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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
`
`
`
`Case: IPR2017-01799
`U.S. Patent No. 8,199,747
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2017-01799 – Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. CLAIM CONSTRUCTION ........................................................................... 1
`
`A.
`
`B.
`
`“Node” (Claim 2) ................................................................................. 1
`
`“Instant Voice Message” (All Challenged Claims) ............................. 1
`
`1.
`
`2.
`
`The IVM Is a Message Containing Digitized Speech ............... 2
`
`“Instant” Means Capable of Being Transmitted in Real
`Time to a Recipient Device ........................................................ 5
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART ................................................................................................................ 7
`
`A. Griffin Discloses an “Instant Voice Message” ..................................... 7
`
`B.
`
`Zydney Discloses “Controlling a Method of Generating” an
`Instant Voice Message ......................................................................... 8
`
`1.
`
`2.
`
`3.
`
`Zydney and the ’747 Patent Disclose “Controlling a
`Method of Generating” an Instant Voice Message in the
`Same Way .................................................................................. 8
`
`PO Does Not Accurately Characterize Petitioner’s
`Arguments or Zydney’s Two Modes of Generating ................ 13
`
`The Board’s Reasoning in IPR2017-01257 Is Not
`Applicable Here ....................................................................... 14
`
`The Combination of Griffin and Zydney Discloses “Attaching
`One or More Files to the Audio File” ................................................ 15
`
`The Combination of Griffin and Zydney Discloses the
`Limitations of Claim 2 ....................................................................... 18
`
`1.
`
`PO Improperly Attacks the Teachings of Griffin and
`Zydney Individually Instead of the Combined Teachings
`of these References .................................................................. 18
`
`C.
`
`D.
`
`i
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`

`

`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`2.
`
`3.
`
`Griffin’s Buddy List Update Message 600 Includes the
`Status of Each Node ................................................................. 21
`
`Griffin Alone or in Combination with Zydney Discloses
`“Nodes Within the Packet-Switched Network,” Even If
`“Within” Requires a Direct Connection .................................. 22
`
`IV. CONCLUSION ............................................................................................. 24
`
`
`
`
`
`ii
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`

`

`Case IPR2017-01799 – Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Facebook, Inc. v. Uniloc USA, Inc.,
`IPR2017-01257, Paper 8 (P.T.A.B. Dec. 4, 2017) ....................................... 14, 15
`
`In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303 ....................................................................................................... 3
`
`In re Merck & Co.,
`800 F.2d 1091 (Fed. Cir. 1986) .......................................................................... 20
`
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) .......................................................................... 23
`
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 4
`
`
`
`
`
`iii
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`LIST OF EXHIBITS1
`
`No.
`
`Description
`
`1001 U.S. Patent No. 8,199,747
`
`1002 Declaration of Dr. Zygmunt J. Haas
`
`1003 Curriculum Vitae of Dr. Zygmunt J. Haas
`
`1004
`
`File History of U.S. Patent Application No. 12/398,076,
`which issued as U.S. Patent No. 8,199,747
`
`1005 U.S. Patent No. 8,150,922 (“Griffin”)
`
`1006
`
`International Published Application No. WO 01/11824A2
`(“Zydney”)
`
`1007 RESERVED
`
`1008
`
`International Published Application No. WO 02/17650A1
`
`1009
`-
`1012
`
`1013
`
`1014
`-
`1017
`
`RESERVED
`
`N. Borenstein et al., Request for Comments (RFC) 1521:
`MIME (Multipurpose Internet Mail Extensions) Part One:
`Mechanisms for Specifying and Describing the Format of
`Internet Message Bodies (Sept. 1993)
`
`RESERVED
`
`1018 U.S. Patent No. 8,724,622
`
`1019 RESERVED
`
`
`
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`X
`
`
`
`X
`
`
`
`
`
`
`
`1 Citations to non-patent publications are to the original page numbers of the
`
`publication, and citations to U.S. patents are to column:line number of the patents.
