UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-1797
`PATENT 8,724,622
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.120
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`Table of Contents
`I.
`INTRODUCTION
`II.
`THE ’622 PATENT DESCRIBES INSTANT VOICE MESSAGING
`OVER A PACKET-SWITCHED NETWORK.
`A.
`Effective Filing Date of the ’622 Patent
`B.
`The ’622 Patent Describes and Claims Instant Voice
`Messaging over a Packet-Switched Network.
`The Challenged Claims of the ’622 Patent Recite a Method
`for Instant Voice Messaging over a Packet-Switched
`Network.
`III. PERSON OF ORDINARY SKILL IN THE ART
`IV. PETITIONER FAILS TO PROVE OBVIOUSNESS.
`A.
`Petitioner fails to prove that the proposed Griffin-Zydney
`combination renders obvious “wherein the instant voice
`message includes an object field including a digitized
`audio file” (claim 3)
`Petitioner fails to prove that the proposed Griffin-Zydney
`combination renders obvious “a network
`interface
`connected to a packet-switched network” (claim 3) and “a
`network interface coupled to the client device and
`connecting
`the client device
`to a packet-switched
`network” (claim 27 and 38)
`Petitioner fails to prove that the proposed Griffin-Zydney
`combination renders obvious “a communication platform
`system maintaining connection information for each of the
`plurality of instant voice message client systems indicating
`whether there is a current connection to each of the
`plurality of instant voice message client systems” (claim
`3)
`Petitioner fails to prove that the proposed Griffin-Zydney
`combination renders obvious “a document handler system
`for attaching one or more files to the instant voice
`message” (claim 27)
`Petitioner has failed to prove sufficient motivation to
`combine Griffin and Zydney as proposed
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`IPR2017-01797
`U.S. Patent 8,724,622
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`1
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`1
`1
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`3
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`5
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`13
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`21
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`24
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`C.
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`B.
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`C.
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`D.
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`E.
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`ii
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`1.
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`2.
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`3.
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`4.
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`F.
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`IPR2017-01797
`U.S. Patent 8,724,622
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`26
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`28
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`29
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`30
`36
`36
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`The Combination of Griffin and Zydney is Inoperable for
`Text-only Buddies
`The Combination of Griffin plus Zydney Would Render
`Zydney Inoperable for Its Intended Purpose.
`The Combination of Griffin plus Zydney Would Result in
`Zydney’s Messages Being Lost.
`Griffin’s and Zydney’s Methods of Managing Availability
`are Incompatible.
`The challenged dependent claims are allowable
`1.
`No proof of obviousness for dependent claim 4.
`2.
`No proof of obviousness for the display of “an indicia for
`each of the one or more potential recipients indicating
`whether the potential recipient is currently available to
`receive an instant voice message” (dependent claims 22 and
`39)
`38
`V. CONCLUSION
`40
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`Exhibit No.
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`2001
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`2002
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`2003
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`2004
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`
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`List of Exhibits
`Description
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`Declaration of William C. Easttom II
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`U.S. Pat. No. 7,372,826 (Dahod)
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`U.S. Pat. App. Pub. No 2004/0128356 (Bernstein)
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`Invalidity Contentions Submitted on December 16, 2016 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America’s, Inc., Case No. 2:16-cv-642
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`IPR2017-01797
`U.S. Patent 8,724,622
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`
`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Patent Owner”) submits this Patent Owner’s
`Response to Petition IPR2017-1797 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 8,724,622 B2, System and Method for Instant VoIP
`Messaging, (“the ’622 Patent” or “EX1001”) filed by Samsung Electronics America,
`Inc. (“Petitioner”).
`Petitioner argues that Claims 3, 4, 6–8, 10–13, 18, 21–23, 27, 32, 34–35, 38–
`39 would have been rendered obvious to a person having ordinary skill in the art (a
`“POSITA”) in 2003 in view of a user interface patent, U.S. Pat. No. 8,150,922 to
`Chris Michael Griffin et al. (“Griffin,” EX1005) and International Pat. App. Pub.
`No. WO 01/11824 A2 to Herbert Zydney et al. (“Zydney,” EX1006).
`The Board should deny IPR2017-1797 in its entirety because Petitioner fails
`to satisfy the All Elements Rule. Instead, Petitioner impermissibly attempts to fill in
`missing limitations, at least in part, by offering claim interpretations that are
`expressly proscribed by the unambiguous claim language. The user interface patent
`to Griffin does not describe or enable instant voice messaging. In addition, the
`references cannot and should not be combined as the Petition suggests.
