Samsung E166. America, Inc.
`
`v
`
`Uniloc 20] 7 LLC
`
`Case IPR2017-01797 & -1798
`
`(Patent 8,724,622)
`
`Hearing Before Jennifer S. Bisk,
`Miram L. Quinn, and
`
`Charles J. Bourdreau
`
`October 30, 2018
`
`
`
`v
`
`Uniloc 20] 7 LLC
`
`Case IPR2017-01797 & -1798
`
`(Patent 8,724,622)
`
`Hearing Before Jennifer S. Bisk,
`Miram L. Quinn, and
`
`Charles J. Bourdreau
`
`October 30, 2018
`
`
`
`Independent Claim 3 of US. Patent No. 8,724,622
`
`|PR2017-O1797
`
`3. A system comprising:
`
`a network interface connected to a packet-switched
`
`network;
`
`a messaging system communicating with a plurality of
`
`instant voice message client systems via the
`network interface; and
`
`a communication platform system maintaining
`
`connection information for each of the plurality of
`
`instant voice message client systems indicating
`whether there is a current connection to each of the
`
`plurality of instant voice message client systems,
`
`wherein the messaging system receives an instant
`
`voice message from one of the plurality of instant
`
`voice message client systems, and
`
`wherein the instant voice message includes an object
`
`field including a digitized audio file.
`
`
`
`Independent Claim 27 of US. Patent No. 8,724,622
`
`|PR2017-01797
`
`27. A system comprising:
`
`a client device;
`
`a network interface coupled to the client device and
`
`connecting the client device to a packet-switched
`
`network; and
`
`an instant voice messaging application installed on
`the client device, wherein the instant voice
`
`messaging application includes a client platform
`
`system for generating an instant voice message
`
`and a messaging system for transmitting the
`
`instant voice message over the packet-switched
`
`network via the network interface,
`
`wherein the instant voice messaging application
`
`includes a document handler system for attaching
`
`one or more files to the instant voice message.
`
`
`
`Independent Claim 38 of US. Patent No. 8,724,622
`
`|PR2017-01797
`
`28. A system comprising:
`
`a client device;
`
`a network interface coupled to the client device and
`
`connecting the client device to a packet-switched
`
`network; and
`
`an instant voice messaging application installed on
`the client device, wherein the instant voice
`
`messaging application includes a client platform
`
`system for generating an instant voice message
`
`and a messaging system for transmitting the
`
`instant voice message over the packet-switched
`
`network via the network interface,
`
`a display displaying a list of one or more potential
`
`recipients for an instant voice message.
`
`
`
`“ .
`
`.
`
`including a digitized au IO file” (’622 pat, claim 3)
`
`. the instant voice messa e includes an object field
`
`Griffin’s “message content 406" is not an “object field" as claimed
`
`’622 patent, claim 3 recites
`a specific arrangement of
`three distinct elements:
`
`
`
`“instant voice message"
`"object field"
`I-----——————-
`“digitized audio file"
`I
`
`
`
`Griffin’s only
`description of message
`content 406 is stated
`at col. 6 lines 3 8-44
`
`chat message 400
`Lmessage content 406 I
`
`
`
`FIG. 4 illustrates an outbound chat message 400 that the
`terminal 100 sends to the message broadcaster 303. The out-
`bound chat message 400 comprises a message type 401 (e.g.,
`text, speech, and so on), a number of intended recipients 402,
`a plurality of recipient identifiers 403, a thread identifier 404,
`a message length 405, wit-irivw‘tn‘i‘tlfi and a number of
`attachments 407. Preferably, the mobile terminal 100 gener-
`
`
`
`
`
`
`
`IPR2017—01797, Response (Paper 12] at pp. 8-13.
`
`
`
`“ .
`
`. the instant voice messa e includes an object field including a digitized au IO file” (’622 pat., claim 3)
`
`.
