Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 8
`
`Entered: February 6, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01797
`Patent 8,724,622 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2017-01797
`Patent 8,724,622 B2
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`
`I. INTRODUCTION
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting an inter partes review of claims 3, 4, 6–8, 10–
`13, 18, 21–23, 27, 32, 34, 35, 38, and 39 of U.S. Patent No. 8,724,622 B2
`(Ex. 1001, “the ’622 patent”). Pet. 1. Uniloc Luxembourg S.A. (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute inter partes
`review under 35 U.S.C. § 314. Upon considering the record developed thus
`far, for reasons discussed below, we institute inter partes review as to all
`challenged claims.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’622 patent is involved in Uniloc USA,
`Inc. v. Samsung Electronics America, Inc., No. 2:16-cv-00642-JRG (E.D.
`Tex.), among numerous other actions in the United States District Court for
`the Eastern District of Texas. Pet. 1−3; Paper 3, 2.
`Concurrently with the instant Petition, Petitioner additionally filed a
`petition requesting inter partes review of claims 14–17, 19, 24–26, 28–31,
`and 33 of the ’622 patent (Case IPR2017-01798). IPR2017-01798, Paper 1.
`The ’622 patent also has been the subject of four earlier requests for inter
`partes review—two filed by Apple Inc. (“Apple”) (Cases IPR2017-00223
`and IPR2017-00224) and two filed by Facebook Inc. and WhatsApp Inc.
`(Cases IPR2017-01667 and IPR2017-01668)—as well as later requests filed
`by Apple (Cases IPR2017-01804 and IPR2017-01805), Google Inc.
`(Cases IPR2017-02080 and IPR2017-02081), and Huawei Device Co., Ltd.
`(Case IPR2017-02090).
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`B. Overview of 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.
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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 the
`user’s speech into . . . digitized audio file 210 (i.e., instant voice message).”
`Id. at 8:4–10.
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`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
`wherein the instant voice message includes an object field
`including a digitized audio file.
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`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 Ground of Unpatentability
`Petitioner asserts three grounds of unpatentability (Pet. 6–7):
`
`Challenged Claim(s)
`3, 4, 6–8, 10, 11, 13, 18, 21–23,
`27, 32, 34, 35, 38, 39
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`Basis
`
`References
`
`§ 103(a) Griffin1 and Zydney2
`§ 103(a) Griffin, Zydney, and
`Aravamudan3
`§ 103(a) Griffin, Zydney, and
`Vuori4
`
`Petitioner also relies on a Declaration of Zygmunt J. Haas, Ph.D., filed as
`Exhibit 1002.
`
`
`1 Griffin et al., US 8,150,922 B2, issued April 3, 2012 (Ex. 1005).
`2 Zydney et al., WO 01/11824 A2, published February 15, 2001 (Ex. 1006).
`3 Aravamudan et al., US 6,301,609 B1, issued October 9, 2001 (Ex. 1009).
`4 Vuori, US 2002/0146097 A1, published October 10, 2002 (Ex. 1015).
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`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 construction
`standard to be applied in an inter partes review proceeding). 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).
`Petitioner contends that the Board need not construe the challenged
`claims for resolution of the controversy in this case and that the challenged
`claims should be given their plain and ordinary meaning under the broadest
`reasonable interpretation standard. Pet. 8–9. Neither Petitioner nor Patent
`Owner proposes a construction for any claim term at this time. We agree
`with Petitioner that no terms require express construction for purposes of
`this Decision.
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`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;5 and (4) objective evidence of
`
`
`5 Citing Dr. Haas’s testimony, Petitioner proposes an assessment of the level
`of skill in the art with respect to the ’622 patent, contending that “[a] person
`of ordinary skill in the art at the time of the alleged invention of the ’622
`Patent (‘POSA’) would have had at least a bachelor’s degree in computer
`science, computer engineering, electrical engineering, or the equivalent and
`at least two years of experience in the relevant field, e.g., network
`communication systems,” and that “[m]ore education can substitute for
`practical experience and vice versa.” Pet. 8 (citing Ex. 1002 ¶¶ 15–16).