`
`II.
`
`THE ’622 PATENT DESCRIBES INSTANT VOICE MESSAGING
`OVER A PACKET-SWITCHED NETWORK.
`A. Effective Filing Date of the ’622 Patent
`The ’622 Patent is in a family of patents including United States Patent Nos.
`7,535,890 (“the ’890 Patent”); 8,243,723 (“the ’723 Patent”); 8,199,747 (“the ’747
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`IPR2017-01797
`U.S. Patent 8,724,622
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`Patent”); and 8,995,433 (“the ’433 Patent”).1 The diagram below charts how this
`family of patents is interrelated.
`
`
`The ’622 Patent is titled “System and Method for Instant VoIP Messaging.”
`The ’622 Patent issued May 13, 2014 from U. S. Pat. App. No. 13/546,673, which
`
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` 1
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` All five related patents derive from United States Patent Application
`No. 10/740,030 and are referred to collectively as members of the ’622 Patent’s
`“family.”
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`2
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`IPR2017-01797
`U.S. Patent 8,724,622
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`is a Continuation of U.S. Pat. App. No. 12/398,063, filed on March 4, 2009, which
`is a Continuation of U.S. Pat. App. No. 10/740,030, filed on Dec. 18, 2003.
`
`B.
`
`The ’622 Patent Describes and Claims Instant Voice Messaging
`over a Packet-Switched Network.
`circuit-switched
`conventional
`’622 Patent
`describes
`how
`The
`communications enabled traditional telephony yet had a variety of technical
`disadvantages that limited developing other forms of communication over such
`networks. According to the ʼ622 Patent, “[c]ircuit switching provides a
`communication path (i.e., dedicated circuit) for a telephone call from the telephone
`terminal to another device 20 over the [public switched telephone network or] PSTN,
`including another
`telephone
`terminal. During
`the
`telephone call, voice
`communication takes place over that communication path.” EX1001, 1:32–34.
`The ʼ622 Patent expressly distinguishes circuit-switched networks from
`packet-switched networks at least in that the latter routes packetized digital
`information, such as “Voice over Internet Protocol (i.e., ‘VoIP’), also known as IP
`telephony or Internet telephony.” EX1001, 1:35–36. Because legacy circuit-
`switched devices were unable to communicate directly over packet-switched
`networks, media gateways were designed to receive circuit-switched signals and
`packetize them for transmittal over packet-switched networks, and vice versa.
`EX1001, 1:62–2:7. The conversion effected by media gateways highlights the fact
`that packetized data carried over packet-switched networks is different from and is
`incompatible with an audio signal carried over a dedicated circuit-switched network.
`EX1001, 1:24–34.
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`The ʼ622 Patent also describes how, notwithstanding the advent of instant text
`messages, at the time of the claimed inventions there was no similarly convenient
`analog to leaving an instant voice message over a packet-switched network.
`EX1001, 2:8–46. Rather, “conventionally, leaving a voice message involves dialing
`the recipient’s telephone number—without knowing whether the recipient will
`answer—waiting for the connection to be established, speaking to an operator or
`navigating through a menu of options, listening to a greeting message, and recording
`the message for later pickup by the recipient. In that message, the user must typically
`identify … herself in order for the recipient to return the call.” EX1001, 2:23–33.
`The ʼ622 Patent solved the problem. The ’622 Patent describes how a user-
`accessible client can be configured for instant voice messaging using a direct
`communication over a packet-switched network (e.g., through an Ethernet card).
`EX1001, 12:4–50. Client devices can be configured to “listen[] to the input audio
`device 212,” “record[] the user’s speech into a digitized audio file 210 (i.e., instant
`voice message) stored on the IVM client 208,” and “transmit[] the digitized audio
`file 210” as packetized data (e.g., using TCP/IP) over a packet-switched network
`(e.g., network 204) “to the local IVM server 202.” EX1001, 7:53–8:39, Fig. 2.
`The Abstract of the 622 Patent summarizes the technical disclosure:
`Methods, systems and programs for instant voice messaging over
`a packet-switched network are provided. A method for instant
`voice messaging may comprise receiving an instant voice
`message having one or more recipients, delivering the instant
`voice message to the one or more recipients over a packet-
`switched network, temporarily storing the instant voice message
`if a recipient is unavailable; and delivering the stored instant
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`voice message to the recipient once the recipient becomes
`available.
