`
`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
`U.S. Patent No. 8,724,622
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case IPR2017-01797 – Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. CLAIM CONSTRUCTION ........................................................................... 1
`
`A.
`
`“Instant Voice Message” (All Challenged Claims) ............................. 1
`
`1.
`
`2.
`
`The IVM Is a Message Containing Digitized Speech ............... 1
`
`“Instant” Means Capable of Being Transmitted in Real
`Time to a Recipient Device ........................................................ 4
`
`B.
`
`“Network Interface” (Claims 3, 27, 38) ............................................... 5
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART ................................................................................................................ 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Combination of Griffin and Zydney Discloses the Claimed
`“Object Field” ....................................................................................... 8
`
`Griffin Alone or in Combination with Zydney Discloses the
`Claimed “Network Interface” ............................................................. 10
`
`The Combination of Griffin and Zydney Discloses “Connection
`Information” Indicating Whether There Is a “Current
`Connection” ........................................................................................ 13
`
`The Combination of Griffin and Zydney Discloses “Attaching
`One or More Files to the Instant Voice Message” ............................. 15
`
`1.
`
`2.
`
`Attaching a file to the IVM ...................................................... 15
`
`IVM Application That Includes a Document Handler ............ 17
`
`E.
`
`The Combination of Griffin and Zydney Discloses an “Action
`Field” .................................................................................................. 18
`
`F.
`
`The Combination of Griffin and Zydney Discloses an “Indicia” ....... 20
`
`G. A POSA Would Have Been Motivated to Combine Griffin and
`Zydney for the Reasons Explained in the Petition. ............................. 21
`
`i
`
`

`

`Case IPR2017-01797 – Petitioner’s Reply
`
`1.
`
`PO’s Arguments Regarding Griffin’s Text-Only Buddies
`Are Misplaced .......................................................................... 21
`
`2.
`
`Griffin Is Compatible With Zydney ......................................... 23
`
`3. Messages Would Not Be Lost in the Combined System ......... 24
`
`4.
`
`Griffin’s and Zydney’s Teachings Related to Availability
`are Compatible ......................................................................... 25
`
`IV. CONCLUSION ............................................................................................. 27
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`

`

`Case IPR2017-01797 – Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments,
`825 F.3d 1373 (Fed. Cir. 2016) .......................................................................... 25
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ............................................................................ 13
`
`Facebook, Inc. v. Uniloc USA, Inc.,
`No. IPR2017-01257, Paper 8 (P.T.A.B. Dec. 4, 2017) ...................................... 17
`
`
`
`
`
`
`
`iii
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`LIST OF EXHIBITS1
`
`No.
`
`Description
`
`1001 U.S. Patent No. 8,724,622
`
`1002 Declaration of Dr. Zygmunt J. Haas
`
`1003 Curriculum Vitae of Dr. Zygmunt J. Haas
`
`1004
`
`File History of U.S. Patent Application No. 13/546,673,
`which issued as U.S. Patent No. 8,724,622
`
`1005 U.S. Patent No. 8,150,922 (“Griffin”)
`
`1006
`
`International Published Application No. WO01/11824A2
`(“Zydney”)
`
`1007 RESERVED
`
`1008 WO 02/17650A1
`
`1009 U.S. Patent No. 6,301,609 (“Aravamudan”)
`
`1010
`-
`1014
`
`RESERVED
`
`1015 U.S. Patent Publication No. 2002/0146097 (“Vuori”)
`
`1016
`-
`1018
`
`1019
`
`RESERVED
`
`File History of U.S. Patent Application No. 12/398,063,
`which issued as U.S. Patent No. 8,243,723
`
`1020 U.S. Patent No. 8,243,723
`
`
`
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`X
`
`X
`
`
`
`X
`
`
`
`X
`
`X
`
`1 Citations to non-patent publications are to the original page numbers of the
`
`publication, and citations to U.S. patents are to column:line number of the patents.
