UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-01799
`PATENT 8,199,747
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2017-01799
`U.S. Patent 8,199,747
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`Table of Contents
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`INTRODUCTION
` I.
`II. RELATED MATTERS
`III. THE ’747 PATENT
`Effective Filing Date of the ’747 Patent
`Overview of the ’747 Patent
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`V.
`PROCEDUAL BACKGROUND
`VI. CLAIM CONSTRUCTION
`VII. THE PETITION FAILS TO PROVE CLAIM 2 IS OBVIOUS
` Griffin admittedly fails to disclose “the list of nodes including
`a connectivity status of each node, said connectivity status
`being available and unavailable”
`Zydney does not cure Griffin’s admitted deficiencies
`concerning “the list of nodes including a connectivity status of
`each node, said connectivity status being available and
`unavailable …”
`No proof that Griffin can be modified to map onto “nodes
`within the packet-switched network”
`VIII. DEPENDENT CLAIM 12 IS NOT OBVIOUS
`IX. THE BOARD PREVIOUSLY FOUND THE PETITION FAILS
`TO ESTABLISH OBVIOUSNESS OF CLAIMS 1, 3, AND 13
`The Board correctly found the challenge of claim 1 is deficient
`The Board correctly found the challenge of claim 3 is deficient
`
`THE PROPOSED MODIFICATION OF GRIFFIN DOES NOT
`DISCLOSE THE ALLEGEDLY REQUIRED “REAL-TIME”
`ASPECT OF THE CLAIMED “INSTANT VOICE MESSAGE”
`XI. CONCLUSION
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`X.
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`ii
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`5
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`8
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`19
`22
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`26
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`IPR2017-01799
`U.S. Patent 8,199,747
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`List of Exhibits
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`
`Description
`Declaration of William C. Easttom II
`U.S. Pat. App. Pub. No. 2004/0128356 (“Bernstein”)
`Excerpts from The American Heritage Dictionary (Houghton
`Mifflin Co. 3rd Ed. 1992)
`Invalidity Contentions Submitted on December 16, 2016 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America’s, Inc., Case No. 2:16-cv-642
`Deposition Transcript of Dr. Haas1
`Dr. Haas’ tabbed and annotated copy of his declaration
`submitted as Ex. 1001 in IPR2017-017992
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`Exhibit No.
`2001
`2002
`2003
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`2004
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`2007
`2008
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`1 As of the filing date of this Response, and due to the fact that Dr. Haas was offered
`for deposition only one week before the due date for the filing of this Response, a
`non-certified copy of the deposition transcript has been filed as Exhibit 2007.
`Pursuant to agreement between the parties, entered into during a conference call with
`the Board, Exhibit 2007 will be updated with a certified copy as soon as one becomes
`available.
`2 A certified copy of Exhibit 2008 has not yet been made available as of the filing
`date of this Response. Patent Owner will update the record with a copy of Exhibit
`2008 as soon as it is made available.
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`IPR2017-01799
`U.S. Patent 8,199,747
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`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. §42.120, Uniloc Luxembourg S.A. (the “Patent
`Owner”) submits this Patent Owner’s Response to the Petition for Inter Partes
`Review (“Pet.” or “Petition”) of United States Patent No. 8,199,747 B2 (“the ‘747
`patent” or “EX1001”) filed by Samsung Electronics America, Inc. (“Petitioner”) in
`IPR2017-01799.
`The Petition challenges claims 1–3, 12, and 13 of the ’747 patent under 35
`U.S.C. § 103 over Griffin (EX1005) in view of Zydney (EX1006). The Petition
`should be denied in its entirety as failing to prove obviousness. In this matter and in
`related matters, the Board has already considered arguments presented in the Petition
`and found them insufficient to prove unpatentability.
`II. RELATED MATTERS
`In related mater IPR2017-01800, the Board noted in its original Institution
`Decision the importance of “maintain[ing] consistency across proceedings” and
`further noted “we are guided here by our analysis in the concurrently filed Decision
`on Institution concerning Case IPR2017-01799, concerning U.S. Patent No.
