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`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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`
`
`Case: IPR2017-01798
`U.S. Patent No. 8,724,622
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2017-01798 – Petitioner’s Reply
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`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 ........................................................ 3
`
`B.
`
`“Network Interface” (Claims 3 and 24) ............................................... 5
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART ................................................................................................................ 7
`
`A.
`
`The Combination of Griffin and Zydney Discloses the Claimed
`“Object Field” ....................................................................................... 7
`
`B. Griffin Alone or in Combination with Zydney Discloses the
`Claimed “Network Interface” ............................................................... 9
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`The Griffin-Zydney Combination Discloses “Connection
`Information” Indicating Whether There Is a “Current
`Connection” ........................................................................................ 11
`
`Low Discloses “Connection Object Messages” ................................. 13
`
`Zydney Does Not Teach Away From the Griffin-Zydney-Low
`Combination ....................................................................................... 14
`
`Clark Teaches a Message Database Containing a Database
`Record With Both a Unique Identifier and the Message Itself .......... 15
`
`Clark Does Not Teach Away From the Griffin-Zydney-Clark
`Combination ....................................................................................... 16
`
`Zydney Does Not Teach Away From the Griffin-Zydney-Clark
`Combination ....................................................................................... 17
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`i
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`

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`IPR2017-01798– Petitioner’s Reply
`
`I.
`
`J.
`
`The Griffin-Zydney-Clark Combination Discloses a File
`Manager System That Can Store, Delete, and Retrieve Instant
`Voice Messages. ................................................................................. 18
`
`A POSA Would Have Been Motivated to Combine Griffin and
`Zydney for the Reasons Explained in the Petition. ............................. 19
`
`1.
`
`PO’s Arguments Regarding Griffin’s Text-Only Buddies
`Are Misplaced .......................................................................... 20
`
`2.
`
`Griffin Is Compatible With Zydney ......................................... 21
`
`3. Messages Would Not Be Lost in the Combined System ......... 22
`
`4.
`
`Griffin’s and Zydney’s Teachings Related to Availability
`are Compatible ......................................................................... 23
`
`IV. CONCLUSION ............................................................................................. 25
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`ii
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`IPR2017-01798 – Petitioner’s Reply
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments,
`825 F.3d 1373 (Fed. Cir. 2016) .......................................................................... 23
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ............................................................................ 12
`
`
`
`
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`
`iii
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`

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` IPR2017-01798 – 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 U.S. Patent No. 6,725,228 (“Clark”)
`
`1008 WO 02/17650A1 (“Vaananen”)
`
`1009 RESERVED
`
`1010 U.S. Patent Publication No. 2003/0018726A1 (“Low”)
`
`1011
`-
`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
`
`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
`
`Previously
`Submitted
`
`X
`
`X
`
`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
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`

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` IPR2017-01798 – Petitioner’s Reply
`
`Description
`
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`No.
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`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)
`
`Wolter Lemstra & Vic Hayes, Unlicensed Innovation: The
`Case of Wi-Fi, Competition and Regulation in Network
`Industries (2008, Vol. 9, No. 2)
`
`1036 U.S. Patent Application Publication No. 2003/0039340
`
`v
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` IPR2017-01798 – Petitioner’s Reply
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`No.
`
`Description
`
`Previously
`Submitted
`
`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 RESERVED
`
`X
`
`X
`
`X
`
`
`
`
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`
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`vi
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`

`

` IPR2017-01798 – Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) replies to Patent Owner’s
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`(“PO’s”) Response (Paper 12, “Resp.”) concerning the challenged claims of the
`
`’622 patent (Ex. 1001). PO’s arguments should be rejected and the claims found
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`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
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`below.
`
`II. CLAIM CONSTRUCTION
`
`Petitioner addresses the BRI of the following terms.
`
`A.
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`“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
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`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
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`rejected as they are unsupportable and introduce ambiguity.
`
`1.
`
`The IVM Is a Message Containing Digitized Speech
`
`Contrary to PO’s interpretation, the claims demonstrate that the IVM is a
`
`message object that contains data fields, including a field that contains audio data.
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`1
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`