`
`iv
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`No.
`
`Description
`
`Previously
`Submitted
`
`1021
`
`File History of U.S. Patent Application No. 10/740,030,
`which issued as U.S. Patent No. 7,535,890
`
`1022 U.S. Patent No. 7,535,890
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`Joint Claim Construction Chart, Uniloc USA, Inc. v.
`Samsung Elecs. Am., Inc., Case No. 2:16-cv-642 (Lead
`Case) (E.D. Tex.)
`
`Harry Newton, Newton’s Telecom Dictionary (16th. ed.
`2000)
`
`John Rittinghouse, IM Instant Messaging Security (1st ed.
`2005)
`
`Dreamtech Software Team, Instant Messaging Systems:
`Cracking the Code (2002)
`
`Upkar Varshney et al., Voice over IP, Communication of
`the ACM (2002, Vol. 45, No. 1)
`
`Iain Shigeoka, Instant Messaging
`Protocols (2002)
`
`in Java: Jabber
`
`Trushar Barot & Eytan Oren, Guide to Chat Apps, TOW
`Center for Digital Journalism, Columbia University (2005)
`
`Samir Chatterjee et al., Instant Messaging and Presence
`Technologies for College Campuses, IEEE Network (Nov.
`9, 2005)
`
`Daniel Minoli & Emma Minoli, Delivering Voice Over IP
`Networks (2nd ed. 2002)
`
`Thomas Porter & Michael Gough, How to Cheat at VoIP
`Security (1st ed. 2007)
`
`Harry Newton, Newton’s Telecom Dictionary (18th. ed.
`2002)
`
`Justin Berg, The IEEE 802.11 Standardization Its History,
`Specification, Implementations and Future, George Mason
`University, Technical Report Series (2011)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`v
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`Description
`
`Previously
`Submitted
`
`No.
`
`1035
`
`Wolter Lemstra & Vic Hayes, Unlicensed Innovation: The
`Case of Wi-Fi, Competition and Regulation in Network
`Industries (2008, Vol. 9, No. 2)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`
`
`
`
`
`
`1036 U.S. Patent Application Publication No. 2003/0039340
`
`1037
`
`International Published Application No. WO 01/24036
`
`1038 U.S. Patent No. 9,179,495
`
`1039 U.S. Patent Application Publication No. 2005/0025080
`
`1040
`
`1041
`
`1042
`
`Deposition Transcript of William C. Easttom II (August 3,
`2018)
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`1043 U.S. Patent No. 8,199,747
`
`vi
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) replies to Patent Owner’s
`
`(“PO”) Response (Paper 12, “Resp.”) concerning the challenged claims of the ’622
`
`patent (Ex. 1001). PO’s arguments should be rejected and the claims found
`
`unpatentable for at least the reasons set forth in the Petition (Paper 1, “Pet.”) and
`
`accompanying exhibits, the Board’s decision to institute inter partes review (Paper
`
`8, “Dec,”), Mr. Easttom’s cross-examination testimony, and the additional reasons
`
`discussed below.
`
`II. CLAIM CONSTRUCTION
`
`Petitioner addresses the BRI of the following terms.
`
`A.
`
`“Instant Voice Message” (All Challenged Claims)
`
`As applied in the Petition, the BRI of the term “instant voice message”
`
`(IVM) is a message containing digitized speech that is capable of being transmitted
`
`in real time to a recipient device. In response, PO offers an implied construction of
`
`IVM in an attempt to avoid the prior art. In particular, PO argues (1) that the IVM
`
`is the “audio file” or is within the “audio file” and (2) that “instant” requires a user
`
`to instantly hear the message. As discussed below, PO’s positions should be
`
`rejected as they are unsupportable and introduce ambiguity.
`
`1.