`Although Patent Owner does not respond to this assessment or propose an
`alternative assessment in the Preliminary Response, we note that Patent
`Owner’s expert William C. Easttom II offers a similar assessment in his
`declaration testimony in this case, opining that a person having ordinary skill
`in the art “would be someone with a baccalaureate degree related to
`computer technology and 2 years of experience with network
`communications technology, or 4 years of experience without a
`baccalaureate degree.” Ex. 2001 (Easttom Declaration) ¶ 17. For purposes
`of this Decision and to the extent necessary, we adopt Petitioner’s
`assessment.
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`nonobviousness, i.e., secondary considerations.6 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. Overview of Asserted Prior Art
`a. Griffin
`Griffin, titled “Voice and Text Group Chat Display Management
`Techniques for Wireless Mobile Terminals,” relates to a technique of
`managing the display of “real-time speech and text conversations (e.g., chat
`threads) on limited display areas.” Ex. 1005, [54], 1:9−11. Griffin discloses
`a wireless mobile terminal as shown in Figure 1, reproduced below.
`
`
`
`
`6 Patent Owner does not contend in its Preliminary Response that such
`secondary considerations are present.
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`Figure 1, above, depicts mobile terminal 100 comprising speaker 103,
`which renders signals such as received speech audible; display 102 for
`rendering text and graphical elements visible; navigation rocker 105, which
`allows a user to navigate a list or menu displayed on the screen;
`microphone 107, for capturing the user’s speech; and push-to-talk button
`101, which allows the user to initiate recording and transmission of audio.
`Id. at 3:14−30. Griffin also describes, in connection with Figure 2,
`reproduced below, the overall system architecture of a wireless
`communication system where the mobile terminals communicate with a chat
`server complex. Id. at 3:49−51.
`
`Figure 2, above, illustrates wireless carrier infrastructures 202, which
`support wireless communications with mobile terminals 100, such that the
`mobile terminals wirelessly transmit data to a corresponding
`infrastructure 202 for sending the data packets to communication network
`203, which forwards the packets to chat server complex 204. Id. at 3:49−61.
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`Communication network 203 is described as a “packet-based network,
`[which] may comprise a public network such as the Internet or World Wide
`Web, a private network such as a corporate intranet, or some combination of
`public and private network elements.” Id. at 3:61−65.
`Griffin’s chat server complex 204 receives encoded data comprising
`text, speech, and/or graphical messages (or some combination thereof),
`when a plurality of users chat together (i.e., send chat messages from one
`terminal 100 to another). Id. at 4:11−15; 4:62−65. An outbound chat
`message, for example, is decomposed to locate the list of recipients, and the
`recipient’s current status is determined. Id. at 5:9−15. Griffin describes
`presence status 702 as “an indicator of whether the recipient is ready to
`receive the particular type of message, speech and/or text messages only,
`etc.).” Id. “When presence status 702 changes, the presence manager 302
`[of server complex 204] sends a buddy list update message 600 to all the
`subscribers listed in the subscriber identifier field 706 of the corresponding
`presence record 700.” Id. at 5:27−30.
`Figure 4 of Griffin is reproduced below.
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`Figure 4, above, is a schematic illustration of an outbound text
`message 400 sent by terminal 100 in accordance with Griffin’s invention.
`Id. at 2:51–52, 6:38–39. As shown in Figure 4, outbound chat message 400
`includes, among other fields, fields for message type 401 and message
`content 406. Id. at 6:39–44.
`Griffin provides a buddy list display illustrated in Figure 9,
`reproduced below. Id. at 8:15−16.
`
`
`Figure 9, above, depicts title bar 901, where inbound chat message
`indicator 905 is an icon accompanied by an audible sound when the icon is
`first displayed, indicating to the user that there is at least one unheard or
`unread inbound chat message that has arrived at terminal 100. Id.
`at 8:17−18, 8:28−32. Left softkey 910 labeled “Select” permits selection of
`a particular buddy for chatting, selection of which is indicated with selection
`indicator 906. Id. at 8:45−52, 8:60−67, 9:1−5. “If the user pushes-to-talk,
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`the display switches to the chat history, and the user is able to record and
`transmit a speech message and consequently start a new thread with the
`selected buddies.” Id. at 9:27−31.
`b. 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. 1006, [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
`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.
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`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
`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.
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`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. 1006, 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
`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
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`device and the software agent. Ex. 1006, 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
`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. 1006, 19:6–7. Formatting the container
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`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.
`
`
`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
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`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.