`8,199,747, which is related to the ’723 patent and includes” challenged claims that
`recite certain limitations analogous to those at issue here. See IPR2017-01800, Paper
`8 at 22. As will be shown, the Board’s findings in related matters IPR2017-01257
`and IPR2017-02085 are also particularly instructive here and further confirm the
`Petition should be denied in its entirety.3
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`3 The Petition appears to provide a comprehensive list of inter partes review
`proceedings concerning this family of patents.
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`U.S. Patent 8,199,747
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`III. THE ’747 PATENT
`Effective Filing Date of the ’747 Patent
`The ’747 patent is titled “System and Method for Instant VoIP Messaging.”
`The ’747 patent issued June 12, 2012 from United States Patent Application No.
`12/398,076, which is a Continuation of Application No. 10/740,030, filed on Dec.
`18, 2003, now Pat. No. 7,535,890.
`The ’747 patent is in a family of patents including United States Patent Nos.
`7,535,890 (“the ‘890 Patent”); 8,243,723 (“the ‘723 Patent”); 8,724,622 (“the ‘622
`Patent”); and 8,995,433 (“the ‘433 Patent”). The diagram below shows how this
`family of patents is interrelated.
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`U.S. Patent 8,199,747
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`Overview of the ’747 Patent
`The ’747 patent notes 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 ’747 patent, “[c]ircuit switching provides a communication path (i.e., dedicated
`circuit) for a telephone call from the telephone terminal to another device 20 over
`the [public switched telephone network or] PSTN, including another telephone
`terminal. During the telephone call, voice communication takes place over that
`communication path.” EX1001, 1:25–30.
`The ʼ747 patent expressly distinguishes circuit-switched networks from
`packet-switched networks. Id. at 1:31–33. Because legacy circuit-switched devices
`were unable to communicate directly over packet-switched networks, media
`gateways were designed to receive circuit-switched signals and packetize them for
`transmittal over packet-switched networks, and vice versa. Id. at 1:62–2:17. The
`conversion effected by media gateways highlights the fact that packetized data
`carried over packet-switched networks are different from and are incompatible with
`an audio signal carried over a dedicated circuit-switched circuit. Id. at 1:25–30.
`The ʼ747 patent further notes that, notwithstanding the advent of instant text
`messages, at the time of the claimed inventions there was no similarly convenient
`analog to leaving an instant voice message over a packet-switched network. Id. at
`2:18–49. 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
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`navigating through a menu of options, listening to a greeting message, and recording
`the message for later pickup by the recipient. In that message, the user must typically
`identify . . . herself in order for the recipient to return the call.” Id. at 2:22–29.
`In certain aspects, the ʼ747 patent discloses that a user-accessible client is
`configured for instant voice messaging using a direct communication over a packet-
`switched network (e.g., through an Ethernet card). Id., 12:5–8. Certain clients 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. at 8:4–18, FIG. 2.
`IV. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner alleges through its declarant, Zygmunt Haas, that “a person of
`ordinary skill in the art at the time of the alleged invention, which I was asked to
`assume was late 2003, would have had at least a Bachelor’s degree in computer
`science, computer engineering, electrical engineering, or the equivalent and at least
`two years of work experience in the relevant field, e.g., network communication
`systems. More education could have substituted for practical experience and vice
`versa.” Pet. 7 (citing EX1002 ¶15).
`Uniloc’s declarant, Chuck Easttom, testified that a person of ordinary skill in
`the art is “someone with a baccalaureate degree related to computer technology and
`2 years of experience with network communications technology, or 4 years of
`experience without a baccalaureate degree.” EX2001 ¶ 16.
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`As should be apparent from his declaration and attached curriculum vitae,
`Mr. Easttom’s qualifications and experience exceed those of the hypothetical person
`having ordinary skill in the art defined above. Nevertheless, his analysis and
`opinions regarding the ’747 patent have been based on the perspective of a person
`of ordinary skill in the art as of December 2003. Id.
`PROCEDUAL BACKGROUND
`V.
