UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC.,
`Petitioners
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-01667
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
`
`FACEBOOK, INC., WHATSAPP INC.,
`Petitioners
`
`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
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`IPR2017-01667
`PATENT 8,724,622
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`
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-01668
`U.S. Patent 8,724,622
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`Tables of Contents
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`
`Introduction ...................................................................................................... 1
`I.
`Related Matters of the ’622 Patent .................................................................. 1
`II.
`III. The ’622 Patent ................................................................................................ 2
`Effective Filing Date of the ’622 Patent ............................................... 2
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`Overview of the ’622 Patent .................................................................. 2
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`IV. PERSON OF ORDINARY SKILL IN THE ART .......................................... 5
`IV. PETITIONER RELIES ON INCORRECT CLAIM
`CONSTRUCTIONS ........................................................................................ 6
`“communication platform system” ....................................................... 6
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`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE .......................... 8
` No prima facie obviousness for dependent
`Claims 4, 5 and 12 ................................................................................. 9
`1.
`Zydney distinguishes voice containers from
`voice messages .......................................................................... 10
`Zydney does not render obvious “wherein the
`instant voice message includes an object field”
`(claims 3, 4, 5 and 12) ............................................................... 12
`Zydney teaches away from “wherein the instant
`voice message includes an action field identifying
`one of a predetermined set of permitted actions
`requested by the user” (claims 4 and 5) .................................... 17
`Zydney does not render obvious “wherein the
`messaging system receives connection object messages
`from the plurality of instant voice message client systems,
`wherein each of the connection object messages includes
` data representing a state of a logical connection with a
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`2.
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`3.
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`
`
`ii
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`IPR2017-01668
`U.S. Patent 8,724,622
`given one of the plurality of instant voice message client
`systems” (claims 24-26) ...................................................................... 18
`1.
`Zydney expressly teaches away from use of
`“connection objects” as defined in the ’622 patent .................. 19
`No motivation to combine Zydney with Hethmon
`because Zyndey’s transport mechanism would
`not have worked with HTTP at that time .................................. 20
`VI. CONCLUSION ..............................................................................................22
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`2.
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`iii
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`IPR2017-01668
`U.S. Patent 8,724,622
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`
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`Exhibit No.
`2001
`2002
`
`List of Exhibits
`Description
`Declaration of William Easttom II
`Microsoft TechNet article showing Microsoft IIS 6.0
`enabled compression over HTTP
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`iv
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`IPR2017-01668
`U.S. Patent 8,724,622
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`I.
`
`Introduction
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition”) of U.S. Patent No. 8,724,622 (“the ’622 patent”) filed
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`by Facebook, Inc. and WhatsApp, Inc. (“Petitioner”).
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`II. Related Matters of the ’622 Patent
`The ’622 patent was the subject of two requests for inter partes review
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`(IPR2017-00223 and IPR2017-00224) filed by Apple Inc. on November 14, 2016,
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`which were denied by the Board on May 25, 2017. Although it is understood that
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`Facebook, Inc. and WhatsApp, Inc. collaborated in preparing the present Petition
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`and are both part of a joint-defense group that includes Apple Inc., the present
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`Petitioners claim to have not participated in the preparation of those denied petitions
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`filed by another one of their joint-defense group members. Pet. 1.
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`Concurrent with the filing of this Petition, the Petitioner filed a second petition
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`for inter partes review to address different claims of the ’622 patent. More
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`specifically, the present Petition addresses claims 4, 5, 12, and 24-26, whereas the
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`other petition (IPR2017-01667) addresses claims 3, 6-8, 10, 11, 13, 14-23, 27-35,
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`38, and 39.
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`The Petition provides what appears to be an accurate summary of pending
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`litigation related to the ’622 patent. Pet. 1-3.
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`1
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`IPR2017-01668
`U.S. Patent 8,724,622
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`III. The ’622 Patent
` Effective Filing Date of the ’622 Patent
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`The ’622 patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” Ex. 1001. The ’622 patent issued from U.S. Patent Application No.
