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
`United States Patent No. 8,724,622
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1798
`Uniloc's Exhibit No. 2001
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-01798
`United States Patent No. 8,724,622
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1798
`Uniloc's Exhibit No. 2001
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`
`II. MY BACKGROUND AND QUALIFICATIONS ....................................... 3
`
`III.
`
`LEGAL STANDARDS USED IN MY ANALYSIS .................................... 6
`
`A. I am Familiar with the Legal Concept of Obviousness. ........................... 6
`B. Priority Date of the ’622 Patent ................................................................ 8
`C. The Person Having Ordinary Skill in the Technical Art
`D. Broadest Reasonable Interpretation (“BRI”) .......................................... 10
`V. GRIFFIN ...................................................................................................... 13
`
`(PHOSITA) ............................................................................................... 9
`
`IV. OVERVIEW OF THE ʼ622 PATENT ........................................................ 10
`
`VI.
`
`ZYDNEY ..................................................................................................... 16
`
`VII. CLARK ........................................................................................................ 17
`
`VIII. VALIDITY ANALYSIS FOR THE CHALLENGED CLAIMS ............... 22
`
`Discloses an “Instant Voice Message” ................................................... 22
`
`A. Petitioner Does Not Establish a Prima Facie Case that Griffin
`B. Griffin plus Zydney Does Not Disclose a Network Interface
`C. Zydney Does Not Render Obvious “Wherein the Instant Voice
`D. No Prima Facie Showing of a Database Record of a Message
`
`Connected to a Packet-Switched Network ............................................. 23
`
`Messaging Application Includes a Document Handler System for
`Attaching One or More Files to the Instant Voice Message” ................ 25
`
`Database Including a Unique Identifier and an Instant Voice
`Message .................................................................................................. 29
`
`i
`
`
`
`IX. A PHOSITA WOULD NOT COMBINE GRIFFIN WITH ZYDNEY AS
`PETITIONER SUGGESTS ................................................................................... 35
`
`X. A PHOSITA WOULD NOT COMBINE GRIFFIN PLUS ZYDNEY WITH
`
`LOW AS PETITIONER SUGGESTS ................................................................... 41
`
`XI. CONCLUSION ............................................................................................ 42
`
`ii
`
`
`
`I, Chuck Easttom, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is William Charles Easttom II ( “Chuck Easttom”).
`
`Uniloc Luxembourg S.A. (“Uniloc” or the “Patent Owner”) retained me to
`
`provide my expert opinions regarding United States Patent No. 8,724,622
`
`(“the ’622 Patent”).
`
`2.
`
`From 2003 to 2013, I taught professional development courses
`
`to IT professionals in programming (C, Java, C++, and C#), web development
`
`(HTML, JavaScript, CSS, and .net), networking, and network security at
`
`Collin College, McKinney, TX. From 2000 to 2003, I was Department Chair
`
`for Computer Information Systems at Remington College, in _____. I have
`
`been a software engineer at Alegis Corporation Systems Group and a
`
`programmer at Boeing Aerospace Operations.
`
`3.
`
`The Patent Owner asked me to study Claims 3, 13–16, 19, 24–
`
`31, and 33 (the “challenged claims”) of the ’622 Patent (“EX1001”) to
`
`determine whether a person having ordinary skill in the technical art most
`
`pertinent to the art of the challenged claims at the priority date of the ’622
`
`Patent (hereafter a “PHOSITA”) would have considered those claim obvious
`
`in light of the asserted references considered as a whole.
`
`1
`
`Uniloc's Exhibit 2001, page 1
`
`
`
`
`
`4.
`
`I reviewed the ’622 Patent, its prosecution file wrapper, the state
`
`of the art at the time the application was filed, the references asserted by
`
`Samsung, Samsung’s Petition IPR2017-1798 (“Petition”), the Declaration of
`
`Dr. Haas (EX1002) in support of the Petition, the references relied upon in the
`
`Petition (including Zydney, Griffin, Clark, Vaananen, and Low) and my own
`
`Declarations from IPR2017-01667 and IPR2017-01668 in support of the
`
`Patent Owner. IPR2017-01667 and IPR2017-01668 also involved a challenge
`
`to the ’622 Patent based on Zydney. I also determined the scope and content
`
`of the prior art, ascertained the differences between the challenged claims and
`
`the prior art, and determined the level of ordinary skill in the art most pertinent
`
`to the claimed technology. All the opinions I express here are my own.