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` IPR2017-01798 – Petitioner’s Reply
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`For example, claim 3 recites that the IVM is a message that “includes an object
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`field including a digitized audio file.” (Ex. 1001, 24:26-27.) And the dependent
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`claims demonstrate that the IVM additionally includes an “action field” (claim 4),
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`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
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`claim language, PO’s interpretation that the audio file is the claimed IVM makes
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`no sense. Instead, the claimed IVM is a message containing audio and other data.
`
`This understanding corresponds with the description of a “message object”
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`in the specification as a message that “comprises an action field, an ID field, a
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`source field, a destination field, and an object field.” (Ex. 1001, 14:6-7; id., 14:7-
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`10, 14:19-21, 14:36-37, 14:37-40.) Here, like in the claims, the object field “is a
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`block of data being carried by the message object, which may be, for example, a
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`digitized instant voice message,” while the other fields include other information
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`associated with the IVM. (Id., 14:7-10, 14:19-21, 14:36-37, 14:37-40.) Thus, the
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`specification further establishes that the claimed IVM is not the audio file (or
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`contained within the audio file), but rather a message object that includes an audio
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`file, among other data.
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`PO’s position is even contradicted by its expert, Mr. Easttom, who testified
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`that the claimed IVM must include information in addition to the audio file in
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`order for the disclosed system to operate as described in the specification. (Ex.
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`2
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`

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` IPR2017-01798 – Petitioner’s Reply
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`1040, 107:18-109:24.) For example, he explained that the IVM must include
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`information identifying the sender (the source field) and information identifying
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`the recipient (the destination field), “or else [the IVM] couldn’t get to the
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`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
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`claimed IVM is a message object that includes an audio file containing the
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`digitized instant voice message, but is not itself the audio file (or within the audio
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`file).
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`Thus, the Board should construe the claimed IVM as a message containing
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`digitized speech (that is capable of being transmitted in real time to a recipient
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`device).
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`2.
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`“Instant” Means Capable of Being Transmitted in Real
`Time to a Recipient Device
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`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
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`Griffin purportedly does not disclose “instant” communication. (Resp., 37-38
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`(citing Ex. 2001, ¶¶24-31, 59-60).) According to PO, this is because “[i]nstant (or
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`real-time) communication requires both instant (or real-time) transmission and
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`instant (or real-time) receipt,” where receipt means “delivery” (i.e., playing out
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`3
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`

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` IPR2017-01798 – Petitioner’s Reply
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`loud). (Resp., 37.) PO provides no real support for its added requirement that the
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`speech content of a message must be played in real time for the message to qualify
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`as an IVM, and this requirement is: (1) contrary to the specification and claims,
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`and (2) inconsistent with PO’s expert’s explanation of instant messaging.
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`First, the specification and claims of the ’622 patent explain that a message
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`can be an IVM even if it is not received by a recipient device in real time. For
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`example, when a recipient device is not available, the specification and claims
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`explain that an IVM may be temporarily stored at a server for later delivery to the
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`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
`
`Mr. Easttom’s deposition testimony where he explained “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). (See 1040, 25:12-22, 30:7-16, 34:4-10,
`
`50:2-10, 97:7-20 (agreeing that a “message that’s temporarily stored on the server”
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`is “still an instant message”).)
`
`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
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`4
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`

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` IPR2017-01798 – Petitioner’s Reply
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`real time to a recipient device.
`
`B.
`
` “Network Interface” (Claims 3 and 24)
`
`PO argues that the claimed “network interface” must be “directly” connected
`
`to the “packet-switched network.” (Resp., 18-23.) This reading is contrary to the
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`disclosure of the ’622 patent and Mr. Easttom’s deposition testimony.
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`In particular, as the Board recognized, the claim language does not recite the
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`term “directly.” (Dec., 27.) Instead, it merely requires the network interface and
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`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
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`according to the present invention” using a legacy telephone 110 that has an
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`indirect connection to a packet-switched network through a PSTN network. (Pet.,
`
`17; 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.
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`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
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`network (Internet) 102” even though transport servers are interposed between
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`server 608 and network 102).)
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`PO’s reliance on the description of a separate embodiment showing a global
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`system containing local and external networks does not support PO’s argument.
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`5
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` IPR2017-01798 – Petitioner’s Reply
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`(Resp., 20-22 (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
`
`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.
`
`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.
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`
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`6
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`