`EX1001, Abstract (emphasis added).
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`IPR2017-01797
`U.S. Patent 8,724,622
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`
`C. The Challenged Claims of the ’622 Patent Recite a Method for
`Instant Voice Messaging over a Packet-Switched Network.
`Independent Claims 3, 27, and 38—the independent claims challenged in
`this IPR—recite:
`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.
`
`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,
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`wherein the instant voice messaging application includes
`a document handler system for attaching one or more files to
`the instant voice message.
`
`38. 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,
`a display displaying a list of one or more potential
`recipients for an instant voice message.
`Among other patentable limitations, independent Claims 3, 27, and 38 each
`recite an “instant voice message”
`limitation and a “network
`interface”
`communicatively coupled to a “packet-switched network”. Independent Claim 3
`further recites, for example, a “messaging system” and an “object field including a
`digitized audio file” in the instant voice message. Independent Claim 27 further
`recites, for example, a “messaging system,” an “instant voice messaging
`application,” and a “document handler system”.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner alleges through its declarant, Zygmunt J. Haas, that “a person of
`ordinary skill in the art at the time of the alleged invention . . . 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 work experience in the
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`IPR2017-01797
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`relevant field, e.g., network communication systems. More education could have
`substituted for practical experience and vice versa.” Pet. 6 (citing EX1002 ¶15).
`Petitioner’s definition is not materially different from that offered by Uniloc’s
`declarant, Chuck Easttom. Specifically, Mr. Easttom, testified that a person of
`ordinary skill in the art is “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.” EX2001 ¶ 17. As should be
`apparent from his declaration and attached curriculum vitae, Mr. Easttom’s
`qualifications and experience exceed those of the hypothetical person having
`ordinary skill in the art. See EX2001 at Appendix A.
`
`IV. PETITIONER FAILS TO PROVE OBVIOUSNESS.
`“In an inter partes review ..., the petitioner shall have the burden of proving a
`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C.
`§ 316(e). IPR2017-1797 presents only theories of obviousness.2 It is Petitioner’s
`“burden to demonstrate both that a [POSITA] would have been motivated to
`combine the teachings of” the cited references “to achieve the claimed invention,
`and that the [POSITA] would have had a reasonable expectation of success in doing
`so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
`
`
`
` 2
`
` A patent claim is unpatentable under 35 U.S.C. §103(a) only 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).
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`IPR2017-01797
`U.S. Patent 8,724,622
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`(internal citation and quotation omitted); Apple v. Uniloc Luxembourg S.A., PR2017-
`000220, Paper No. 9, Decision Denying Institution, at 7 (emphasis in original) (“A
`determination of obviousness cannot be reached where the record lacks ‘explanation
`as to how or why the references would be combined to produce the claimed
`invention.’ TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)”).
`Petitioner fails to meet this burden.
`
`A.
`
`Petitioner fails to prove that the proposed Griffin-Zydney
`combination renders obvious “wherein the instant voice message
`includes an object field including a digitized audio file” (claim 3)
`In addressing independent claim 3, Petitioner argues that Griffin’s “message
`content 406” discloses the claimed “object field” and that it would have been
`obvious to a person of ordinary skill in the art at the time of the invention to include
`a digitized audio file, as allegedly taught by Zydney, in Griffin’s message content
`406. Paper 8 (Institution Decision) at 26-27. However, as Petitioner appears to
`acknowledge, Griffin does not expressly disclose its “speech message” is included
`within message content 406. See Pet. 27 (“Even if Griffin could be read such that
`the speech data is not contained in field 406 ….”). Indeed, Griffin’s explicit
`teachings would lead a POSITA attempting to include a digitized audio file within
`message content 406. This deficiency provides an independent basis to deny the
`Petition as to claim 3.
`Griffin’s disclosure is directed to “the display of a plurality of real-time
`speech and text conversations (e.g., chat threads) on limited display areas.” EX1005,
`1:10-11; see also id. at 1:54-56 (“it would be advantageous to provide a technique
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`IPR2017-01797
`U.S. Patent 8,724,622
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`for displaying multiple chat threads (or histories) using limited display areas.”).
`Griffin describes message content 406 only as displayable text information
`pertaining to either a text or speech message. See, e.g., EX1005 at Figs. 4 and 11,
`6:38-43, and 10:53-65. With reference to Figure 11, for example, Griffin states the
`elements 1104 (a short text message) and 1105 (a voice message) display certain
`“message content or text.” Id. 10:53-59.
