Samsung Elec. America, Inc.
`
`V.
`
`Uniloc 2017 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 2017 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 U.S. Patent No. 8,724,622
`
`IPR2017-01797
`
`3. A system comprising:
`
`a networkinterface connected to a packet-switched
`network;
`
`a messaging system communicating with a plurality of
`instant voice messageclient systemsvia the
`networkinterface; and
`
`a communication platform system maintaining
`connection information for each of the plurality of
`instant voice messageclient systemsindicating
`whetherthereis a current connection to each of the
`plurality of instant voice message client systems,
`
`wherein the messaging system receives an instant
`voice messagefrom oneof theplurality of instant
`voice messageclient systems, and
`
`wherein the instant voice message includes an object
`field including a digitized audiofile.
`
`
`
`Independent Claim 27 of U.S. Patent No. 8,724,622
`
`IPR2017-01797
`
`27. A system comprising:
`
`a client device;
`
`a networkinterface coupledto the client device and
`connectingthe client device to a packet-switched
`network; and
`
`an instant voice messaging application installed on
`the client device, wherein the instant voice
`messaging application includesa client platform
`system for generating an instant voice message
`and a messaging system for transmitting the
`instant voice messageoverthe packet-switched
`networkvia the networkinterface,
`
`wherein the instant voice messaging application
`includes a documenthandler system for attaching
`one or morefiles to the instant voice message.
`
`
`
`Independent Claim 38 of U.S. Patent No. 8,724,622
`
`IPR2017-01797
`
`28. A system comprising:
`
`a client device;
`
`a networkinterface coupledto the client device and
`connectingthe client device to a packet-switched
`network; and
`
`an instant voice messaging application installed on
`the client device, wherein the instant voice
`messaging application includesa client platform
`system for generating an instant voice message
`and a messaging system for transmitting the
`instant voice messageoverthe packet-switched
`networkvia the networkinterface,
`
`a display displaying a list of one or more potential
`recipients for an instant voice message.
`
`
`
`",,. the instant voice message includes an objectfield including a digitized audiofile” ('622 pat., claim 3)
`
`Griffin's “message content 406’is not an “object field’ as claimed
`
`’622 patent, claim 3 recites|Instant voice message
`a specific arrangementof
`“object field”
`three distinct elements:
`
`“digitized audiofile” !
`
`Griffin's only
`description of message
`content 406 is stated
`at col. 6, lines 38-44
`
`OEE ee ee eee eee
`
`
`
`chat message 400
`message content 406 ;
`
`
`
`~
`
`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 numberof intended recipients 402,
`a plurality of recipient identifiers 403, a thread identifier 404,
`a message length 405, messagecontent406
`and a numberof
`attachments 407. Preferably, the mobile terminal 100 gener-
`
`to Meg
`
`Ss
`
`=
`
`
`
`IPR2017-01797, Response (Paper 12) at pp. 8-13.
`
`
`
`",,. the instant voice message includes an objectfield including a digitized audiofile” ('622 pat., claim 3)
`
`Even in the context of a speech message,Griffin describesits
`“message content’as displayable text
`
`
`nickname9,nickname2, nicknam...
`
`(sn3) this is the text from
`message3 of thread 2
`
`1103
`
`In the example of FIG. 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 705 or 803, and
`at least part ofthe messagecontentortext(all ofthe text ifthe
`text fits within 2-3 lines). Although notillustrated in FIG. 11,
`
`
`
`
`
`
`/ <start new thread>
`
`
`Buddies
`|
`. Reply
`
`
`1109 —
`FIG. 11
`
`
`
`1108
`
`1107
`
`Griffin’s Fig. 11 and the accompanydescription (e.g., 10:53-58, copied above)
`shows(at 1105) the “message content” for a speech messageasdisplayable text.
`
`IPR2017-01797, Response (Paper 12) at pp. 8-13.
`
`
`
`",,. the instant voice message includes an objectfield
`
`including a digitized audiofile” ('622 pat., claim 3)
`
`Petitioner has not savedits theory by arguingin its Reply
`(at p. 10) that, in the context of a voice message,Griffin's
`“message content’is the “speech content”
`
`I “digitized audiofile” !