`
`5.
`
`Based on the above, and my familiarity with those having
`
`ordinary skill in the art at the time the application was filed, and my decades
`
`of experience in the field of computer science including communications
`
`systems, I concluded that challenged the challenged claims would not have
`
`been obvious in light of the arguments and references relied upon in the
`
`Petition.
`
`6.
`
`The Patent Owner compensates me at my standard consulting
`
`rate of $300 per hour. Patent Owner also reimburses my reasonable expenses
`
`necessary to this work. I have no financial interest in Patent Owner, and my
`
`
`
`2
`
`Uniloc's Exhibit 2001, page 2
`
`
`
`
`
`compensation is not contingent upon the results of my study or the substance
`
`of my opinions.
`
`II. MY BACKGROUND AND QUALIFICATIONS
`
`7.
`
`I have worked in the computer industry for over 25 years. During
`
`that time I have had extensive experience with network communications
`
`systems. I hold 42 industry certifications, which include certifications in
`
`network communications. I have authored 24 computer science books, several
`
`of those deal with network communications topics. I am a named inventor on
`
`thirteen United States patents:
`
` United States Patent No. 9,755,887, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sep. 5, 2017,
`
`assigned to Open Invention Network LLC.
`
` United States Patent No. 9,754,108, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Sep. 5, 2017, assigned to Open Invention
`
`Network LLC.
`
` United States Patent No. 9,753,957, entitled “System and
`
`Method for Document Tracking”, issued Sep. 5, 2017, assigned
`
`to Open Invention Network LLC.
`
`
`
`3
`
`Uniloc's Exhibit 2001, page 3
`
`
`
`
`
`
`
` United States Patent No. 9,686,227, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Jun. 20,
`
`2017, assigned to Open Invention Network LLC.
`
` United States Patent No. 9,619,656, entitled “Method and
`
`Apparatus of Performing Distributed Steganography of a Data
`
`Message”, issued Apr. 11, 2017, assigned to Open Invention
`
`Network LLC.
`
` United States Patent No. 9,405,907, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Aug. 2, 2016, assigned to Open Invention
`
`Network LLC.
`
` United States Patent No. 9,313,167, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Apr. 12,
`
`2016, assigned to Open Invention Network LLC.
`
` United States Patent No. 8,984,639, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Mar. 17, 2015, assigned to Open Invention
`
`Network LLC.
`
`4
`
`Uniloc's Exhibit 2001, page 4
`
`
`
`
`
` United States Patent No. 8,825,845, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sep. 2, 2014,
`
`assigned to Open Invention Network LLC.
`
` United States Patent No. 8,825,810, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Sep. 2,
`
`2014, assigned to Open Invention Network LLC.
`
` United States Patent No. 8,819,827, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Aug. 26, 2014, assigned to Open Invention
`
`Network LLC.
`
` United States Patent No. 8,713,067, entitled “Stable File
`
`System”, issued Apr. 29, 2014, assigned to Open Invention
`
`Network LLC.
`
` United States Patent No. 8,527,779, entitled “Method and
`
`Apparatus of Performing Distributed Steganography of a Data
`
`Message”, issued Sep. 3, 2013, assigned to Open Invention
`
`Network LLC.
`
`8.
`
`I am also a member of the Association of Computing Machinery
`
`(ACM) and the Institute of Electrical and Electronics Engineers (IEEE). I am
`
`also a member of the ACM Distinguished Speakers program and on the
`
`
`
`5
`
`Uniloc's Exhibit 2001, page 5
`
`
`
`
`
`advisory board for the cybersecurity program at Embry Riddle University. I
`
`attach my curriculum vitae hereto as Appendix A, which includes a more
`
`detailed description of my professional qualifications, a list of publications,
`
`teaching, and professional activities.
`
`9.
`
`I attach my curriculum vitae hereto as Appendix A, which
`
`includes a more detailed description of my professional qualifications, a list
`
`of publications, teaching, and professional activities.
`
`III. LEGAL STANDARDS USED IN MY ANALYSIS
`
`10.
`
`I am not an attorney. I have, however, worked closely with
`
`counsel, including patent counsel, in over 40 litigations where I have become
`
`informed of and relied on certain recurring legal principles related to the
`
`validity of patents. I rely on counsel for the law and rely on my learning in
`
`reaching the opinions I set forth in this Declaration.
