Trials@uspto.gov
`571-272-7822
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`Paper No. 8
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`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 IPR2017-01798
`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
`
`
`
`571-272-7822
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`
`Paper No. 8
`
`Entered: February 6, 2018
`
`
`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 IPR2017-01798
`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
`
`
`
`
`IPR2017-01798
`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 14–17, 19, 24–
`26, 28–31, and 33 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 3, 4, 6–8, 10–13, 18, 21–23,
`27, 32, 34, 35, 38, and 39 of the ’622 patent (Case IPR2017-01797).
`IPR2017-01797, 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, only claim 24 is independent. Challenged
`claims 25 and 26 depend directly from claim 24, and the remaining
`challenged claims depend directly or indirectly from independent claims 3
`and 27, neither of which is challenged in the instant proceeding.
`Unchallenged claims 3 and 13 and challenged claims 14 and 24 are
`illustrative 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
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`wherein the instant voice message includes an object field
`including a digitized audio file.
`13. The system according to claim 3, wherein each of the instant
`voice message client systems comprises an instant voice
`messaging application generating an instant voice message and
`transmitting the instant voice message over the packet-switched
`network to the messaging system.
`14. The system according to claim 13, wherein the instant voice
`messaging application includes a message database storing the
`instant voice message, wherein the instant voice message is
`represented by a database record including a unique identifier.
`24. A system comprising:
`a network interface connected to a packet-switched network;
`and
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives connection object
`messages from the plurality of instant voice message client
`systems, wherein each of the connection object messages
`includes data representing a state of a logical connection
`with a given one of the plurality of instant voice message
`client systems.
`Ex. 1001, 24:12–27, 25:9–18, 25:59–26:8.
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`D. Asserted Ground of Unpatentability
`Petitioner asserts three grounds of unpatentability (Pet. 6–7):
`
`Challenged Claims
`
`14–17, 28–31
`
`19, 33
`
`24–26
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`References
`Basis
`§ 103(a) Griffin,1 Zydney,2 and
`Clark3
`§ 103(a) Griffin, Zydney, and
`Väänänen4
`
`§ 103(a) Griffin, Zydney, and Low5
`
`Petitioner also relies on a Declaration of Zygmunt J. Haas, Ph.D., filed as
`Exhibit 1002.
`
`III. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim 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
`
`
`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 Clark et al., US 6,725,228 B1, issued Apr. 20, 2004 (Ex. 1007).
`4 Väänänen, WO 02/17650 A1, published February 28, 2002 (Ex. 1008).
`5 Low et al., US 2003/0018726 A1, published January 23, 2003 (Ex. 1010).
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`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. 13. 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.
`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;
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`(3) the level of skill in the art;6 and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.7 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving
`obviousness, a petitioner cannot employ mere conclusory statements. The
`petitioner must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.” In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the
`asserted grounds with the principles stated above in mind.
`
`
`6 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.
`7 Patent Owner does not contend in its Preliminary Response that such
`secondary considerations are present.
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`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.
`
`
`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.
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`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.
`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
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`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.
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`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,
`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.
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`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.
`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
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`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
`device and the software agent. Ex. 1003, 16:1–3. The software agent
`compresses the voice and stores the file temporarily on the PC if the voice
`will be delivered as an entire message. Id. at 16:3–4. If the real-time
`“intercom” mode has been invoked, a small portion of the digitized voice is
`stored to account for the requirements of the Internet protocols for
`retransmission and then transmitted before the entire conversation has been
`completed. Id. at 16:4–7. Based on status information received from the
`central server, the agent then decides whether to transport the voice
`container to a central file system and/or to send it directly to another
`software agent using the IP address previously stored in the software agent.
`Id. at 16:7–10. If the intended recipient has a compatible active software
`agent online after log on, the central server downloads the voice recording
`almost immediately to the recipient. Id. at 16:10–12. The voice is
`uncompressed and the recipient can hear the recording through the speakers
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`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
`using MIME format, for example, “allows non-textual messages and
`multipart message bodies attachments [sic] to be specified in the message
`headers.” Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
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`Figure 3, above, illustrates an exemplary embodiment of Zydney’s
`voice container structure, including voice data and voice data properties
`components. Ex. 1006, 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
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`c. Clark
`
`Clark, titled “System for Managing and Organizing Stored Electronic
`Messages,” is directed to systems for managing and organizing electronic
`messages. Ex. 1007, [54], 1:8−9. According to Clark,
`A computer-based system catalogs and retrieves electronic
`messages saved in a message store. The system automatically
`organizes each saved message into multiple folders based on the
`contents and attributes of the message, and implements improved
`methods for manually organizing messages.
`Id. at [57]. A particularly relevant embodiment in Clark is shown in
`Figure 4A, reproduced below.
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`Figure 4A illustrates system 40A with client computer 18
`implementing catalog server 29 and catalog database 28, and also including
`message client 27, message store 23, and message store server 24. Id. at
`10:29−33. “Each message store 23 comprises a memory, file, or database
`structure that provides temporary or permanent storage for the contained
`messages.” Id. at 9:13−15. Clark describes the invention as providing
`catalog database 28 (and preferably catalog server 29) to organize the
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`contents of one or more message stores 23. Id. at 9:54−56. “[C]atalog
`database 28 and message store 23 may be separate from one another or may
`be integrated in a single integrated message store.” Id. at 11:1−3. In the
`embodiment where they are separate from each other, illustrated in
`Figure 5A (reproduced below), catalog database 28 may be linked to a
`separate external message store 23. Id. at 11:3−7.
