Trials@uspto.gov
`571-272-7822
`
`
`Paper 37
`Entered: May 15, 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
`__________________________________________
`
`
`
`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.
`
`
`571-272-7822
`
`
`Paper 37
`Entered: May 15, 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
`__________________________________________
`
`
`
`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.
`
`
`
`IPR2017-01667 and 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.
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`2
`
`
`
`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`
`I.
`
`INTRODUCTION
`
`On January 16, 2019, the Board issued a consolidated Final Written
`
`Decision in the above-captioned proceedings. Paper 373 (“Final Dec.”). In
`
`that Final Written Decision, we determined that Petitioner had shown by a
`
`preponderance of the evidence that claims 3, 6–8, 10–35, 38, and 39 of U.S.
`
`Patent No. 8,724,622 B2 (the ’622 patent) are unpatentable. Id. at 112. On
`
`February 15, 2019, Patent Owner filed a Request for Rehearing. IPR2017-
`
`Paper 38 (“Req. Reh’g”). The Request for Rehearing contends the Board
`
`misapplied its construction of the claim term “instant voice message.” Id. at
`
`3–6.
`
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`
`decision should be modified lies with the party challenging the decision,”
`
`and the “request must specifically identify all matters the party believes the
`
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`
`Patent Owner to show we misapprehended or overlooked the matters it
`
`requests that we review. We are not persuaded that Patent Owner has shown
`
`that we misapprehended or overlooked the matters raised in the Request for
`
`Rehearing.
`
`II. ANALYSIS
`
`Claim 27 of the ’622 patent recites that an “instant voice message
`
`application includes a document handler system for attaching one or more
`
`files to [an] instant voice message.” Ex. 1001, 26:28–30. We determined in
`
`the Final Written Decision that the term “instant voice message” refers to a
`
`
`3 Unless otherwise noted, all Paper and Exhibit numbers cited herein refer to
`filings in IPR2017-01667.
`
`3
`
`
`
`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`“data content including a representation of an audio message.” Final Dec.
`
`15. Also, we construed the term “attach[ing] . . . to the instant voice
`
`message” to mean indicating that another file (or files) is associated with the
`
`“instant voice message.” Id. at 22.
`
`In its Request for Rehearing, Patent Owner contends the Board
`
`misapplied its construction of instant voice message by determining that that
`
`construction did not resolve all of the disputes surrounding that term. Req.
`
`Reh’g 4 (citing Final Dec. 19). More particularly, Patent Owner alleges that
`
`the Board erred in determining that “Patent Owner ha[d] not shown that the
`
`specification supports its narrow position that the recited attachment to an
`
`‘instant voice message’ requires a direct attachment to only the data
`
`content.” Id.; Final Dec. 22. In particular, according to Patent Owner,
`
`“[h]aving won on claim construction that instant voice message means ‘data
`
`content,’ it was not then Patent Owner’s burden to defend that construction
`
`in application,” but “[r]ather, it was Petitioner’s burden to show ‘attaching
`
`one or more files to [data content including a representation of an audio
`
`message].” Req. Reh’g 4. Patent Owner further contends that the Board
`
`applied the definition of “instant voice message” in a manner never urged by
`
`any party, and, according to Patent Owner, “advanced an argument for
`
`Petitioner sua sponte.” Id. at 5–6. In particular, Patent Owner asserts, “[n]o
`
`party argued that ‘associating’ A to B is satisfied by associating A to C (a
`
`distinct and separately-generated container for B),” and “[i]t was Petitioner’s
`
`burden, not Patent Owner’s, to defend such a construction and to prove
`
`invalidity under such a construction.” Id. at 5.
`
`We have carefully considered Patent Owner’s contentions but are not
`
`persuaded that we misapprehended or overlooked the issues Patent Owner
`
`4
`
`
`
`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`raises. In essence, Patent Owner acknowledges that it had an opportunity to
`
`brief claim construction but faults us for determining the scope of the phrase
`
`“document handler system for attaching one or more files to the instant
`
`voice message.” The Decisions on Institution in the captioned proceedings
`
`noted that the construction of that term was raised in connection with Patent
`
`Owner’s arguments in its Preliminary Responses and that the parties would
`
`have an opportunity during trial to fully brief claim construction.” Paper 6,
`
`23. Similarly, in our Final Written Decision we noted that simply construing
`
`“instant voice message,” without more, does not resolve the dispute of the
`
`parties because Patent Owner raised arguments distinguishing the prior art
`
`on the basis of “attaching” a file to the data content itself. Final Dec. 19.