`It is significant that Griffin describes its “message content” as only
`displayable text even in the context of a speech/voice message: “a generic character
`string or symbol is used to indicate that the message was a voice message.” Id.
`10:41-43. An example of displayable “message content” text for a speech message
`is shown in Figure 11, copied and highlighted below:
`
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`IPR2017-01797
`U.S. Patent 8,724,622
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`As shown in Figure 11 above, element 1105 indicates the highlighted message
`content as “(sn8) this voice,” which is an example of what Griffin refers to as “a
`generic character string or symbol [that] is used to indicate that the message was a
`voice message.” Id. Fig. 11, element 1105; 10:41-43.
`Thus, regardless whether a message is classified as speech or text, Griffin
`does not expressly or inherently disclose that “message content 406” can itself
`include anything other than displayable text. This would lead a POSITA away from
`attempting to modify Griffin’s text-based “message content 406” to include, instead,
`a digitized audio file (i.e., something other than displayable text). In re Gurley, 27
`F.3d 551, 553 (Fed. Cir. 1994) (a prior art reference teaches away from a proposed
`combination 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.”).
`Petitioner has not and cannot overcome this deficiency by speculating,
`outside the four corners of Griffin, that in the context of speech messages the
`“message content 406” must itself necessarily be configured to include not only the
`displayable text described in the reference (and summarized above), but also
`non-displayable “speech data for a speech message.” Pet. 26. Tellingly, Petitioner
`cites no portion of Griffin for its inherency argument concerning the supposed
`inherent configuration of “message content 406.” Rather, Petitioner cites only to
`ipse dixit testimony of its declarant, which merely repeats, verbatim, the same
`unsupported and unexplained attorney argument of the Petition.
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`IPR2017-01797
`U.S. Patent 8,724,622
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`The law is clear that Petitioner cannot prove obviousness through conclusory
`and speculative testimony of a declarant. K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362, 1365-66 (Fed. Cir. 2014); Alza Corp. v. Mylan Labs., Inc., 464 F.3d
`1286, 1290 (Fed. Cir. 2006) (“legal determinations of obviousness, as with such
`determinations generally, should be based on evidence rather than on mere
`speculation or conjecture.”); 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
`publications relied upon”) (emphasis added); InfoBionic, Inc. v. Braemar
`Manufacturing, LLC, IPR2015-01704, Paper 11 (Feb. 16, 2016) (denying
`institution, because expert merely repeated the argument in the Petition about what
`a reference meant without explaining why the expert believed that meaning to be
`correct).
`the Board should reject Petitioner’s speculative and
`Accordingly,
`unsupported inherency argument that Griffin’s “message content 406” must itself
`necessarily be configured to include not only the displayable text pertaining to a
`speech message, but also the “speech data for a speech message.”
`There is likewise no merit to Petitioner’s alternative argument (offered as a
`tacit concession) that “[e]ven if Griffin could be read such that the speech data is
`not contained in field 406, given message 400 carries speech data (Part IX.A.1.c),
`the speech data would nevertheless disclose the claimed ‘object field.’” Pet. 27.3
`
`
` Petitioner’s citation to “Part IX.A.1.C” appears to be in error because there is no
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`IPR2017-01797
`U.S. Patent 8,724,622
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`Petitioner appears to argue that because Griffin allegedly discloses its message 400
`includes speech data, that data must necessarily be included within an “object field”
`as claimed. This secondary inherency argument also fails.4
`Petitioner’s co-defendants failed to raise a similar inherency argument with
`respect to Zydney in related matters also challenging claim 3 of the ’622 Patent. In
`IPR2017-02080, for example, the Board held that “[a]lthough Zydney discloses that
`its voice container includes ‘voice data’ and ‘information concerning codec type,
`size, sample rate, and data,’ in addition to the ‘voice data properties components’
`depicted in Figure 3 (see Ex. 1005, 23:1–2, 23:10–12), and we understand that
`Figure 3, therefore, does not provide a “comprehensive . . . list” of voice container
`components (cf. Prelim. Resp. 27), we agree with Patent Owner that Petitioner has
`not shown that voice data necessarily would be included in an “object field” (see id.
`
`
`
`corresponding section in the Petition. It is unclear if Petitioner had intended, instead,
`to cite to Section VIII.A.1.C., particularly given that section does not mention the
`couplet “speech data.” Patent Owner should not be expected to guess as to which
`argument of which section Petitioner had intended to cite.