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` IPR2017-01798 – Petitioner’s Reply
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`Easttom agreed that network interface 306 is “connected to” router 301 located at
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`server complex 204. (Ex. 1004, 161:7-13.) As demonstrated in Figure 2 of Griffin,
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`this connection is through both wireless carrier 202 and network 203. (Ex. 1005,
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`Fig. 2.)
`
`Accordingly, the term “network interface” (or “connected to”) should not be
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`construed to exclude indirect connections.
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART
`
`PO largely regurgitates its already-rejected arguments from its preliminary
`
`response. For the reasons below, the Board should again reject PO’s arguments and
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`find that Petitioner has proven the unpatentability of the challenged claims.
`
`A. The Combination of Griffin and Zydney Discloses the Claimed
`“Object Field”
`
`As explained in the Petition, Griffin’s “message content 406” discloses an
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`“object field,” as recited in claim 3. (Pet., 31-32 (citing Ex. 1002, ¶148).) For
`
`example, referring to Figure 4 (Ex. 1005, 6:38-7:17), message 400 contains
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`message content field 406, which a POSA would have understood as containing
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`speech data for a speech chat message. (Ex. 1002, ¶148.) Additionally, as
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`explained in the Petition, it would have been obvious for the speech data in field
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`406 to be a “digitized audio file,” particularly in view of Zydney. (Pet., 33-36
`
`(citing Ex. 1002, ¶¶150-56).)
`
`7
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`

`

` IPR2017-01798 – Petitioner’s Reply
`
`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., 13-15.) This argument, however, ignores
`
`Griffin’s explicit disclosures that message 400 can contain speech (Ex. 1005, 4:11-
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`15); “message type” 401 can be “speech” (id., 6:39-44); field 406 contains the
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`“message content” (id.), and, for speech chat messages, the recorded speech is
`
`referred to as “the speech content” (id., 10:36-43). (Ex. 1002, ¶¶147-48.) PO’s
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`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. 24 (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., 13-15.) This “character string or symbol,”
`
`however, is not the “message content” of message 400, but rather additional
`
`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, where Griffin explains that, instead of
`
`transmitting the “actual speech content,” “speech-to-text conversion” can be used
`
`to convert “the actual speech content of the message…to text.” (Id., 10:43-45.)
`
`Thus, Griffin expressly distinguishes the “generic character string or symbol” from
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`8
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`

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` IPR2017-01798 – Petitioner’s Reply
`
`the “actual speech content.” (See Pet., 31-32 (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
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`message 400…includes an object field (similar to field 406) having a digital audio
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`file of speech data, similar to as described in Zydney” (Pet., 33-35), which the
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`Board found persuasive at institution (Dec., 28-29). Thus, for this additional
`
`reason, the Board should maintain its determination that this limitation would have
`
`been obvious based on the Griffin-Zydney combination. (See Dec., 29.)
`
`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 and 24. (Pet., 14-15, Fig. 3.)
`
`(Ex. 1005, Fig. 3 (annotated).) Instead, PO incorrectly asserts that network
`
`
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`9
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` IPR2017-01798 – Petitioner’s Reply
`
`interface 306 is not “connected to a packet-switched network” based on its
`
`interpretation that “connected to” requires a direct connection. (Resp., 18-23.) For
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`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
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`limitation.
`
`As explained in the Petition, even if a direct connection were required, this
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`limitation would have been obvious based on the combination of Griffin and
`
`Zydney. (Pet., 17-20.) 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., 22-23.) Indeed, Mr.
`
`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
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`communications with the terminals” (Ex. 1005, 3:55-57) to argue that Griffin
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`“would lead a POSITA away from attempting to bypass the wireless carrier
`
`infrastructure 202” (Resp., 23). In addition to being unsupported by expert
`
`testimony, PO’s argument overstates the meaning of this statement. Read in
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`10
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`