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`Figure 5A depicts the linking between catalog database 28 and
`external message store 23, where StoreLink table 51 contains rows, each
`with a StoreId pointing to a linked message store 23, and catalog database 28
`includes MessageSummary table 52, which contains StoreMessageId 52A of
`messages in message store 23. Id. at 11:25−33. The Figure 5A embodiment
`also shows that messages 22 are stored in Message table 54 in message
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`store 23 and that attachments are stored in Attachment table 55 in message
`store 23. Id. at 35−37.
`d. Väänänen
`Väänänen discloses a “voicemail short messaging method,”
`particularly including methods and means for instantaneous packet-switched
`voicemail between Internet-compatible computers, personal digital
`assistants, telephones, and mobile stations, in which subscriber and client
`terminals and a network server communicate over a network such as the
`Internet. Ex. 1008, [57], 1:3–9, 5:1–30. In one disclosed method, a terminal
`user can record and save a voice message as a data file for transmission to a
`one or more recipients over a network. Id. at 6:29–7:5. According to
`Väänänen, cryptography methods may be employed with the data file, and
`the file may be decrypted for automatic playback upon receipt. Id. at 2:24–
`30, 18:4–7.
`
`e. Low
`Low, titled “Instant Messaging,” describes an instant messaging
`(“IM”) process executed by an IM gateway in a communications network.
`Ex. 1010, [54], [57]. Figure 1 of Low is reproduced below.
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`Figure 1, above, illustrates an embodiment of an IM gateway within a
`network access system. Id. ¶ 20. As shown in Figure 1, IM gateway 2 is
`connected to communications network 14, such as the Internet, and is
`connected between IM clients (e.g., computer 10) and IM servers 20, 22, 24,
`26 on network 14. Id. ¶¶ 27, 29. Low’s system allows IM client users to
`monitor the presence of other users on the system in order to exchange
`messages and files. Id. ¶¶ 4, 27, 29. “IM gateway 2 processes the IM
`packets received from different IM clients in order to allow them to
`communicate with one another, notwithstanding the fact that they use a
`different IM protocol.” Id. ¶ 29. The IM clients can send commands to IM
`gateway 2 to change “the user’s state or presence” on the IM network, such
`to log into and out from the network. Id. ¶¶ 39, 42. An IM state change
`process in IM gateway 2 then forwards the commands to switch 6 in IM
`gateway 2, which in turn sends the command to an appropriate IM server
`(e.g., authentication server 20). Id. ¶ 42.
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`3. Arguments and Analysis
`a. Claims 14–17, 19, 28–31, and 33
`Claim 14 depends from claim 13, which in turn depends from claim 3.
`Claim 14 further recites “wherein the instant voice messaging application
`includes a message database storing the instant voice message, wherein the
`instant voice message is represented by a database record including a
`unique identifier.” Ex. 1001, 25:14−18 (emphases added). Claim 15
`depends from claim 14 and further recites “wherein the message database
`includes a plurality of instant voice messages recorded by a user of the client
`device and instant voice messages received over the packet-switched
`network.” Id. at 25:19–22. Claim 16 depends from claim 15 and further
`recites “wherein the instant voice messaging application displays at least one
`of the plurality of instant voice messages stored in the message database.”
`Id. at 25:23–26. Claim 17 depends from claim 14 and further recites
`“wherein the instant voice messaging application includes a file manager
`system performing at least one of storing, deleting, and retrieving the instant
`voice messages from the message database.” Claim 19 depends from
`claim 13 and further recites “wherein the instant voice messaging
`application includes an encryption/decryption system for encrypting the
`instant voice messages to be transmitted over the packet-switched network
`and decrypting the instant voices messages received over the
`packet-switched network.” Id. at 25:36–41. Claims 28–31 and 33 recite
`substantially the same limitations as dependent claims 14–17 and 19,
`respectively, but depend from claim 27 rather than claim 3. Id. at 26:31–47.
`Petitioner contends Griffin disclose all limitations of independent
`claims 3 and 27, from which claims 14–17, 19, 28–31, and 33 ultimately
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`depend, except that it relies on the combined teachings of Griffin and
`Zydney for the teaching 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 27.8 Pet.
`13–44. Petitioner concedes that Griffin does not explicitly disclose that its
`messages each are represented by a “database record including a unique
`identifier,” as recited in claims 14 and 28, or an “encryption/decryption
`system,” as recited in claims 19 and 33, but contends that it would have been
`obvious to modify the Griffin-Zydney combination to implement such
`features in further view of Clark and Väänänen, respectively. Pet. 46, 61–
`62. Petitioner argues, for example, that Clark’s message store 23 and
`catalog 28 are illustrated by Clark as separate databases and integrated
`databases, and that each message 22 is represented by a “Message” record in
`message store 23 and is uniquely identified by a “StoreMessageId” or
`“MessageId.” Id. at 48 (citing Ex. 1007, 11:5–12:6). According to
`Petitioner, “[b]y storing each message in one or more database records and
`associating a unique identifier with each record, Clark’s system can easily
`catalog, retrieve, and manipulate messages.” Id. at 49 (citing Ex. 1007,
`11:38–40, 13:66–14:3, 16:50–17:23). Petitioner supports its arguments,
`
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`8 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 and 27 were to be construed to require
`a “direct” connection to a packet-switched network. Pet. 17–20.
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`including reasons that a person of ordinary skill in the art would have
`combined the teachings of Griffin, Zydney, and Clark, with Dr. Haas’s
`testimony. Id. at 46–51 (citing Ex. 1002 ¶¶ 283–293).
`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 contentions that claims 14–17 and
`28–31 of the ’622 patent are unpatentable as obvious over Griffin, Z
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