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`13/546,673, which is a continuation of U.S. Patent No. 8,243,723, which is a
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`continuation of U.S. Patent No. 7,535,890, filed on Dec. 18, 2003. The ’622 patent
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`issued on May 13, 2014. Petitioner does not contest that the ’622 patent is at least
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`entitled to an effective filing date of Dec. 18, 2003.
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` Overview of the ’622 Patent
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`The
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`’622 patent
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`recognized
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`that
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks. According
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`to the ’622 patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the telephone
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`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`including another
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`telephone
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`terminal. During
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`the
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`telephone call, voice
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`communication takes place over that communication path.” Ex. 1001, 1:29-34.
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`EX2001 ¶18.
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`The ’622 patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`2
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`IPR2017-01668
`U.S. Patent 8,724,622
`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
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`also known as IP telephony or Internet telephony.”1 Ex. 1001, 1:35-36. EX2001 ¶19.
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`Because legacy circuit-switched devices were unable to communicate directly over
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`packet-switched networks, media gateways (114) were designed to receive circuit-
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`switched signals and packetize them for transmittal over packet-switched networks,
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`and vice versa. Ex. 1001, 2:8-18. EX2001 ¶19.The conversion effected by media
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`gateways (e.g., 114 and 118) highlights the fact that packetized data carried over
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`packet-switched networks (e.g., IP network 102) are different from, and are
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`incompatible with, an audio signal carried over a dedicated packet-switched circuit.
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`Ex. 1001, 2:8-21. EX2001 ¶19.
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`The ’622 patent further recognized that, notwithstanding the advent of instant
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`text messages, at the time of the claimed invention there was no similarly convenient
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`1 Consistent with the ’622 patent specification, the USPTO has also recognized there
`are significant differences between circuit-switched and packet-switched networks
`during the relevant timeframe. See, e.g., U.S. Application No. 90/012,728 and
`90/012,789 (Notice of Intent to Issue Ex Parte Reexamination Certificate, dated
`April 10, 2014) at page 9, where the USPTO confirmed the following:
`
`
`Ethernet packet switching protocol, including TCP/IP, are very specific
`connectionless/packet switched protocols. In contrast to connection-
`oriented protocols, connectionless/packet switched protocols do not
`need to set up a dedicated path in advance. Rather, routers send
`fragmented messages or “packets” to their destination independently.
`Connectionless protocols have a number of advantages over
`connection-oriented protocols, including better use of available
`bandwidth.
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`3
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`IPR2017-01668
`U.S. Patent 8,724,622
`analog to leaving an instant voice message over a packet-switched network. Ex.
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`1001, 2:22-53. EX2001 ¶20. Rather, “conventionally, leaving a voice message
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`involves dialing the recipient’s telephone number (often without knowing whether
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`the recipient will answer), waiting for the connection to be established, speaking to
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`an operator or navigating through a menu of options, listening to a greeting message,
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`and recording the message for later pickup by the recipient. In that message, the user
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`must typically identify himself or herself in order for the recipient to return the call.”
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`Ex. 1001, 2:26-33. EX2001 ¶20.
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`The inventor observed, therefore, that “notwithstanding the foregoing
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`advances in the VoIP/PSTN voice communication and voice/text messaging, there
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`is still a need in the art for providing a system and method for providing instant VoIP
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`messaging over an IP network.” Ex. 1001, 2:47-51. EX2001 ¶21. In certain disclosed
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`embodiments, the ’622 patent addressed that need, in part, by providing a user-
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`accessible client (208) that is specially configured for instant voice message (IVM)
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`and for direct communication over a packet-switched network (e.g., through an
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`Ethernet card). Ex. 1001, 12:13-14. EX2001 ¶21. More specifically, the ’622 patent
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`teaches that certain clients (208) are specially configured to “listen[] to the input
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`audio device 212,” “record[] the user’s speech into a digitized audio file 210 (i.e.,
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`instant voice message) stored on the IVM client 208,” and “transmit[] the digitized
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`audio file 210” as packetized data (e.g., using TCP/IP) over a packet-switched
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`4
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`IPR2017-01668
`U.S. Patent 8,724,622
`network (e.g., network 204) “to the local IVM server 202.” Ex. 1001, 8:8-11 and
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`8:21-22. EX2001 ¶21.