`
`The Board construes terms that resolve the dispute of the parties, and
`
`“attaching” was one of those terms. Id.; 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) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”).
`
`Patent Owner, therefore, had notice of the issues needed to be
`
`resolved based on its own arguments distinguishing the prior art. More
`
`significantly, the Petition gave Patent Owner notice of Petitioner’s reliance,
`
`in part, on Figure 6 of Zydney (referring to “associat[ing]” a multimedia file
`
`to a voice container), and Patent Owner included argument regarding
`
`“attachments” in its Supplemental Brief on claim construction, which we
`
`considered. See Final Dec. 19, 21–22 (citing Paper 33, 4–5); see also, e.g.,
`
`Paper 36 (arguing that files must be attached to the content that is transferred
`
`or to an audio file, but not to the data structure). Thus, Patent Owner had an
`
`5
`
`
`
`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`opportunity to refine its position on “attaching” in its Patent Owner
`
`Response and supplemental claim construction briefing, to respond to
`
`Petitioner’s assertions and to expand on its position in its Supplemental
`
`Brief on claim construction, in which Patent Owner continued its arguments
`
`that the prior art did not disclose the required “attachment.” To be sure, and
`
`we acknowledge, Patent Owner focused much of its arguments on the term
`
`“instant voice message.” However, once we resolved the scope of that term,
`
`the dispute as to the “attaching” limitation was not resolved, especially in
`
`light of Patent Owner’s arguments attempting to distinguish the prior art
`
`based on that limitation.
`
`Moreover, regarding Patent Owner’s argument that we sua sponte
`
`engaged in an analysis where Petitioner did not present the arguments
`
`considered, we do not agree that we have not followed the holding in In re
`
`Magnum Oil Tools Int’l, 829 F.3d 1364 (Fed. Cir. 2016). Req. Reh’g 5. We
`
`relied, in part, on Petitioner’s highlighting of the “associat[ing]” step in
`
`Figure 6 of Zydney in the Petition as corresponding to the “attaching”
`
`function in claim 27 (see Final Dec. 58 (citing Paper 2, 54–55), and,
`
`accordingly, we did not engage in proscribed sua sponte analysis in
`
`rendering the Final Written Decision.
`
`Finally, Patent Owner’s request for rehearing fails to show that we
`
`misapprehended or overlooked any of Patent Owner’s evidence or
`
`arguments or that our construction for the term “attaching” is incorrect in
`
`any way and requires reconsideration and correction. In sum, we do not
`
`agree with Patent Owner’s contention that our construction of the
`
`“attaching” limitation is improper or that Patent Owner did not have an
`
`opportunity to brief the issue in light of the developed record.
`
`6
`
`
`
`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`
`III. ORDER
`
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`7
`
`
`
`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Mark R. Weinstein
`Lowell Mead
`Lisa Schwier
`Andrew Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`lmead@cooley.com
`lschwier@cooley.com
`amace@cooley.com
`
`
`David A. Garr
`Gregory S. Discher
`COVINGTON & BURLING
`dgarr@cov.com
`gdischer@cov.com
`
`
`Anand K. Sharma
`Minjae Kang
`Joshua L. Goldberg
`Bradford C. Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`anand.sharma@finnegan.com
`minjae.kang@finnegan.com
`joshua.goldberg@finnegan.com
`bradford.schulz@finnegan.com
`
`
`
`
`8
`
`
`
`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`tmerrell-PTAB@skgf.com
`
`
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`9
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 8
`
`
` Entered: January 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01667
`Patent 8,724,622 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01667
`Patent 8,724,622 B2
`
`
`INTRODUCTION
`I.
`The above-captioned Petitioner (Facebook, Inc. and WhatsApp Inc.)