`
`“instant voice message”
`
`“object field”
`I.eee ee =
`
`chat message
`
`In related matter IPR2017-02080, the PTAB found that
`evenif its is shown that a container includes voice data,
`this does not necessarily meanthe voice data (let alone an
`audiofile) is included within an objectfield of the container.
`
`IPR2017-01797, Response (Paper 12) at pp. 8-13.
`
`7
`
`
`
`“packet-switched network”limitations of independentclaims 3, 27 and 38
`
`Claim construction dispute overrecited structure:
`
`Independentclaims 27 and 38 bothrecite: “a network interface coupled
`to the client device and connectingtheclient device to a packet-
`switched network;” and independentclaim 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 networkinterface that provides an indirect
`connection to a packet-switched network”(Pet. 12)
`
`The “connecting” and “connected to” claim languageis not directed to
`whatthe networkinterface provides, but rather explicitly and
`unambiguously recites a direct structural interrelationship—i.e., “a
`networkinterface coupled to the client device and connecting the
`client device to a packet-switched network”and “a networkinterface
`connected to a packet-switched network.’ (Resp. at 13-14)
`
`IPR2017-01797, Response (Paper 12) at pp. 13-19.
`
`
`
`“packet-switched network”limitations of independentclaims 3, 27 and 38
`
`It is undisputed Griffin discloses its mobile terminals 100
`connectonlyto a circuit-switched cellular network 202
`
`Terminal 1
`
`IPR2017-01797, Response (Paper 12) at pp. 13-19.
`
`
`
`“packet-switched network”limitations of independentclaims 3, 27 and 38
`
`It is undisputed Griffin discloses its mobile terminals 100
`connectonlyto a circuit-switched cellular network 202
`
`40.
`
`Figure 2 of Griffin illustrates a plurality of mobile terminals
`
`connected to a plurality of wireless carriers. Nothing in the specification of
`
`Griffin discloses any other configuration.
`
`41.
`
`Those terminals “communicate with at
`
`least one chat server Dr Easttom’s testimony
`at EX2001 {J 40-49
`
`complex 204 by wirelessly transmitting data to a corresponding wireless
`
`carrier’s infrastructure 202.” Griffin, 3:51—54.
`
`42.
`
`The wireless carrier infrastructure would not have been a packet-
`
`switched networkat the timeoffiling of Griffin.
`
`IPR2017-01797, Response (Paper 12) at pp. 13-19.
`
`10
`
`
`
`of independentclaims 3, 27 and 38
`
`“packet-switched network”limitations
`
`It is undisputed Griffin discloses its mobile terminals 100
`connectonly to a circuit-switched cellular network 202
`
`THE WITNESS: As I look at the
`
`Figure 2,
`
`the Figure 2 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
`
`s
`wireless carrier 2, are connected to the
`
`network 203, sir.
`
`Dr. 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 independentclaims 27 and 38
`
`BecausethePetition relies solely on Griffin in addressing
`independentclaims 27 and 38, any purportedreliance on
`extraneousart (e.g., Zydney) newly advancedin the Reply
`brief is a different and hence waivedtheory.
`
`Pet. 62
`
`Cc.
`
`“a network interface coupled to the client device and
`connecting the client device to a packet-switched
`network; and”
`
`Griffin discloses these features for reasons similar to those discussed in Part
`
`IX.A.1.b. (Ex. 1002, §239.)
`
`EX1002 9239
`
`c)
`
`[27b] “a network interface coupled to the client device
`and connecting the client device to a packet-switched
`network; and”
`
`239,
`
`In my opinion, Griffin discloses these features for reasons similar to
`
`those that I discussed abovefor claim element 3a. (See Part 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 independentclaim 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 knownintheart,
`the ee:carrier pis Uer comprisetOES Ee
`
`vireleESScon
` mu! nic‘atic
`
`
`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 systemsindicating whetherthereis a current
`connection to eachofthe plurality of instant voice message
`client systems”(claim 3)
`
`Y Petitioner acknowledgesthatGriffin does not detail
`“whatprecisely status 702 indicates.” Pet. 23.
