Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 8
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` Entered: February 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01800
`Patent 8,243,723 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Partial Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`

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`IPR2017-01800
`Patent 8,243,723 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics America, Inc. (Petitioner or “Samsung”) filed a
`Petition requesting inter partes review of claims 1−3 of U.S. Patent No.
`8,243,723 B2 (Ex. 1001, “the ’723 patent”). Paper 1 (“Pet.”). Uniloc
`Luxembourg S.A. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”).
`We have authority to determine whether to institute inter partes
`review under 35 U.S.C. § 314. Upon considering the record developed thus
`far, for reasons discussed below, we institute inter partes review of claims 1
`and 3 of the ’723 patent. We deny the Petition with regard to claim 2.
`
`A. Related Matters
`The parties indicate that the ’723 patent is involved in multiple district
`court cases, including Uniloc USA, Inc. v. Samsung Electronics America,
`Inc., Case No. 2-16-cv-00641-JRG (E.D. Tex.). Pet. 1−3, Paper 4, 2. The
`’723 patent also has been the subject of multiple inter partes review
`petitions, and is the subject of Case IPR2017-00222 (filed by Apple Inc.), in
`which we instituted inter partes review on May 25, 2017.
`
`B. The ’723 Patent
`The ’723 patent relates to Internet telephony, and more particularly, to
`instant voice over IP (“VoIP”) messaging over an IP network, such as the
`Internet. Ex. 1001, 1:14−18. The ’723 patent acknowledges that “instant
`text messaging is [] known” in the VoIP and public switched telephone
`network environments, with its server presenting the user a “list of persons
`who are currently ‘online’ and ready to receive text messages on their own
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`client terminals.” Id. at 2:19, 2:30−37. In one embodiment, such as
`depicted in Figure 2 (reproduced below) the system of the ’723 patent
`involves an instant voice message (IVM) server and IVM clients. Id. at
`7:19−24.
`
`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`the local IVM server 202, where IVM client 206 is a VoIP telephone, and
`where legacy telephone 110 is connected to legacy switch 112 and further to
`media gateway 114. Id. at 7:19−41. The media gateway converts the PSTN
`audio signal to packets for transmission over a packet switched IP network,
`
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`such as local network 204. Id. at 7:45−48. In one embodiment, when in
`“record mode,” the user of an IVM client selects one or more IVM recipients
`from a list. Id. at 7:53−64. The IVM client listens to the input audio device
`and records the user’s speech into a digitized audio file at the IVM client.
`Id. at 8:1−7. “Once the recording of the user’s speech is finalized, IVM
`client 208 generates a send signal indicating that the digitized audio file 210
`(instant voice message) is ready to be sent to the selected recipients.” Id. at
`8:11−14. The IVM client transmits the digitized audio file to the local IVM
`server, which, thereafter, delivers that transmitted instant voice message to
`the selected recipients via the local IP network. Id. at 8:1−25. “[O]nly the
`available IVM recipients, currently connected to the IVM server, will
`receive the instant voice message.” Id. at 8:28−30. If a recipient “is not
`currently connected to the local IVM server 202, (i.e., is unavailable), the
`IVM server temporarily saves the instant voice message and delivers it to the
`IVM client when the IVM client connects to the local IVM server 202 (i.e.,
`is available)”. Id. at 30−35.
`The ’723 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:26−29. The specification states that the ‘“intercom
`mode’ represents real-time instant voice messaging.” Id. at 11:29−30. In
`this mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
`Id. at 11:30−33. Successive portions of the instant voice message are
`written to the one or more buffers. Id. at 11:35−43. The content of each
`such buffer is, as it fills, automatically transmitted to the IVM server for
`transmission to the one or more IVM recipients. Id. Buffering is repeated
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`until the entire instant voice message has been transmitted to the IVM
`server. Id. at 11:48−52.
`
`C. Independent Claims
`Of the challenged claims, claim 1 is independent and is reproduced
`below. Each of claims 2 and 3 depends directly from claim 1.