`The Petition challenges claims 1–3, 12, and 13 of the ’747 patent under 35
`U.S.C. § 103 over Griffin (EX1005) in view of Zydney (EX1006). Claims 1, 2, and
`3 are the only independent claims challenged in the Petition. In its original Institution
`Decision (Paper 9) the Board granted institution only on claims 2 and 12. The Board
`denied institution of the challenges against claims 1, 3, and 13, finding that
`“Petitioner has not established sufficiently that the combination of Griffin and
`Zydney teaches or suggests” those claims. Paper 9 at 22. In response to SAS Inst.,
`Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018), the Board modified
`its Institution Decision “to institute on all of the challenged claims on the ground
`presented in the Petition.” Paper 16 at 2.
`VI. CLAIM CONSTRUCTION
`the header “Claim
`Although
`the Petition
`includes a section with
`Construction,” that section does not identify any term as allegedly requiring
`construction and it provides no specific claim construction arguments or allegedly
`supportive evidence. Pet. 16. Elsewhere in the Petition, in a footnote, Petitioner asks
`the Board to construe “node” as “potential recipient.” Pet. at 45–46, n.11. In doing
`so, Petitioner does not clearly articulate whether it considered “potential recipient”
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`to refer exclusively to device or, instead, to either a device or a person. Indeed,
`Petitioner makes no attempt to defend or explain its construction.4
`Nevertheless, in applying its claim construction position, Petitioner first
`points to “mobile terminal 100 in Griffin’s system/process.” Id. That mapping breaks
`down when Petitioner later attributes to Griffin’s mobile terminal 100 a description
`that, instead, applies to a person who Griffin refers to as the “recipient.”
`Petitioner’s inconsistent mapping highlights a fatal deficiency in the Petition:
`Petitioner relies on an interpretation that requires unreasonably broadening “node”
`to encompass a person. Petitioner has the burden of proof, yet it fails to defend such
`an unreasonably expansive interpretation. Petitioner’s application of the art injects a
`claim construction dispute that warrants resolution by the Board.
`In the context of computer communications networks, “node” is a term of art
`with a well-known plain and ordinary meaning. EX2001 ¶¶ 23–26. Persons having
`ordinary skill in the art would have understood that, in the context of network
`communications, the term “node” refers to a device (e.g., a computer, a computer
`system, or another device) within a network. Id. That plain and ordinary meaning is
`consistent with the use of “node” in independent claim 2. Id.
`Among other definitive limitations, the term “node” (in both singular and
`plural form) appears in the following context in claim 1: “receiving a list of nodes
`
`4 Petitioner should not be allowed to lie behind the log and save its allegedly
`supportive claim construction arguments (to the extent it has any) for its reply brief
`only. Such gamesmanship circumvents the word-count limitation of a Petition. It
`also severely prejudices Patent Owner by forcing it to only guess as to the (waived)
`arguments Petitioner may untimely attempt to raise in its reply in defending an
`unsupported and unexplained claim construction applied in the Petition.
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`within the packet-switched network, the list of nodes including a connectivity status
`of each node, said connectivity status being available and unavailable, wherein a
`node within the list is adapted to be selected as a recipient of an instant voice
`message” and “displaying said list of nodes.” EX1001 at 24:1–8 (emphasis added).
`Thus, the term “node” is recited in the context of being “within the packet-
`switched network,” as having a “connectivity status” itself, and as being selectable
`for receiving delivery of the instant voice message. This explicit context confirms
`the claimed “node” is a device within a packet-switched network, consistent with
`the plain and ordinary meaning. EX2001 ¶¶ 23–26.5
`Consistent with the claim language, the remainder of the ʼ747 patent
`specification refers to a “recipient of the instant voice message” (i.e., the selected
`node) as a receiving device operating within a network. See, e.g., EX1001, 2:66–67
`(“the selected recipients being enabled to audibly play the instant voice message.”);
`3:53–54 (“one or more external recipients connected to an external network outside
`the local network”); 7:61–65 (“the IVM client 208 displays a list of one or more
`IVM recipients on its display 216 . . . . The user operates the IVM client 208”);
`8:25–28 (“The one or more recipients are enabled to display an indication that the
`instant voice message has been received and audibly play the instant voice message
`
`
`5 To be clear, a “software agent” may be a part of a network device, but it is not a
`“node” as claimed. A software agent cannot be a “node” at least because device
`hardware is required to connect to the network (be it hardwired or wireless).