`filed a Petition requesting inter partes review of claims 3, 6–8, 10, 11, 13–
`23, 27–35, 38, and 39 of U.S. Patent No. 8,724,622 B2 (Ex. 1001, “the
`’622 patent”). Paper 2 (“Pet.”). Uniloc Luxembourg S.A. (“Patent
`Owner”)1 filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review of claims 3, 6–8, 10, 11, 13–23, 27–35, 38, and 39 of the
`’622 patent.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’622 patent is involved in Uniloc USA,
`Inc. v. Facebook, Inc., No. 2:16-cv-00728-JRG (E.D. Tex.), and Uniloc
`USA, Inc. v. WhatsApp Inc., No. 2:16-cv-00645-JRG (E.D. Tex.), among
`numerous other actions in the United States District Court for the Eastern
`
`
`1 Patent Owner’s Mandatory Notice filed pursuant to 37 C.F.R. § 42.8
`identifies Uniloc Luxembourg S.A. as the owner of the challenged patent
`and identifies Uniloc USA, Inc. only as licensee and additional real party in
`interest. Paper 4, 1. Accordingly, we have removed Uniloc USA, Inc. from
`the case caption as Patent Owner. We note, however, that this identification
`varies from earlier cases involving the challenged patent and certain related
`patents, in which Uniloc USA, Inc. and Uniloc Luxembourg S.A. both were
`identified in mandatory notices as “Patent Owner.” See, e.g.,
`IPR2017-00221, Paper 4, 1; IPR2017-00222, Paper 4, 1; IPR2017-00225,
`Paper 4, 1; IPR2017-01427, Paper 4, 1; IPR2017-01428, Paper 4, 1. The
`parties are reminded of their ongoing obligation under 37 C.F.R. § 42.8(a)(3)
`to keep mandatory notices updated.
`
`2
`
`
`
`IPR2017-01667
`Patent 8,724,622 B2
`
`District of Texas. Pet. 1−3; Paper 4, 2. The ’622 patent also was the subject
`of two requests for inter partes review filed by Apple Inc. (“Apple”) on
`November 14, 2016 (Cases IPR2017-00223 and IPR2017-00224), both of
`which were denied. See IPR2017-00223, Paper 7 (PTAB May 25, 2017);
`IPR2017-00224, Paper 7 (PTAB May 25, 2017).
`Concurrently with the instant Petition, Petitioner additionally filed a
`petition requesting inter partes review of claims 4, 5, 12, and 24–26 of the
`’622 patent (Case IPR2017-01668). IPR2017-01668, Paper 2. Further,
`Samsung Electronics America, Inc. filed two requests for inter partes review
`of certain claims of the ’622 patent on July 20, 2017 (Cases IPR2017-01797
`and IPR2017-01798); Apple filed two additional requests for inter partes
`review, also on July 20, 2017, challenging the same claims as the instant
`Petition and the petition in Case IPR2017-01668, respectively (Cases
`IPR2017-01804 and IPR2017-01805); Huawei Device Co., Ltd. (“Huawei”)
`filed a request for inter partes review of the same claims as the instant
`Petition on September 11, 2017 (Case IPR2017-02090); and Google Inc.
`filed two requests for inter partes review of certain claims of the ’622 patent
`on September 12, 2017 (Cases IPR2017-02080 and IPR2017-02081).
`Huawei additionally filed a motion for joinder to the instant proceeding
`concurrently with its petition in Case IPR2017-02090, and Apple indicated
`in its petition in Case IPR2017-01804 that it intends to seek joinder with the
`instant proceeding “when appropriate.” IPR2017-02090, Paper 3;
`IPR2017-01804, Paper 2, 76.
`
`3
`
`
`
`IPR2017-01667
`Patent 8,724,622 B2
`
`
`B. The ’622 Patent
`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.
`
`4
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`
`
`IPR2017-01667
`Patent 8,724,622 B2
`
`
`
`
`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 the
`
`5
`
`
`
`IPR2017-01667
`Patent 8,724,622 B2
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`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, 27, and 38 are independent.
`Claims 3 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,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`
`6
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`
`
`IPR2017-01667
`Patent 8,724,622 B2
`
`
`wherein the instant voice message includes an object field
`including a digitized audio file.
`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, 26:17–30.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts three grounds of unpatentability (Pet. 5):
`
`Challenged Claims
`3, 6–8, 10, 11, 13, 18–21,
`23, 27, 32–35, 38
`
`Basis
`
`References
`
`§ 103(a) Zydney2 and Shinder3
`
`14–17, 28–31
`
`§ 103(a) Zydney, Shinder, and Clark4
`
`
`2 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (filed with line
`numbers added by Petitioner as Exhibit 1003).
`3 Excerpts from Debra Littlejohn Shinder, Computer Networking Essentials
`(2002) (Ex. 1014).
`4 Clark et al., US 6,725,228 B1, issued Apr. 20, 2004 (Ex. 1008).