`
`Y Zydney’s central server 24 passively waits to receive
`random status information notifications from the
`software agents: “the senderwill log on, authenticate,
`andnotify the central serverof its status.” EX1006 14:3-4
`
`Y Duetoits passive design, the Zydney system would not
`maintain the current connectivity status, for example,in
`instances wherethe actual connectivity status of
`software agent changesdueto circumstances other than
`the userentering status informationinto the software
`agent (e.g., an unanticipated poweroutage).
`
`IPR2017-01797, Response (Paper 12) at pp. 19-21.
`
`14
`
`
`
`“a documenthandler system for attaching one or more files to the instant voice message’(claim 27)
`
`“documenthandler system”
`
`Y The PTABhasrepeatedly recognized that Zydney expresses
`distinguishesits “voice container” from its separately-generated
`“voice message” containedtherein.As set forth in the briefing in
`this matterandin related matters, attaching one or morefiles to
`the “voice container” on Zydney doesnot render obvious the
`“attaching” limitations.
`
`Y Petitioner does notallege, let alone attempt to prove,that the
`cited references, either alone or in combination, disclose that the
`same alleged “instant voice messaging application”thatis (1)
`“installed at the client device” andthat 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 sameapplication
`that includes (4) the claimed “document handler system.”
`
`IPR2017-01797, Response (Paper 12) at pp. 21-23.
`
`15
`
`
`
`"... data rep. a state of a logical connection...” (claim 24)
`
`“wherein the messaging system receives connection object
`messagesfrom theplurality of instant voice messageclient
`systems, wherein each of the connection object messages
`includes data representing a state of a logical connection with a
`given one ofthe plurality of instant voice messageclient
`systems”(claim 24)
`
`X% The Petition relies exclusively Low’s description of a client sending
`connect and disconnect commandsasthe alleged “connection
`object messages.” Pet. at 67-68
`
`Y Acommandto do something(e.g., to change a state) is not the same
`thing as a data representing the actualstate of a logical connection.
`
`Y 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 bedistinct from the “messaging system”
`that is receiving the “connection objection message.”
`
`IPR2017-01798, Responseat pp. 25-26.
`
`16
`
`
`
`“message database’(claims 14-17 and 28-31)
`
`“wherein the instant voice messaging application includes a
`message databasestoring the instant voice message,
`whereinthe instant voice message is represented by a
`database record including a uniqueidentifier”
`(dependent claims 14-17 and 28-31)
`
`Y In addition to otherdeficiencies, 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.”
`
`% At most, Petitioner argues Griffin discloses “each mobile
`terminal 100 stores both inbound and outboundspeech(i.e.,
`voice) chat messages permanently in the terminal’s storage.”
`
`>» Griffin’s terminal device is not an application.
`
`> Petitioner acknowledgesGriffin does not use the term
`databaseto describe the storage of speech chat messages,
`let alone a database arrangedas claimed.Pet. 45 n.12.
`
`IPR2017-01798, Responseat pp. 27-28.
`
`17
`
`
`
`“,., the instant voice message includes an actionfield...” (622 pat., IPR201/7-1797, dependent claims 4 and 5)
`
`Neither Griffin nor Zydneydiscloses “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.
`
`Y Petitioner concedes “Griffin does notexplicitly disclose a
`messaging[sic] having an ‘actionfield, as claimed.’ Pet. 30.
`
`Y Zydneynotonlyfails to disclose, but also teaches away from
`the “actionfiled” 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 throughoutthis application refers to a container object that contains no method
`
`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 Elec. America, Inc.
`
`V.
