibit 1104;
`e) Hethmon: Excerpts from Paul S. Hethmon, Illustrated Guide to
`HTTP (1997), filed in IPR2017-01667 as Exhibit 1009 and in
`IPR2017-01668 as Exhibit 1109;
`f) Microsoft: Excerpts from Microsoft Press Computer Dictionary
`(1991), filed in IPR2017-01667 as Exhibit 1018 and in
`IPR2017-01668 as Exhibit 1118; and
`g) Moghe: U.S. Patent No. 6,173,323 B1, issued Jan. 9, 2001, filed in
`IPR2017-01667 as Exhibit 1019 and in IPR2017-01668 as
`Exhibit 1119.
`The following grounds of unpatentability are at issue:
`
`References
`
`Challenged Claim(s) Basis
`3, 6–8, 10, 11, 13,
`18–21, 23, 27, 32–35,
`and 38
`14–17 and 28–31
`
`§ 103(a) Zydney and Shinder
`
`§ 103(a) Zydney, Shinder, and Clark
`
`
`
`10
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
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`Challenged Claim(s) Basis
`
`References
`
`22 and 39
`
`§ 103(a) Zydney, Shinder, and Appelman
`
`4, 5, and 24–26
`
`§ 103(a) Zydney, Shinder, and Hethmon
`
`12
`
`§ 103(a) Zydney Shinder, Microsoft, and Moghe
`
`See 1667 Pet. 5; 1668 Pet. 5. Each Petition also cites declaration testimony
`as follows: Declaration of Tal Lavian, Ph.D., filed as Exhibit 1002 in
`IPR2017-01667 (“1667 Lavian Decl.”); and Declaration of Tal Lavian,
`Ph.D., filed as Exhibit 1102 in IPR2017-01668 (“1668 Lavian Decl.”).
`Patent Owner cites declaration testimony in support of its arguments
`of patentability as follows: Declaration of William C. Easttom II, filed as
`Exhibit 2001 in IPR2017-01667 (“1667 Easttom Decl.”); and Declaration of
`William C. Easttom II, filed as Exhibit 2001 in IPR2017-01668 (“1668
`Easttom Decl.”).
`
`IV. ANALYSIS
`
`A. Claim Construction
`Claim terms in an unexpired patent, as here, are given their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b) (2016);6 Cuozzo Speed Techs., LLC v.
`
`
`6 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`11
`
`
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`
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard as the claim interpretation standard to be
`applied in inter partes reviews). Under the broadest reasonable
`interpretation standard, claim terms generally are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those claim terms
`that are in controversy need to be construed, and only to the extent necessary
`to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In the 1667 Petition, the terms “instant voice messaging application,”
`“client platform system,” and “communication platform system” were
`identified for claim construction. 1667 Pet. 6−11. In the 1668 Petition, the
`terms “connection object messages” and “communication platform system”
`were identified for claim construction. We did not construe those terms in
`our Decisions on Institution; they are discussed below.
`
`1. Instant Voice Message
`
`Independent challenged claims 3, 27, and 38 recite the term “instant
`voice message.” In particular, claim 3 recites a messaging system that
`“receives an instant voice message” from one of a plurality of instant voice
`
`
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
`
`
`
`12
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`
`message client systems, “wherein the instant voice message includes an
`object field including a digitized audio file.” Claims 27 and 38 recite a
`client platform system for “generating an instant voice message and a
`messaging system for transmitting the instant voice message.” Claim 27
`further requires an “instant voice messaging application” that “includes a
`document handler system for attaching one or more files to the instant voice
`message.” Certain of the challenged dependent claims recite additional
`limitations concerning, for example, additional fields included in the instant
`voice message (claims 4–8), storage, deletion, or retrieval of instant voice
`messages (claims 10, 14, 17, 28, 31), the generation of the instant voice
`messages (claims 13, 18, 32), encryption/decryption of instant voice
`messages (claims 19, 33), compression/decompression of instant voice
`messages (claims 20, 34), effects indicating receipt of instant voice
`messages (claims 23, 35), and display of instant voice messages (claim 30).
`Our Institution Decision in IPR2017-01667 noted Patent Owner’s
`arguments regarding the “instant voice message” centered on the scope of
`the term. 1667 Dec. on Inst. 18, 22–23. Patent Owner had argued an
`implied construction in which “instant voice message” encompasses only the
`voice message. Id. at 19, 23. The parties were invited to brief the claim
`construction during trial. Id. at 19–20, 23.