`4 Petitioner has essentially presented two inherency arguments as mutually-exclusive
`possibilities: (1) that “message content 406” must include the speech data; and (2) if
`not in “message content 406,” then some unspecified and undisclosed “field” must
`include the speech data. Petitioner’s presentation of two mutually-exclusive
`possibilities is a tacit admission that an “object field” as claimed is not necessarily
`present in either. “In order to rely on inherency to establish the existence of a missing
`claim limitation in an obviousness analysis, ‘the limitation at issue necessarily must
`be present, or the natural result of the combination of elements explicitly disclosed
`by the prior art.’” Kaiser Aluminum v. Constellium Rolled Products Ravenswood,
`LLC, IPR2014-01002 (P.T.A.B. Nov. 2, 2015), Paper 64 (quoting PAR Pharma.,
`Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014)).
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`IPR2017-01797
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`
`at 26–27).” IPR2017-0280, Paper 10 (Decision Denying Institution) at 17.
`The instant Petition fails under the same reasoning. Because the Board in
`IPR2017-0280 correctly concluded the claimed “object field” is not inherently
`disclosed in Zydney, notwithstanding the Board’s observation that Zydney’s voice
`container includes voice data (id.), it follows that the Petition here fails to prove
`inherency of the claimed “object field” merely by alleging Griffin’s message 400
`includes speech data.
`Accordingly, Petitioner’s alleged motivation to combine Griffin and Zydney
`is illusory because Griffin does not expressly or inherently disclose that its “message
`content 406” is an “object field” that includes speech data (let alone a digitized audio
`file as claimed). Rather, as explained above, Griffin teaches away from such a
`combination. For the foregoing reasons, the Petition should be denied as failing to
`prove obviousness for “wherein the instant voice message includes an object field
`including a digitized audio file,” as recited in independent claim 3.
`
`B.
`
`Petitioner fails to prove that the proposed Griffin-Zydney
`combination renders obvious “a network interface connected to a
`packet-switched network” (claim 3) and “a network interface
`coupled to the client device and connecting the client device to a
`packet-switched network” (claim 27 and 38)
`Griffin fails to disclose, and rather teaches away from, “a network interface
`coupled to the client device and connecting the client device to a packet-switched
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`IPR2017-01797
`U.S. Patent 8,724,622
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`network” (as recited in independent claims 27 and 38).5 The Petition attempts to
`map Griffin’s network 203 onto the claimed “packet-switched network.” Pet. 12.
`Presumably, this is because Petitioner recognizes that Griffin discloses its mobile
`terminals 100 connect only to a circuit-switched cellular network 202. See EX1005,
`Fig. 2 (reproduced below, as annotated by Petitioner).
`
`
`Griffin does not identify any of its mobile terminals 100 as having “a network
`interface coupled to the client device and connecting the client device to a packet-
`switched network” network 203. This is undisputed. Nevertheless, Petitioner
`attempts to save its argument by rewriting the claim language as “a network
`interface that provides an indirect connection to a packet-switched network.” Pet.
`
`
`
` 5
`
` One of ordinary skill in the art would understand a network interface to be “the
`point of interconnection between a computer and a private or public network.”
`EX2001 ¶ 47.
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`IPR2017-01797
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`12. This is impermissible. The “connecting” and “connected to” claim language is
`not directed to what the network interface provides, but rather explicitly and
`unambiguously recites a direct structural interrelationship—i.e., “a network
`interface coupled to the client device and connecting the client device to a packet-
`switched network” and “a network interface connected to a packet-switched
`network.” Thus, Petitioner’s attempt to redraft of the claim language to save its
`erroneous theory should be rejected.
`The claim language itself proscribes interpreting the “connecting” and
`“connected to” limitations to encompass indirect downstream connections.
`Independent claims 27 and 38, for example, unambiguously define the “network
`interface” as “connecting the client device to a packet-switched network.” The plain
`language of the claim, therefore, confirms that it is the “network interface” itself
`that effects the “connecting” between the client device and the packet-switched
`network. Similarly, claim 3 identifies the connected elements as a “network
`interface” (i.e., a component that enables direct interfacing with a network) and “a
`packet-switched network.”