`
`7
`
`
`
`IPR2017-01667
`Patent 8,724,622 B2
`
`
`Challenged Claims
`
`22, 39
`
`References
`Basis
`§ 103(a) Zydney, Shinder, and
`Appelman5
`
`Petitioner also relies on a Declaration of Tal Lavian, Ph.D., filed as
`Exhibit 1002.
`
`III. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent 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); Cuozzo Speed Techs.,
`LLC v. 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).
`
`
`5 Appelman, US 6,750,881 B1, issued June 15, 2004 (Ex. 1004).
`
`8
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`IPR2017-01667
`Patent 8,724,622 B2
`
`
`Petitioner proposes constructions for the terms “instant voice
`messaging application,” as recited in claims 13, 27, and 38; “client platform
`system,” as recited in claims 27 and 38; and “communication platform
`system,” as recited in claim 3. Pet. 6−11. Patent Owner points out alleged
`deficiencies in Petitioner’s proposed constructions and proposes alternative
`constructions for each. Prelim. Resp. 7−16. Because our determination to
`institute review in this case does not turn on the construction of any of the
`terms for which the parties offer a construction, we do not construe
`expressly any term at this time.
`
`B. Analysis of Asserted Grounds of Unpatentability
`1. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art;6 and (4) objective evidence of
`
`
`6 Citing the testimony of Dr. Lavian, Petitioner asserts 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 Ex. 1002 ¶¶ 13–15).
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`nonobviousness, i.e., secondary considerations.7 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving
`obviousness, a petitioner cannot employ mere conclusory statements. The
`petitioner must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.” In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the
`asserted grounds with the principles stated above in mind.
`
`2. Ground 1: Obviousness over Zydney and Shinder
`(Claims 3, 6–8, 10, 11, 13, 18–21, 23, 27, 32–35, and 38)
`a. Overview of Zydney
`Zydney, titled “Method and System for Voice Exchange and Voice
`Distribution,” relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
`Ex. 1003, [54], [57], 1:4–5. While acknowledging that e-mail and instant
`messaging systems were well-known text-based communication systems
`utilized by users of online services and that it was possible to attach files for
`
`
`Patent Owner acknowledges Petitioner’s assertion and states that “[t]o
`simplify the issues before the Board at this preliminary stage, Patent Owner
`does not presently offer a different definition for a person of ordinary skill in
`the art.” Prelim. Resp. 6. Patent Owner further cites its own expert, William
`Easttom II, as providing a slightly different definition, but notes that
`“Mr. Easttom believes Dr. Lavian’s opinions concerning the [person of
`ordinary skill in the art] are essentially the same as his, and any differences
`are inconsequential to the dispute before the Board. Id. (citing Ex. 2001
`¶ 21). For purposes of this Decision and to the extent necessary, we adopt
`Petitioner’s assessment.
`7 Patent Owner does not contend in its Preliminary Response that any such
`secondary considerations are present.
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`the transfer of non-text formats via those systems, Zydney states that the
`latter technique “lack[ed] a method for convenient recording, storing,
`exchanging, responding and listening to voices between one or more parties,
`independent of whether or not they are logged in to their network.” Id.
`at 1:7–17. Zydney thus describes a method in which “voice containers”—
`i.e., “container object[s] that . . . contain[] voice data or voice data and voice
`data properties”—can be “stored, transcoded and routed to the appropriate
`recipients instantaneously or stored for later delivery.” Id. at 1:19–22; 12:6–
`8. Figure 1 of Zydney is reproduced below.
`
`
`Figure 1, above, illustrates a high-level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
`Referring to Figure 1, system 20 allows software agent 22, with a user
`interface, in conjunction with central server 24 to send messages using voice
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`containers illustrated by transmission line 26 to another software agent 28,
`as well as to receive and store such messages, in a “pack and send” mode of
`operation. Id. at 10:20–11:1. Zydney explains that a pack and send mode of
`operation “is one in which the message is first acquired, compressed and
`then stored in a voice container 26 which is then sent to its destination(s).”
`Id. at 11:1–3. The system has the ability to store messages both locally and
`centrally at server 24 whenever the recipient is not available for a prescribed
`period of time. Id. at 11:3–6.