`1. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`monitoring a connectivity status of nodes within the packet-
`switched network, said connectivity status being available and
`unavailable;
`recording the connectivity status for each of the nodes;
`associating a sub-net of the nodes with a client;
`transmitting a signal to a client including a list of the recorded
`connectivity status for each of the nodes in the sub-set
`corresponding to the client;
`receiving an instant voice message having one or more
`recipients;
`delivering the instant voice message to the one or more recipients
`over a packet-switched network;
`temporarily storing the instant voice message if a recipient is
`unavailable; and
`delivering the stored instant voice message to the recipient once
`the recipient becomes available.
`Ex. 1001, 23:56–24:16.
`
`D. Asserted Prior Art and Grounds of Unpatentability
`This proceeding relies on the following prior art references:
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`a) Griffin: U.S. Patent No. 8,150,922 B2, issued April 3, 2012, filed
`in the record as Exhibit 1005; and
`
`b) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001, filed in the record as Exhibit 1006.
`
`Petitioner asserts one ground of unpatentability based on 35 U.S.C.
`§ 103(a) over Griffin and Zydney. Pet. 5−6. Petitioner supports its
`challenge of unpatentability with a Declaration of Dr. Zygmunt J. Haas, filed
`as Exhibit 1002 (“Haas Declaration”).
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in an inter partes review proceeding). Under the
`broadest reasonable interpretation standard, claim terms generally are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that
`only those claim terms that are in controversy need to be construed, and only
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
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`Petitioner proposes constructions for the terms “node” and “signal.”
`Pet. 24−32. Patent Owner points out alleged deficiencies in Petitioner’s
`proposed constructions, but argues that “[n]o formal claim constructions are
`necessary.” Prelim. Resp. 24–25. For purposes of determining whether to
`institute review, we need not construe expressly any term at this time.
`
`B. Overview of Asserted Prior Art
`We discuss more fully certain disclosures in the asserted references in
`
`our analysis below. A discussion of those references follows.
`
`1. Griffin
`Griffin, titled “Voice and Text Group Chat Display Management
`Techniques for Wireless Mobile Terminals,” relates to a technique of
`managing the display of “real-time speech and text conversations (e.g., chat
`threads) on limited display areas.” Ex. 1005, [54], 1:9−11. Griffin discloses
`a wireless mobile terminal as shown in Figure 1, reproduced below.
`
`
`Figure 1, above, depicts mobile terminal 100 comprising speaker 103
`(which renders signals, such as received speech, audible), display 102 (for
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`rendering text and graphical elements visible), navigation rocker 105 (which
`allows a user to navigate a list or menu displayed on the screen), microphone
`107 (for capturing the user’s speech), and push-to-talk button 101 (which
`allows the user to initiate recording and transmission of audio). Id. at
`3:14−30. Griffin also describes, in connection with Figure 2, reproduced
`below, the overall system architecture of a wireless communication system
`where the mobile terminals communicate with a chat server complex. Id. at
`3:49−51.
`
`
`
`Figure 2, above, illustrates wireless carrier infrastructures 202, which
`support wireless communications with mobile terminals 100, such that the
`mobile terminals wirelessly transmit data to a corresponding infrastructure
`202 for sending the data packets to communication network 203, which
`forwards the packets to chat server complex 204. Id. at 3:49−61.
`Communication network 203 is described as a “packet-based network,
`[which] may comprise a public network such as the Internet or World Wide
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`Web, a private network such as a corporate intranet, or some combination of
`public and private network elements.” Id. at 3:61−65.
`Griffin’s chat server complex 204 receives encoded data comprising
`text, speech, and/or graphical messages (or some combination thereof),
`when a plurality of users chat together (i.e., send chat messages from one
`terminal 100 to another). Id. at 4:11−15, 4:62−65. An outbound chat
`message, for example, is decomposed to locate the list of recipients, and the
`recipient’s current status is determined. Id. at 5:9−15. Griffin describes
`presence status 702 as “an indicator of whether the recipient is ready to
`receive the particular type of message, speech and/or text messages only,
`etc.).” Id. “When presence status 702 changes, the presence manager 302
`[of server complex 204] sends a buddy list update message 600 to all the
`subscribers listed in the subscriber identifier field 706 of the corresponding
`presence record 700.” Id. at 5:27−30.