`
`The IVM Is a Message Containing Digitized Speech
`
`In addressing the prior art, PO implicitly argues that the claimed IVM is an
`
`audio file. For example, PO argues that Zydney’s disclosure of attaching files to its
`
`1
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`voice container “does not disclose or suggest ‘attaching one or more files to the
`
`instant voice message’ itself.” (Resp., 21 (citing Ex. 2001, ¶¶50-58).) According to
`
`PO’s expert, this is because “the ‘instant voice message’ is recorded in the audio
`
`file.” (Ex. 2001, ¶51.) However, the only reasonable reading of the disclosure of
`
`the ’622 patent is that the term IVM refers to both the message object itself and the
`
`digitized speech (i.e., audio file) contained within the message object.
`
`In particular, the claims of the ’622 patent demonstrate that the IVM is a
`
`message object that contains data fields, including a field that contains audio data.
`
`For example, claim 3 recites that the IVM is a message that “includes an object
`
`field including a digitized audio file.” (Ex. 1001, 24:26-27.) And the dependent
`
`claims demonstrate that the IVM additionally includes an “action field” (claim 4),
`
`a “source field” (claim 7), and a “destination field” (claim 8). Additionally, claim
`
`18 requires “creating an audio file for the instant voice message.” Based on this
`
`claim language, PO’s interpretation that the audio file is the claimed IVM makes
`
`no sense. Instead, the claimed IVM is a message containing audio and other data.
`
`This understanding corresponds with the description of a “message object”
`
`in the specification as a message that “comprises an action field, an ID field, a
`
`source field, a destination field, and an object field.” (Ex. 1001, 14:6-7; id., 14:7-
`
`10, 14:19-21, 14:36-37, 14:37-40.) Here, like in the claims, the object field “is a
`
`block of data being carried by the message object, which may be, for example, a
`
`2
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`digitized instant voice message,” while the other fields include other information
`
`associated with the IVM. (Id., 14:7-10, 14:19-21, 14:36-37, 14:37-40.) Thus, the
`
`specification further establishes that the claimed IVM is not the audio file (or
`
`contained within the audio file), but rather a message object that includes an audio
`
`file, among other data.
`
`PO’s position is even contradicted by its expert, Mr. Easttom, who testified
`
`that the claimed IVM must include information in addition to the audio file in
`
`order for the disclosed system to operate as described in the specification. (Ex.
`
`1040, 107:18-109:24.) For example, he explained that the IVM must include
`
`information identifying the sender (the source field) and information identifying
`
`the recipient (the destination field), “or else [the IVM] couldn’t get to the
`
`recipient.” (Id., 109:5-22.) Mr. Easttom’s testimony also confirms that the term
`
`IVM refers to not only the message object but also the “digital representation of
`
`the audio” contained within the message object. (Id., 111:21-112:5.) Accordingly,
`
`in context, the claimed IVM is a message object that includes an audio file
`
`containing the digitized instant voice message, but is not itself the audio file (or
`
`within the audio file).
`
`Thus, the Board should construe the claimed IVM as a message containing
`
`digitized speech (that is capable of being transmitted in real time to a recipient
`
`device).
`
`3
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`2.
`
`“Instant” Means Capable of Being Transmitted in Real
`Time to a Recipient Device
`
`As to the “instant” aspect of the claimed IVM, PO argues that “[n]o POSITA
`
`would have understood Griffin to disclose an ‘instant voice message’” because
`
`Griffin purportedly does not disclose “instant” communication. (Resp., 25 (citing
`
`Ex. 2001, ¶¶24-31, 59-60).) According to PO, this is because “[i]nstant (or real-
`
`time) communication requires both instant (or real-time) transmission and instant
`
`(or real-time) receipt,” where receipt means “delivery” (i.e., playing out loud).
`
`(Resp., 25.) PO provides no real support for its added requirement that the speech
`
`content of a message must be played in real time for the message to qualify as an
`
`IVM, and this requirement is: (1) contrary to the specification and claims, and (2)
`
`inconsistent with PO’s expert’s explanation of instant messaging.