`
`A.
`
`11.
`
`I am Familiar with the Legal Concept of Obviousness.
`
`I understand that a claim in a patent can be invalidated for being
`
`“obvious” if the differences between the subject matter of the claims and the
`
`asserted prior art are such that the subject matter as a whole would have been
`
`obvious to a person having ordinary skill in the technical art (“PHOSITA”) at
`
`the time the claimed inventions were conceived (i.e., the priority date for the
`
`ʼ622 Patent). I understand that every determination on obviousness requires a
`
`
`
`6
`
`Uniloc's Exhibit 2001, page 6
`
`
`
`
`
`review of the scope and content of the asserted references, analysis of the
`
`differences between those references and the patent claim at issue, and the
`
`level of ordinary skill in the pertinent art at the time the invention was
`
`conceived.
`
`12.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the cited art, the claim cannot be considered obvious.
`
`13.
`
`I understand that it is improper to combine references where the
`
`references teach away from the proposed combination, i.e. where the
`
`reference teaches away from the claimed invention. I understand also that the
`
`following factors are among those relevant in considering whether there
`
`would have been any motivation to combine that references as Petitioner
`
`proposes:
`
` whether a PHOSITA, upon reading the reference would be led in a
`
`direction divergent from the path that was taken by the applicant;
`
` whether the reference criticizes, discredits, or otherwise
`
`discourages investigation into the claimed invention;
`
` whether a proposed combination would produce an inoperative
`
`result;
`
`
`
`7
`
`Uniloc's Exhibit 2001, page 7
`
`
`
`
`
` whether a proposed combination or modification would render the
`
`teachings of a reference unsatisfactory for its intended purpose;
`
`and
`
` whether a proposed combination would change the basic principles
`
`under which a reference was designed to operate.
`
`14.
`
`I understand that the level of ordinary skill in the art is important
`
`in every obviousness analysis because that is the prism or lens through which
`
`the USPTO Board views the patent claims. Evaluating the claimed invention
`
`through the eyes of the PHOSITA prevents factfinders from using either their
`
`own insight or hindsight, to gauge obviousness or nonobviousness. The
`
`factfinder must view the claims from the standpoint of a PHOSITA at the time
`
`just prior to the invention being made, rather than looking back from the
`
`claims as issued and using that claim as a blueprint to combine elements as
`
`claimed. A PHOSITA working in the art at the time of the invention cannot
`
`be assumed to be able to predict future developments in the art that in
`
`hindsight might appear to have been predictable.
`
`B.
`
`Priority Date of the ’622 Patent
`
`15. The ’622 Patent issued from United States Patent Application
`
`No. 13/546,673, which is a continuation of United States Patent Application
`
`No. 12/398,063 (now United States Patent No. 8,243,723), which is a
`
`
`
`8
`
`Uniloc's Exhibit 2001, page 8
`
`
`
`
`
`continuation of United States Patent Application No. 10/740,030 (now United
`
`States Patent No. 7,535,890), filed on Dec. 18, 2003. The ’622 Patent issued
`
`on May 13, 2014. For purposes of this declaration, I have assumed the priority
`
`date for the ’622 Patent is Dec. 18, 2003. EX1001 (cover page).
`
`C. The Person Having Ordinary Skill in the Technical Art
`(PHOSITA)
`
`16.
`
`I understand that a PHOSITA is a hypothetical person who is
`
`presumed to have ordinary skill in the art as of the time of invention. I
`
`understand that factors that may be considered in determining the level of
`
`ordinary skill in the art may include: (a) the type of problems encountered in
`
`the art; (b) prior solutions to those problems; (c) the rapidity with which
`
`innovations are made in the field at the time; (d) the sophistication of the
`
`technology; and (e) the education and skill level of workers active in the field
`
`at the time of the invention.
`
`17. The Patent Owner asked me to provide my opinion as to the
`
`qualifications of a PHOSITA to which the challenged claims of the ’622
`
`Patent pertained as of 2003. In my opinion, a PHOSITA 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.
`
`
`
`9
`
`Uniloc's Exhibit 2001, page 9
`
`
`
`
`
`D. Broadest Reasonable Interpretation (“BRI”)
`
`18.