`In its Response in IPR2017-01667, Patent Owner proposed that an
`“instant voice message” is “an audio file recording voice data.” 1667 PO
`Resp. 11–13, 15. In particular, Patent Owner relied on the specification’s
`use of “i.e.” to indicate lexicography in equating the “instant voice message”
`
`
`
`13
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`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`
`to audio file 210. Id. at 12–13 (citing various portions of the specification
`that state “the digitized audio file 210 (i.e., instant voice message)”).
`Petitioner, on the other hand, argued in Reply that the “instant voice
`message” is not synonymous with an audio file recording voice data because
`a related patent (having the same specification as the ’622 patent) has a
`claim that recites “recording the instant voice message in an audio file.”
`1667 Reply 5 (citing U.S. Patent No. 8,199,747, claim 1). According to
`Petitioner, if an “instant voice message” is an “audio file” then the language
`of that claim requiring the recording of the instant voice message “in an
`audio file” would be superfluous. Id. More importantly, Petitioner also
`argued that the “audio file” is one of two disclosed embodiments of the
`“instant voice message.” Id. at 3–4. Specifically, the ’622 patent describes
`that instead of taking the form of an audio file, the instant voice message is
`generated in real time by buffering successive portions of the instant voice
`message. Ex. 1001, 11:31−58. If we were to adopt Patent Owner’s
`proposed construction of an audio file, according to Petitioner, we would
`exclude a preferred embodiment where the instant voice message is
`described as buffered successive portions. 1667 Reply 4–5 (citing Epos
`Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014)).
`After persuasively arguing against Patent Owner’s proposed construction,
`Petitioner proposed no alternative construction, arguing instead that “instant
`voice message” “can be left to its plain and ordinary meaning, encompassing
`the instant voice messages disclosed by Zydney.” Id. at 5.
`At oral argument, we renewed the concern for the appropriate scope
`of the term “instant voice message” in light of the record developed to that
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`point. Tr. 9:12−12:13. We also entered as Exhibit 3001 in the record of
`both proceedings a dictionary definition of “instant messaging.” Thereafter,
`we issued an order authorizing additional briefing on claim construction of
`“instant voice message” and its applicability to the asserted prior art.
`IPR2017-01667, Paper 32 (“Order on Claim Constr.”); also IPR2017-01668,
`Paper 30. The parties simultaneously filed initial claim construction briefs
`and responsive claim construction briefs, in accordance with that order.
`IPR2017-01667, Papers 33–36; IPR2017-01668, Papers 31–34.
`After reviewing the parties’ briefs, we construe “instant voice
`message” to mean “data content including a representation of an audio
`message.” This accords with Patent Owner’s position that the ’622 patent
`specification consistently refers to the “instant voice message” as content.
`IPR2017-01667, Paper 33, 2−4 (“PO Supplemental Br.”). In particular, we
`are persuaded that the specification describes the “instant voice message” as
`content in three different embodiments. First, in the “record mode”
`embodiment, by describing the “instant voice message” as an audio file
`(Ex 1001, 8:7–11, 8:26–27, 9:64–65, 10:38–39, 10:45–46, 12:40–41, 16:22,
`17:23–24, 18:6–7, 18:58, 18:64–65, 19:46–47, 19:53), the ’622 patent
`specification focuses on the digitized audio file itself being the “instant voice
`message.” See PO Supplemental Br. 3. The digitized audio file is the user’s
`speech that the client records. See Ex. 1001, 8:8−11. Second, in the
`“intercom mode,” the specification describes buffering “successive portions
`of the instant voice message,” referring thusly to portions of the user’s
`speech that are written to a buffer. Id. at 11:35−44. Again, the “instant
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`voice message” includes the digitized audio. In a third embodiment, the
`specification describes a “message object” with an object field in this
`manner: “The content of the object field is a block of data being carried by
`the message object, which may be, for example, a digitized instant voice
`message.” Id. at 14:37−40. These embodiments, thus, paint a picture of the
`“instant voice message” as first and foremost being the content of the
`message, or the user’s speech, in some digitized form. Although the manner
`in which the data content is partitioned, stored, and delivered may vary from
`embodiment to embodiment (such as from audio file to digitized audio in a
`buffer), what is important is that the “instant voice message” always refers to
`the digitized audio message.
`Patent Owner argues that lexicography mandates the equivalence of
`content with “instant voice message.” In particular, Patent Owner argues
`that in describing the “record mode” the specification uses the abbreviation
`“i.e.” to consistently define the “instant voice message” as voice data
`content. See PO Supplemental Br. 3. The use of “i.e.” has been held to
`signal an intent of the inventor to define the word to which it refers.
`Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir.
