Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 9
`
`Entered: February 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01799
`Patent 8,199,747 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2017-01799
`Patent 8,199,747 B2
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`I. INTRODUCTION
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting an inter partes review of claims 1–3, 12, and 13
`(“the challenged claims”) of U.S. Patent No. 8,199,747 B2 (Ex. 1001, “the
`’747 patent”). Pet. 1. Uniloc Luxembourg S.A. (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute inter partes
`review under 35 U.S.C. § 314. Upon considering the record developed thus
`far, for reasons discussed below, we institute inter partes review as to
`claims 2 and 12 of the ’747 patent.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’747 patent is involved in Uniloc USA,
`Inc. v. Samsung Electronics America, Inc., No. 2:16-cv-00642-JRG (E.D.
`Tex.), among numerous other actions in the United States District Court for
`the Eastern District of Texas. Pet. 1−3; Paper 3, 2. The ’747 patent was the
`subject of an earlier request for inter partes review filed April 7, 2017, by
`Facebook, Inc. and WhatsApp Inc. (Case IPR2017-01257), which request
`was denied. See IPR2017-01257, Paper 8 (PTAB Dec. 3, 2017). The ’747
`patent also is the subject of a petition for inter partes review filed
`September 11, 2017, by Google Inc. (IPR2017-02085, Paper 2).
`B. Overview of the ’747 Patent
`The ’747 patent, titled “System and Method for Instant VoIP
`Messaging,” relates to Internet telephony, and more particularly, to instant
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`Ex. 1001, [54], 1:14–18. The ’747 patent acknowledges that “[v]oice
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`messaging” and “instant text messaging” in both the VoIP and public
`switched telephone network environments were previously known. Id.
`at 2:18–42. In prior art instant text messaging systems, according to the
`’747 patent, a server would present a user of a client terminal with a “list of
`persons who are currently ‘online’ and ready to receive text messages,” the
`user would “select one or more” recipients and type the message, and the
`server would immediately send the message to the respective client
`terminals. Id. at 2:30–42. According to the ’747 patent, however, “there is
`still a need in the art for . . . a system and method for providing instant VoIP
`messaging over an IP network,” such as the Internet. Id. at 2:43–47. The
`invention of the ’747 patent is thus directed to such a system and method.
`Id. at 1:15–18, 6:43–45.
`In one embodiment, the ’747 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:18–20.
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`As illustrated in Figure 2, local packet-switched IP network 204,
`which may be a local area network (“LAN”), “interconnects” IVM
`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
`at 6:46–65; see id. at 7:19–20, 7:57–61. Local IVM server 202 enables
`instant voice messaging functionality over network 204. Id. at 7:57–61.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Id. at 7:53–55, 7:61–67. IVM client 208
`then transmits the selections to IVM server 202 and “records the user’s
`speech into . . . digitized audio file 210 (i.e., an instant voice message).” Id.
`at 8:1–7.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Id. at 8:11−25. “[O]nly the available
`IVM recipients, currently connected to . . . IVM server 202, will receive the
`instant voice message.” Id. at 8:29−30. IVM server 202 “temporarily saves
`the instant voice message” for any IVM client that is “not currently
`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers
`it . . . when the IVM client connects to . . . local IVM server 202 (i.e., is
`available).” Id. at 8:30–35; see id. at 9:13–17. Upon receiving the instant
`voice message, the recipients can audibly play the message. Id. at 8:25–28.
`C. Illustrative Claims
`Of the challenged claims, claims 1–3 are independent. Those claims
`are reproduced below:
`1. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`generating an instant voice message, wherein generating
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`includes recording the instant voice message in an audio file and
`attaching one or more files to the audio file;
`transmitting the instant voice message having one or more
`recipients;
`receiving an instant voice message when a recipient is
`available; and
`receiving a temporarily stored instant voice message when a
`recipient becomes available, wherein the instant voice message is
`temporarily stored when at least one recipient is unavailable.
`
`2. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`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;
`displaying said list of nodes;
`transmitting the instant voice message having one or more
`recipients;
`receiving an instant voice message when a recipient is
`available; and
`receiving a temporarily stored instant voice message when a
`recipient becomes available, wherein the instant voice message is
`temporarily stored when at least one recipient is unavailable.