`
`First, the specification and claims of the ’622 patent explain that a message
`
`can be an IVM even if it is not received by a recipient device in real time. For
`
`example, when a recipient device is not available, the specification and claims
`
`explain that an IVM may be temporarily stored at a server for later delivery to the
`
`recipient device. (See, e.g., Ex. 1001, 8:32-39, 9:17-21, 10:7-11, 10:52-56, 16:35-
`
`40, 17:32-36, 18:19-24, 19:6-11, 19:65-20:2, 24:61-25:3.) These portions of the
`
`’622 patent establish that IVMs transmitted to recipient devices need not always be
`
`received in real time, much less heard in real time.
`
`PO’s argument that an IVM must be heard in real time is also at odds with
`
`4
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`Mr. Easttom’s deposition testimony where he explained that “instant messaging,”
`
`in the context of the ’622 patent, requires the capability of immediate receipt (not
`
`actual receipt) by a device (not heard by a user).2 (See 1040, 25:12-22, 30:7-16,
`
`34:4-10, 50:2-10, 97:7-20 (“Q. In that particular scenario, would the message
`
`that’s temporarily stored on the server be an instant voice message in the context
`
`of the claims of the ’622 patent? A. Yes, and the reason being is that I, as sender,
`
`have sent this right now. I just didn’t know you weren’t available…. That’s still an
`
`instant message.” (emphasis added)).)
`
`Therefore, the Board should find that the BRI of the claimed “instant voice
`
`message” is a message containing audio data that is capable of being transmitted in
`
`real time to a recipient device.
`
`B.
`
`“Network Interface” (Claims 3, 27, 38)
`
`In its analysis of the prior art, PO argues that the claimed “network
`
`interface” must be “directly” connected to the “packet-switched network.” (Resp.,
`
`
`
`2 Additionally, during his deposition, Mr. Easttom attempted to move the goalposts
`
`by enumerating (for the first time) several additional criteria of instant messaging
`
`that are not described in the ’622 patent, including time lag, the intent of the end
`
`users, and whether messages must be retrieved from a server. (Ex. 1040, 55:14-
`
`56:25.)
`
`5
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`13-19.) This reading is contrary to the disclosure of the ’622 patent and Mr.
`
`Easttom’s deposition testimony.
`
`In particular, as the Board recognized, the claim language does not recite the
`
`term “directly.” (Dec., 24.) Instead, it merely requires the network interface and
`
`packet-switched network be “connected.” As confirmed by Mr. Easttom’s
`
`deposition testimony, the specification supports this understanding of the claim
`
`language by describing embodiments that “facilitat[e] instant voice messaging
`
`according to the present invention” using a legacy telephone 110 that has an
`
`indirect connection to a packet-switched network through a PSTN network. (Pet.,
`
`13; Ex. 1001, 7:37-52; id., 1:66-2:21; Ex. 1040, 103:10-104:22.) Other portions of
`
`the specification also use “connected to” to refer to indirect connections. (Ex.
`
`1001, 8:32-39 (IVM clients are “connected to” the IVM server), 9:17-21 (same),
`
`22:67-23:3 (directory server 608 includes a “network interface…connected to IP
`
`network (Internet) 102” even though transport servers are interposed between
`
`server 608 and network 102).)
`
`PO’s reliance on the description of a separate embodiment showing a global
`
`system containing local and external networks does not support PO’s argument.
`
`(Resp., 15-17 (citing Ex. 1001, 4:1-36).) This portion of the specification uses
`
`“connected to” for the purpose of differentiating local clients and servers
`
`(connected to the local network) from external clients and servers (connected to the
`
`6
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`external network). (See Ex. 1001, 4:1-36; id., 15:31-55.) This should not be read to
`
`mean that a device connected to one network is not connected to other networks,
`
`especially when the entire disclosure of the ’622 patent is considered.