`
`Even in the context of a speech message, Griffin describes its
`"w content" as displayable text
`
`1101
`
`1102
`
`1104
`1 105
`
`(sn3) this is the tex: from
`message 3 of thread 2
`
`h 1103
`
`text fits within 2-3 lines). Although not illustrated in FIG. 1 1, .’ <start new thread>
`
`In the example ofF16. 11, each entry comprises an attach-
`ment
`indicator 1104-1105 that
`indicates if there is any
`attached content (e.g.. documents, files, etc.) or transmitted
`speech available; the short name ofthe sender 7 05 or 803, and
`at least part ofth Ft-r‘llfifi“ (all ofthe text ifthe
`
`'
`
`»
`
`l
`
`Buddies
`
`
`
`Reply
`
`
`1107
`
`1108
`
`1109 "J
`
`FIG. 11
`
`Griffin’s Fig. 11 and the accompany description (e.g., 10:53-58, copied above)
`shows (at 1105) the “message content” for a speech message as displayable text.
`
`IPR2017-01797, Response (Paper 12) at pp. 8-13.
`
`6
`
`
`
`“ .
`
`.
`
`including a digitized au IO file” (’622 pat, claim 3)
`
`. the instant voice messa e includes an object field
`
`Petitioner has not saved its theory by arguing in its Reply
`(at p. 10) that, in the context of a voice message, Griffin’s
`
`“message content" is the “speech content"
`
`"object field"
`
`“instant voice message"
`
`chat message
`
`fidigitized audio file"
`
`In related matter IPR2017-02080, the PTAB found that
`
`even if its is shown that a container includes voice data,
`
`this does not necessarily mean the voice data (let alone an
`audio file) is included within an obl'ect field of the container.
`
`IPR2017-01797, Response (Paper 12] at pp. 8-13.
`
`7
`
`
`
`“packet-switched network” limitations of independent Claims 3, 27 and 38
`
`Claim construction dispute over recited structure:
`
`Independent claims 27 and 38 both recite: "a network interface coupled
`
`to the client device and connecting the client device to a packet—
`
`switched network;" and independent claim 3 recites "a network
`
`interface connected to a packet—switched network"
`
`Petitioner’s reliance on Griffin erroneously interprets the above claim
`
`language to encompass “a network interface that provides an indirect
`
`connection to a packet-switched network" (Pet. 12)
`
`The “connecting" and "connected to" claim language is not directed to
`
`what the network interface provides, but rather explicitly and
`
`unambiguously recites a direct structural interrelationship—Le, “a
`
`network interface coupled to the client device and connecting the
`
`client device to a packet—switched network" and "a network interface
`
`connected to a packet-switched network.” (Resp. at 13-14)
`
`IPR2017-01797, Response [Paper 12] at pp. 13-19.
`
`
`
`“packet-switched network” limitations of independent Claims 3, 27 and 38
`
`It is undisputed Griffin discloses its mobile terminals 100
`connect only to a circuit-switched cellular network 202
`
`Terminal 1
`
`IPR2017-01797, Response [Paper 12) at pp. 13-19.
`
`9
`
`
`
`“packet-switched network” limitations of independent Claims 3, 27 and 38
`
`It is undisputed Griffin discloses its mobile terminals 100
`connect only to a circuit-switched cellular network 202
`
`40.
`
`Figure 2 of Grlfiin illustrates a plurality of mobile tenninals
`
`comlected to a plurality of Wireless cairiers. Nothing in the specification of
`
`Grzfi‘in discloses any other configuration.
`
`41.
`
`Those terminals “communicate with at
`
`least one chat server
`
`DI‘. Easttom S testlmony
`at EX2001 ‘li‘li 40-49
`
`complex 204 by wirelessly transmitting data to a corresponding wireless
`
`canier‘s infi'astiuctlu'e 202." Grlfiin. 3:51—54.
`
`42.
`
`The wireless cairier infra strucuu'e would not have been a packet-
`
`switched network at the time of filing of Griffin.
`
`IPR2017-01797, Response [Paper 12) at pp. 13-19.
`
`10
`
`
`
`of independent claims 3, 27 and 38
`
`“packet-switched network” limitations
`
`It is undisputed Griffin discloses its mobile terminals 100
`connect only to a circuit-switched cellular network 202
`
`THE WITNESS: As I look at the
`
`A
`Figure 4,
`
`a
`the Figure ; that you asked me
`
`to look at shows that the
`
`mobile terminal 1, 2, 3,
`
`4 are connected
`
`to wireless carrier 1 or
`
`wireless carrier 2, and those two,
`
`wireless carrier 1 and
`
`rs
`wireless carrier ;, are connected to the
`
`network 203, sir.