`
`Uniloc 2017 LLC
`
`Case [PR2017-01799
`(Patent 8,199,747)
`
`Hearing Before Jennifer S. Bisk,
`Miram L. Quinn, and
`Charles J. Bourdreau
`
`October 30, 2018
`
`
`
`No prima facie obviousnessfor “attaching”limitations
`
`In its original Institution Decision, the Board correctly found
`that the Petition fails to establish even prima facie
`obviousnessfor the “attaching” limitations of claims 1 and 13:
`
`On the record before us, we agree with Patent Ownerthat Petitioner
`
`has not established sufficiently that the combination of Griffin and Zydney
`
`teaches or suggests “recording the instant voice messagein an audiofile and
`
`attaching one or morefiles to the audiofile,” as recited in claim | (emphasis
`
`added), to demonstrate a reasonablelikelihood 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 messageis not the
`
`same as attachinga file to an audiofile 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 obviousnessfor “attaching”limitations
`
`The Board can and should take judicialnoticeof its reasoning
`
`supporting a conclusionthat the Petition fails to establish
`even primafacie obviousnessfor the “attaching”limitations
`of claims 1 and 13,includingat least the followingfindings:
`
`Y Attachingafile to a messageis not the same asattachinga
`file to an audiofile included in that message
`
`Y Petitioner concedesthat“Griffin does not explicitly
`disclose that speechis recordedin an ‘audio file’” and
`contendsinstead merely that “it would have been obvious
`toa POSA...to modify Griffin’s system/process such that
`speechis recordedin a digitized audio file... in view of
`the teachings of Zydney.’
`
`Y The portions of Zydneyrelied upon by Petitioner teach
`attachment of multimediafiles to its “voice container,’
`rather thanto an audiofile 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 obviousnessfor “attaching”limitations
`
`The PTABhasrepeatedly rejected the same Zydney-based
`argumentsfor the “attach[ing]” limitations
`
`the asserted ground of unpatentability with respect to claims 1 and 13. As
`
` ak 7
`
`L
`,
`Patent Ownerpoints out (Prelim. Resp. 12), theportionsof Z
`‘ydneyrelied
`ir 6! 6.
`ae...
`sais
` wos Tr WP
`
`rc allacsa,
`+
`tag,
`TIO
`Vac
`bi
`* Da
`-
`>
`uponbyPetitioner as. lie gedly teaching Wis
`
`45 TEcitec ee Eeta Iae >.
`1
`in claim 1 (see Pet.
`29: Ex
`
`aa rwe
`iS
`
`IPR2017-01257, Paper8,
`Decision Denying
`Institution, at 18
`
`Not only has Petitioner failed to advance any argumentthat 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 Ownerthat these
`
`elements of Zydneyare distinct in the context of Petitioner’s obviousness
`
`arguments. Prelim. Resp. 12—13; Ex. 2001 9 45, 48, 51 (opining that
`
`IPR2017-01524, Paper7,
`Decision Denying
`Institution, at 17
`
`22
`
`
`
`No prima facie obviousnessfor “attaching”limitations
`
`Weagree 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
`
`persuadedthat the petitioner there had established sufficiently that Zydney
`
`teaches or suggests “attaching one or morefiles 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 nowrelied 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 audiofile as recited in claim 1. See
`
`Case IPR2017-01257,slip op. at 18 (PTAB Dec. 4, 2017) (Paper 8)
`
`(“1257 DI’); Ex. 1004, 19:2—12, Figs. 16-18. We further observed that
`
`Zydneydiscloses 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 it” (id. at 19:6), but we explained that
`
`“fe]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 atta¢hed
`to a voice container that contains such an audiofile teaches or suggests
`
`attaching that other file to the audio file.” 1257 DI 18-19. That conclusion
`
`applies afortiori in this case, where Petitioneris alleging Zydney anticipates
`
`claim 1.
`
`IPR2017-02085,’747 patent, Decision Denying Institution (Paper 11) at p. 19.
`
`23
`
`
`
` No prima facie obviousnessfor“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 Ownerthat Petitioner
`
`has not established sufficiently that Zydney teaches or suggests “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 on the asserted ground of unpatentability with
`
`respectto that claim. As Patent Ownerpoints 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 judicialnoticeof its reasoning
`
`supporting a conclusion thatthe Petition fails to establish even
`primafacie obviousnessforthe “controlling” limitations of claim 3,
`includingat least the following findings:
`
`Y The Petition does not prove that either the pack and send mode
`or the intercom modeof operation is controlled in any manner
`by aconnectivity status of a recipient.