`Hardware is also required to process the electronic signals that a “node” receives
`before any software agent can process the message. EX2001 ¶ 25.
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`to an associated user.”); 8:30–32 (“It is noted that if a recipient IVM client is not
`currently connected to the local IVM server 202 (i.e., is unavailable) . . . .”).
`In addition to this intrinsic evidence, the 1992 edition of the American
`Heritage Dictionary of the English Language defines “node” in the computer
`network context as “[a] terminal in a computer network.” EX2001 ¶ 26 (citing
`EX2003 at 3). This dictionary definition is consistent with Mr. Easttom’s opinion
`that “‘node’ as a known term of art and refer[s] to a device rather than a person or
`purely software.” Id.
`As will be shown, Petitioner’s application of the cited art requires
`unreasonably expanding the scope of “node” to encompass a person. Such an
`erroneous claim interpretation provides an independent basis to deny the Petition.
`See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569,
`(Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor
`Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying Petition as tainted
`by reliance on an incorrect claim interpretation).
`The Petition also injects claim construction disputes regarding the word
`“within” (as recited in “nodes within the packet-switched network”) and the term
`“instant voice message.” Those disputes are detailed below in addressing
`deficiencies in the Petition with respect to limitations reciting those terms.
`VII. THE PETITION FAILS TO PROVE CLAIM 2 IS OBVIOUS
`To prevail on its sole theory of obviousness, Petitioner “must specify where
`each element of the claim is found in the prior art patents or printed publications
`relied upon.” 37 C.F.R. § 42.104(b)(4). The Petition fails to meet this burden.
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`IPR2017-01799
`U.S. Patent 8,199,747
` Griffin admittedly fails to disclose “the list of nodes including a
`connectivity status of each node, said connectivity status being
`available and unavailable”
`Independent claim 2 recites, among other patentable limitations, “receiving a
`list of nodes within the packet-switched network, the list of nodes including a
`connectivity status of each node, said connectivity status being available and
`unavailable, wherein a node within the list is adapted to be selected as a recipient of
`an instant voice message.” Among other deficiencies, Griffin’s so-called “buddy
`list” fails to disclose or suggest a list of nodes that includes a connectivity status of
`each node. These deficiencies are conceded in the Petition (and they are the
`purported basis for Petitioner’s reliance on Zydney as a secondary reference).
`Griffin describes a buddy list update message 600 that is sent from a server
`complex 204 to a mobile terminal 100. EX1005, 7:42–8:7. The Board stated in its
`original Institution Decision that “Patent Owner appears to be correct that Griffin’s
`buddy list update message 600 ‘includes a list of names of buddies (i.e., people)—
`specifically, full names 503, nicknames 504, and short names 505 for each buddy
`whose status is being updated.’” Paper 9 at 26 n.6 (citing Prelim. Resp. 38 and
`EX2001 ¶ 53). Nevertheless, the Board preliminary held that “on the record before
`us we do not understand [Griffin’s] buddy list update message 600 to identify the
`status of the buddies (i.e., people) identified by those names, but rather the status of
`mobile terminals 100 associated with those buddies.” Id. This latter preliminary
`finding cannot be squared with the disclosure in Griffin and multiple admissions by
`Petitioner and its declarant, as a more fully-developed record will readily show.
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`Griffin’s buddy list update message 600 provides the “status” of only the
`identified buddies (i.e., people). For example, Griffin explicitly refers to the
`“presence information of the user” in the following description:
`
`The message broadcaster 303 decomposes the incoming message
`400, and locates the list of recipient identifiers 402. It then
`queries a presence manager 302 to establish the recipients'
`current status 702 (i.e., an indicator of whether the recipient is
`ready to receive the particular type of message, speech and/or
`text messages only, etc.) and the terminal's address 703. FIG. 7
`illustrates a table with the plurality of presence data records 700
`contained within the presence manager 303. Each presence
`record 700, comprises the user's identifier 701, the current status
`702, the current terminal address 703 (if known), a public display
`identifier, such as a public nickname 704 and a public short name
`705, and a plurality of other user identifiers 706 that subscribe to
`the presence information of the user corresponding to that
`record.