`
`DI‘. Haas cross-examination
`(IPR2017-01799, EX2007 at
`pp. 48-49)
`
`IPR2017-01797, Response [Paper 12) at pp. 13-19.
`
`11
`
`
`
`“packet-switched network” limitations of independent claims 27 and 38
`
`Because the Petition relies solely on Griffin in addressing
`independent claims 27 and 38, any purported reliance on
`extraneous art (e.g., Zydney) newly advanced in the Reply
`brief is a different and hence waived theory.
`
`c.
`
`“a network interface coupled to the client device and
`connecting the client device to a packet-switched
`
`network; and”
`
`Pet. 62
`
`Grifl‘in discloses these features for reasons similar to those discussed in Part
`
`IX.A.1.b; (Ex. 1002. $239.)
`
`EX1002 11 239
`
`c)
`
`[271)] “a network interface coupled to the client device
`
`and connecting the client den'ce to a packet—switched
`
`network; and”
`
`239.
`
`In my opinion. Gnflin discloses these features for reasons similar to
`
`those that I discussed above for claim element 3a. (See Pan IX.A.1.b.)
`
`IPR2017-01797, Response [Paper 12] at pp. 13-19.
`
`12
`
`
`
`Griffin teaches away from proposed “modification” purportedly based on Zydney (claim 3)
`
`For independent claim 3, Griffin teaches away from the
`proposed combination with Zydney:
`
`FIG. 2 illustrates the overall system architecture of a Wire-
`less communication system comprising a plurality of mobile
`terminals 100 in accordance with the present invention. The
`terminals 100 communicate with at least one chat server
`complex 204 by wirelessly transmitting data to a correspond-
`ing wireless carrier’s infrastructure 202. As known in the art,
`the wirelesscarrier infrastructures 202 comprise those ele-
`llll
`ulflhrl
`JE~'HH;J
`
`
`
`
`EX1005, 3: 54_57
`
`IPR2017-01797, Response [Paper 12] at pp. 13-19.
`
`13
`
`
`
`Zydney does not cure conceded deficiencies of Griffin for “connection information” limitations (claim 3)
`
`“a communication platform system maintaining connection
`information for each of the plurality of instant voice message
`client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems" (claim 3)
`
`\/ Petitioner acknowledges that Griffin does not detail
`“what precisely status 702 indicates.” Pet. 23.
`
`\/ Zydney’s central server 24 passively waits to receive
`random status information notifications from the
`
`software agents: “the sender will log on, authenticate,
`and notify the central server of its status." EX1006 14:3-4
`
`\/ Due to its passive design, the Zydney system would not
`maintain the current connectivity status, for example, in
`instances where the actual connectivity status of
`software agent changes due to circumstances other than
`
`the user entering status information into the software
`agent [e.g., an unanticipated power outage).
`
`IPR2017-01797, Response [Paper 12] at pp. 19-21.
`
`14
`
`
`
`“a document handler system for attaching one or more files to the instant voice message” (claim 27)
`
`“document handler system"
`
`\/ The PTAB has repeatedly recognized that Zydney expresses
`distinguishes its “voice container" from its separately-generated
`“voice message" contained therein. As set forth in the briefing in
`this matter and in related matters, attaching one or more files to
`the “voice container" on Zydney does not render obvious the
`
`“attaching” limitations.
`
`\/ Petitioner does not allege, let alone attempt to prove, that the
`cited references, either alone or in combination, disclose that the
`
`same alleged “instant voice messaging application" that is (1)
`“installed at the client device” and that includes (2) “a client
`
`platform system for generating an instant voice message" and (3)
`“a messaging system for transmitting the instant voice message
`over the packet-switched network” is also the same application
`that includes (4) the claimed “document handler system."
`
`IPR2017-01797, Response [Paper 12] at pp. 21-23.
`
`15
`
`
`
`(claim 24)
`
`data rep. a state of a logical connection
`
`"wherein the messaging system receives connection object
`
`messages from the plurality of instant voice message client
`
`systems, wherein each of the connection object messages
`
`includes data representing a state of a logical connection with a
`
`given one of the plurality of instant voice message client
`
`systems" (claim 24)
`
`X The Petition relies exclusively Low’s description of a client sending
`connect and disconnect commands as the alleged “connection
`object messages." Pet. at 67-68
`
`\/ A command to do something (e.g., to change a state) is not the same
`thing as a data representing the actual state of a logical connection.