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`The Petition challenges one independent (claim 24) and five dependent claims
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`(4, 5, 12, 25, and 26). For the convenience of the Board, independent claim 24 is
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`reproduced below:
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`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.
`IV. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner alleges through its declarant, Dr. Lavian, that “a person of ordinary
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`skill in the art for purposes of the ’622 patent would have possessed at least a
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`bachelor’s degree in computer science, computer engineering, or electrical
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`engineering with at least two years of experience in development and programming
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`5
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`IPR2017-01668
`U.S. Patent 8,724,622
`relating to network communication systems (or equivalent degree or experience).”
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`Pet. 6 (citing EX1002 ¶¶13-15). To simply the issues before the Board at this
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`preliminary stage, Patent Owner does not presently offer a different definition for a
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`person of ordinary skill in the art. Mr. Easttom’ s opinion as to a person of ordinary
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`skill in the art is essentially the same as that of Dr. Lavian . EX2001 ¶¶14-15.
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`IV. PETITIONER RELIES ON INCORRECT CLAIM CONSTRUCTIONS
`Petitioner seeks to construe two terms: (1) “connection object messages”; and
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`(2) “communication platform system.” Patent Owner agrees with Petitioners’
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`proposed construction of “connection object messages”. However, Petitioners’
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`proposed definition of “communication platform system” should be rejected as
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`violating fundamental canons of claim construction equally applicable in this forum
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`when applying the broadest reasonable interpretation. Petitioner’s reliance on
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`incorrect claim constructions taints the entire Petition and provides an independent
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`basis for denial at the preliminary stage.
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`
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`“communication platform system”
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`Petitioners’ argument that “communication platform system” should be
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`construed to mean a “system of the server which relays communications and/or tracks
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`client connection information” should also be rejected. See Pet. at 8. Petitioners’
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`construction fails because the claims themselves of the ’622 Patent define
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`“communication platform system”:
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`6
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`IPR2017-01668
`U.S. Patent 8,724,622
`“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”
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`e.g. EX1001, 24:19-22 (emphasis added). EX2001 ¶23. Additionally, Fig. 8 of the
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`’622 Patent illustrates:
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`’622 Patent, Fig. 8 (red box added). Therefore, the claims of the ‘622 Patent define
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`the “communications platform system” to be required to perform the tasks of
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`“maintaining connection information for each of the plurality of instant voice
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`
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`7
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`IPR2017-01668
`U.S. Patent 8,724,622
`message client systems” and “indicating whether there is a current connection to
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`each of the plurality of instant voice message client systems.” EX2001 ¶24.
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`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`As shown in the table below, Petitioner has filed two inter partes review
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`petitions that collectively challenge the patentability of claims 3, 6-8, 10, 11, 13, 14-
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`23, 27-35, 38, and 39 under 35 U.S.C. § 103(a) over the following grounds:
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`Ground
`1
`2
`
`Claims
`4, 5, 24, 25, 26
`12
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`Reference(s)
`Zydney2, Shinder3, Hethmon4
`Zydney, Shinder, and two other references
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`Petitioner has the burden of proof to establish they are entitled to their
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`
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`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
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`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
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`of the challenged patent claims would have been obvious in view of the art cited in
`
`the Petition. Petitioner “must specify where each element of the claim is found in
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`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`The Petition should be denied as failing to meet this burden.5
`
`
`2 Ex. 1003, PCT Patent Application No. PCT/US00/21555 (“Zydney”).