`

` IPR2017-01798 – Petitioner’s Reply
`
`context, this portion of Griffin is describing the elements necessary for wireless
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`communication within a wireless carrier’s infrastructure 202. (Ex. 1005, 3:51-
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`59.) Therefore, there is no basis for arguing that Griffin “teaches away from the
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`proposed modification” or that the modification would not “operate as intended,”
`
`as PO contends. (Resp., 23.) Indeed, Griffin explains that its mobile terminal 100
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`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
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`network (Ex. 1006, 11:16-18, Fig. 1a). (Pet., 17-18.) 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
`
`would have been motivated to provide a direct connection between Griffin’s
`
`network interface 306 and network 203.
`
`C. The Griffin-Zydney Combination 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-
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`Zydney combination, PO argues that Zydney does not disclose this limitation
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`because (i) Zydney does not use the word “current” and (ii) Zydney’s system
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`“passively waits to receive random status information notifications from the
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`software agents.”2 (Resp., 24-25.) Prior art, however, need not recite the same
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`words as the claim. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). PO also
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`misunderstands Zydney’s teachings.
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`For example, Zydney explains that its server actively “tracks and maintain[s]
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`the status of all software agents,” including “the core states of whether the
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`recipient is online or offline” (i.e., currently connected). (Ex. 1006, 14:8-9,
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`14:22:23; Pet., 28-29.) A software agent is online (i.e., currently connected) when
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`it has “logged onto the system and has been authenticated.” (Ex. 1006, 32:9-10.)
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`Likewise, a software agent is offline (i.e., not currently connected) when it “logs
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`off the system.” (Id., 32:16-17; id., 33:1-2.) In both cases, the server automatically
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`informs other interested software agents of the agent’s online/offline status. (Id.,
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`32:10-12, 32:16-17.) The only aspect of Zydney’s status that requires a user to
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`notify the server of its status relates to, for example, “whether the recipient does
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`not want to be disturbed.” (Id., 14:22-15:1, 32:18:-33:2.) But this status
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`
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`2 In other portions of its Response, PO takes the opposite position regarding
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`Zydney’s teachings. (Resp., 44 (describing the importance of knowing the
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`availability of recipients with certainty).) PO cannot have it both ways.
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`information is in addition to the core online/offline states indicating whether there
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`is a current connection. (Id., 14:20-15:1, 32:9-33:2.)
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`Moreover, Zydney teaches that status information can be used to select
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`between the “pack and send” and “intercom” modes of communication. (Id., 15:3-
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`21.) Status information is important when selecting a communication mode
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`because “intercom” mode is a “real-time” communication that “simulates a
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`telephone call” and therefore requires an “online” (i.e., current) connection. (Id.)
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`Thus, the status of each software agent must indicate whether there is a current
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`connection, or else Zydney’s system would not operate as described.
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`Thus, Zydney discloses connection information indicating whether there is a
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`current connection, and it would have been obvious to modify Griffin’s status 702
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`to include such information.
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`D.
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`Low Discloses “Connection Object Messages”
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`For this limitation in claim 24, PO provides no citations to the prior art, the
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`challenged patent, or either expert’s testimony, and instead presents only one
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`paragraph of conclusory attorney argument that focuses on a single element in Low
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`(“sign_on” command) to the exclusion of others highlighted in the Petition. (Resp.,
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`25-26.)
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`As explained in the Petition, Low describes an instant messaging system in
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`which IM clients transmit data packets to Low’s “IM gateway” that initiate a user’s
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`login/logout from the network (“sign_on”), indicate that the IM client user is
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`“away, idle, or does not wish to be disturbed,” or maintain the network connection
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`(through “KEEP_ALIVE packets”). (Pet., 66-68 (citing Ex. 1002, ¶¶334-339; Ex.
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`1010, ¶¶36-39).) PO’s argument only addresses the first of these exemplary object
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`messages, and thus falls short. Even assuming that: (1) “a command to change to a
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`state” is different from “a message with a current state,” and assuming (2) the latter
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`is required by the claim language and the former is excluded, PO’s argument still
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`fails to distinguish either Low’s “commands which are sent to indicate that the user
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`is away, idle, or does not wish to be disturbed,” or its KEEP_ALIVE packets,
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`which indicate the client is connected. (Ex. 1010, ¶¶37, 39; Pet., 67-68.)
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`E.
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`Zydney Does Not Teach Away From the Griffin-Zydney-Low
`Combination
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`PO’s argument that Zydney teaches away from the combination is based on a
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`combination that was never proposed—i.e., placing Low’s connection object
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`messages inside Zydney’s voice containers. (Resp. 51-52.) Instead, Petitioner
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`explains that it would have been obvious for Griffin’s broadcaster 303 (located in
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`server complex 204) to receive “data and or commands from each terminal 100