`
`/ The claimed “state of a logical connection" in the “connection object
`message” is with “one of the plurality of instant voice message
`client systems," which can be distinct from the “messaging system”
`that is receiving the “connection objection message."
`
`IPR2017-01798, Response at pp. 25-26.
`
`16
`
`
`
`“message database” (claims 14-17 and 28-31)
`
`“wherein the instant voice messaging application includes a
`
`message database storing the instant voice message,
`
`wherein the instant voice message is represented by a
`
`database record including a unique identifier"
`
`(dependent claims 14-17 and 28-31)
`
`\/ In addition to other deficiencies, Petitioner fails to prove that
`any of the cited references disclose a “message database”
`arranged as disclosed and claimed—i.e., storing the “instant
`voice message" within a “message database" included as part
`of a client-side “instant voice messaging application.”
`
`X At most, Petitioner argues Griffin discloses “each mobile
`terminal 100 stores both inbound and outbound speech [i.e.,
`voice) chat messages permanently in the terminal's storage.”
`
`> Griffin’s terminal device is not an application.
`
`> Petitioner acknowledges Griffin does not use the term
`database to describe the storage of speech chat messages,
`
`let alone a database arranged as claimed. Pet. 45 n.12.
`
`IPR2017-01798, Response at pp. 27-28.
`
`17
`
`
`
`.
`
`. the instant voice message includes an action field .
`
`“ .
`
`. (’622 pat, lPR2017-1797, dependent claims 4 and 5)
`
`Neither Griffin nor Zydney discloses “the instant voice message
`
`includes an action field identifying one of a predetermined set of
`
`permitted actions requested by the user," as recited in dependent
`
`claims 4 and 5.
`
`/ Petitioner concedes “Griffin does not explicitly disclose a
`messaging [sic] having an ‘action field,’ as claimed.” Pet. 30.
`
`\/ Zydney not only fails to disclose, but also teaches away from
`the “action filed" limitations.
`
`6
`
`7
`
`8
`
`The voice data is transmitted in a voice container. The term “voice containers” as
`
`Zydney (EX1103) at 12:6-7
`used throughout this application refers to a container object m . M;. c.
`.2 ~
`r'
`"
`'-
`
`but contains voice data or voice data and voice data properties.
`
`In the latter case.
`
`IPR2017-01797, Response [Paper 12] at pp. 36-38.
`
`18
`
`
`
`Samsung E166. America, Inc.
`
`v
`
`Uniloc 20] 7 LLC
`
`Case IPR2017-01799
`
`(Patent 8,199,747)
`
`Hearing Before Jennifer S. Bisk,
`Miram L. Quinn, and
`
`Charles J. Bourdreau
`
`October 30, 2018
`
`
`
`No prima facie obviousness for “attaching” limitations
`
`In its original Institution Decision, the Board correctly found
`
`that the Petition fails to establish even primafacie
`
`obviousness for the “attaching" limitations of claims 1 and 13:
`
`On the record before us, we agree with Patent Owner that Petitioner
`
`has not established sufficiently that the combination of Griffin and Zydney
`
`teaches or suggests “recording the instant voice message in an audio file and
`
`attaching one or morefiles to the audiofile,” as recited in claim 1 (emphasis
`
`added), to demonstrate a reasonable likelihood of succeeding on the asserted
`
`ground of unpatentability with respect to claims 1 and 13. As Patent Owner
`
`points out (Prelim. Resp. 31—32), attaching a file to a message is not the
`
`same as attaching a file to an audio file included in that message, and the
`
`portions of Griffin relied upon by Petitioner as allegedly teaching this
`
`limitation disclose including files within Griffin’s speech chat message 400
`
`but do not teach or suggest attaching files to an audio file. Indeed, Petitioner
`
`IPR2017—01799, ’747 patent, Original Institution Decision (Paper 9) at p. 22.
`
`20
`
`
`
`No prima facie obviousness for “attaching” limitations
`
`The Board can and should take—of its reasoning
`supporting a conclusion that the Petition fails to establish
`
`even prima facie obviousness for the “attaching" limitations
`
`of claims 1 and 13, including at least the following findings:
`
`\/ Attaching a file to a message is not the same as attaching a
`file to an audio file included in that message
`
`\/ Petitioner concedes that “Griffin does not explicitly
`disclose that speech is recorded in an ‘audio file’" and
`
`contends instead merely that “it would have been obvious
`
`to a POSA .