`
`Mr. Easttom confirmed this understanding of “connected to” during his
`
`deposition. For example, while discussing Figure 5 of the ’622 patent (Ex. 1040,
`
`139:20-146:22), Mr. Easttom testified that IVM client 208 is “connected to” IP
`
`Network (Internet) 102, even though Local IP Network 204 is interposed between
`
`IVM client 208 and network 102. (Id., 145:24-146:21.)
`
`(Ex. 1001, Fig. 5 (annotated).) Similarly, when discussing Figure 3 of Griffin, Mr.
`
`Easttom agreed that network interface 306 is “connected to” router 301 located at
`
`server complex 204. (Ex. 1004, 161:7-13.) As demonstrated in Figure 2 of Griffin,
`
`
`
`7
`
`

`

`this connection is through both wireless carrier 202 and network 203. (Ex. 1005,
`
` IPR2017-01797 – Petitioner’s Reply
`
`Fig. 2.)
`
`Accordingly, PO has presented no persuasive reason for the Board to
`
`construe the term “network interface” (or “connected to”) to exclude indirect
`
`connections.
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART3
`
`PO largely regurgitates its already-rejected arguments from its preliminary
`
`response. For the reasons below, the Board should again reject PO’s arguments and
`
`find that Petitioner has proven the unpatentability of the challenged claims.
`
`A. The Combination of Griffin and Zydney Discloses the Claimed
`“Object Field”
`
`Petitioner demonstrates that Griffin’s “message content 406” discloses an
`
`“object field,” as recited in claim 3. (Pet., 26-27 (citing Ex. 1002, ¶148).) As
`
`
`
`3 The Petition inadvertently cites to subsections of “Part IX” when it intended to
`
`cite to “Part VIII.” (E.g., Pet., 27 (citing “Part IX.A.1.c”).) However, because only
`
`Part VIII contains multiple, nested subsections, the intent of the citations are
`
`immediately apparent. Indeed, PO itself surmised that Petitioner intended to cite to
`
`Section VIII and responded to the substance of Petitioner’s positions. (Resp., 11-12
`
`n.3, 19, 39.)
`
`8
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`Griffin explains with respect to Figure 4 (Ex. 1005, 6:38-7:17), message 400
`
`contains message content field 406, which a POSA would have understood
`
`contains speech data for a speech chat message. (Ex. 1002, ¶148.) Additionally, as
`
`explained in the Petition, it would have been obvious to have included this speech
`
`data in field 406 in the form of a “digitized audio file,” particularly in view of
`
`Zydney. (Pet., 28-30 (citing Ex. 1002, ¶¶150-56).)
`
`PO does not dispute that message content 406 discloses the claimed “object
`
`field.” Instead, without expert support, PO argues that message content 406 can
`
`only include displayable text. (Resp., 8-10.) This argument, however, ignores
`
`Griffin’s explicit disclosures that message 400 can contain speech (Ex. 1005, 4:11-
`
`15), “message type” 401 can be “speech” (id., 6:39-44), field 406 contains the
`
`“message content” (id.), and for speech chat messages, Griffin refers to the
`
`recorded speech as “the speech content”(Ex. 1001, 10:36-43). (Ex. 1002, ¶¶147-
`
`48.) PO’s suggestion that Griffin is directed to only displaying text is also at odds
`
`with Griffin’s repeated and consistent descriptions of recording and audibly
`
`playing speech. (Pet. 20 (citing, e.g., Ex. 1001, 3:20-22, 3:28-30; Ex. 1002, ¶123).)