`
`3. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`generating an instant voice message; and
`controlling a method of generating the instant voice message
`based upon a connectivity status each recipient;
`transmitting the instant voice message having one or more
`recipients;
`receiving an instant voice message when a recipient is
`available; and
`receiving a temporarily stored instant voice message when a
`recipient becomes available, wherein the instant voice message is
`temporarily stored when at least one recipient is unavailable.
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`Ex. 1001, 23:55–24:29.
`D. Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 1–3, 12, and 13 under
`35 U.S.C. § 103 over the combination of Griffin et al., US 8,150,922 B2,
`issued April 3, 2012 (Ex. 1005, “Griffin”), and Zydney et al., WO 01/11824
`A2, published Feb. 15, 2001 (Ex. 1006, “Zydney”). Pet. 6. Petitioner also
`relies on a Declaration of Dr. Zygmunt J. Haas (Ex. 1002) in support of its
`contentions.
`
`III. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim construction
`standard to be applied in an inter partes review proceeding). Under the
`broadest reasonable interpretation standard, claim terms generally are given
`their ordinary and customary meaning as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that
`only those claim terms that are in controversy need to be construed, and only
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
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`Petitioner contends that the Board need not construe the challenged
`claims for resolution of the controversy in this case and that the challenged
`claims should be given their plain and ordinary meaning under the broadest
`reasonable interpretation standard. Pet. 16. Notwithstanding those
`contentions, however, Petitioner subsequently asserts, in the context of its
`argument that the combination of Griffin and Zydney renders claim 2
`unpatentable, that the word “node,” as recited in claim 2, “is never used” in
`the ’747 patent’s specification and “was not discussed during prosecution,”
`and that the meaning of that word “cannot be ascertained with reasonable
`certainty by a [person of ordinary skill in the art (“POSA”)] when read in
`light of the ’747 Patent specification and prosecution history.” Id. at 45
`n.11. Petitioner further points out that Patent Owner, in the co-pending
`district court litigation against Petitioner, proposed that “node” means
`“potential recipient,” and Petitioner requests that the Board adopt that
`meaning as the broadest reasonable interpretation for purposes of this
`proceeding. Id. (citing Ex. 1023 (Joint Claim Construction Chart), 61).
`In the Preliminary Response, Patent Owner “requests that the Board
`adopt the broadest reasonable construction consistent with the ordinary and
`customary meaning of the challenged claims and with the specification as a
`whole.” Prelim. Resp. 24 (emphasis omitted). With respect specifically to
`the term “node” recited in claim 2, Patent Owner contends that “Petitioner
`fails to show that ‘node’ requires an express construction to resolve the
`issues here,” and that “Petitioner provides flimsy rationales for” and “has not
`
`
`1 The Petition refers to page 4 of Exhibit 1023, but we note that Patent
`Owner’s proposed construction of “node” actually appears at page 4 of the
`Joint Claim Construction Chart, which is page 6 of the Exhibit 1023.
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`justified” “its proposed construction of ‘node.’” Id. at 25–27. According to
`Patent Owner, “[i]n the context of computer communications networks,
`‘node’ is a term of art with a well-known plain and ordinary meaning.” Id.
`at 27. Patent Owner contends, more particularly, that “[n]etwork engineers
`refer to a ‘node’ as a point of contact (that is, it is a computer, a computer
`system, or another device) on a computer network that is connected to and
`capable of communicating on the network.” Id. at 27 (citing Ex. 2001
`¶¶ 23–24). According to Patent Owner, “[t]hat plain and ordinary meaning
`is consistent with the use of ‘node’ in Claim 2.” Id. (citing Ex. 2001 ¶ 24).
`Based on the language of claim 2 and consistent with the specification of the
`’747 patent, Patent Owner further contends, “a node is a device, such as a
`computer, laptop, or other device,” not a software agent or a person. Id.
`at 27–29 (citing Ex. 2001 ¶¶ 23–26). Moreover, Patent Owner contends,
`“[t]he ’747 Patent consistently refers to a ‘recipient’ as a receiving device.”