`Griffin provides a buddy list display illustrated in Figure 9,
`reproduced below. Id. at 8:15−16.
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`Figure 9, above, depicts title bar 901, where inbound chat message
`indicator 905 is an icon accompanied by an audible sound when the icon is
`first displayed, indicating to the user that there is at least one unheard or
`unread inbound chat message that has arrived at terminal 100. Id. at
`8:17−18, 8:28−32. Left softkey 910, labeled “Select,” permits selection of a
`particular buddy for chatting, which selection is indicated with selection
`indicator 906. Id. at 8:45−52, 8:60−67, 9:1−5. “If the user pushes-to-talk,
`the display switches to the chat history, and the user is able to record and
`transmit a speech message and consequently start a new thread with the
`selected buddies.” Id. at 9:27−31.
`
`2. Zydney
`Zydney, titled “Method and System for Voice Exchange and Voice
`Distribution,” relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
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`Ex. 1006, [54], [57], 1:4–5. While acknowledging that e-mail and instant
`messaging systems were well-known text-based communication systems
`utilized by users of on-line services and that it was possible to attach files for
`the transfer of non-text formats via those systems, Zydney states that the
`latter technique “lack[ed] a method for convenient recording, storing,
`exchanging, responding and listening to voices between one or more parties,
`independent of whether or not they are logged in to their network.” Id. at
`1:7–17. Zydney, thus, describes a method in which “voice containers”—i.e.,
`“container object[s] that . . . contain[] voice data or voice data and voice data
`properties”—can be “stored, transcoded and routed to the appropriate
`recipients instantaneously or stored for later delivery.” Id. at 1:19–22, 12:6–
`8. Figure 1 of Zydney is reproduced below.
`
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`Figure 1, above, illustrates a high level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
`Referring to Figure 1, system 20 allows software agent 22, with a user
`interface, in conjunction with central server 24 to send messages using voice
`containers illustrated by transmission line 26 to another software agent 28,
`as well as to receive and store such messages, in a “pack and send” mode of
`operation. Id. at 10:20–11:1. Zydney explains that a pack and send mode of
`operation “is one in which the message is first acquired, compressed and
`then stored in a voice container 26 which is then sent to its destination(s).”
`Id. at 11:1–3. The system has the ability to store messages both locally and
`centrally at server 24 whenever the recipient is not available for a prescribed
`period of time. Id. at 11:3–6.
`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Id. at 19:6–7. Formatting the container using
`MIME format, for example, “allows non-textual messages and multipart
`message bodies attachments [sic] to be specified in the message headers.”
`Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
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`Figure 3, above, illustrates an exemplary embodiment of Zydney’s
`voice container structure, including voice data and voice data properties
`components. Id. at 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
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`
`C. Petitioner’s Contentions
`Petitioner points to Griffin as disclosing all the claim 1 limitations,
`except that it relies on three aspects of Zydney:
`a) Zydney’s disclosure of agents 22, 28 and server 24 as being
`“directly connected to a packet-switched network (e.g., Internet)”;
`b) Zydney’s disclosure of a central server tracking and maintaining
`the status of all software agents, where the server is adapted to
`detect whether an agent is on-line and off-line; and
`c) Zydney’s disclosure of storing messages both locally and centrally
`at the server when the recipient is not available for a prescribed
`period of time.
`Pet. 21, 26, 48. Petitioner also relies on both Griffin and Zydney as
`disclosing “associating a sub-set of the nodes with a client.” Id. at 32−38.
`For claim 2, Petitioner argues that Griffin does not explicitly disclose that
`the speech in the speech chat message is an audio file. Id. at 55.
`Accordingly, Petitioner relies on Zydney’s disclosure of “MP3” as the voice
`message format. Id. at 55−56 (citing Ex. 1006, 39:19). Further, Petitioner
`acknowledges that Griffin does not describe attaching one or more files to
`the audio file in a speech chat message. Id. at 58. Petitioner, thus, argues
`that it would have been obvious for a person of ordinary skill in the art to
`modify Griffin to include this feature, and alternatively, relies on Zydney’s
`disclosure of attachments to the voice container as disclosing “wherein the
`instant voice message includes one or more files attached to an audio file.”