`3 Ex. 1014, Excerpts from Debra Littlejohn Shinder, Computer Networking
`Essentials (“Shinder”).
`4 Ex. 1115, Paul S. Hethmon, Illustrated Guide to HTTP (“Hethmon”).
`5 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response (and with the support of its own expert) if an inter partes review is
`instituted.
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`8
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`IPR2017-01668
`U.S. Patent 8,724,622
`A patent is obvious “if the differences between the subject matter sought to
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`be patented and the prior art are such that the subject matter as a whole would have
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`been obvious at the time the invention was made to a person having ordinary skill
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`in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
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`determination must be based on four factual inquiries: (1) the scope and content of
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`the prior art; (2) the differences between the claims and the prior art; (3) the level of
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`ordinary skill in the art; and (4) objective indicia of non-obviousness. KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co. of Kan.
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`City, 383 U.S. 1, 17-18 (1966)).
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`If a single limitation of a claim is absent from the prior art, the claim cannot
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`be considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
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`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim.”)
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`(citing In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d
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`1531, 1534 (Fed. Cir. 1993) (reversing obviousness rejection where prior art did not
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`teach or suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed
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`Techs. LLC, Case No. IPR2012-00001, slip op. at 15 (P.T.A.B. Jan. 9, 2013)
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`(refusing to institute an inter partes review under 35 U.S.C. § 103 where prior art
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`did not disclose all claim limitations).
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` No prima facie obviousness for dependent Claims 4, 5 and 12
`Claims 4, 5 and 12 all ultimately depend from claim 3 (and claim 5
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`9
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`IPR2017-01668
`U.S. Patent 8,724,622
`additionally depends from claim 4). Accordingly, dependent claims 4, 5 and 12 are
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`all patentable over the proposed combinations at least by virtue of their dependence
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`on a nonobvious independent claim, as explained in Patent Owner’s Preliminary
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`Response filed in IPR2017-01667. In re Fine, 837 F.2d 1071 (Fed. Cir. 1988)
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`(“Dependent claims are nonobvious under section 103 if the independent claims
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`from which they depend are nonobvious.”). For the convenience of the Board, the
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`deficiencies of IPR2017-01667 with respect to independent claim 3 are repeated
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`below. Following the analysis addressing independent claim 3, Patent Owner
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`identifies additional deficiencies of the present Petition with respect to claim
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`language recited in dependent claims 4 and 5.
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`1.
`Zydney distinguishes voice containers from voice messages
`In addressing independent claim 3, the Petition repeats the same error as
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`IPR2017-01667 by relying exclusively on Zydney’s voice container for the
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`limitation “wherein the instant voice message includes an object field ….” Pet. 34-
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`46. The claim language, however, does not refer to a container for the “instant voice
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`message” but rather refers to the “instant voice message” itself. Notably, the ’622
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`patent repeatedly and consistently equates the “instant voice message” to the
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`recorded audio file. EX1001, 8:7-11 (“In response to the start signal, the IVM client
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`(softphone) 2008 listens to the input audio device 212 and records the user’s speech
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`into a digitized audio file 210 (i.e., instant voice message) stored on the IVM client
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`10
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`IPR2017-01668
`U.S. Patent 8,724,622
`208.”); see also 8:16-17; 9:63-66; 10:36-39; 10:44-47; 12:40-41; 16:14-17; 16:20-
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`23; 17:22-26; 18:6-9; 18:56-58; 18:62-66; 19:45-48; 20:48-51. EX2001 ¶44.
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`Alleged teachings concerning Zydney’s voice container does not render the
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`claim language obvious at least because Zydney expressly distinguishes its voice
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`container from its voice message. Petitioner attempts to gloss over this distinction
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`by incorrectly asserting Zyndey “calls” voice messages by the name of voice
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`containers.6 EX2001 ¶45. Even a cursory review of the refence, however, confirms
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`that Zydney (not surprisingly) refers to its “voice messages” as “voice messages”
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`and expressly distinguishes “voice containers” from the “voice messages” contained
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`therein. For example, Zydney teaches a voice message is stored in a distinct
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`container only after the voice message is generated and compressed: “the [voice]
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`message is first acquired, compressed and then stored in a voice container 26 ….”