`Id. at 28 (citing Ex. 1001, 2:66–67, 3:53–54, 7:61–65, 8:25–28, 8:30–32).
`Having considered the parties’ respective arguments and cited
`evidence, we conclude, particularly in view of Patent Owner’s proposed
`construction in related litigation, that “node” is properly construed for
`purposes of this Decision as encompassing a “potential recipient.” See
`Pet. 45 n.11; Ex. 1023, 6; see also Facebook, Inc. v. Pragmatus AV, LLC,
`582 Fed. App’x 864, 869 (Fed. Cir. 2014) (“The broadest reasonable
`interpretation of a claim term may be the same as or broader than the
`construction of a term under the Phillips standard. But it cannot be
`narrower.”). Although we acknowledge Patent Owner’s arguments that, for
`example, “Petitioner overlooks an important consequence of its proposed
`construction: a person may be ‘available’ or ‘unavailable’ for
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`communication independent of the online/offline status of their
`communication device” and that “a person may inform a system that they
`are ‘unavailable,’ that they do not wish to be disturbed during resting hours,
`etc. regardless whether their recipient device is online during that time”
`(Prelim. Resp. 28–29), we do not understand Petitioner’s contentions of
`unpatentability in this case to be based on a reading of a “potential
`recipient”—and hence a “node”—to be “a person” (see Pet. 45–57
`(discussion mapping cited references to claim elements reciting “nodes”)).
`We agree with the parties that no other claim terms require express
`construction for purposes of this Decision. To the extent required, the
`parties will have the opportunity to develop the record more fully regarding
`the proper constructions of “node” and any other disputed terms during trial.
`B. Analysis of Asserted Ground of Unpatentability
`1. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art;2 and (4) objective evidence of
`
`
`2 Citing Dr. Haas’s testimony, Petitioner proposes an assessment of the level
`of skill in the art with respect to the ’747 patent, contending that “[a] person
`of ordinary skill in the art at the time of the alleged invention of
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`nonobviousness, i.e., secondary considerations.3 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving
`obviousness, a petitioner cannot employ mere conclusory statements. The
`petitioner must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.” In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the
`asserted grounds with the principles stated above in mind.
`2. Overview of Griffin
`Griffin, titled “Voice and Text Group Chat Display Management
`Techniques for Wireless Mobile Terminals,” relates to a technique of
`managing the display of “real-time speech and text conversations (e.g., chat
`threads) on limited display areas.” Ex. 1005, [54], 1:9−11. Griffin discloses
`a wireless mobile terminal as shown in Figure 1, reproduced below.
`
`
`the ’747 Patent (‘POSA’) would have had at least a bachelor’s degree in
`computer science, computer engineering, electrical engineering, or the
`equivalent and at least two years of experience in the relevant field, e.g.,
`network communication systems,” and that “[m]ore education can substitute
`for practical experience and vice versa.” Pet. 7–8 (citing Ex. 1002 ¶¶ 15–
`16). Although Patent Owner does not respond to this assessment or propose
`an alternative assessment in the Preliminary Response, we note that Patent
`Owner’s expert William C. Easttom II offers a similar assessment in his
`declaration testimony in this case, opining that a person having ordinary skill
`in the art “would be someone with a baccalaureate degree related to
`computer technology and 2 years of experience with network
`communications technology, or 4 years of experience without a
`baccalaureate degree.” Ex. 2001 (Easttom Declaration) ¶ 16. For purposes
`of this Decision and to the extent necessary, we adopt Petitioner’s
`assessment.
`3 Patent Owner does not contend in its Preliminary Response that such
`secondary considerations are present.
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`Figure 1, above, depicts mobile terminal 100 comprising speaker 103,
`which renders signals such as received speech audible; display 102 for
`rendering text and graphical elements visible; navigation rocker 105, which
`allows a user to navigate a list or menu displayed on the screen;
`microphone 107, for capturing the user’s speech; and push-to-talk
`button 101, which allows the user to initiate recording and transmission of
`audio. Id. at 3:14−30. Griffin also describes, in connection with Figure 2,
`reproduced below, the overall system architecture of a wireless
`communication system where the mobile terminals communicate with a chat
`server complex. Id. at 3:49−51.