`
`.
`
`. to modify Griffin’s system/process such that
`
`speech is recorded in a digitized audio file .
`
`.
`
`. in View of
`
`the teachings of Zydney."
`
`\/ The portions of Zydney relied upon by Petitioner teach
`attachment of multimedia files to its “voice container,"
`
`rather than to an audio file as recited in claim 1 (citing EX.
`
`1006, 19:6—12, Fig. 16).
`
`IPR2017—01799, '747 patent, Original Institution Decision (Paper 9) at p. 22.
`
`21
`
`
`
` No prima facie obviousness for “attaching” limitations
`
`The PTAB has repeatedly rejected the same Zydney-based
`arguments for the “attach[ing]" limitations
`
`the asseited ground of tuipatentability with respect to claims 1 and 13. As
`t
`’1
`w
`'41
`IV“;
`vw- ,.
`I
`'i
`
`Patent Owner points out (Prelim. Resp. 12)..
`I 3t;$.lt,ahtuaik--uit ”tatt;.§aau2 lfil.(+t‘
`it .
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`.A
`.‘
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`'L-VQ’LTCf-ll ‘ " -.C:7.:L,§;.‘:..'.L’:- UH;-
`
` i "
`
`Not only has Petitioner failed to advance any argument that the
`
`elements Petitioner interchangeably identifies as the recited “instant voice
`
`message”—Zydney’s voice container and the voice data or message stored
`
`therein—are equivalent, but also we agree with Patent Owner that these
`
`elements of Zydney are distinct in the context of Petitioner’s obviousness
`
`arguments. Prelim. Resp. 12—13; Ex. 2001 TH] 45, 48, 51 (opining that
`
`a A». may: mg;
`.f
`.
`,
`,
`.0, xvi—'11:»!
`
`\
`
`J I,
`_\
`.‘S-L‘k‘x-V, 'i
`."-
`"' q ""‘u;
`imwhnuiirbfisr.fl
`
`‘
`
`"r‘
`r»
`
`__
`
`:‘V .‘r-g,‘
`1
`
`IPR2017-01257, Paper 8,
`
`Decision Denying
`
`Institution, at 18
`
`IPR2017-01524, Paper 7,
`
`Decision Denying
`
`Institution, at 17
`
`22
`
`
`
`No prima facie obviousness for “attaching” limitations
`
`We agree with Patent Owner that our reasoning in denying the
`
`petition in IPR2017-01257, wherein claim 1 was asserted to have been
`
`obvious over Zydney, is applicable here as well. In that case, we were not
`
`persuaded that the petitioner there had established sufiiciently that Zydney
`
`teaches or suggests “attaching one or more files to the audio file,” as recited
`
`in claim 1, to demonstrate a reasonable likelihood of succeeding on the
`
`asserted ground. We agreed with Patent Owner in that case that the portions
`
`of Zydney now relied upon by Petitioner as allegedly disclosing this
`
`limitation instead disclose attaching additional files (e.g., a multimedia file)
`
`to a voice container, rather than to an audio file as recited in claim 1. See
`
`Case IPR2017-01257, slip op. at 18 (PTAB Dec. 4, 2017) (Paper 8)
`
`(“1257 D1”); Ex. 1004, 1922—12, Figs. 16—18. We further observed that
`
`Zydney discloses that a voice container may “contain[] voice data or voice
`
`data and voice data properties” (Ex. 1004, 12:6—8) and also “has the ability
`
`to have other data types attached to i ” (id. at 19:6), but we explained that
`
`“[e]ven if we regard Zydney’s voice data as being an audio file, however, we
`
`are not persuaded that Zydney’s disclosure that another file may be attaihed
`to a voice container that contains such an audio file teaches or suggests
`
`attaching that other file to the audio file.” 1257 D1 18—19. That conclusion
`
`applies afortiori in this case, where Petitioner is alleging Zydney anticipates
`
`claim 1.
`
`IPR2017-02085, '747 patent, Decision Denying Institution (Paper 11] at p. 19.