`
`iv
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`No.
`
`Description
`
`1020 U.S. Patent No. 8,243,723
`
`1021
`
`File History of U.S. Patent Application No. 10/740,030,
`which issued as U.S. Patent No. 7,535,890
`
`1022 U.S. Patent No. 7,535,890
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`Joint Claim Construction Chart, Uniloc USA, Inc. v.
`Samsung Elecs. Am., Inc., Case No. 2:16-cv-642 (Lead
`Case) (E.D. Tex.)
`
`Harry Newton, Newton’s Telecom Dictionary (16th. ed.
`2000)
`
`John Rittinghouse, IM Instant Messaging Security (1st ed.
`2005)
`
`Dreamtech Software Team, Instant Messaging Systems:
`Cracking the Code (2002)
`
`Upkar Varshney et al., Voice over IP, Communication of
`the ACM (2002, Vol. 45, No. 1)
`
`Iain Shigeoka, Instant Messaging
`Protocols (2002)
`
`in Java: Jabber
`
`Trushar Barot & Eytan Oren, Guide to Chat Apps, TOW
`Center for Digital Journalism, Columbia University (2005)
`
`Samir Chatterjee et al., Instant Messaging and Presence
`Technologies for College Campuses, IEEE Network (Nov.
`9, 2005)
`
`Daniel Minoli & Emma Minoli, Delivering Voice Over IP
`Networks (2nd ed. 2002)
`
`Thomas Porter & Michael Gough, How to Cheat at VoIP
`Security (1st ed. 2007)
`
`Harry Newton, Newton’s Telecom Dictionary (18th. ed.
`2002)
`
`Justin Berg, The IEEE 802.11 Standardization Its History,
`Specification, Implementations and Future, George Mason
`University, Technical Report Series (2011)
`
`v
`
`Previously
`Submitted
`
`
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`

`

` IPR2017-01799 – Petitioner’s Reply
`
`Description
`
`Previously
`Submitted
`
`No.
`
`1035
`
`Wolter Lemstra & Vic Hayes, Unlicensed Innovation: The
`Case of Wi-Fi, Competition and Regulation in Network
`Industries (2008, Vol. 9, No. 2)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`
`
`
`
`
`
`1036 U.S. Patent Application Publication No. 2003/0039340
`
`1037
`
`International Published Application No. WO 01/24036
`
`1038 U.S. Patent No. 9,179,495
`
`1039 U.S. Patent Application Publication No. 2005/0025080
`
`1040
`
`1041
`
`1042
`
`Deposition Transcript of William C. Easttom II (August 3,
`2018)
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`1043 RESERVED
`
`vi
`
`

`

` IPR2017-01799 – Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) submits this reply to
`
`Patent Owner’s (“PO”) Response (Paper 21, “Resp.”) concerning claims 1-3, 12,
`
`and 13 of the ’747 patent (Ex. 1001). PO’s arguments should be rejected and the
`
`claims found unpatentable for at least the reasons set forth in the Petition (Paper 1,
`
`“Pet.”) and accompanying exhibits, the Board’s decision to institute inter partes
`
`review (Paper 9, “Dec.”), the cross-examination testimony of PO’s expert (Mr.
`
`Easttom), and the additional reasons discussed below.
`
`II. CLAIM CONSTRUCTION
`
`A.
`
`“Node” (Claim 2)
`
`Despite arguing for a broader construction in district court, here PO argues
`
`that “node” is a “potential recipient that is a device” (i.e., cannot be a user). (See
`
`Resp., 5-8; Ex. 1023, 6.) The Board need not decide whether “node” excludes
`
`users, because—as the Board recognized—Petitioner points to devices as
`
`disclosing the claimed “nodes.” (See, e.g., Pet., 45.) Thus, the Board should
`
`confirm its preliminary construction of “node” as a “potential recipient.” (Dec., 8-
`
`9.)
`
`B.