`Id. at 58−61.
`Finally with regard to claim 3, Petitioner acknowledges that Griffin
`does not explicitly disclose controlling the method of generating a speech
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`chat message based upon a connectivity status of each recipient. Id. at 62.
`Petitioner argues, however, that it would have been obvious to a person of
`ordinary skill in the art to modify Griffin to implement this claimed feature.
`Id. Alternatively, Petitioner relies on Zydney as disclosing two modes of
`generating an instant voice message (“pack-and-send” or “intercom” mode),
`arguing that the mode is selected based on whether the recipient is “online”
`or “offline.” Id. at 62−64 (citing Ex. 1006, 11:1−3, 14:19−15:21, 16:1−7).
`We now evaluate the information in the Petition in light of Patent Owner’s
`argument and evidence. We note that Patent Owner supports its arguments
`against institution with a Declaration of William C. Easttom II. Ex. 2001
`(“Easttom Declaration”).
`
`D. Determination of Reasonable Likelihood
`We have reviewed the Petition and the evidence cited in support
`thereof and are persuaded that, at this juncture, Petitioner has established a
`reasonable likelihood of prevailing in its contention that claims 1−3 of the
`’723 patent are unpatentable as obvious over Griffin and Zydney. Patent
`Owner’s arguments presented on the current record have not persuaded us to
`the contrary. Specifically, Patent Owner has not persuaded us that the
`following arguments are supported by facts sufficient to overcome the
`evidence presented in the Petition:
`a) Griffin does not disclose “instant voice message” (Prelim. Resp.
`35−41);
`b) Griffin’s communication does not occur over a “packet-switched
`network” (id. at 38−39);
`c) Griffin would not have been combined with Zydney (id. at 42−47);
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`d) Neither Griffin nor Zydney discloses “nodes” (id. at 48−49); and
`e) No disclosure of “transmitting a signal to a client,” as recited in
`claim 1 (id. at 52−53).
`With regard to the “instant voice message” argument, Patent Owner
`focuses on whether Griffin’s disclosures are for “text messages” and
`whether speech chat messages are in “real-time.” Id. at 37−38. On this
`record, none of these arguments overcome the express disclosure in Griffin
`of “managing the display of a plurality of real-time speech and text
`conversations (e.g., chat threads) on limited display areas.” Ex. 1005,
`1:9−11 (emphasis added). Further, Griffin describes both inbound and
`outbound messages as either text or speech. Id. at 6:39−41, 11:48−50.
`Additionally, although Griffin describes “queuing” an inbound speech
`message, Griffin explains that the message is nevertheless received at the
`terminal, and the queuing is only for automatic playback. Id. at 11:50−67.
`In other words, with the evidence available, we do not agree with Patent
`Owner’s characterization of Griffin as indicating that a terminal is
`configured to “receive a message at some point in the future.” See Prelim.
`Resp. 40−41 (arguing that “available” status does not result in the terminal
`receiving the message because of “queuing”). Consequently, we are not
`persuaded by Patent Owner’s arguments that Griffin’s speech chats do not
`disclose instant voice messages.
`Further, with regard to the second argument, we have reviewed Patent
`Owner’s contention that Griffin’s “push-to-talk” feature results in Griffin’s
`speech chats occurring over a circuit-switched network, rather than over a
`packet-switched network as claimed. See id. at 38−39. This argument is not
`supported sufficiently by the present record, because as explained in the
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`summary of Griffin above, Figure 2 describes that all encoded speech
`messages are delivered through communication network 203, which may be
`the Internet. Ex. 1005, 3:49−65. Moreover, whether Griffin teaches the
`recited “packet-switched network” is an issue of fact where Patent Owner
`has proffered only testimonial evidence challenging Petitioner’s contention
`that Griffin discloses the limitation. The conflicting testimonial evidence
`has created a genuine issue of material fact that we do not resolve at this
`juncture, but instead is viewed “in the light most favorable to the petitioner
`solely for purposes of deciding whether to institute an inter partes review.”