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`Figure 2, above, illustrates wireless carrier infrastructures 202, which
`support wireless communications with mobile terminals 100, such that the
`mobile terminals wirelessly transmit data to a corresponding
`infrastructure 202 for sending the data packets to communication
`network 203, which forwards the packets to chat server complex 204. Id. at
`1:49−61. Communication network 203 is described as a “packet-based
`network, [which] may comprise a public network such as the Internet or
`World Wide Web, a private network such as a corporate intranet, or some
`combination of public and private network elements.” Id. at 1:61−65.
`Griffin’s chat server complex 204 receives encoded data comprising
`text, speech, and/or graphical messages (or some combination thereof),
`when a plurality of users chat together (i.e., send chat messages from one
`terminal 100 to another). Id. at 4:11−15; 4:62−65. An outbound chat
`message, for example, is decomposed to locate the list of recipients, and the
`recipient’s current status is determined. Id. at 5:9−15. Griffin describes
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`presence status 702 as “an indicator of whether the recipient is ready to
`receive the particular type of message, speech and/or text messages only,
`etc.).” Id. “When presence status 702 changes, the presence manager 302
`[of server complex 204] sends a buddy list update message 600 to all the
`subscribers listed in the subscriber identifier field 706 of the corresponding
`presence record 700.” Id. at 5:27−30.
`Griffin provides a buddy list display illustrated in Figure 9,
`reproduced below. Id. at 8:15−16.
`
`
`Figure 9, above, depicts title bar 901, where inbound chat message
`indicator 905 is an icon accompanied by an audible sound when the icon is
`first displayed, indicating to the user that there is at least one unheard or
`unread inbound chat message that has arrived at terminal 100. Id. at
`8:17−18, 8:28−32. Left softkey 910 labeled “Select” permits selection of a
`particular buddy for chatting, selection of which is indicated with selection
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`indicator 906. Id. at 8:45−52, 8:60−67, 9:1−5. “If the user pushes-to-talk,
`the display switches to the chat history, and the user is able to record and
`transmit a speech message and consequently start a new thread with the
`selected buddies.” Id. at 9:27−31.
`3. Overview of Zydney
`Zydney, titled “Method and System for Voice Exchange and Voice
`Distribution,” relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
`Ex. 1006, [54], [57], 1:4–5. While acknowledging that e-mail and instant
`messaging systems were well-known text-based communication systems
`utilized by users of online services and that it was possible to attach files for
`the transfer of non-text formats via those systems, Zydney states that the
`latter technique “lack[ed] a method for convenient recording, storing,
`exchanging, responding and listening to voices between one or more parties,
`independent of whether or not they are logged in to their network.” Id.
`at 1:7–17. Zydney thus describes a method in which “voice containers”—
`i.e., “container object[s] that . . . contain[] voice data or voice data and voice
`data properties”—can be “stored, transcoded and routed to the appropriate
`recipients instantaneously or stored for later delivery.” Id. at 1:19–22, 12:6–
`8. Figure 1 of Zydney is reproduced below.
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`Figure 1, above, illustrates a high-level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
`Referring to Figure 1, system 20 allows software agent 22, with a user
`interface, in conjunction with central server 24 to send messages using voice
`containers illustrated by transmission line 26 to another software agent 28,
`as well as to receive and store such messages, in a “pack and send” mode of
`operation. Id. at 10:20–11:1. Zydney explains that a pack and send mode of
`operation “is one in which the message is first acquired, compressed and
`then stored in a voice container 26 which is then sent to its destination(s).”
`Id. at 11:1–3. The system has the ability to store messages both locally and
`centrally at server 24 whenever the recipient is not available for a prescribed
`period of time. Id. at 11:3–6.
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`In the use of Zydney’s system and method, the message originator
`selects one or more intended recipients from a list of names that have been
`previously entered into the software agent. Ex. 1006, 14:17–19. The agent
`permits distinct modes of communication based on the status of the
`recipient, including the “core states” of whether the recipient is online or
`offline and “related status information” such as whether the recipient does
`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
`software agent offers the originator alternative ways to communicate with
`the recipient, the choice of which can be either dictated by the originator or
`automatically selected by the software agent, according to stored rules. Id.