`
`23
`
`
`
` No prima facie obviousness for “controlling” limitations
`
`In its original Institution Decision, the Board correctly found
`
`that the Petition fails to establish even prima facie obviousness
`
`for the limitation "controlling a method of generating [an]
`
`instant voice message based upon a connectivity status [of]
`
`each recipient," as recited in claim 3:
`
`On the record before us, we agree with Patent Owner that Petitioner
`
`has not established sufficiently that Zydney teaches or suggests “controlling
`
`a method of generating [an] instant voice message based upon a connectivity
`
`status [0t] each recipient,” as recited in claim 3, to demonstrate a reasonable
`
`likelihood of succeeding on the asserted ground of unpatentability with
`
`respect to that claim. As Patent Owner points out (Prelim. Resp. 44—45), the
`
`IPR2017—01799, '747 patent, Original Institution Decision (Paper 9) at p. 30.
`
`24
`
`
`
`The Board correctly found no prima facie obviousness
`
`The Board can and should take—of its reasoning
`supporting a conclusion that the Petition fails to establish even
`
`primafacie obviousness for the “controlling" limitations of claim 3,
`
`including at least the following findings:
`
`\/ The Petition does not prove that either the pack and send mode
`or the intercom mode of operation is controlled in any manner
`
`by a connectivity status of a recipient.
`
`\/ The ability to select a different mode of delivery is
`distinguishable from controlling the method of generating an
`
`instant voice message. "In other words, whether the pack and
`
`send method is mandatory or simply optional may determine
`
`whether or not the pack and send mode is used, but this
`
`determination does not change how the instant voice message
`
`is generated in the pack and send mode.”
`
`(IPR2017-01799, Paper 9 at p. 33, internal citation and quotation omitted;
`
`accord IPR2017-02085, Paper 11 at p. 26.)
`
`IPR2017-01799, ’747 patent, Original Institution Decision (Paper 9) at p. 30-33.
`
`25
`
`
`
`The PTAB provided similar reasoning in |PR2017-02085
`
`On the record before us, we determine that Petitioner has not
`
`established sufficiently that Zydney discloses “controlling a method of
`
`generating [an] instant voice message based upon a connectivity status [of]
`
`each recipient,” as recited in claim 3, to demonstrate a reasonable likelihood
`
`of succeeding in showing that claim 3 is anticipated by Zydney. The cited
`
`portions of Zydney disclose that the instant voice message is generated as a
`
`voice container that may be delivered via different communication modes.
`
`However, Petitioner does not show that the selection between those
`
`communication modes discloses control of generating the instant voice
`
`message. In other words, regardless whether the “pack and send” or the
`
`“intercom” communication mode is selected, Petitioner identifies only a
`
`single method of generating an instant voice message, namely, “‘generating
`
`an instant voice message’ in the form of a ‘voice container,” and Petitioner
`
`does not persuasively explain how generation of the voice container is
`
`controlled by the selection of one or the other communication mode.
`
`IPR2017-02085, ’747 patent, Decision Denying Institution (Paper 11] at p. 26.
`
`26
`
`
`
`Zydney repeatedly found to be deficient
`
`/ Zydney has been cited against this same family of patents
`(and indeed these same patents) in I petitions for inter
`partes review
`
`/ Most of those Zydney-based petitions were denied at the
`preliminary stage or have been voluntarily terminated by
`
`the petitioner, for certain reasons that are applicable here.
`
`See, e.g., IPR2017-1257; IPR2017-1365; IPR2017-1523;
`
`IPR2017-1524; IPR2017-2082; IPR2017-2083;
`
`IPR2017-2084; IPR2017-2085; IPR2017-2067;
`
`IPR2017-2080; IPR2017-2081; IPR2017-1804;
`
`IPR2017-1805; etc.
`
`27
`
`
`
`The Petition does not defend its claim construction for “node”
`
`The “list of nodes" term recited in claim 2 refers to multiple
`devices within a network not people as Petitioner argues:
`
`X In a footnote, and without any supportive argument or evidence,
`Petitioner asks the Board to construe “node" as “potential recipient,"
`without specifying whether “potential recipient” refers to a device or
`
`a person. Pet. at 45—46, n.11. The Petition first maps Griffin’s mobile
`terminal 100 onto the “node" term; and then it incontinently relies,
`
`instead, on a human user of a mobile terminal 100 for the “node”
`
`term. The recited "node” does not and cannot refer to both.
`
`\/
`
`In the context of computer communications networks, “node” is a
`term of art that refers to
`e.