`
`Referring to Figure 11, PO also argues that Griffin’s explanation that “a
`
`generic character string or symbol is used to indicate that the message was a voice
`
`message” supports its position. (Resp., 8-10.) This “character string or symbol,”
`
`however, is not the “message content” of message 400, but rather additional
`
`9
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`information “appended” to the message “to indicate that the message was a voice
`
`message.” (Ex. 1005, 10:39-43.) The message content is still the speech. This is
`
`made clear by the next sentence describing alternatives to transmitting speech
`
`content, which PO ignores. According to Griffin, instead of transmitting the “actual
`
`speech content,” “speech-to-text conversion” can be used, such that “the actual
`
`speech content of the message could be converted to text.” (Id., 10:43-45.) Thus,
`
`Griffin expressly distinguishes the “generic character string or symbol” from the
`
`“actual speech content.” (See Pet., 26-27 (citing Ex. 1002, ¶148).)
`
`Moreover, PO does not specifically contest Petitioner’s argument that it
`
`would have been obvious “to modify Griffin’s system/process such that outbound
`
`message 400…includes an object field (similar to field 406) having a digital audio
`
`file of speech data, similar to as described in Zydney” (Pet., 28-30), which the
`
`Board found persuasive at institution (Dec., 25-27). Thus, notwithstanding PO’s
`
`arguments as to whether message content 406 includes speech, the Board should
`
`maintain its determination that this limitation would have been obvious based on
`
`the Griffin-Zydney combination. (See Dec., 26-27.)
`
`B. Griffin Alone or in Combination with Zydney Discloses the
`Claimed “Network Interface”
`
`PO does not dispute that Griffin’s network interface 306 discloses a
`
`“network interface,” as recited in claims 3, 27, and 38. (Pet., 10-11, Fig. 3.)
`
`10
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`
`
`(Ex. 1001, Fig. 3 (annotated).) Instead, PO incorrectly asserts that network
`
`interface 306 is not “connected to a packet-switched network” based on its
`
`interpretation that “connected to” requires a direct connection. (Resp., 13-19.) For
`
`the reasons discussed above in Section II.B, PO’s interpretation is overly narrow
`
`and should be rejected. Under the proper construction, which encompasses both
`
`direct and indirect connections, there is no dispute that Griffin discloses this
`
`limitation.
`
`As explained in the Petition, even if a direct connection were required, this
`
`limitation would have been obvious based on the combination of Griffin and
`
`Zydney. (Pet., 13-16.) PO does not dispute that Zydney discloses a direct
`
`connection to a packet-switched network, or that a POSA would have been
`
`motivated to modify Griffin’s connection to be direct. (Resp., 18-19.) Indeed, Mr.
`
`11
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`Easttom confirmed that a POSA would have been motivated to provide a direct
`
`connection to a packet-switched network to avoid “incredibly expensive” data
`
`usage charges. (Ex. 1040, 101:25-103:9.)
`
`Instead, PO points
`
`to Griffin’s explanation
`
`that “wireless carrier
`
`infrastructures 202 comprise those elements necessary to support wireless
`
`communications with the terminals” (Ex. 1005, 3:55-57) to argue that Griffin
`
`“would lead a POSITA away from attempting to bypass the wireless carrier
`
`infrastructure 202” (Resp., 18-19). In addition to being unsupported by expert
`
`testimony, PO’s argument overstates the meaning of this statement. Read in
`
`context, this portion of Griffin is describing the elements necessary for wireless
`
`communication within a wireless carrier’s infrastructure 202. (Ex. 1005, 3:51-
`
`59.) Therefore, there is no basis for arguing that Griffin “teaches away from the
`
`proposed modification” or that the modification would not “operate as intended,”
`
`as PO contends. (Resp., 18-19.) Indeed, Griffin explains that its mobile terminal
`
`100 may be a “cellular phone” or “PDA” (Ex. 1005, 3:14-17), which are the same
`
`types of devices that Zydney demonstrates can be directly connected to a packet-
`
`switched network (Ex. 1006, 11:16-18, Fig. 1a). (Pet., 13-14.) Mr. Easttom also
`
`explained that such devices could directly connect to packet-switched networks
`
`(e.g., a WiFi network). (Ex. 1004, 101:11-103:6.)