`In the use of Zydney’s system and method, the message originator
`selects one or more intended recipients from a list of names that have been
`previously entered into the software agent. Ex. 1003, 14:17–19. The agent
`permits distinct modes of communication based on the status of the
`recipient, including the “core states” of whether the recipient is online or
`offline and “related status information” such as whether the recipient does
`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
`software agent offers the originator alternative ways to communicate with
`the recipient, the choice of which can be either dictated by the originator or
`automatically selected by the software agent, according to stored rules. Id.
`at 15:3–6. If the recipient is online, the originator can either begin a
`real-time “intercom” call, which simulates a telephone call, or a voice instant
`messaging session, which allows for an interruptible conversation. Id.
`at 15:8–10. If the recipient is offline, the originator can either begin a voice
`mail conversation that will be delivered the next time the recipient logs in or
`can be delivered to the recipient’s e-mail as a digitally encoded
`Multipurpose Internet Mail Extension (“MIME”) attachment. Id. at 15:15–
`17. Zydney explains that the choice of the online modes “depends on the
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`activities of both parties, the intended length of conversation and the quality
`of the communications path between the two individuals, which is generally
`not controlled by either party,” and that the choice of the offline delivery
`options “is based on the interests of both parties and whether the recipient is
`sufficiently mobile that access to the registered computer is not always
`available.” Id. at 15:10–14, 15:17–19.
`Once the delivery mode has been selected, the originator digitally
`records messages for one or more recipients using a microphone-equipped
`device and the software agent. Ex. 1003, 16:1–3. 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. at 16:3–4. If the real-time
`“intercom” mode has been invoked, a small portion of the digitized voice is
`stored to account for the requirements of the Internet protocols for
`retransmission and then transmitted before the entire conversation has been
`completed. Id. at 16:4–7. Based on status information received from the
`central server, the agent then decides whether to transport the voice
`container to a central file system and/or to send it directly to another
`software agent using the IP address previously stored in the software agent.
`Id. at 16:7–10. If the intended recipient has a compatible active software
`agent online after log on, the central server downloads the voice recording
`almost immediately to the recipient. Id. at 16:10–12. The voice is
`uncompressed and the recipient can hear the recording through the speakers
`or headset attached to its computer. Id. at 16:12–14. The recipient can reply
`in a complementary way, allowing for near real-time communications. Id.
`at 16:14–15. If the recipient’s software agent is not online, the voice
`recording is stored in the central server until the recipient’s software agent is
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`active. Id. at 16:15–17. “In both cases, the user is automatically notified of
`available messages once the voice recordings have been downloaded to
`storage on their computer.” Id. at 16:17–19. The central server coordinates
`with software agents on all computers continuously, updating addresses,
`uploading and downloading files, and selectively retaining voice recordings
`in central storage. Id. at 16:19–21.
`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Ex. 1003, 19:6–7. Formatting the container
`using MIME format, for example, “allows non-textual messages and
`multipart message bodies attachments [sic] to be specified in the message
`headers.” Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
`
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`Figure 3, above, illustrates an exemplary embodiment of Zydney’s
`voice container structure, including voice data and voice data properties
`components. Ex. 1003, 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
`
`b. Overview of Shinder
`Shinder provides an overview of the “fundamentals of computer
`networking concepts and implementation.” Ex. 1014, 5. According to
`Shinder, it is “becom[ing] vital to business interests that a LAN be able to
`communicate with the outside” and, thus, to connect to a wide area network
`(“WAN”), such as the Internet. Id. at 31.
`
`c. Arguments and Analysis
`i. Claims 3, 6–8, 10, 11, 13, 18–21, and 23
`Petitioner points to Zydney as disclosing all limitations of
`independent claim 3, as well as dependent claims 6–8, 10, 11, 13, 18–21,
`and 23, except that it relies on Shinder’s disclosure of network interface
`controllers (“NICs”) (Ex. 1014, 42–43) as rendering obvious the “network
`interface” recited in claim 3 and on Shinder’s disclosure that “[a]n example
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`of a packet-switched network is the Internet” (id. at 19) as rendering obvious
`that the Internet as disclosed in Zydney would have been a packet-switched
`network, also as recited in claim 3. Pet. 18–50.
`Patent Owner disputes Petitioner’s evidence with regard to claim 3,
`arguing in particular that Zydney does not render obvious the claim 3
`limitation “wherein the instant voice message includes an object field.”
`Prelim. Resp. 22–26. Notwithstanding Patent Owner’s arguments, we are
`persuaded for
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