`EX1005 5:9–22 (emphasis added). The block quotation above unambiguously ties
`the presence information to the user—i.e., to a person.
`Further, the quotation above expressly differentiates the human “recipient”
`from his “terminal” by using the possessive form of “recipient” when referring to
`status 702 and referring, instead, to the possessive form of “terminal” when referring
`to address 703: “[i]t then queries a presence manager 302 to establish the recipients'
`current status 702 (i.e., an indicator of whether the recipient is ready to receive the
`particular type of message, speech and/or text messages only, etc.) and the
`terminal's address 703.” Id. at 5:11–15 (emphasis added).6
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`6 The table in FIG. 7 of Griffin includes respective terminal address 703 (if known)
`for each user device. However, the table of FIG. 7 is not sent to any individual user’s
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`Consistent with the disclosure in Griffin emphasized above, Griffin’s
`description of Figure 6 states that “[w]hen a participant’s presence status 702
`changes, the message broadcaster 303, [sic] sends a buddy list update message 600
`to other users subscribed to the participant’s presence status 702.” Id. at 7:39–42.
`Griffin further describes the recipient status field 607 of Figure 6 as being part of the
`“plurality of user definitions” and indicating “the presence status 702” of that user.
`Id. at 7:47–49. Indeed, Petitioner and its declarant both recognize that the status 607
`of Griffin is part of a “user definition” and thus pertains to a person: “[e]ach user
`definition includes the recipient’s name 503, nickname 504, short name 505, and
`status 607 (e.g., ‘Available’).” Pet. 48–49 (emphasis added); EX1001 ¶ 148.
`Accordingly, Griffin admittedly confirms in its description of Figure 6 that its status
`702 identifies the presence of a user/participant—i.e., a person.
`As explained above, the “node” term recited in the claims unambiguously
`refers to a device and not a person. See §VI, supra. Accordingly, conveying
`presence information of a person, as disclosed in Griffin, is distinguishable from
`“receiving a list of nodes within the packet-switched network, the list of nodes
`including a connectivity status of each node”—i.e., the connectivity status of each
`listed node within the packet-switched network.
`
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`mobile terminal 100. EX2001 ¶ 53. Rather, the table of FIG. 7 is maintained by the
`server complex 204, and only the status 702 is extracted from the table and inserted
`into the buddy list update message 600 in the recipient status field 607. EX1005
`5:15–30, 39–49; EX2001 ¶¶ 52–53. For at least this reason, terminal address 703 of
`FIG. 7 does not satisfy “receiving a list of nodes” as claimed. Id. The Petition does
`not argue otherwise.
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`To further illustrate the distinction, Griffin does not expressly foreclose the
`possibility that a person may set her status to make certain she is not disturbed during
`certain hours, regardless whether the terminal she is using is connected to its network
`during that timeframe. Indeed, Petitioner’s declarant, Dr. Haas, concedes that Griffin
`does not specify, for example, “whether ‘Off’ indicates that terminal 100
`is disconnected from server complex 204, that terminal 100 is connected to server
`complex 204 but the user of terminal 100 is not accepting messages, or some other
`state.” EX1001 ¶ 163 (emphasis added).7 Petitioner has therefore admitted
`(including through testimony of its declarant) that Griffin fails to expressly or
`inherently disclose that its so-called “status” indicates anything about the
`connectivity status of the terminal 100 itself, much less in terms of availability and
`unavailability.