`37 C.F.R. § 42.108(c). Consequently, Patent Owner’s arguments and
`evidence are not persuasive at this time.
`Now we address Patent Owner’s challenge to the asserted
`combinability of Griffin and Zydney. The premise of Patent Owner’s
`arguments is that the availability status in Griffin is different from the
`availability status in Zydney. Prelim. Resp. 45. According to Patent Owner,
`Zydney is a peer-to-peer system that needs to know availability in the sense
`that the receiving software agent can receive messages instantaneously. Id.
`In contrast, Patent Owner characterizes Griffin as delivering the message
`only if the user has the “chat history display” visible on the user interface,
`and even then only the most recently received speech message is available.
`Id. at 44, 47. This discrepancy, Patent Owner reasons, would render Zydney
`inoperable for its intended purpose, would not motivate a person of ordinary
`skill in the art to combine the teachings, would result in substantial,
`unexplained modifications of Griffin, and would result in Zydney’s
`messages being lost. Id. at 44−48. As stated above, however, we do not
`agree that the record at this time supports Patent Owner’s characterization of
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`Griffin’s queuing disclosure as meaning that the message is not received at
`the terminal—the queueing only affects whether the most recently received
`speech message is played automatically upon receipt. The portions of
`Griffin Patent Owner cites do not support sufficiently the arguments that the
`terminal does not receive the speech message in real-time or that only the
`last received speech message is available. Therefore, Patent Owner’s
`arguments that rest on the characterization of Griffin’s queuing as
`incompatible with Zydney are not persuasive at this time.1
`Concerning whether Griffin or Zydney teach the recited “nodes,”
`Patent Owner relies on its proposed construction of “node” as including a
`device, not merely software alone. Prelim. Resp. 48−50. Without
`determining whether a “node” necessarily includes a device, we find Patent
`Owner’s arguments unpersuasive because the software agent in Zydney and
`the potential recipients or buddies in Griffin utilize a device to operate in the
`network environments disclosed. In Zydney, for instance, the software agent
`is “adapted to work on a personal computer,” as one example. Ex. 1006, 11.
`In Griffin, the presence data records provide an identifier and a nickname for
`each user at a specific terminal address 703. Ex. 1005, Fig. 7. Accordingly,
`even if we were to agree with Patent Owner that a “node” must include a
`device, both Griffin and Zydney have been shown to include devices that
`
`
`1 We also find unpersuasive the argument that Griffin and Zydney are not
`combinable for “text-only” buddy situation. Prelim. Resp. 42−43. None of
`Petitioner’s contentions rely on “text-only” buddy features. And Griffin is
`silent as to how that feature operates, in the event of a speech chat directed
`to a text-only buddy, even without considering Zydney. Accordingly, the
`scenario that Patent Owner presents is speculative and is supported only with
`conclusory declaration testimony that is entitled to little or no weight.
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`connect to the network operating a software agent (Zydney) or identified as
`a user/buddy (Griffin).
`Concerning “transmitting a signal to the client,” Patent Owner here
`also relies on its proposed construction of “signal” to argue that the
`connectivity status in Zydney has not been shown to meet the limitation
`because the allegation is supported only by opinion evidence. Prelim. Resp.
`52−53. Patent Owner points out other statements in the Petition where the
`supporting evidence entirely relies on the Haas Declaration. Id. (arguing
`that Ex. 1002 offers a summary conclusion as to whether Zydney discloses
`transmitting a signal to a client). For purposes of this Decision, the
`argument is unpersuasive for two reasons. First, the argument does not
`address Petitioner’s reliance on the transmission of the buddy list update
`message of Griffin. Pet. 38−39 (citing Ex. 1005, 7:42−8:7, 39−45, Fig. 6).
`The Haas Declaration specifically explains that Griffin would be understood
`as teaching transmitting a signal because it is information transmitted over
`network 203. Ex. 1002 ¶ 140 (explaining further that the ’723 patent uses
`the word “signal” to refer to transmission of information in a network).