`., a computer; a computer
`system, or another device)
`. EX2001 1111 23—26.
`
`\/ 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 11 26 [citing EX2003 at 3).
`
`\/ Consistent with this plain and ordinary meaning, claim 2 defines the
`“nodes” as being “within a packet-switched networ .” Devices, not
`
`humans, are within packet-switched networks.
`
`IPR2017-01799, ’747 patent, Response (Paper 21) at pp. 5-8.
`
`28
`
`
`
`Griffin does not disclose “the list of nodes” limitations (claim 2)
`
`Conveying user definitions and presence status 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 (claim 2)
`
`J In defining its presence status, Griffin expressly differentiates a human
`recipient from her 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:
`
`_ FIG. 7 illustrates a table withthe plurality of
`
`speech and/or ttmsage only,
`
`)
`
`5:11-15
`
`[PR2017-01799, ’747 patent, Response (Paper 21] at pp. 9-14.
`
`29
`
`
`
`Griffin does not disclose “the list of nodes” limitations (claim 2)
`
`“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 ..." (claim 2)
`
`\/ Griffin repeatedly and consistently ties its presence status to a user (i.e.,
`to a person), as opposed to a connectivity status of a network node.
`
`
`
`_._|T_1_ _"..'till 1iFm“:-
`
`..
`.
`1-"
`‘I
`II A'..-
`It-‘lllfi.
`..L-..' 1,,41 -
`law-“.m“.Mug—an s-QIM'I‘...
`
`
` I,
`
`
`702. FIG. 6 1llustrates abuddy list update message 600 sent
`from the server complex 204 to the mobile terminal 100. The
`message 600 comprises a list type 601 (e.g., alphanumeric
`list, group list etc. ), the number of groups identified in the
`message 602, at least one group definition 603-604 a list of
`
`um ouped individuals 605-606, and a plurality o *
`502-505 607. Note that the recipient status field 607
`indicates the value ofthe presence status 702 A group defi-
`7:39-49
`
`-_‘_7___
`
`f|3~+"[7.1;.11 ltlllli
`
`
`
`
`5- 25
`p
`'
`' "
`*
`
`‘
`— the buddyS nickname 802 or 704 and/or the
`850- 51
`
`lPR2017-01799, ’747 patent, Response (Paper 21] at pp. 9-14.
`
`30
`
`
`
`Griffin does not disclose “the list of nodes” limitations (claim 2)
`
`“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 ..." [claim 2)
`
`\/ Patent Owner’s expert (Dr. Easttom) testified that Griffin’s presence
`status pertains to a person and not to a “node” as claimed:
`
`FIG. 7 of Gnfi‘in shows a table of presence data records 700 compiled by a
`
`presence manager 302 at the server complex. where each presence data. record
`
`
`includes hieptesenoestnmfloz ofauserfifhnoww Grifl‘in. 529-22. FIG. 9
`
`of Grifi‘in shows a buddy list display that can be displayed on the screen of a
`
`user‘s terminal 100. Where the buddy list display includes a presence indicator
`
`icon 904 that varies in appearance depending on presence status 702 of a
`
`buddy. Gn'fi‘in. 8:15-28.
`
`(IPR2017-01799, EX2001 ‘H 52)
`
`IPR2017—01799, ’747 patent, Response [Paper 21) at pp. 9-14.
`
`31
`
`
`
`Griffin does not disclose “the list of nodes” limitations (claim 2)
`
`“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 ..." [claim 2)
`
`\/ Patent Owner’s expert (Dr. Easttom) testified that there is no device-
`specific information in Griffin’s buddy-list update message:
`
`
`of people. not devices. There is no device-specific infomlation in the buddy
`
`list update message 600. Rather. the buddy list update message 600 includes.
`
`for each buddy whose status is being updated. multiple names for that buddy
`
`(full name. nickname. and short name) along with the presence status 702 for
`
`that buddy (which is included in the. recipient status field 607). Gnfiin. 7:18-
`
`8:14.
`
`(IPR2017-01799, EX2001 11 53)
`
`IPR2017-01799, ’747 patent, Response (Paper 21] at pp. 9-14.