`Notwithstanding these concessions, the Petition argues in conclusory fashion,
`and without citing to either Griffin or to Dr. Haas’ declaration, that Griffin’s “status
`702 indicates whether a corresponding terminal 100 is available to receive speech
`chat messages.” Pet. 55. Nowhere does Griffin state that its status 702 indicates the
`connectivity status of the terminal 100 itself. Petitioner concedes this point by
`admitting through its declarant that one cannot tell from the disclosure in Griffin
`whether an “Off” status, for example, indicates that terminal 100 is connected or,
`instead, is disconnected. EX1001 ¶ 163; see also n.4, supra (citing id. at ¶ 115).
`
`7 Dr. Haas further concedes, elsewhere in his declaration, that “it is not specified [in
`Griffin] whether ‘Available’ simply indicates that terminal 100 is connected to
`server complex 204, that terminal 100 is connected to server complex 204 and that
`the user of terminal is accepting messages, or some other state.” EX1001 ¶ 115.
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`Petitioner further highlights the inconsistency of its mapping to the “node”
`term by improperly conflating Griffin’s use of the word “recipient” with Griffin’s
`explicitly distinct “terminal 100.” This is most evident in Petitioner’s repeated
`reference to a nonexistent “recipient terminal 100” element in Griffin. See, e.g., Pet.
`12, 13, 49.
`Griffin never uses Petitioner’s contrived couplet “recipient terminal 100.” On
`the contrary, Griffin explicitly equates recipients with users who are targeted for
`receipt of a message, while distinguishing those persons from the terminal devices:
`“users (i.e., recipients) have a greater degree of control over how chat histories are
`displayed on their terminals.” EX1005, 6:31–33 (emphasis added); see also 5:24–25
`(distinguishing “terminal 100” from the human “receiver” by stating “. . . sent to the
`terminal 100 unless the receiver (i.e., the receiving user) . . .”); 6:22–23
`(distinguishing a human “recipient” from her “terminal” by stating “the targeted
`recipient’s mobile terminal display”); 6:30–31 (same); (“a single label 1203
`indicating to the user that he or she is talking to the identified recipients”); 12:46–
`47 (“The user moves to the chat history and begins talking to the sender (unless the
`user is the sender) and all other recipients.”). As detailed above, Griffin also uses the
`word “recipient” when describing a person’s presence status. See, e.g., the discussion
`of EX1005, 5:9–22, 7:39–42, and 7:47–49, supra. Accordingly, Griffin’s disclosure
`of a person’s presence status 702 cannot be attributed to, and is distinguishable from,
`a connectivity status of “node” (i.e., a device) within a packet-switched network as
`claimed.
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`The Petition ultimately admits that its obviousness theory relies upon a
`proposed modification of “Griffin’s system/process based on the teachings of
`Zydney so that status 702 includes connectivity status information indicating whether
`terminal 100 is ‘available’ or ‘unavailable’ based on whether terminal 100 is
`currently connected to server complex 204.” Pet. 55. This concession that a
`modification of Griffin would be necessary to purportedly map onto the claim
`language at least confirms the disclosure within the four corners of Griffin is itself
`deficient.
`For at least the foregoing reasons, it is uncontested that Griffin itself fails to
`disclose or suggest “the list of nodes including a connectivity status of each node,
`said connectivity status being available and unavailable” as recited in independent
`claim 2. As will be shown, Zydney does not cure the conceded deficiencies of Griffin.
`
`
`
`Zydney does not cure Griffin’s admitted deficiencies concerning
`“the list of nodes including a connectivity status of each node, said
`connectivity status being available and unavailable …”
`Zydney does not remedy the admitted deficiencies of Griffin for “receiving a
`list of nodes within the packet-switched network, the list of nodes including a
`connectivity status of each node, said connectivity status being available and
`unavailable, wherein a node within the list is adapted to be selected as a recipient of
`an instant voice message,” as recited in independent claim 2.
`The Petition argues that “the relevant disclosure of Zydney” is that
`“connectivity status can be maintained and conveyed to others . . . .” Pet. 55; see
`also id. at 14 (arguing Zydney’s “[c]entral server 24 maintains and conveys the
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`
`connectivity status of each [software] agent in the network. (Id., 13:12-14, 14:6-9,
`14:19-22, 30:13-15.). A software agent’s connectivity status includes ‘the core states
`of whether the recipient is online or offline . . . .’”). Petitioner’s argument has been
`tried before and found to be unavailing in view of the same proffered evidence.