`
`I understand that the terms in the challenged claims of the ’622
`
`Patent are to be given their broadest reasonable interpretation (“BRI”) in light
`
`of the specification of the ’622 Patent as understood by a PHOSITA at the
`
`priority date of the ’622 Patent. I used this understanding throughout my
`
`analysis.
`
`IV. OVERVIEW OF THE ʼ622 PATENT
`
`19. The ’622 Patent recognizes that conventional circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`disadvantages that limited developing other forms of communication over
`
`such networks. According to the ’622 Patent, “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the
`
`telephone terminal to another device 20 over the [public switched telephone
`
`network or] PSTN, including another telephone terminal. During the
`
`telephone call, voice communication takes place over that communication
`
`path.” Ex. 1001, 1:29-34.
`
`20. The ’622 Patent expressly distinguishes circuit-switched
`
`networks from packet-switched networks (e.g., the Internet) at least in that the
`
`latter routes packetized digital information, such as “Voice over Internet
`
`
`
`10
`
`Uniloc's Exhibit 2001, page 10
`
`
`
`
`
`Protocol (i.e., “VoIP”), also known as IP telephony or Internet telephony.”1
`
`Id., 1:35-36. Because legacy circuit-switched devices were unable to
`
`communicate directly over packet-switched networks, media gateways (114)
`
`were designed to receive circuit-switched signals and packetize them for
`
`transmittal over packet-switched networks, and vice versa. Id., 2:8-18. The
`
`conversion effected by media gateways (e.g., 114 and 118) highlights the fact
`
`that packetized data carried over packet-switched networks (e.g., IP network
`
`102) are different from, and are incompatible with, an audio signal carried
`
`over a dedicated packet-switched circuit. Id., 2:8-21.
`
`
`1 Consistent with the ’622 Patent specification, the USPTO has also
`
`recognized there are significant differences between circuit-switched and
`
`packet-switched networks during the relevant timeframe. See, e.g., U.S.
`
`Application No. 90/012,728 and 90/012,789 (Notice of Intent to Issue Ex
`
`Parte Reexamination Certificate, dated April 10, 2014) at page 9, where the
`
`USPTO confirmed the following:
`
`Ethernet packet switching protocol, including TCP/IP, are very
`specific connectionless/packet switched protocols. In contrast to
`connection-oriented protocols, connectionless/packet switched
`protocols do not need to set up a dedicated path in advance.
`Rather, routers send fragmented messages or “packets” to their
`destination independently. Connectionless protocols have a
`number of advantages over connection-oriented protocols,
`including better use of available bandwidth.
`
`11
`
`
`
`
`
`Uniloc's Exhibit 2001, page 11
`
`
`
`
`
`21. The ’622 Patent provides historical context by describing how,
`
`notwithstanding the advent of instant text messages, at the time of the claimed
`
`invention there was no similarly convenient analog to leaving an instant voice
`
`message (“IVM”) over a packet-switched network. Id., 2:22-53. Rather,
`
`“conventionally, leaving a voice message involves dialing the recipient’s
`
`telephone number (often without knowing whether the recipient will answer),
`
`waiting for the connection to be established, speaking to an operator or
`
`navigating through a menu of options, listening to a greeting message, and
`
`recording the message for later pickup by the recipient. In that message, the
`
`user must typically identify himself or herself in order for the recipient to
`
`return the call.” Id., 2:26–33.
`
`22. The ʼ622 Patent also describes a user-accessible client (208) that
`
`is specially configured for IVM communication and for direct communication
`
`over a packet-switched network (e.g., through an Ethernet card). Id., 12:13-
`
`14. Specifically, the ’622 Patent teaches that certain clients (208) are specially
`
`configured to “listen[] to the input audio device 212,” “record[] the user’s
`
`speech into a digitized audio file 210 (i.e., instant voice message) stored on
`
`the IVM client 208,” and “transmit[] the digitized audio file 210” as
`
`packetized data (e.g., using TCP/IP) over a packet-switched network (e.g.,
`
`network 204) “to the local IVM server 202.” Id., 8:8–11 and 8:21–22.
`
`
`
`12
`
`Uniloc's Exhibit 2001, page 12
`
`
`
`
`
`V. GRIFFIN
`
`23. Griffin is a patent directed to user interfaces. Griffin is not as
`
`Petitioner asserts “a system for exchanging speech (i.e., voice) chat messages
`
`in real time between wireless mobile terminals….”. Pet. p. 10. Rather, Griffin
`
`is a user interface patent for “displaying and interacting with speech and text
`
`group chat threads.” Griffin, 1:62–65.