`c. Aravamudan
`Aravamudan, titled “Assignable Associate Priorities for User-
`Definable Instant Messaging Buddy Groups,” describes an instant messaging
`services platform in which a user is able to define rules for responding to
`received data and communications. Ex. 1009, [54], [57]. Figure 1 of
`Aravamudan is reproduced below.
`
`Figure 1, above, is a block diagram illustrating an exemplary
`architectural configuration of Aravamudan. Id. at 2:55–58. With reference
`to Figure 1, communications services platform 160 comprises a number of
`client devices 140 connected to instant message (“IM”) server 130. Id.
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`at 4:59–64. Each client device’s connection status (e.g., online/offline) is
`maintained on a database located on platform 160. Id. at 8:5–10.
`Figure 7 of Aravamudan is reproduced below.
`
`
`Figure 7, above, is a flow diagram of an exemplary method utilized to
`determine termination of a network session and update a Communication
`Services Platform (CSP) in accordance with Aravamudan’s invention. Id.
`at 3:10–13. Specifically, to determine whether a user is online, IM
`server 130 periodically polls each client device 140. Id. at 8:5–19, Fig. 7
`(step 280). If a user is online, the user’s client device 140 returns a
`response. Id. at 8:19–21; Fig. 7 (step 282). If no response is returned, IM
`server 130 determines that client device 140 is offline and updates the
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`database to reflect the offline status of the device. Id. at 8:21–31, Fig. 7
`(steps 284, 286).
`d. Vuori
`Vuori, titled “Short Voice Message (SVM) Service Method,
`Apparatus and System,” discloses a method for sending voice-type short
`messages using an SVM service. Ex. 1015, [54], [57], ¶ 31. Vuori teaches
`that SVMs are “recorded in the sending terminal and sent to a[n] SVM
`service center (SVMSC),” and a “second terminal may then commence a
`bidirectional communication so that an instant voice message session can be
`established.” Id. at [57].
`In one embodiment, a user initiates a short voice message by pressing
`a menu key on a user equipment, which prepares to receive the message and
`may emit a sound to alert the user to commence speaking. Id. ¶ 32, Figs. 1–
`2. The user equipment then receives and stores the short voice message. Id.
`Next, the user “select[s] one or more intended recipients” and initiates the
`transfer. Id. ¶ 33. The short voice message is then sent to the SVMSC,
`which “check[s]” and “determines the availability of the one or more
`intended recipients.” Id. ¶¶ 34, 50; see id. ¶ 37. The SVMSC sends the
`short voice message “immediately to the intended recipients who are
`available.” Id. ¶ 34; see id. ¶ 50. For recipients who are not available,
`however, the SVMSC “temporarily stor[es]” the message and “continue[s]
`attempting to send [the message] . . . until the[ recipients] become available
`or until a time out occurs.” Id. ¶¶ 34, 51. Upon delivery of the short voice
`message, the recipient may play back the message. Id. ¶ 35, Figs. 1–2.
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`Vuori teaches that the SVM service may be carried out in a Global
`System for Mobile communications (“GSM”) network as shown in Figure 3,
`reproduced below. Id. ¶ 37.
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`Figure 3 of Vuori
`In Figure 3, SVMSC 50 is shown along with interworking mobile
`switching center (“MSC”) 52 connected by line 54 to GSM Network
`Subsystem 56. Id. Gateway 58 is provided for interworking between
`SVMSC 50 and MSC 58 of another GSM network 59. Id. Vuori explains
`that GSM Network Subsystem 56 also includes MSC 66 connected to a base
`station subsystem (“BSS”) 68 as well as other base station subsystems 70 for
`communication with a plurality of mobile stations, but that only one mobile
`station 72 is shown in Figure 3. Id. According to Vuori, MSC 66 is also
`connected to public switched telephone network (“PSTN”)/Integrated
`Services Digital Network (“ISDN”) network 78 for allowing mobile stations
`to communicate with wired telephone sets in a circuit-switched manner, as
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`well as to a plurality of databases that may in turn be connected directly to
`MSC 66 or via data network 80 and operation and maintenance center 82.
`Id.
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`3. Arguments and Analysis
`Petitioner contends Griffin discloses all limitations of independent
`claims 3, 27, and 38, with the exception of “a communication platform
`system maintaining connection information . . . indicating whether there is a
`current connection to each of the plurality of instant voice message client
`systems” and the instant voice message including an object field “including
`a digitized audio file,” as recited in claim 3, and “a document handler system
`for attaching one or more files to the instant voice message,” as recited in
`claim 27, for which limitations Petitioner relies on the combined teachings
`of Griffin and Zydney.7 Pet. 9–30, 61–67, 70–71. Petitioner supports its
`arguments, including reasons that a person of ordinary skill in the art would
`have combined the teachings of Griffin and Zydney, with Dr. Haas’s
`testimony.