`2009). The use of “i.e.,” alone, however, is not conclusive of an intent to
`define the term. The specification must use the term “instant voice
`message” consistently as an audio file for the use of “i.e.” to be accorded
`such definitional status. See SkinMedica, Inc. v. Histogen Inc., 727 F.3d
`1187, 1202 (Fed. Cir. 2013) (explaining that “i.e.” is definitional when it
`“comports with the inventors’ other uses . . . in the specification and with
`each and every other reference”).
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`Although we agree that there is repeated use of “i.e.” in the
`specification to signal an equivalency of “instant voice message” with an
`audio file, the specification uses “instant voice message” inconsistently by
`describing non-audio-file uses of “instant voice message.” For instance, the
`specification describes the “intercom mode” of instant voice messaging
`distinctly from the “record mode” (audio file embodiment). Ex. 1001, 7:57–
`61. “In the ‘intercom mode,’ instead of creating an audio file 210, one or
`more buffers (not shown) of a predetermined size are generated in the IVM
`client 26, 208 or local IVM server 202.” Id. at 11:36−39 (emphasis added).
`This alternative to creating an audio file is further described as buffering
`successive portions of the instant voice message. Id. at 11:39−41. Thus, the
`use of “i.e.” is not definitional since the “instant voice message” may take
`the form of successive portions of the digitized speech that are buffered,
`instead of an audio file. Therefore, although the specification consistently
`relates “instant voice message” to content, is does not limit that content to
`any particular form or structure (audio file or portions of digitized speech).
`From the description of the three embodiments identified above, we
`conclude that the “instant voice message” is data content, and more
`specifically, is data content that includes a representation of an audio
`message. In all embodiments, the “instant voice message” refers, at a
`minimum, to the digitized speech, regardless of whether it is contained in an
`audio file, successive portions stored in a buffer, or a block of data in an
`object field. For this reason, we do not agree with Petitioner’s position,
`advanced in its Supplemental Brief, that the construction of “instant voice
`message” should be “a data structure including a representation of an
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`audible message.” IPR2017-01667, Paper 34, 1 (“Pet. Supplemental Br.”)
`(emphasis added); see also Tr. 62:17−5 (Patent Owner further arguing that
`the phrase “audio message” tracks more closely the intrinsic evidence than
`the phrase “audible message”). Although we agree that the audio file and
`buffered portions form a data structure (Pet. Supplemental Br. 1−2), we are
`not persuaded that referring to the “instant voice message” as a data
`structure captures what it is; but rather, such construction would place undue
`focus on the instant voice message’s form. The specification describes three
`different data structures that may constitute the “instant voice message,”
`signifying that its structure is not what defines the “instant voice message.”
`In contrast, the word “content” is more closely associated with how
`the specification describes the “instant voice message.” For instance, as
`noted above with regard to the third embodiment (data carried by a message
`object), the “instant voice message” is “a block of data” that is also the
`content of the object field. Ex. 1001, 14:37−40. Likewise, the specification
`describes the “intercom mode” buffers as having “content” corresponding to
`successive portions of the “instant voice message,” which content is
`transmitted to an IVM server as the buffers are filled. See, e.g., id. at
`11:41−49; 11:67–12:3 (describing writing audio of a predetermined size as
`the “content of the first buffer” and processing of the “audio contents of the
`buffers” before transmission); see also Tr. 55:21−56:14 (Patent Owner
`explaining that the content is binary information contained within the file or
`within the buffered data of the intercom mode, where the binary information
`may include structural information such as headers). None of the data
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`structures identified in the specification (e.g., audio file, successive portions
`of buffered data, or a block of data in an object field) clarify the essence of
`the “instant voice message,” but they merely highlight that the digitized
`audio could be stored and manipulated in a variety of ways for processing
`and transmission.
`Accordingly, we construe “instant voice message” as data content
`including a representation of an audio message. This determination,
`however, does not resolve all the disputes surrounding the term because
`Patent Owner also argues that attaching files to an “instant voice message”
`must be limited to attachments to the data content itself. PO Supplemental
`Br. 4−5 (“This reaffirms that the limitations at issue require an attachment to
`the data content, as opposed, for example, to a distinct and separately-
`generated data structure (like Zydney’s ‘voice container’) that is used only to
`transport the data content and that is subsequently discarded.”). Therefore,
`we analyze and construe below the claim’s requirement of “attaching” files
`to the “instant voice message.”
`
`2. Attaching One or More Files to the Instant Voice Message
`
`As noted above, claim 27 of the ’622 patent recites that the “instant
`voice message application includes a document handler system for attaching
`one or more files to the instant voice message.” Ex. 1001, 26:28−30.7
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