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`Moreover, Zydney uses reference number 26 to refer to the containers (which are
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`used only for transmission); and Zydney refers, instead, to reference number 30
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`when referring to the voice messages. EX1003, 11:1-6. EX2001 ¶45.
`
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`6 Pet. 11. Notably, the only citation Petitioner offers as alleged support for conflating
`Zydney’s “voice container” with its distinct “voice message” is that Zydney’s system
`“allows a software agent … to send, receive and store messages using voice
`containers.” Id. (citing EX1003, 2:2-3). However, that statement from Zydney
`(consistent with the remainder of the specification) in fact distinguishes the container
`from the message. One is used to send the other, just as an envelope may be used to
`mail a folded sheet of paper, though the envelope and the paper contained therein
`are readily distinguishable from one another.
`
`11
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`IPR2017-01668
`U.S. Patent 8,724,622
`At least the above disclosures confirm that Zydney’s voice container and
`
`voice message are not one and the same. Consequently, Petitioner’s exclusive
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`reliance on alleged teachings in Zydney directed to the voice container does not
`
`render obvious the distinguishable limitations directed, instead, to “the instant voice
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`message” recited in independent claim 3. EX2001 ¶246.
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`2.
`
`Zydney does not render obvious “wherein the instant voice
`message includes an object field” (claims 3, 4, 5 and 12)
`While Petitioner relies exclusively on Zydney for the limitation “wherein the
`
`instant voice message includes an object field,” Petitioner concedes that “Zydney
`
`does not use the word ‘field’ in relation to storage of voice data ….” Pet. 35.
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`Notwithstanding this conceded deficiency, Petitioner speculates through its
`
`declarant, outside the four corners of the reference, that “a person of ordinary skill
`
`in the art would have understood that the voice data is contained in a field of the
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`voice container.” Id. (citation omitted). Petitioner’s conclusory speculation should
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`be rejected for at least the six reasons that follow.
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`First, Petitioner asserts without any proof a purported, yet undisclosed,
`
`knowledge of a person of ordinary skill in the art. This unsupported statement runs
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`afoul of the clear prohibition of basing legal determinations of obviousness on “mere
`
`speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290
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`(Fed. Cir. 2006); see also 37 C.F.R. § 42.104(b)(4) (requiring petitions to “specify
`
`where each element of the claim is found in the prior art patents or printed
`
`12
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`
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`IPR2017-01668
`U.S. Patent 8,724,622
`publications relied upon”) (emphasis added); K/S HIMPP v. Hear-Wear Techs.,
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`LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014) (finding the P.T.A.B. correctly
`
`rejected conclusory assertions of what would have been common knowledge in the
`
`art); In re Sang Su Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002); W.L. Gore & Assocs.,
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`Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one of
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`ordinary skill in the art with knowledge of the invention in suit, when no …
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`reference or references of record convey or suggest that knowledge, is to fall victim
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`to the insidious effect of a hindsight syndrome wherein that which only the inventor
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`taught is used against its teacher.”).
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`Second, the claim language does not recite “a field” in the abstract, as
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`Petitioner suggests. Pet. 35 (“a person of ordinary skill in the art would have
`
`understood that the voice data is contained in a field of the voice container.”)
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`(emphasis added). Rather, the claim language identifies a specific type of field—
`
`namely, an “object field.” This explicit qualification reflects teachings in the ’622
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`patent addressing a significant number of different types of fields, each serving a
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`specific and distinct purpose. See, e.g., EX1001, 14:6-63. The Petition should be
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`rejected as impermissibly reducing the claimed “object field” (and its inherent
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`connotation, as confirmed in the specification) to simply any “field” in the abstract.