`
`Y The ability to select a different modeofdelivery is
`distinguishable from controlling the method of generating an
`instant voice message. “In other words, whetherthe pack and
`send method is mandatoryor simply optional may determine
`whetheror not the pack and send modeis used, but this
`determination does not change howtheinstant 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 PTABprovided similar reasoning in IPR2017-02085
`
`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 modeis selected, Petitioner identifies only a
`
`single method of gererating 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 containeris
`
`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
`
`Y Tydneyhas beencited against this same family of patents
`(and indeedthese samepatents) in 26 petitions for inter
`partes review
`
`Y Most of those Zydney-based petitions were deniedat the
`preliminary stage or have been voluntarily terminated by
`the petitioner, for certain reasonsthat 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 peopleas Petitioner argues:
`
`% Ina footnote, and without any supportive argumentor 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; andthenit incontinently relies,
`instead, on a human userof a mobile terminal 100 for the “node”
`term. The recited “node” does not and cannotreferto both.
`
`Y Inthe context of computer communications networks, “node”is a
`term of art that refers to
`e.g.,a computer, a computer
`system, or anotherdevice)
`. EX2001 Ff] 23-26.
`
`Y The 1992 edition of the American Heritage Dictionary of the English
`Language defines “node”in the computer networkcontext as “[a]
`terminal in a computer network.” EX2001
`26 (citing EX2003at3).
`
`Y Consistentwith this plain and ordinary meaning,claim 2 defines the
`“nodes”as being “within a packet-switched network.” 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 “receivinga 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)
`
`Y In defining its presencestatus, Griffin expressly differentiates a human
`recipient from her terminal by usingthe possessive form of “recipient”
`whenreferring to status 702 andreferring, instead, to the possessive
`form of “terminal” whenreferring to address 703:
`
`PIG. 7 illustrates a table with theplurality of
`
`SereeeeeeEeey¢
`
`5:11-15
`
`IPR2017-01799,’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,thelist of
`nodesincluding a connectivity status of each node,said connectivity status
`being available and unavailable...” (claim 2)
`
`Y Griffin repeatedly and consistently ties its presence statusto a user(i.e.,
`
`toa person),3as opposed to a connectivity status ofa network node.
`
`702. FIG. 6 octets a: buddy listee Teaeaee© 600rent
`
`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
`9:25
`message 602, at least one group definition 603-604, aa Hist of
`
`ungrouped individuals 605-606, and a plurality of us
`buddy's
`ne
`502-505, 607. Note that the recipient status field 607
`
`Status 911, the buddy’s nickname 802 or 704, andlor|the
`indicates the value ofthe presence status 702. A group defi-
`
`
`8:50-51
`7:39-49
`IPR2017-01799,’747 patent, Response (Paper 21) at pp. 9-14.
`
`E
`See
`
`30
`
`
`
`Griffin does not disclose “the list of nodes”limitations (claim 2)
`
`“receivinga list of nodes within the packet-switched network,thelist of
`nodesincluding a connectivity status of each node, said connectivity
`status being available and unavailable...” (claim 2)
`
`Y Patent Owner’s expert (Dr. Easttom)testified that Griffin’s presence
`status pertains to a person andnot to a “node”as claimed:
`
`FIG. 7 of Griffin shows a table of presence data records 700 compiled by a
`
`presence manager302 at the server complex. where each presence datarecord
`
`
`
`includes thepresencestatus702 ofauser(ifknown). Griffin, 5:9-22. FIG. 9
`
`of Griffin showsa buddylist display that can be displayed on the screen of a
`
`user’s terminal 100, where the buddylist display includes a presence indicator
`
`icon 904 that varies in appearance depending on presence status 702 of a
`
`buddy. Griffin, 8:15-28.