`
`24.
`
`In my opinion, a PHOSITA would not understand Griffin as
`
`teaching real time communication of speech. Petitioner argues that Griffin
`
`supports transmission of a voice message in real time (Pet. p. 20), but neither
`
`Petitioner nor Griffin describe communication of speech in real time. Real-
`
`time communication requires both the capability for transmission in real time
`
`as well as the capability for receipt in real time. Petitioner does not account
`
`for when the recipient using the Griffin system actually receives messages. To
`
`the contrary, as I explain below, the speech Petitioner argues is transmitted in
`
`real time is quite likely not received in real time even when the target user is
`
`already using their device, because a specific chat history window required
`
`for speech message receipt is not being displayed at the device (even in the
`
`unlikely event that the chat history window was being displayed, there are still
`
`several other reasons why a PHOSITA would not combine Griffin with
`
`
`
`13
`
`Uniloc's Exhibit 2001, page 13
`
`
`
`
`
`Zydney). Petitioner does not show
`
`that Griffin supports real-time
`
`communication of speech.
`
`25. Griffin mentions “real-time” only in the general Technical Field:
`
`“a novel technique of managing the display of a plurality of real-time speech
`
`and text conversations (e.g., chat threads) on limited display areas.” Griffin,
`
`1:9–11.
`
`26.
`
`In my opinion, Griffin contradicts Petitioner’s argument that
`
`Griffin discloses an “instant voice message.” Griffin teaches a system that has
`
`no knowledge of, or interest in, and no way to know whether a recipient is
`
`positioned to hear a message. Griffin is interested only in whether a terminal
`
`is configured to be able to receive a message at some point in the future.
`
`27. Petitioner relies on the feature in Griffin of “presence status” to
`
`argue that Griffin “includes terminals 100 that are presented with information
`
`regarding the availability of other terminals 100 for messaging and facilitates
`
`the immediate transmission of speech chat messages between available
`
`terminals 100 via server complex 204.” Pet., p. 21. Nowhere, however, does
`
`Petitioner reference Griffin’s failure to deliver a message even when the
`
`terminal is “Available,” which I further explain below.
`
`28. Griffin discloses instant text messages, but Griffin does not
`
`disclose instant voice messages. Every passage of Griffin that Petitioner relies
`
`
`
`14
`
`Uniloc's Exhibit 2001, page 14
`
`
`
`
`
`on is directed explicitly toward text messaging. Petitioner does not point to
`
`any part of Griffin that describes instant voice messaging. All Petitioner says
`
`is that Griffin is “consistent with” passages in the ʼ622 Patent. Pet., p. 20. In
`
`my opinion, Petitioner does not explain how or why Petitioner believes that
`
`Griffin discloses an “instant voice message.”
`
`29. Petitioner cites to passages in Griffin that use the term “push-to-
`
`talk.” E.g., Pet., p. 55. However, Petitioner relies on an understanding of
`
`“push-to-talk” that is relevant today (i.e., 2017) but was not relevant in 2002
`
`when Griffin filed his application. In 2002, a PHOSITA would have
`
`understood “push-to-talk” as technology that enables a mobile device to
`
`operate as a half-duplex radio similar to a walkie-talkie. When Griffin was
`
`filed, “push-to-talk” was used by radio operators, for instance, in the Citizens
`
`Band. Every mention of push-to-talk in Griffin refers to that half-duplex,
`
`radio-based communication method. No PHOSITA would equate such a
`
`method with the claimed “instant voice message.”
`
`30. The system in Griffin has no knowledge of, or interest in, and has
`
`no way to know whether a device is ready and able to “hear” a message. In
`
`Griffin, the message to be sent from the server complex 204 is prepared based
`
`on the technical ability of a terminal to receive the message at some arbitrary
`
`
`
`15
`
`Uniloc's Exhibit 2001, page 15
`
`
`
`
`
`point in the future. The message is only delivered if the user has the “chat
`
`history display” visible on the user interface. Griffin, 11:48–67.
`
`31. Griffin also makes only the most recent speech message available
`
`at a receiving device. Griffin states: “In a current implementation, the most
`
`recently received speech message (or at least that portion that will fit in
`
`available memory) [is] queued at the receiving terminal.” Griffin, 11:50–53.