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`Third, Zydney does not describe any of the “structural components” of its
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`voice container as fields, let alone as the specifically-claimed “object field.” Indeed,
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`13
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`IPR2017-01668
`U.S. Patent 8,724,622
`Zydney does not use the word “field” at all in relation to its voice container. While
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`Zydney describes the “voice container structural components” with reference to
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`Figure 3, notably absent from the list of twenty-five structural components (elements
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`302 through 338) is anything resembling “an object field including a digitized audio
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`file.” EX1003, 23:1-12. Significantly, Petitioner concedes that none of the disclosed
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`“structural components” in Zydney is an “object field” as claimed. Pet. 34-36.
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`Nevertheless, Petitioner appears to raise an inherency argument that Zydney’s voice
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`container necessarily includes “a digitized audio file” in a distinct “object field.” Id.
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`If such a feature had been a necessary component of the voice container, surely
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`Zydney would have said so. It does not. EX2001 ¶49.
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`Fourth, Zydney refutes Petitioner’s speculation that Zydney must have used
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`an undisclosed “structural component” dedicated exclusively to an “audio digital
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`file” ostensibly “because without one, the recipient device could not separate the
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`voice data from the other fields of data in the voice container and play back the voice
`
`data for the user – a capability the recipient in Zydney has.” Pet. 35; cf. EX2001
`
`¶50. Evidently Petitioner overlooked what is plain in Figure 3 of Zydney and its
`
`accompanying description. That disclosure provides no less than four different
`
`examples of “structural components” that each group together multiple items of
`
`information (e.g., elements 316, 318, and 320 are grouped underneath element 314).
`
`Clearly, Zydney did not share Petitioner’s contrived concern about a recipient client
`
`14
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`being unable to separate different items of information that are structurally grouped
`
`together. See In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008)
`
`(affirming a finding of nonobviousness because the alleged flaws in the prior art that
`
`ostensibly prompted the modification had not been recognized in the art itself).
`
`Accordingly, Petitioner’s unsupported speculation regarding Zydney’s voice
`
`container does not and cannot establish prima facie inherency for the admittedly
`
`undisclosed “object field” limitations of an “instant voice message.” See Kaiser
`
`Aluminum v. Constellium Rolled Products Ravenswood, LLC, IPR2014-01002,
`
`Paper 64, Final Written Decision, (P.T.A.B. Nov. 2, 2015) (quoting PAR Pharma.,
`
`Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014)).
`
`Fifth, the distinction between Zydney’s “structural components” and the
`
`claimed “object field” is not mere semantics but rather reflects fundamentally
`
`different technologies. A person of ordinary skill in the art (as of the effective filing
`
`date of December 18, 2003) would have recognized the word “field” as a term of art
`
`in the context of packet-switched networks, particularly in light of the teachings of
`
`the ’622 patent. EX2001 ¶48. More specifically, such a person would have
`
`recognized that network packets have headers with various fields describing things
`
`such as source address, destination address, port, protocol, etc. Id. Independent
`
`claim 3 structurally defines the instant voice message as requiring a specific “object
`
`field.” This claim language reflects, for example, the teachings in the specification
`
`15
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`IPR2017-01668
`U.S. Patent 8,724,622
`that “[t]he content of the object field is a block of data ….” EX1001, 14:37-38.
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`Sixth, not only does Zydney fail to disclosure or suggest the claim language,
`
`Zydney does not enable, and indeed could not even have functioned as described,
`
`using packet-switched fields of hypertext transfer protocol (“HTTP”), as it existed
`
`in August 7, 2000 (Zydney’s filing date). EX2001 ¶51. Zydney purports to utilize
`
`transport mechanisms that rely on data compression of then-existing hardware and
`
`software available to the client: “[t]he present invention is designed to adapt to the
`
`voice and data compression capabilities of the user’s existing hardware and
`
`software.” EX1003, 11:14-16. The only specific form of compression mentioned in
`
`Zydney is GSM compression. EX2001 ¶51 (citing EX1003, 25:11). It is not
`
`surprising that Zydney does not mention using HTTP in connection with any
`
`specification implementation because at that time (August 2000) HTTP did not have
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`compression. See EX2001 ¶51 (explaining that in 2003, Microsoft added
`
`compression to its IIS webserver because HTTP could not natively compress) (citing
`
`EX2002,
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`available
`
`at
`
`https://www.microsoft.com/technet/prodtechnol/
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`WindowsServer2003/Library/IIS/d52ff289-94d3-4085-bc4e-24eb4f312e0e.mspx?