`
`“Instant Voice Message” (All Challenged Claims)
`
`As applied in the Petition, the BRI of the term “instant voice message”
`
`(IVM) is a message containing digitized speech that is capable of being transmitted
`
`in real time to a recipient device. In response, PO offers an implied construction of
`
`1
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`IVM in an attempt to avoid the prior art. In particular, PO argues (1) that the IVM
`
`is the “audio file” or is within the “audio file” and (2) that “instant” requires a user
`
`to instantly hear the message. As discussed below, PO’s positions should be
`
`rejected as they are unsupportable and introduce ambiguity.
`
`1.
`
`The IVM Is a Message Containing Digitized Speech
`
`In addressing the prior art, PO implicitly argues for a construction of IVM
`
`that requires it to be an audio file or within an audio file. For example, PO argues
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`that neither Griffin nor Zydney discloses attaching files “to the ‘audio file itself’,”
`
`because “[c]laim 1 expressly distinguishes between the ‘instant voice message’ and
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`the ‘audio file’.” (Resp., 23.) According to PO’s expert, this is because the
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`language of claim 1 “requires one or more files be attached to an audio file, and not
`
`to the instant voice message that is recorded in that audio file or to some other
`
`container that might contain the audio file.” (Ex. 2001, ¶42.) However, the only
`
`reasonable reading of the disclosure of the ’747 patent is that the term IVM refers
`
`to both the message object itself and the digitized speech (i.e., audio file) contained
`
`within the message object.
`
`In particular, claim 13 of the ’747 patent, which depends from claim 1,
`
`recites “separating the instant voice message into an audio file and one or more
`
`files.” This limitation only makes sense if the IVM is a message object that
`
`contains at least “an audio file and one or more files,” as recited in claim 13. It
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`2
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`

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` IPR2017-01799 – Petitioner’s Reply
`
`would be impossible to separate the IVM into an audio file and one or more files if
`
`the IVM is the audio file (or contained within the audio file). This understanding of
`
`IVM is further evidenced by claims in related patents that share the same
`
`specification as the ’747 patent. See In re Katz Interactive Call Processing Patent
`
`Litig., 639 F.3d 1303. For example, claim 2 of related U.S. Patent No. 8,243,723
`
`recites “the instant voice message includes one or more files attached to an audio
`
`file.” (Ex. 1020, 24:17-20 (emphasis added).) Similarly, the claims of related U.S.
`
`Patent No. 8,724,622 (“the ’622 patent”) recites “the instant voice message
`
`includes an object field including a digitized audio file,” an “action field,” an
`
`“identifier field,” a “source field,” and a “destination field.” (Ex. 1018, 24:26-30
`
`(emphasis added), 24:36-52.) Thus, any interpretation of the claimed IVM as being
`
`the same as the claimed “audio file” (or contained within the “audio file”) conflicts
`
`with the claims of not only the ’747 patent, but also the claims of other related
`
`patents that share the same specification.
`
`This understanding corresponds with the description of a “message object”
`
`in the specification as a message that “comprises an action field, an ID field, a
`
`source field, a destination field, and an object field.” (Ex. 1001, 14:1-2; see also
`
`id., 14:2-5, 14:14-16, 14:31-32, 14:32-35.) Here, like the IVM in the claims, the
`
`message object includes “a block of data being carried by the message object,
`
`which may be, for example, a digitized instant voice message,” along with other
`
`3
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`data associated with the IVM. (Id., 14:2-5, 14:14-16, 14:31-32, 14:32-35.) Thus,
`
`the specification further establishes that the claimed IVM is not the audio file (or
`
`contained within the audio file), but rather a message object that includes an audio
`
`file, among other data.
`
`PO’s position is even contradicted by its expert, Mr. Easttom, who testified
`
`during his deposition regarding the ’622 patent that the claimed IVM must include
`
`information in addition to the audio file in order for the disclosed system to operate
`
`as described in the specification. (Ex. 1040, 107:18-109:24.) 2 For example, he
`
`explained that the IVM must include information identifying the sender (the source
`
`field) and information identifying the recipient (the destination field), “or else [the
`
`IVM] couldn’t get to the recipient.” (Id., 109:5-22.)