`
`(IPR2017-01799, EX2001 J 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,thelist of
`nodesincluding a connectivity status of each node,said connectivity
`status being available and unavailable...” (claim 2)
`
`Y Patent Owner’s expert (Dr. Easttom)testified that there is no device-
`specific informationin Griffin’s buddy-list update message:
`
`of people, not devices. There is no device-specific information in the buddy
`
`
`
`list update message 600. Rather, the buddy list update message 600 includes.
`
`for each buddy whosestatus 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 therecipient status field 607). Griffin, 7:18-
`
`8:14.
`
`(IPR2017-01799, EX2001 J 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,thelist of
`nodesincluding a connectivity status of each node,said connectivity
`status being available and unavailable...” (claim 2)
`
`Y Petitioner’s declarant (Dr. Haas) concededthatGriffin fails to
`expressly or inherently disclose thatits so-called “status” indicates
`whetheror not terminal 100 is connected:
`
`Griffin does not provide additional details regarding what precisely current status
`
`702 indicates. For example. as I discussed above with respect to claim element Ic
`
`
`
`state. Likewise.
`
`it
`
`is not specified whether “Available” simply indicates that
`
`(IPR2017-01799, EX1002 § 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 notdisclose
`“receiving a list of nodes within the packet-switched network,
`the list of nodesincluding a connectivity status of each node,said
`connectivity status being available and unavailable...” (claim 2)
`
`Y In IPR2017-01257, in rejecting the same Zydney-
`
`based arguments of the instant Petition, the Board
`found Zydneyatleastfails to disclose that a “list of
`nodes... including a connectivity status of each node”
`andis “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.’
`
`Y InIPR2017-02085, the Board again adoptedsimilar(if
`
`notidentical) findings from IPR2017-01257 concerning
`multiple deficiencies of Zydneyfor 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 encompassa 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 overthe structurallimitation
`“... nodes within the packet-switched network”(claim 2)
`
`Griffin fails to disclose that its mobile terminals 100 are within
`network 203 (the only networkthePetition allegesis a
`packet-switched network). Petitioner erroneously attempts
`to save its Griffin-based argumentby rewriting the claim
`language as “an indirect connection to a packet-switched
`network.’ Pet. 49.
`
`100
`
`100 -
`
`
`
`alleged “packet-
`switched network
`Mobile
`Terminal 1
`
`
`
`100 N Mobile
`
`
`
`
`
`Mobile
`Terminal 2
`
`Terminal 3
`
`
`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) ina mannerthat
`bypasseswhat Griffin describesas its “necessary”
`circuit-switched wireless carrier network(s) 202.
`
`Y Ifit would have been obviousto bypasswireless carrier
`infrastructure 202 entirely, surely Griffin would have
`said so. Griffin does not.
`
`Y Griffin states that as between wireless carrier
`infrastructure 202 and network 203,it is only the latter
`(network 203) that is optionally eliminated. EX1005,
`4:20-21.
`
`Y 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 Elec. America, Inc.
`
`V.
`
`Uniloc 2017 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 obviousnessforclaim 2 of ‘723 patent
`
`The Board should take judicialnoticeof its findings that the
`Petition fails to establish the proposed combination of Griffin
`and Zydneydiscloses “the instant voice messageincludes one
`or morefiles attached to an audiofile” (claim 2):
`
`For the reasons given. we are not persuaded by Petitioner’s evidence
`
`that the combination of Griffin and Zydney would have taught or suggested
`
`“the instant voice message includes one or more files attached to an audio
`
`file.” as recited in claim 2. Accordingly. we conclude that Petitioner has not
`
`established a reasonable likelihood that it would prevail in showingthat
`
`independent claim 2 is unpatentable over Griffin and Zydney.
`
`(IPR2017-01800, Paper 8 at 22-23)
`
`IPR2017-01800,’723 patent, Response (Paper 16) at p. 29-33.
`
`38
`
`
`
`No prima facie obviousnessforclaim 3 of ‘723 patent
`
`The Board should take judicialnoticeof its findings in related
`matter IPR2017-01799 that the Petition fails (in presenting the
`same arguments there) to establish the proposed combination
`of Griffin and Zydney discloses “controlling a method of
`generating the instant voice message based upon the
`connectivity status of said one or morerecipient” (claim
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