`at 15:3–6. If the recipient is online, the originator can either begin a
`real-time “intercom” call, which simulates a telephone call, or a voice instant
`messaging session, which allows for an interruptible conversation. Id.
`at 15:8–10. If the recipient is offline, the originator can either begin a voice
`mail conversation that will be delivered the next time the recipient logs in or
`can be delivered to the recipient’s e-mail as a digitally encoded
`Multipurpose Internet Mail Extension (“MIME”) attachment. Id. at 15:15–
`17. Zydney explains that the choice of the online modes “depends on the
`activities of both parties, the intended length of conversation and the quality
`of the communications path between the two individuals, which is generally
`not controlled by either party,” and that the choice of the offline delivery
`options “is based on the interests of both parties and whether the recipient is
`sufficiently mobile that access to the registered computer is not always
`available.” Id. at 15:10–14, 15:17–19.
`Once the delivery mode has been selected, the originator digitally
`records messages for one or more recipients using a microphone-equipped
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`device and the software agent. Ex. 1006, 16:1–3. The software agent
`compresses the voice and stores the file temporarily on the PC if the voice
`will be delivered as an entire message. Id. at 16:3–4. If the real-time
`“intercom” mode has been invoked, a small portion of the digitized voice is
`stored to account for the requirements of the Internet protocols for
`retransmission and then transmitted before the entire conversation has been
`completed. Id. at 16:4–7. Based on status information received from the
`central server, the agent then decides whether to transport the voice
`container to a central file system and/or to send it directly to another
`software agent using the IP address previously stored in the software agent.
`Id. at 16:7–10. If the intended recipient has a compatible active software
`agent online after log on, the central server downloads the voice recording
`almost immediately to the recipient. Id. at 16:10–12. The voice is
`uncompressed and the recipient can hear the recording through the speakers
`or headset attached to its computer. Id. at 16:12–14. The recipient can reply
`in a complementary way, allowing for near real-time communications. Id.
`at 16:14–15. If the recipient’s software agent is not online, the voice
`recording is stored in the central server until the recipient’s software agent is
`active. Id. at 16:15–17. “In both cases, the user is automatically notified of
`available messages once the voice recordings have been downloaded to
`storage on their computer.” Id. at 16:17–19. The central server coordinates
`with software agents on all computers continuously, updating addresses,
`uploading and downloading files, and selectively retaining voice recordings
`in central storage. Id. at 16:19–21.
`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Ex. 1006, 19:6–7. Formatting the container
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`using MIME format, for example, “allows non-textual messages and
`multipart message bodies attachments [sic] to be specified in the message
`headers.” Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
`
`
`Figure 3, above, illustrates an exemplary embodiment of Zydney’s
`voice container structure, including voice data and voice data properties
`components. Ex. 1006, 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
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`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
`4. Arguments and Analysis
`a. Claims 1 and 13
`Petitioner contends that Griffin discloses all limitations of
`independent claim 1, with the exception of specific disclosure of
`(1) recording speech in an “audio file,” (2) “attaching one or more files to
`the audio file,” and (3) indication of the availability of a message recipient
`such that an instant voice message may be received “when a recipient is
`available” or a temporarily stored instant voice message may be received
`“when a recipient becomes available,” for which limitations Petitioner relies
`on the combined teachings of Griffin and Zydney. Pet. 17–44.
`With respect specifically to limitation “attaching one or more files to
`the audio file,” Petitioner concedes that Griffin “does not explicitly describe
`attaching one or more files to the audio file in a speech chat message.” Id.