`
`Accordingly, PO’s arguments fail to rebut Petitioner’s showing that a POSA
`
`12
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`would have been motivated to provide a direct connection between Griffin’s
`
`network interface 306 and network 203.
`
`C. The Combination of Griffin and Zydney Discloses “Connection
`Information”
`Indicating Whether There
`Is a “Current
`Connection”
`
`Regarding claim 3, PO’s argument that the Griffin-Zydney combination does
`
`not disclose “connection information” indicating whether there is a “current
`
`connection” is not only unsupported by expert testimony, it is factually wrong.
`
`Addressing the disclosure of Zydney alone, rather than the proposed Griffin-
`
`Zydney combination, PO argues that Zydney does not disclose this limitation
`
`because (i) Zydney does not use the word “current” and (ii) Zydney’s system
`
`“passively waits to receive random status information notifications from the
`
`software agents.”4 (Resp., 20-21.) Prior art, however, need not recite the same
`
`words as the claim. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). PO also
`
`misunderstands Zydney’s teachings.
`
`For example, Zydney explains that its central server actively “tracks and
`
`maintain[s] the status of all software agents,” including “the core states of whether
`
`
`
`4 In other portions of its Response, PO takes the opposite position regarding
`
`Zydney’s teachings. (Resp., 31-32 (describing the importance of knowing the
`
`availability of recipients with certainty).) PO cannot have it both ways.
`
`13
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`the recipient is online or offline,” i.e., whether the software agent is currently
`
`connected. (Ex. 1006, 14:8-9, 14:22:23; Pet., 23-24.) A software agent is online
`
`(i.e., currently connected) when it has “logged onto the system and has been
`
`authenticated.” (Ex. 1006, 32:9-10.) Likewise, a software agent is offline (i.e., not
`
`currently connected) when it “logs off the system.” (Id., 32:16-17, 33:1-2.) In both
`
`cases, the server automatically informs other interested software agents of the
`
`agent’s online/offline status. (Id., 32:10-12, 32:16-17.) The only aspect of Zydney’s
`
`status that requires a user to notify the server of its status relates to, for example,
`
`“whether the recipient does not want to be disturbed.” (Id., 14:22-15:1, 32:18:-
`
`33:2.) But this status information is in addition to the core online/offline states
`
`indicating whether there is a current connection. (Id., 14:20-15:1, 32:9-33:2.)
`
`Moreover, Zydney teaches that status information can be used to select
`
`between the “pack and send” and “intercom” modes of communication. (Id., 15:3-
`
`21.) Status information is important when selecting a communication mode
`
`because “intercom” mode is a “real-time” communication that “simulates a
`
`telephone call” and therefore requires an “online” (i.e., current) connection. (Id.)
`
`Thus, the status of each software agent must indicate whether there is a current
`
`connection, or else Zydney’s system would not operate as described.
`
`Thus, Zydney discloses connection information indicating whether there is a
`
`current connection, and it would have been obvious to modify Griffin’s status 702
`
`14
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`to include such information.
`
`D. The Combination of Griffin and Zydney Discloses “Attaching One
`or More Files to the Instant Voice Message”
`
`1.
`
`Attaching a file to the IVM
`
`Petitioner proposes two obviousness arguments with respect to the
`
`“attaching” limitation recited in claim 27. First, Petitioner argues that, although
`
`Griffin does not expressly describe attaching files to a speech chat message, Griffin
`
`does describe: (1) attaching files to a text chat message and (2) that its messages
`
`could be speech. (Pet., 64-65 (citing Ex. 1005, 12:63-66; 5:42-48, 6:39-52, 7:22-
`
`25, 10:53-58, Fig. 4).) Thus, as explained in the Petition, a POSA would have
`
`recognized that Griffin’s system could have attached files to its speech chat
`
`messages in the exact same way as its text chat messages for the same reasons and
`
`advantages. (Pet., 65 (citing Ex. 1002, ¶247).) PO failed to address this argument.