`
`A PHOSITA would understand this to mean that only the most recently
`
`received speech message (or portion thereof) is queued at the receiving
`
`terminal, so any previous speech messages (including those that were sent
`
`before the user switched or opened to the “chat history display”) would be
`
`lost.
`
`VI. ZYDNEY
`
`32. Zydney is an International Patent Application that “relates to the
`
`field of packet communications, and more particularly to voice packet
`
`communication systems.” Zydney, 1:4–5 (referring to Zydney by page and line
`
`numbers).
`
`33. Zydney explains “[the] present invention is a system and method
`
`for voice exchange and voice distribution utilizing a voice container.” Zydney,
`
`1:19–20 (emphasis added). Those “voice containers can be stored, transcoded
`
`and routed to the appropriate recipients instantaneously or stored for later
`
`
`
`16
`
`Uniloc's Exhibit 2001, page 16
`
`
`
`
`
`delivery.” Id. at 1:21–2. Zydney explains that a “voice container” is “a
`
`container object that contains no methods but contains voice data or voice data
`
`and voice data properties.” Id. at 12:6–8. In my opinion, a PHOSITA would
`
`have understood that Zydney’s voice container is an “object” used in object-
`
`oriented programming languages, with which I am very familiar, such as Java
`
`or C++, to hold data constructs, such as data values or other objects.
`
`34. Zydney explains that “the originator digitally records messages
`
`for one or more recipients using a microphone-equipped device and a software
`
`agent. The software agent compresses the voice and stores the file temporarily
`
`on the PC if the voice will be delivered as an entire message.” Zydney, 16:1–
`
`4. A software agent at the recipient unpacks the voice container (including
`
`various files that may be within the voice container) and plays the voice
`
`message. Zydney, 13:19–22, FIG. 18.
`
`35. Zydney also states that “voice containers may have digitized
`
`greeting cards appended to them to present a personalized greeting.” Zydney,
`
`19:1–7.
`
`VII. CLARK
`
`36. Clark issued in 2004 and relates to:
`
`[E]lectronic messaging systems and, in particular
`relates to systems for managing and organizing
`electronic messages. Messages may be e-mail messages,
`voice mail messages, digitized faxes or the like. Specific
`
`
`
`17
`
`Uniloc's Exhibit 2001, page 17
`
`
`
`
`
`aspects of the invention provide computer-implemented
`methods
`for managing and organizing electronic
`messages, computer systems for managing and organizing
`electronic messages, and computer-readable media
`containing computer
`instructions which, when
`executed by the computer cause the computer to
`perform a method according to the invention.
`(EX1007 at 1:7–17) (Emphasis added.)
`
`37. Thus, Clark discloses systems and software for organizing
`
`electronic messages.
`
`38. Clark’s Abstract explains the patent as follows:
`
`retrieves
`A computer-based system catalogs and
`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. Unlike prior art systems,
`where a message exists in only one folder, the system uses
`lightweight message shortcuts to display the message in
`multiple folders simultaneously. The system preferably
`permits messages to be organized by: 1) basic message and
`attachment properties, e.g. date, status, attachment type; 2)
`extended message properties that the user can specify, e.g.
`keywords; and 3) correspondent or bulk mail
`sender/recipient, with automatic separation of bulk mail
`from correspondence. Performance and usability are
`improved by performing reads incrementally and by
`providing multiple sorting keys.
`(EX1007, Abstract) (Emphasis added.)
`
`39. Clark’s Abstract, reproduced in total above, explains that
`
`messages are saved in folders on a computer. Thus, a PHOSITA would have
`
`recognized that an extremely important aspect of Clark focuses on saving
`
`
`
`18
`
`Uniloc's Exhibit 2001, page 18
`
`
`
`
`
`messages in a memory so that they may be found and accessed later, even
`
`after they have been sent or received. Clark further explains that “[apparatus]
`
`according to the invention provides a relational database which uses
`
`lightweight message shortcuts to make individual messages available in
`
`multiple folders simultaneously.” Id. at 4:32-36. (Emphasis added.)
`
`Moreover, Clark further explains that its message database applies to client
`
`computers. Id. at 4:36–39 (“Furthermore, Clark explains “[the] invention can
`
`advantageously be integrated with messaging client software and/or
`
`messaging server software, such as e-mail software, to facilitate the
`
`organization of electronic messages.”). (Emphasis added.) Thus, a PHOSITA
`
`would have understood that Clark’s primary purpose is to allow for the saving
`
`and storage of electronic messages in computers, and particularly in client
`
`computers.