`at 26–27. Petitioner contends, however, that “[i]t would have been obvious
`to a POSA at the time of the alleged invention to modify Griffin’s
`system/process to implement such features,” either “in view of the teachings
`of Griffin and the knowledge of a POSA” or “in view of the teachings of
`Zydney, which describes a software agent that operates to address, pack, and
`send a message in a voice container.” Id. at 27 (citing Ex. 1002 ¶¶ 102–103;
`Ex. 1006, 14:2–5). Petitioner argues, more particularly, that “[i]n addition to
`including a voice message recorded using a microphone in the voice
`container, Zydney discloses attaching files to the voice container,” such as by
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`“using the Multipurpose Internet Mail Extension (MIME) format, which was
`a well-known and commonly used industry standard that allows attachments,
`including ‘binary, audio, and video’ files, to be specified in message
`headers.” Id. at 27–28 (citing Ex. 1006, 4:7–9, 10:20–11:3, 16:1–4, 19:1–
`20:9, 20:11–14, 21:14–16, 22:19–20, 35:15–22, Figs. 6, 16–18). Based on
`these teachings of Zydney and the knowledge of a POSA, Petitioner
`contends, “a POSA would have been motivated to modify Griffin’s
`system/process such that terminal 100 enables the attachment of one or more
`files to the audio file in a speech chat message (like described in Zydney)”
`and “would have recognized that such a modification would have been
`nothing more than a straightforward combination of known technologies by
`known methods without changing their respective functions to achieve a
`predictable result, and would have been well within the capabilities of such a
`person.” Id. at 28 (citing Ex. 1002 ¶¶ 104–105).
`In response to Petitioner’s contentions, Patent Owner argues, inter
`alia, that the combination of Griffin and Zydney does not render obvious
`“recording the instant voice message in an audio file” and attaching “one or
`more files . . . to that audio file in which . . . the instant voice message is
`recorded.” Prelim. Resp. 29–36. Patent Owner contends that Griffin instead
`describes that attachments are within the payload of Griffin’s outbound
`message 400, not attached to an audio file that includes message 400. Id. at
`30–31 (citing Ex. 1005, 6:50–52 (“the payload [of outbound message 400]
`may contain message encoding types and other attachments (e.g., icons,
`ring-tones, and so on)), Fig. 4). Patent Owner points out that claim 1
`“distinguishes between an ‘instant voice message’ and an ‘audio file,’
`and . . . explicitly requires that one or more files be attached to the audio
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`file.” Id. at 32. Thus, contrary to Petitioner’s assertion that “attaching a file
`to the message discloses attaching a file to the audio file included in the
`message” (Pet. 26), Patent Owner contends that “attaching a file to
`[Griffin’s] message 400 is not the same as attaching a file to any alleged
`audio file included in that message audio file” (Prelim. Resp. 32).
`Moreover, Patent Owner further contends, “Griffin’s attachments are within
`the message 400 . . . , not attached to the message 400.” Id. Patent Owner
`contends that Zydney fails to remedy Griffin’s deficiency, because “Zydney
`also fails to disclose attaching . . . files to the audio file.” Id. at 33.
`According to Patent Owner: “Petitioner argues that ‘Zydney discloses
`attaching files to the voice container’ of Zydney. However, Zydney’s voice
`container quite simply is not, and cannot, be an audio file.” Id. Further,
`“Petitioner’s citations to disclosures in Zydney that allegedly teach attaching
`files to the voice container are inapposite, because the claim language
`requires that the one or more files be attached to the audio file itself, not to a
`distinct container.” Id. at 34–35.
`Regarding Petitioner’s reference to Zydney’s description of attaching
`files using the MIME standard (Pet. 27–28), Patent Owner contends that the
`cited passage of Zydney “is clearly referring to attaching files to a voice
`container, and not to an audio file,” and that “[i]t is undisputed that Zydney
`does not teach or suggest attaching one or more files to the audio file itself”
`(Prelim. Resp. 35 (citing Ex. 1006:7–12; Ex. 2001 ¶ 47)). Lastly, relying on
`Mr. Easttom’s testimony, Patent Owner further contends that “Zydney
`teaches away from ‘attaching one or more files to the audio file’, as opposed
`to the container,” because “Zydney teaches that its voice container is
`specifically constructed to have files inserted therein.” Id. at 36 (citing
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`Ex. 2001 ¶ 48). Indeed, Patent Owner contends, “that is the fundamental
`purpose of the voice container,