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`representing the state of the connection with server complex 204 and for
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`maintaining the logical connection with server complex 204,” as taught in Low.
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`(Pet., 69-70; Ex. 1002, ¶¶340-341.) Petitioner did not argue that the connection
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`object messages would have been included in the voice containers. Nor do the
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`claims require such a disclosure. Thus, PO’s argument fails.
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`F.
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`Clark Teaches a Message Database Containing a Database Record
`With Both a Unique Identifier and the Message Itself
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`PO’s arguments regarding Clark are off base. (Resp., 26-32.)
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`First, PO suggests that, “[a]t most, Clark makes a passing reference to
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`voicemail messages” and thus would not be used for IVMs. (Resp., 26.) This is
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`incorrect. As Petitioner explained, Clark teaches a system/process “for cataloging,
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`retrieving and/or manipulating electronic messages,” such as “instant messages”
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`and “voice mail messages.” (Pet., 47 (citing Ex. 1007, 8:31-44, 4:9-12, 8:7-10,
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`16:50-17:22; Ex. 1002, ¶¶77-81, 284-87).) Clark also explains that its teachings
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`“can be applied to organizing any sort of electronic messages” and “do[] not rely
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`on any specific message format…or…protocol.” (Pet., 50-51 (emphasis added)
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`(quoting Ex. 1007, 8:31-44, 50-54).) Thus, PO’s argument that Clark’s database
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`would not have been used for instant voice messages is simply unsupported.
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`PO also argues that the claim language requires both the unique identifier
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`and the IVM be contained in the same database record. (Resp., 27-32.) Even
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`assuming this is true, Clark discloses this feature, and thus PO’s arguments fail.
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`(Pet., 47-49.) The claim language, however, is not so narrow. The claim merely
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`states that the IVM is “represented” by a database record.
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`Nevertheless, even under PO’s overly narrow interpretation, Clark discloses
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`this limitation. In particular, PO largely ignores Figure 5B of Clark, which shows a
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` IPR2017-01798 – Petitioner’s Reply
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`“MessageID” (unique identifier) that is contained in the same record as the
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`message data (“<message.data>”). (Pet., 48; see also Ex. 1007, 11:5-12:6.) PO
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`does not dispute this. Instead, PO asserts that “the only element of Clark that the
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`Petition identifies as allegedly disclosing the claimed ‘unique identifier’” is
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`StoreMessageID 52A of Figure 5A. (Resp., 31.) This is simply not true. (Pet., 48.)
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`Thus, Clark’s Figure 5B discloses a message database containing a message record
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`containing both the unique identifier and the message itself.
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`PO’s arguments regarding Figure 5A of Clark fare no better. (Resp., 29-32.)
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`As Petitioner explained, Figure 5A demonstrates a “StoreMessageID” (unique
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`identifier) in the same record as the message data (“<message.data>”). (Ex. 1007,
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`Fig. 5A; Pet., 48). PO attempts to support its arguments by narrowly focusing on
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`only the top half of Figure 5A and by citing irrelevant portions of its expert’s
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`declaration. (See Resp., 30 (citing Ex. 2001, ¶¶80, 82-83).) Contrary to PO’s
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`assertions, Petitioner’s positions were not based solely on “StoreMessageId 52A,”
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`and thus PO’s arguments fail.
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`G. Clark Does Not Teach Away From the Griffin-Zydney-Clark
`Combination
`
`PO’s argument that Clark teaches away from the combination again ignores
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`Figure 5B and Petitioner’s unpatentability positions. (Resp., 32-33.) PO suggests,
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`once again, that Petitioner only relied on “element (52A) in Clark…for the claimed
`
`‘unique identifier.’” (Resp., 33.) This is incorrect. (See Section III.F; Pet., 48.)
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`Thus, PO’s argument is completely irrelevant for records 54 and 54’ in Clark (both
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`pointed to by Petitioner). (Pet., 48.) Additionally, PO’s argument that “Clark
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`teaches away from including the message data in the same table” (Resp., 33)
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`ignores Clark’s express teaching that “catalog database 28 and message store
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`23…may be integrated into a single integrated message store.” (Ex. 1007, 11:1-3
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`(emphasis added), Fig. 5B).
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`H.
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`Zydney Does Not Teach Away From the Griffin-Zydney-Clark
`Combination
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`PO’s argument that Zydney teaches away from the combination, which also
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`appears in PO’s preliminary response (POPR, 54-56), should again be rejected by
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`the Board (Dec., 34-35).
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`PO’s argument also unreasonably focuses on Zydney when “Zydney is not
`
`the primary focus of the grounds here; Griffin is.” (Dec., 41.) In particular, PO
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`argues that Zydney would not be combined with Clark (entirely ignoring Griffin)
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`because, in one embodiment, Zydney refers to “releasing the temporary storage”
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`where the voice container is temporarily stored on the originator’s computer.
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`(Resp., 34-36.) PO argues this means that Zydney teaches away from the
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`combination and that the combination would be inoperable. This is pure
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`speculation. Notably, these figures provide no affirmative reason for “releasing”
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`this temporary storage and certainly do not disparage storing voice containers
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`permanently on the originating device. (See Dec., 34-35.)
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`Ultimately, this argument is irrelevant to Petitioner’s positions, which do not
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`rely on the “releasing the temporary storage” feature in Zydney, w