`Petitioner’s indirect interpretation is further precluded by the remainder of
`the intrinsic evidence. For example, one embodiment is summarized as follows:
`
`According to yet a further embodiment of the present invention,
`there is provided an instant voice messaging system for
`delivering instant messages over a plurality of packet-switched
`networks, the system comprising: a voice-over-internet-protocol
`(VoIP) telephone connected to a local network for providing
`input audio; a client connected to the local network, the client
`selecting one or more external recipients connected to an external
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`IPR2017-01797
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`network outside the local network, generating an instant voice
`message therefor using the input audio provided by the VoIP
`telephone, and transmitting the selected recipients and the instant
`voice message therefor over the local network and the external
`network; an [sic] server connected to the external network, the
`external server receiving the selected recipients and the instant
`voice message therefor, and delivering the instant voice message
`to the selected recipients over the external network, the selected
`recipients being enabled to audibly play the instant voice
`message.
`EX1001 4:1-18 (emphasis added).
`The above description unambiguously confirms that the claim limitation
`“connected to” refers to one element directly connected to another. While the client
`is described as transmitting over the local network and external network, only the
`local network is identified as being “connected to” the client. Similarly, the only
`network identified as being “connected to” the server is the external network, even
`though the server receives communications transmitted over both the local network
`and the external network.
`Interpreting the “connecting” and “connected to” limitations as encompassing
`so-called indirect connections (as Petitioner proposes) would make the above
`selective descriptions nonsensical, given that the client and server are described as
`connected to only selective ones of either the local network or the external network,
`but not both.6 As further evidence that this selective “connected to” description
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` 6
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` Petitioner argues through its declarant that the claim language does not require that
`a “network interface” provide a direct connection to a packet-switched network.
`EX1002 ¶ 105. The only evidence alleged as support for this conclusion is a citation
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`U.S. Patent 8,724,622
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`intentionally referred only to direct connections, the above description is recited
`(nearly verbatim) in certain claims within this patent family. See, e.g., U.S. Patent
`No. 7,535,890, claim 14.
`
`Another example embodiment in the ’622 patent is summarized as follows:
`
`According to still a further embodiment of the present invention,
`there is provided an instant voice messaging system for
`delivering instant messages over a plurality of packet-switched
`networks, the system comprising: a client connected to an
`external network, the client selecting one or more recipients
`connected to a local network, generating an instant voice
`message therefor, and transmitting the selected recipients and the
`instant voice message therefor over the external network; an
`external server system connected to the external network, the
`external server system receiving the selected recipients and the
`instant voice message, and routing the selected recipients and the
`instant voice message over the external network and the local
`network; a local server connected to the local network, the local
`server receiving the selected recipients and the instant voice
`message therefor, and delivering the instant voice message to the
`selected recipients over the local network, the selected recipient
`being enabled to audibly play the instant voice message.
`EX1001 4:19-36 (emphasis added).
`Unlike the prior embodiment, the client here is described as connected to the
`external network (i.e., as opposed to the local network). The above description also
`identifies an external server system connected to the external network and a local
`server system connected to the local network. While each server element is
`identified as being connected to a respective single network, the external server
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`to the Background of the ʼ622 Patent, which does not purport to describe the claimed
`invention, much less the claimed “network interface” in particular. EX2001 ¶ 49.
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`system routes certain information over the external network and the local network.
`This further confirms that use of the phrase “connected to” in the claims defines
`how elements are directly connected. Petitioner’s arguments should be rejected as
`premised on an erroneous claim construction, which Petitioner fails to defend within
`the Petition itself.
`Evidently recognizing the weakness of its argument based on Griffin alone,
`which relies is premised on an erroneous claim construction, Petitioner argues in the
`alternative that “a POSA would have been motivated to modify Griffin’s
`system/process so that network interface 306 of terminal 100 is directly connected
`to network 203, similar to as described in Zydney.” Pet. 15.
`Griffin teaches away from the proposed modification to its system. For
`example, Griffin states “the wireless carrier infrastructures 202 comprise those
`elements necessary to support wireless communications with the terminals 100.”
`EX1005 3:54-57 (emphasis added). That unambiguous disclosure would lead a
`POSITA away from attempting to bypass the wireless carrier infrastructure 202,
`including its elements explicitly deemed “necessary” to interface with terminals
`100. In re Gurley, 27 F.3d at 553 (a prior art reference teaches away from a proposed
`combination 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.”).
`Accordingly, Petitioner has failed to prove sufficient motivation to modify
`Griffin as proposed. Id.; In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.