`
`Mr. Easttom’s testimony also confirms that the term IVM refers to not only
`
`the message object but also the “digital representation of the audio” contained
`
`
`2 While Mr. Easttom’s testimony in Exhibit 1040 pertains to the ’622 patent, the
`
`’747 and ’622 patents are part of the same family of continuation patents and share
`
`the same specification. (Compare Ex. 1001 with Ex. 1018; see also Ex. 1042,
`
`18:19-19:7.) Accordingly, Mr. Easttom’s testimony related to the ’622 patent is
`
`relevant to the ’747 patent and should be considered. See Ultratec, Inc. v.
`
`CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017).
`
`4
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`within the message object. (Id., 111:21-112:5.) Accordingly, in context, the
`
`claimed IVM is a message object that includes an audio file containing the
`
`digitalized instant voice message, but it is not itself the audio file (or within the
`
`audio file).
`
`Thus the Board should reject PO’s nonsensical construction that the claimed
`
`IVM is the audio file (or is within the audio file), and instead find that the BRI of
`
`the claimed IVM is a message containing digitized speech (that is capable of being
`
`transmitted in real time to a recipient device).
`
`2.
`
`“Instant” Means Capable of Being Transmitted in Real
`Time to a Recipient Device
`
`As to the “instant” aspect of the claimed IVM, PO argues that messages that
`
`are not “heard on the receiving end in real time” are not IVMs. (Resp., 32-33.) To
`
`the extent that this is an accurate interpretation, it is not significant to this dispute
`
`because Griffin explicitly discloses “real-time speech and text conversations.” (Ex.
`
`1005, 1:7-11.) Moreover, Griffin explains that its messages are heard in real time
`
`when the chat history display is visible. (Id., 11:48-67.) In any event, PO provides
`
`no real support for its added requirement that the speech content of a message must
`
`be played in real time for the message to qualify as an IVM, and this requirement
`
`is: (1) contrary to the specification and claims, and (2) inconsistent with PO’s
`
`expert’s explanation of instant messaging.
`
`First, the specification and claims of the ’747 patent explain that a message
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`5
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`can be an IVM even if it is not received by a recipient device in real time. For
`
`example, when a recipient device is not available, the specification and claims
`
`explain that an IVM may be temporarily stored at a server for later delivery to the
`
`recipient device. (See, e.g., Ex. 1001, 8:28-35, 9:13-17, 10:3-7, 10:48-52, 16:30-
`
`35, 17:27-30, 18:14-19, 19:1-6, 19:60-64, 23:64-67, 24:13-16, 24:26-29.) These
`
`portions of the ’747 patent establish that IVMs transmitted to recipient devices
`
`need not always be received in real time, much less heard in real time.
`
`PO’s argument that an IVM must be heard in real time is also at odds with
`
`Mr. Easttom’s deposition testimony where he explained that “instant messaging”
`
`requires the capability of immediate receipt (not actual receipt) by a device (not
`
`heard by a user).3 (See 1040, 25:12-22, 30:7-16, 34:4-10, 50:2-10, 97:7-20 (“Q. In
`
`that particular scenario, would the message that’s temporarily stored on the server
`
`be an instant voice message in the context of the claims of the ’622 patent? A.
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`Yes, and the reason being is that I, as sender, have sent this right now. I just didn’t
`
`
`3 Additionally, during his deposition, Mr. Easttom attempted to move the goalposts
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`by enumerating (for the first time) several additional criteria of instant messaging
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`that are not described in the ’747 patent, including time lag, the intent of the end
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`users, and whether messages must be retrieved from a server. (Ex. 1040, 55:14-
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`56:25.)
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`6
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`know you weren’t available….That’s still an instant message. It’s just you’ve left
`
`the conversation prematurely.” (emphasis added)).)