`We have reviewed the Petition and the evidence cited in support
`thereof and are persuaded that, at this juncture, Petitioner has established a
`reasonable likelihood of prevailing in its contention that claims 3, 4, 6–8, 10,
`11, 13, 18, 21–23, 27, 42, 34, 35, 38, and 39 of the ’622 patent are
`unpatentable as obvious over Griffin and Zydney; that claim 12 of the ’622
`is unpatentable as obvious over Griffin, Zydney, and Aravamudan; and that
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`7 Petitioner also relies on Zydney’s disclosure of agents 22, 28 and server 24
`as being “directly connected to a packet-switched network (e.g., Internet),”
`as an alternative in the event claims 3, 27, and 38 were to be construed to
`require a “direct” connection to a packet-switched network. Pet. 12–16.
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`claim 11 would be unpatentable as obvious over Griffin, Zydney, and Vuori
`if not obvious over Griffin and Zydney alone. Patent Owner’s arguments
`presented on the current record have not persuaded us to the contrary.
`Specifically, Patent Owner has not persuaded us that the following
`arguments are supported by facts sufficient to overcome the evidence
`presented in the Petition:
`i. Griffin does not disclose an “instant voice message,” as recited in
`claims 3, 27, and 38 (Prelim. Resp. 24−30);
`ii. Griffin and Zydney do not disclose a “network interface”
`connected to a “packet-switched network,” as recited in claims 3,
`27, and 38 (Prelim. Resp. 30−36);
`iii. Griffin and Zydney do not render obvious “wherein the instant
`voice message includes an object field including a digitized audio
`file,” as recited in claim 3 (id. at 37−41);
`iv. Griffin and Zydney do not render obvious “wherein the instant
`voice messaging application includes a document handler system
`for attaching one or more files to the instant voice message,” as
`recited in claim 27 (id. at 41–44) and
`v. Griffin would not have been combined with Zydney (id. at 44−59).
`We address these arguments in turn below.
`i
`With regard to the “instant voice message” argument, Patent Owner
`focuses on whether Griffin’s disclosures are for “text messages” and
`whether speech chat messages are in “real-time.” Id. at 26−27. On this
`record, none of these arguments overcome the express disclosure in Griffin
`of “managing the display of a plurality of real-time speech and text
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`conversations (e.g., chat threads) on limited display areas.” Ex. 1005,
`1:9−11 (emphasis added). Further, Griffin describes both inbound and
`outbound messages as either text or speech. Id. at 6:39−41, 11:48−50.
`Additionally, although Griffin describes “queuing” an inbound speech
`message, Griffin explains that the message is nevertheless received at the
`terminal, and the queuing is only for automatic playback. Id. at 11:50−67.
`In other words, with the evidence available, we do not agree with Patent
`Owner’s characterization of Griffin as indicating that a terminal is
`configured to “receive a message at some point in the future.” See Prelim.
`Resp. 29−30 (arguing that “available” status does not result in the terminal
`receiving the message because of “queuing”). Consequently, we are not
`persuaded by Patent Owner’s arguments that Griffin’s speech chats do not
`disclose instant voice messages.
`
`ii
`Patent Owner’s argument that Griffin does not disclose a network
`interface connected to a packet-switched network, premised on the
`contention that Griffin “illustrates a system in which each terminal includes
`a network interface that is the point of interconnection between the terminal
`and the wireless carrier infrastructure,” where that “wireless carrier
`infrastructure” is not a packet-switched network (Prelim. Resp. 31–33), is
`also unpersuasive. As Petitioner points out, the challenged claims recite that
`the claimed network interface must be “connected” to a packet-switched
`network” but do not recite that it must be “directly connected.” Pet. 12–13
`(citing Ex. 1002 ¶ 105). On the record before us, we are persuaded that
`Griffin discloses a network interface through which Griffin’s mobile
`terminals are connected to a packet-switched network. In particular, as
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`pointed out by Petitioner and explained in the summary of Griffin in
`Section III.B.2.a. above, Figure 2 of Gr