`
`40. Referring to FIG. 1, Clark describes a simple exemplary system
`
`having a server computer 12 and two user computers 16 and 18. Clark
`
`explains that the two users are able to exchange messages through the server.
`
`In addition, if computer 16 sends a message to computer 18, “[the] user of
`
`computer 18 can then read the message, respond to the message, delete the
`
`message, move the message to another folder, and so on. Over time the user
`
`of computer 18 may receive a large number of electronic messages from the
`
`
`
`19
`
`Uniloc's Exhibit 2001, page 19
`
`
`
`
`
`user of computer 16 and others.” Id. at 7:67–8:30. Thus, according to Clark’s
`
`invention, the users control when and where a message is saved, stored, and
`
`deleted.
`
`41. Clark explains that “[as] shown in FIGS. 5A and 5B catalog
`
`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. FIG. 5A
`
`illustrates the situation in which the catalog and message store are separate
`
`from each other, and FIG. 5B illustrates the integrated configuration.
`
`Furthermore, “[each] of these components is preferably provided in the form
`
`of a database comprising a plurality of related tables.” Id. at 11:3–5. The tables
`
`in FIGS. 5A and 5B are the boxes within the database blocks 28, 23 (FIG. 5A)
`
`and 50 (FIG. 5B). See also id. at column 6 (List of Reference Numerals, for
`
`example reference 54 is identified as “Message Table).
`
`42.
`
` The tables illustrated in FIGS. 5A and 5B also include records
`
`indexed by the fields MessageID in the Catalog and StoreMessageID in the
`
`Message Store. Clark explains the following:
`
`
`
`20
`
`Uniloc's Exhibit 2001, page 20
`
`
`
`
`
`• “MessageID” is a “non-zero value that uniquely identifies a row.”2
`
`See e.g., id. at 16:4 (“MessageID ... A non-zero value that uniquely
`
`identifies a row in the MessageSummary table.”).
`
`• “StoreMessageID” which “uniquely identifies a message within the
`
`external message store 23” Id. at 11:14–17 (“Each message 22
`
`represented
`
`in external message store 23
`
`is
`
`identified by a
`
`StoreMessageId 52A—which uniquely identifies a message within
`
`external message store 23.”).
`
`43. FIG. 5A illustrates that the Message Store includes a Message
`
`table 54, which includes the record StoreMessageID and the message data. On
`
`the other hand, the MessageID is included as a record in the separate Catalog
`
`database in a majority of the tables. Thus, the MessageID and the
`
`StoreMessageID are stored in separate databases in FIG. 5A. Furthermore, in
`
`FIG. 5B, the configuration in which the Catalog and Message Store are
`
`combined, only the MessageID field appears in the tables; there is no
`
`disclosure of StoreMessageID in FIG. 5B.
`
`
`2 A PHOSITA would have understood that the term “row” in this context is
`a “record” in a database.
`
`
`
`21
`
`Uniloc's Exhibit 2001, page 21
`
`
`
`
`
`VIII. VALIDITY ANALYSIS FOR THE CHALLENGED CLAIMS
`A.
`
`Petitioner Does Not Establish a Prima Facie Case that
`Griffin Discloses an “Instant Voice Message”
`
`44. Griffin does not disclose instant voice messaging. Every passage
`
`of Griffin that Petitioner relies on is directed toward text messaging not voice
`
`messaging. The system in Griffin merely allows for the display that a message
`
`has arrived. Griffin does not provide, nor even reference, any mechanism to
`
`play the voice message. The system described in Griffin has no knowledge of,
`
`or interest in, and no way to know whether a device is ready and able to “hear”
`
`a message. In Griffin, the message to be sent is prepared based on the technical
`
`ability of a terminal to receive the message at some arbitrary point in the
`
`future. The message is only delivered if the user has the “chat history display”
`
`visible on the user interface. Griffin, 11:48–67.
`
`45. The user interface of Griffin focuses on building “dynamic and
`
`static buddy-lists, as well as a technique to incorporate user friendly and small
`
`screen friendly nicknames that better enable users to identify and interact with
`
`users.” Id. at 1:67–2:6. The goal of Griffin is un
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