`
`Therefore, the Board should find that the BRI of the claimed “instant voice
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`message” is a message containing audio data that is capable of being transmitted in
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`real time to a recipient device.
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`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART
`
`For the reasons discussed below, the Board should reject PO’s arguments
`
`and find that Petitioner has proven the unpatentability of the challenged claims.
`
`A. Griffin Discloses an “Instant Voice Message”
`
`PO’s argument (at Resp., 30-33) that Griffin does not disclose an “instant
`
`voice message,” as recited in all challenged claims, is based on a strained
`
`construction of this term, which should be rejected for the reasons discussing
`
`above in Section II.B. Properly construed, there is no dispute that Griffin discloses
`
`this limitation. (See Pet., 19-20.)
`
`This
`
`limitation
`
`is also disclosed by Griffin under PO’s
`
`improper
`
`construction. For example, Griffin expressly discloses “real-time speech and text
`
`conversations (e.g., chat threads).” (Ex. 1005, 1:10-11 (emphasis added).) In
`
`response, PO argues that such a message is not “instant” because it is not instantly
`
`“heard on the receiving end in real time.” (See Resp., 32 (emphasis added).) Yet,
`
`at the same time, PO recognizes that a speech chat message in Griffin is
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`7
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`immediately played back if the chat history display is visible on the receiving
`
`device. (Resp., 32-33; Ex. 2001, ¶69; Ex. 1005, 11:48-65.) If the chat history
`
`display is not visible, consistent with the disclosure of the ’747 patent (e.g., Ex.
`
`1001, 8:28-35), the message is temporarily stored at the receiving device and/or
`
`server for automatic playback upon the user’s return to the chat history display
`
`(Ex. 1005, 11:48-64). Thus, Griffin discloses an “instant voice message” even
`
`under PO’s narrow interpretation requiring instant playback.
`
`B.
`
`Zydney Discloses “Controlling a Method of Generating” an
`Instant Voice Message
`
`As explained in the Petition, Zydney discloses “controlling a method of
`
`generating” as recited in claim 3 because its disclosure of “pack-and-send” and
`
`“intercom” modes is nearly identical to the only disclosed methods of generating in
`
`the ’747 patent—i.e., the “record” and “intercom” modes. (Pet., 58-62.)
`
`Notwithstanding these nearly identical disclosures, PO still contends that Zydney
`
`does not disclose the claimed “controlling a method of generating.” (Resp., 26-30.)
`
`PO is wrong for the reasons discussed below.
`
`1.
`
`Zydney and the ’747 Patent Disclose “Controlling a Method
`of Generating” an Instant Voice Message in the Same Way
`
`Claim 3 recites “controlling a method of generating the instant voice
`
`message based upon a connectivity status [of] each recipient.” (Ex. 1001, 24:20-
`
`21.) These “method[s] of generating” are explained further in dependent claims 4-
`
`8
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`8. (Id., 24:30-55.) In particular, claim 4 explains that “said method of
`
`generating…is selected from a group comprising a record mode and an intercom
`
`mode.” (Id., 24:30-34.) Thus, the “method[s] of generating” in claim 3 at least
`
`covers the “record” and “intercom” modes of generating, which are described in
`
`more detail in claims 7 and 8. (Id., 24:41-47, 24:48-55.) Additionally, claim 5
`
`recites that “record mode is selected as default when at least one recipient is
`
`unavailable” (id., 24:34-37), and claim 6 recites that “intercom mode is selected as
`
`a default when said one or more recipients are available” (id., 24:38-41). Thus,
`
`“controlling a method of generating” in claim 3 encompasses selecting between a
`
`“record mode” and an “intercom mode” based on recipient availability.