`
`32
`
`
`
`Griffin does not disclose “the list of nodes” limitations (claim 2)
`
`“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 ..." (claim 2)
`
`\/ Petitioner's declarant (Dr. Haas) conceded that Griffin fails to
`expressly or inherently disclose that its so-called “status” indicates
`whether or not terminal 100 is connected:
`
`Griflin does not provide additional details regarding what precisely cmrent status
`
`702 indicates. For example. as I discussed above with respect to claim element 1c
`
`
`
`state. Likewise.
`
`it
`
`is not specified Whether “Available" simply indicates that
`
`[IPR2017-01799, EX1002 Tl 163)
`
`IPR2017-01799, ’747 patent, Response (Paper 21] at pp. 9-14.
`
`33
`
`
`
`Zydney does not disclose “the list of nodes” limitations (claim 2)
`
`The Board has repeatedly found Zydney does not disclose
`“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 ..." (claim 2)
`
`V In IPR2017-01257 in rejecting the same Zydney-
`
`based arguments of the instant Petition, the Board
`found Zydney at least fails to disclose that a “list of
`nodes
`including a connectivity status of each node”
`and is “received,” in addition to being “displayed,” as
`recited in claim 2. IPR2017-01257, Paper 8 at 30-31.
`This is true regardless whether “node" is interpreted to
`mean “potential recipient."
`
`/ In IPR2017-02085 the Board again adopted similar (if
`
`not identical) findings from IPR2017-01257 concerning
`multiple deficiencies of Zydney for the same “list of
`nodes" limitations. IPR2017-02085, Paper 11 at 23-24.
`The Board further noted that it did not understand
`
`defining “node" to mean “potential recipient" would
`require that term to encompass a person. Id. at 10.
`
`IPR2017-01799, ’747 patent, Response (Paper 21] at pp. 9-14.
`
`34
`
`
`
`“nodes within the packet-switched network” (claim 2)
`
`Claim construction dispute over the structural limitation
`“... nodes within the packet—switched networ " (claim 2)
`
`Griffin fails to disclose that its mobile terminals 100 are within
`
`network 203 (the only network the Petition alleges is a
`packet-switched network). Petitioner erroneously attempts
`to save its Griffin-based argument by rewriting the claim
`language as “an indirect connection to a packet-switched
`network.” Pet. 49.
`
`
`alleged “packet-
`switched network
`
`
`
`
`1 00
`
`10° ’
`
`100
`
`
`
`Mobile
`Terminal 1
`
`
`Mobile
`
`Terminal 2
`
`
`
`Terminals
`
`\1 Mobile
`
`
`
`
`202
`
`IPR2017-01797, Response [Paper 12] at pp. 19-21.
`
`35
`
`
`
`“nodes within the packet-switched network” (Claim 2)
`
`Griffin’s disclosure leads away from modifying its system
`
`(purportedly based on Zydney) in a manner that
`
`bypasses what Griffin describes as its “necessary”
`
`circuit-switched wireless carrier network(s) 202.
`
`\/ If it would have been obvious to bypass wireless carrier
`infrastructure 202 entirely, surely Griffin would have
`said so. Griffin does not.
`
`\/ Griffin states that as between wireless carrier
`
`infrastructure 202 and network 203, it is only the latter
`(network 203) that is optionally eliminated. EX1005,
`4: 2 0—2 1.
`
`\/ Griffin explicitly emphasizes the necessity of wireless
`carrier infrastructure 202 by stating that “the Wireless
`carrier infrastructures 202 comprise those elements
`necessary to support wireless communications with
`the terminals 100.” EX1005, 3:54—57 (underling added).
`
`IPR2017-01797, Response [Paper 12] at pp. 19-21.
`
`36
`
`
`
`Samsung E166. America, Inc.
`
`v
`
`Uniloc 20] 7 LLC
`
`Case IPR2017-01800
`
`(Patent 8,243,723)
`
`Hearing Before Jennifer S. Bisk,
`Miram L. Quinn, and
`
`Charles J. Bourdreau
`
`October 30, 2018
`
`
`
`No prima facie obviousness for Claim 2 of ’723 patent
`
`The Board should take— of its findings that the
`Petition fails to establish the proposed combination of Griffin
`
`and Zydney discloses "the instant voice message includes one
`
`or more files attached to an audio file" (claim 2):
`
`For the reasons given. we are not persuaded by Petitioner‘s evidence
`
`that the combination of Griffin and Zydney
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