`
`Therefore, based on Petitioner’s obviousness rationale based on Griffin alone, the
`
`Board should confirm its preliminary determination that this limitation would have
`
`been obvious. (Dec., 27-29.)
`
`Second, Petitioner further argues that Zydney’s express teaching of attaching
`
`files to its voice containers provides an additional basis for finding this limitation
`
`obvious. (Pet., 65-67.) PO’s response to this argument is that “[i]ncluding
`
`attachments (in addition to a voice message) in a voice container” does not disclose
`
`this limitation because the container is not a “voice message.” (Resp., 21-22.) PO’s
`
`15
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`argument fails for several reasons.
`
`First, PO’s argument is based on a flawed interpretation of the claimed
`
`“instant voice message.” As discussed in Section II.A, the proper construction of
`
`IVM is “a message containing audio data that is capable of being transmitted in
`
`real-time to a recipient device.” Under this construction, Zydney’s voice container
`
`is an IVM, and it is undisputed that Zydney describes attaching files to the voice
`
`container. (Pet., 65-66; Ex. 1002, ¶248.)
`
`Second, even if PO were right that the claimed IVM in Zydney is the audio
`
`data contained within the voice container, this limitation would still have been
`
`obvious because attaching a file to a voice container means the file is also attached
`
`to the contents of the voice container, including the contained audio data. Based on
`
`the testimony of both Dr. Haas and Mr. Easttom, “attaching” requires only that the
`
`file and audio data travel together to their destination, such that the destination is
`
`able to determine that the file and audio data are associated. (1002, ¶¶244-51; Ex.
`
`1040, 135:15-136:15, 137:10-13, 139:5-19.) Thus, attaching a file to Zydney’s
`
`voice container containing audio data means the file is also attached to the audio
`
`data because the file and audio data travel together in the same voice container to
`
`their destination, and, for that reason, the destination is able to determine that the
`
`16
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`file and audio data are associated.5
`
`PO’s reliance on the Board’s institution decision in Facebook, Inc. v. Uniloc
`
`USA, Inc., No. IPR2017-01257, Paper 8 at 18-19 (P.T.A.B. Dec. 4, 2017) is
`
`misplaced. That decision did not consider the Griffin-Zydney combination at issue
`
`here and involved claims of a different patent, U.S. Patent No. 8,199,747, which
`
`recites different claim language (attaching a file “to the audio file” (Ex. 1043,
`
`23:59)) than claim 27 of the ’622 patent (attaching a file “to the instant voice
`
`message” (Ex. 1001, 26:29-30)).
`
`Accordingly, PO’s arguments with respect to the “attaching” limitation fall
`
`short.
`
`2.
`
`IVM Application That Includes a Document Handler
`
`PO argues that Petitioner does not show “that the same alleged ‘instant voice
`
`messaging application’” performs all of the claimed functions. (Resp., 22-23.)
`
`Notably, PO does not (and cannot) argue that Petitioner pointed to multiple
`
`different applications for performing the claimed functions. In particular, Petitioner
`
`
`
`5 Although PO does not address Petitioner’s obviousness argument based on
`
`Griffin alone for this limitation, the same logic regarding “attaching” applies. That
`
`is, attaching a file to Griffin’s speech chat message means the file is also attached
`
`to the message contents.
`
`17
`
`

`

` IPR2017-01797 – Petitioner’s Reply
`
`explains that Griffin’s mobile terminal 100 stores “machine-readable and
`
`executable instructions (typically referred to as software, code, or program)” on the
`
`terminal’s “application storage” 310 and executes such instructions on the
`
`terminal’s CPU 311 to perform the messaging functionalities described in Griffin,
`
`including functionalities for attaching files to chat messages. (Pet., 54-55.) Mr.
`
`Easttom appears to agree, testifying that this “chat software” provides the
`
`functionalities associated with sending and receiving speech chat messages. (Ex.
`
`1040, 152:13-154:11.) Nothing more is required by claims