`
`The specification of the ’747 patent describes controlling a method of
`
`generating an IVM by selecting a record mode or an intercom mode in the same
`
`way. For example, consistent with claims 5 and 6, the specification explains that
`
`the mode used for generating an IVM (e.g., intercom or record) may depend on
`
`whether the recipient is “on-line” or “not on-line”: “The ‘intercom mode’ may be
`
`designated as a default mode when an IVM recipient is on-line, while the ‘record
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`mode’ may be designated as a default if the IVM recipient is unavailable, i.e., not
`
`on-line.” (Id., 11:55-59.) According to the specification, in record mode, the voice
`
`message is recorded until a stop signal is received, after which the recorded instant
`
`voice message is transmitted. (Id., 7:49-8:22.) In intercom mode, the voice
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`9
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`

`

` IPR2017-01799 – Petitioner’s Reply
`
`message is recorded by writing successive portions of a voice message into one or
`
`more buffers. (Id., 11:26-55.) Once a buffer is full, the content of the buffer is
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`transmitted. (Id.) In both modes, the voice message is recorded using a microphone
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`(id., 7:2-6, 8:3-7, 11:30-43) and may be compressed and/or encrypted before
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`transmission (id., 10:53-11:25, 11:61-64, 12:38-44, 13:1-17). The specification
`
`does not disclose “controlling” either mode at a finer level of detail than simply
`
`selecting the mode based upon a connectivity status.
`
`Mr. Easttom’s deposition testimony confirms this understanding. (Ex. 1042,
`
`39:10, 67:15-21.) Based on his understanding of the ’723 patent (which shares the
`
`same specification and recites similar claim limitations as the ’747 patent), both
`
`modes record a voice message using a microphone. (Ex. 1042, 39:10-18, 43:23-
`
`46:6, 55:12-16; Ex. 1040, 123:14-25.) Also, in both modes the voice message may
`
`be compressed and/or encrypted before transmission. (Ex. 1042, 47:21-49:20,
`
`61:24-62:20.) Additionally, Mr. Easttom agreed that the difference between these
`
`modes of generating is that in record mode “the entire message is recorded before
`
`it’s sent,” (id., 46:7-47:17), whereas in intercom mode the message is recorded in
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`small portions, e.g., “buffers,” which are transmitted once they become full (id.,
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`54:11-55:11, 60:4-8, 61:8-23). Finally, he agreed that the mode used for generating
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`an IVM (e.g., intercom or record) may be based on whether the recipient is
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`available. (Id., 63:10-65:23, 67:22-68:18.)
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` IPR2017-01799 – Petitioner’s Reply
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`Accordingly, based on the specification and claims of the ’747 patent and
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`the testimony of Mr. Easttom, “controlling a method of generating the instant voice
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`message” (e.g., claim 3) in the ’747 patent encompasses selecting either a “record
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`mode” or an “intercom mode” (e.g., claims 5 and 6), and the only difference
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`between these two modes is that in record mode the entire voice message is
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`recorded before transmission, while in intercom mode, portions of the voice
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`message are recorded and transmitted in succession. These same two modes are
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`described in Zydney as “pack-and-send” and “intercom” modes, and the mode used
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`depends on the connectivity status of the recipient.
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`In particular, Zydney teaches that the software agent “permits a number of
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`distinct modes of communication based on the status of the recipient.” (Ex. 1006,
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`14:19-20.) As explained in the Petition, if the recipient is online, Zydney’s system
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`can communicate in either pack-and-send mode or intercom mode, whereas if the
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`recipient is offline, the message must be sent in pack-and-send mode. (Pet., 59-60
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`(citing, e.g., Ex. 1006, 14:19-15:21); Ex. 1002, ¶¶177-80.) Similar to the record
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`mode in the ’747 patent, in the pack-and-send mode of Zydney the entire message
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`is recorded before it is sent. (Ex. 1006, 11:1-3.) Likewise, the identically-named
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`“intercom” modes operate in the same manner in the ’747 patent and Zydney—
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`small portions of the message are recorded and transmitted piece-by-piece before
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` IPR2017-01799 – Petitioner’s Reply
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`the message is completed.4 (Ex. 1006, 16:4-7.)