`The Board previously considered and flatly rejected this same erroneous
`application of Zydney in its decision denying institution in IPR2017-02085. There,
`the Board explained its decision, in part, as follows:
`
`[W]e find that the user’s software agent in Zydney supplies and
`maintains, rather than receives, any list of potential recipients. See Ex.
`1004, 14:17–19 (“To use the present invention system and method . . .
`the originator selects one or more intended recipients from a list of
`names that have been previously entered into the software agent.”), Fig.
`7 (disclosing “originator(s): . . . selecting one or more recipients from a
`list maintained by the originator and present visually by the agent”).
`[T]he portions of Zydney cited by Petitioner . . . do not disclose that
`the software agents receive a list used to populate the recipient status
`field 607 in the buddy list update message including both potential
`recipients and their connectivity status.
`IPR2017-02085, Paper 11 at 23-24 (emphasis in original). The Board further
`explained in an appended footnote:
`
`Although Petitioner does not argue that Zydney’s central server’s
`receipt of the list of potential recipients from the software agent might
`instead disclose this limitation, we note that such an argument would
`also be unavailing. To the extent the list of potential recipients is
`transmitted to—and thus received by—Zydney’s central server,
`Petitioner has not shown that Zydney discloses that such a list, as
`received by the central server, includes a connectivity status for each
`member of the list. Indeed, if the user/message originator already had
`the status of other software agents to provide to Zydney’s central server,
`there would be no apparent reason for the central server to “track and
`maintain the status of all software agents” and to convey to the message
`
`15
`
`

`

`IPR2017-01799
`U.S. Patent 8,199,747
`originator’s software agent “[t]he status of all recipients entered into
`the software agent.” See Ex. 1004, 14:8–9, 14:20–22
`Id. at 24 n.10 (emphasis aadded).
`The above reasoning and conclusions of the Board in IPR2017-02085 apply
`equally here. The same alleged disclosure of Zydney relied upon in the instant
`Petition (i.e., the central server 24 purportedly maintains and conveys the
`connectivity status of each software agent in the network) does not disclose or
`suggest receiving a list of nodes together with each of their connectivity statuses.
`The Board’s conclusion in IPR2017-02085 that Zydney does not disclose or
`suggest this claimed feature is not isolated. The petition in IPR2017-01257 also
`asserted Zydney in a combination of references challenging claim 2 of the ’747
`patent. In its decision denying institution, the Board observed that petitioners
`Facebook and WhatsApp and their declarant acknowledge, at a minimum, “that
`Zydney does not indicate whether the list of names and their respective connectivity
`statuses are brought together in a single unitary ‘list of nodes.’” IPR2017-01257,
`Paper 8 at 27; see also id. at 26 (“Petitioner contends that Zydney teaches or suggests
`all limitations of independent claim 2, with the exception of “receiving a list of nodes
`within the packet-switched network, the list of nodes including a connectivity status
`of each node, said connectivity status being available and unavailable, wherein a
`node within the list is adapted to be selected as a recipient of an instant voice
`message[.]”).
`The petitioners in IPR2017-01257 argued that Appleman (another buddy list
`reference like Griffin and deficient for analogous reasons) allegedly cured the
`
`16
`
`

`

`IPR2017-01799
`U.S. Patent 8,199,747
`
`conceded deficiencies of Zydney. In rejecting the proposed combination as failing to
`present even a prima facie case of obviousness, the Board held “we do not
`understand Zydney or Appleman to disclose that the list of names or buddy list,
`respectively, is received with a connectivity status of each potential recipient.”
`IPR2017-01257, Paper 8 at 30.
`Patent Owner agrees with the Board’s repeated findings, in multiple related
`matters, that Zydney does not disclose or suggest that its “list of names” is received
`together with an included connectivity status of each one of multiple nodes. In
`addition to the repeated reasoning applied by the Board and summarized above,