`
`=true).
`
`Each one of the foregoing reasons provides an independent basis to deny the
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`Petition as failing to establish prima facie obviousness for “wherein the instant voice
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`16
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`IPR2017-01668
`U.S. Patent 8,724,622
`message includes an object field” (as recited in independent claim 3, and hence also
`
`in claims 4 and 5 depending therefrom).
`
`3.
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`Zydney teaches away from “wherein the instant voice message
`includes an action field identifying one of a predetermined set of
`permitted actions requested by the user” (claims 4 and 5)
`While Petitioner concedes that Zydney does not disclose “wherein the instant
`
`voice message includes an action field identifying one of a predetermined set of
`
`permitted actions requested by the user,” Petitioner overlooks explicit teachings in
`
`Zydney that would lead a person of ordinary skill in the art away from the proposed
`
`combination of Zydney with Hethmon. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
`
`1983) (“It is improper to combine references where the references teach away from
`
`their combination.”); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (a prior art
`
`reference teaches away from the claimed invention when a person of ordinary skill,
`
`upon reading the reference, “would be led in a direction divergent from the path that
`
`was taken by the applicant.”). EX2001 ¶52.
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`Petitioner acknowledges elsewhere in the Petition that Zydney defines its
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`“voice container” to mean “a container object that contains no methods ….” Pet. 35
`
`(quoting EX1003, 12:6-8). Contrary to the definitive statement that Zydney’s
`
`container—by intended design—contains no methods, Petitioner’s proposed
`
`modification would further require containment of “a ‘Method’ that identifies an
`
`action to be taken on a resource,” as allegedly disclosed in Hethmon. Pet. 38, 40.
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`17
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`IPR2017-01668
`U.S. Patent 8,724,622
`EX2001 ¶53. Zydney cannot be modified as proposed because it explicitly teaches
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`away from that combination. In re Grasselli, 713 F.2d at 743; In re Gurley, 27 F.3d
`
`at 553. EX2001 ¶54.
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`Furthermore, Petitioner has the burden of proof, yet fails, to explain how
`
`Zydney’s voice container (specifically designed to contain no methods) would still
`
`be satisfactory for its intended purpose if it was modified as proposed—i.e., such
`
`that it no longer qualifies as a voice container (at least according to Zydney’s
`
`definition). In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) (if
`
`proposed modification would render the prior art invention being modified
`
`unsatisfactory for its intended purpose, then there is no suggestion or motivation to
`
`make the proposed modification).
`
`
`
`Zydney does not render obvious “wherein the messaging system receives
`connection object messages from the plurality of instant voice message
`client systems, wherein each of the connection object messages includes
`data representing a state of a logical connection with a given one of the
`plurality of instant voice message client systems” (claims 24-26)
`The Petition relies on a proposed combination of Zydney with Hethmon for
`
`the limitation “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” (recited in
`
`independent claim 24 and its challenged dependent claims 25 and 26). The Petition
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`18
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`U.S. Patent 8,724,622
`should be denied at least because Zydney expressly teaches away from the proposed
`
`combination for multiple, independent reasons. EX2001 ¶55.
`
`1.
`
`Zydney expressly teaches away from use of “connection objects”
`as defined in the ’622 patent
`The Petition concedes that the ’622 specification provides the following
`
`lexicography for the “connection object” term:
`
`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 o
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