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`Thus, the Board should find that Zydney discloses “controlling a method of
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`generating the instant voice message based upon a connectivity status each
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`recipient,” as recited in claim 3. To find otherwise would be to read out of the
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`claims the only embodiment of “controlling a method of generating” described and
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`claimed in the ’747 patent. Moreover, as discussed in the Petition, based on
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`Zydney’s disclosure, a POSA would have been motivated to modify Griffin’s
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`system/process to control the method of generating instant voice messages based
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`on the connectivity status of potential recipients to account for situations when the
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`potential recipient is unavailable (e.g., using a mode like that disclosed by the
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`Griffin-Zydney combination (see Pet., 17-44)) and
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`to provide alternative
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`functionalities when the recipient is available (e.g., using a mode like Zydney’s
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`intercom mode (see Pet., 59-60)). (Pet., 61-62; Ex. 1002, ¶¶182-84.)
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`4 A POSA would have been aware of well-known techniques for recording and
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`transmitting small portions of a voice message, including using buffers. Indeed,
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`according
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`to Mr. Easttom, buffers were “[v]ery, very commonly used
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`in…computer science and telecom” and simply referred to “small segments of
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`memory…[that] contain things for a short period of time.” (Ex. 1042, 55:4-11; see
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`also id., 57:25-58:11.)
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` IPR2017-01799 – Petitioner’s Reply
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`2.
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`PO Does Not Accurately Characterize Petitioner’s
`Arguments or Zydney’s Two Modes of Generating
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`In response, PO first focuses on only one of the modes described in Zydney,
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`stating that “‘pack and send’ has but ‘one’ unvarying process” and that “the
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`Petition identifies no teaching in Zydney for controlling how a ‘pack-and-send’
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`message is generated based upon connectivity status.” (Resp., 29.) Petitioner,
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`however, does not argue that Zydney discloses controlling how its pack-and-send
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`message is generated. Instead, Petitioner argues that the pack-and-send and
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`intercom modes are “two different modes of generating an instant voice message.”
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`(Pet. at 59-60; Ex. 1002, ¶¶177-79.)
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`PO next argues that “choosing between pack and send mode and other
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`mode(s) is not controlling how a message is generated, but rather it determines
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`how a message will be delivered.” (Resp., 29.) As Dr. Haas explained, however,
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`the pack-and-send and intercom modes affect how the message is generated. (Ex.
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`1002, ¶¶177-78.) That the two modes may also affect delivery does not change this
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`conclusion. (Id.) This point is clearly illustrated by dependent claims 7 and 8 of the
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`’747 patent, which describe the “record” and “intercom” modes. In those claims,
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`the “transmi[ssion]” and “deliver[y]” of the IVM differs between the “record” and
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`“intercom” modes (Ex. 1001, 24:30-33), but, by the express terms of the patent
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`claims, these modes are “method[s] of generating” (id., 24:41-47).
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`PO cites one sentence in Zydney in support of its argument that Zydney’s
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` IPR2017-01799 – Petitioner’s Reply
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`pack-and-send/intercom modes are ways in which a message may be delivered.
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`(Resp., 29-30 (citing Ex. 1006, 15:17-19).) But this portion of Zydney is describing
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`the choice between two delivery options for sending a pack-and-send message to
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`an offline recipient—not the choice between the pack-and-send and intercom
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`modes. As discussed in the Petition, when a recipient is offline, Zydney explains
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`that the message must be generated using the pack-and-send mode. (Pet., 59-60;
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`Ex. 1002, ¶¶179-80.) The portion of Zydney cited by PO then explains that this
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`message is either “delivered the next time the recipient logs in” or “delivered to the
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`recipient’s e-Mail.” (Ex. 1006, 15:15-19.)
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`3.
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`The Board’s Reasoning in IPR2017-01257 Is Not Applicable
`Here
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`In its institution decision, the Board found the choice between Zydney’s
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`pack-and-send and intercom modes “does not change how the instant voice
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`message is generated in the pack and send mode.” (Dec. at 33 (emphasis altered).)
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`The Board’s reasoning here is similar to its reasoning in its decision denying
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`institution in a prior IPR filed by Facebook challenging the ’747 patent. See
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`Facebook, Inc. v. Uniloc USA, Inc., IPR2017-01257, Paper 8 at 20-23 (P.T.A.B.
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`Dec. 4, 2017). PO encourages the Board to adopt this reasoning again in its final
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`written decision. (Resp., 27-28, 30.) The differences between Petitioner’s and
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`Facebook’s positions, however, are significant—they raise different grounds and
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`positions. While Petitioner and Facebook both rely on Zydney, as noted by the
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` IPR2017-01799 – Petitioner’s Reply
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`Board in IPR2017-01257, Facebook’s petition “explicitly relies exclusively on
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`Zydney’s ‘pack and send’ mode of operation as the ‘method of generating the
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`instant voice message.’” Facebook, IPR2017-01257, Paper 8 at 22. That is not the
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`case here, the Petition relies on both of Zydney’s pack-and-send and intercom
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`modes as the claimed “method[s] of generating.” (Pet., 59; Ex. 1002, ¶¶177-78.)
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`Thus, it would be an error for the Board to find claim 3 unpatentable based
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`on its reasoning in IPR2017-01257, which is not applicable here.
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`C. The Combination of Griffin and Zydney Discloses “Attaching One
`or More Files to the Audio File”
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`Claims 1 and 13 recite “attaching one or more files to the audio file.” As
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`explained in the Petition and by Dr. Haas, the combination of Griffin and Zydney
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`discloses this limitation. PO’s argument in response is based on an overly narrow
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`understanding of the term “attaching,” which the Board adopted in its institution
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`decision. (Dec., 19-23.) This understanding should be rejected, especially in view
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`of Mr. Easttom’s subsequent deposition testimony endorsing the true, broader
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`meaning of “attaching.”
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`The experts’ initial declarations reach opposite conclusions regarding
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`whether Griffin’s disclosure of attaching files to its message 400 discloses
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`“attaching one or more files to an audio file.” On the one hand, Dr. Haas testified
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`that “[b]ecause a speech chat message 400 includes an audio file,...a [POSA]
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`would have understood that attaching a file to the message discloses attaching a
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` IPR2017-01799 – Petitioner’s Reply
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`file to the audio file included in the message.” (Ex. 1002, ¶101.) On the other, Mr.
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`Easttom testified that “[a]ttaching a file to the message 400 does not disclose
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`attaching a file to an audio file….” (Ex. 2001, ¶44.) During his deposition,
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`however, Mr. Easttom provided a broader definition of “attaching” that is more in
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`line with Dr. Haas’ declaration testimony. (Ex. 1040, 133:13-139:19.)
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`In particular, Mr. Easttom testified that there are “[a]ny number of ways you
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`could [attach files],” noting that “the patent inventor was clearly saying [that] any
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`of the conventional methods” could be used. (Ex. 1040, 135:22-136:5 (referring to
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`the portion of the ’622 patent specification that corresponds to Ex. 1001 at 13:28-
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`33).) Elaborating on these “conventional methods,” Mr. Easttom gave two
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`examples that he considered to be within the scope of “attaching.” First, he
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`explained that “additional information” may be added to the attachment to identify
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`the message to which it is attached and added to the message to identify the
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`attached file. (Id., 136:4-10.) Second, he explained that even if the two files have
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`not been altered to include additional information, they would still be considered
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`“attached” so long as the recipient device “knows that those two documents were
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`associated.” (Id., 136:16-137:13.) When asked specifically “[h]ow would you
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`attach a document to an audio file,” he answered that the system need only be
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`aware that the two are “meant to go together.” (Id., 139:10-19.) Under this
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`interpretation, the prior art clearly discloses the “attaching” limitation.
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` IPR2017-01799 –