`Second, Zydney is relied upon for its disclosure of what the connectivity
`status means, not on whether it too discloses transmitting. Accordingly, at
`this time we are not persuaded by any of Patent Owner’s arguments in this
`regard.
`Finally, although we agree with Patent Owner that the Petition fails to
`demonstrate that Zydney discloses “associating a sub-set of the nodes with a
`client,”2 the Petition proffers alternative contentions that, on the present
`
`
`2 See Pet. 37−38 (arguing that “unique set of lists” is “sub-set of nodes” and
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`record, meet the institution threshold. In particular, as we have stated
`before, Zydney’s disclosure of “unique set of lists” refers to the lists of
`addresses that the central server maintains for use by the software agents as
`disclosed in Figure 8. See Prelim. Resp. 50−52. A particular software agent
`may be included in one or more of these lists, depending on its permissions,
`but Petitioner does not explain sufficiently how being listed or having access
`to a list of permissions in any way associates a particular device/software
`agent (client) with a sub-set of software agents. Nevertheless, Petitioner
`proffers that Griffin alone teaches “associating a sub-set of the nodes with a
`client” because it discloses a “buddy list” and a buddy list update message
`that shows groups of potential recipients associated with the terminal. Pet.
`33−36. Accordingly, although Patent Owner’s arguments regarding Zydney
`in this regard are persuasive, the arguments do not address Petitioner’s
`contentions relying on Griffin.
`Patent Owner does not argue claim 3 separately from claim 1. For the
`same reasons as stated regarding claim 1 and based on our review of
`Petitioner’s arguments and evidence directed to the additional limitations of
`claim 3, we determine that Petitioner has demonstrated a reasonable
`likelihood of prevailing in its contention that claims 3 is unpatentable for
`obviousness over Griffin and Zydney.
`In light of the above, and having reviewed the information proffered
`by the parties at this juncture, we determine that Petitioner has demonstrated
`a reasonable likelihood of prevailing on its contentions that claims 1 and 3
`
`
`that each software agent in the list is a potential recipient of a voice
`container sent from the originating software agent).
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`are unpatentable as obvious under the grounds asserted in the Petition and as
`identified in Section I.D. and II.C., above.
`
`E. No Reasonable Likelihood
`Claim 2 recites “wherein the instant voice message includes one or
`more files attached to an audio file.” Petitioner concedes that “Griffin does
`not explicitly describe attaching one or more files to the audio file in a
`speech chat message.” Pet. 58. Petitioner contends, however, that “[i]t
`would have been obvious to a [person of ordinary skill in the art (“POSA”)]
`at the time of the alleged invention to modify Griffin’s system/process to
`implement such features,” either “in view of the teachings of Griffin and the
`knowledge of a POSA” or “in view of the teachings of Zydney, which
`describes a software agent that operates to address, pack, and send a
`message in a voice container.” Id. at 59 (citing Ex. 1002 ¶¶ 180–181;
`Ex. 1006, 14:2–5). Petitioner argues, more particularly, that “[i]n addition to
`including a voice message recorded using a microphone in the voice
`container, Zydney discloses attaching files to the voice container,” such as by
`“using the Multipurpose Internet Mail Extension (MIME) format, which was
`a well-known and commonly used industry standard that allows attachments,
`including ‘binary, audio, and video’ files, to be specified in message
`headers.” Id. at 59−60 (citing Ex. 1006, 4:7–9, 10:20–11:3, 16:1–4, 19:1–
`20:9, 20:11–14, 21:14–16, 22:19–20, 35:15–22, Figs. 6, 16–18). Based on
`these teachings of Zydney and the knowledge of a POSA, Petitioner
`contends, “a POSA would have been motivated to modify Griffin’s
`system/process such that terminal 100 enables the attachment of one or more
`files to the audio file in a speech chat message (like described in Zydney)”
`
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`and “would have recognized that such a modification would have been
`nothing more than a straightforward combination of known technologies by
`known methods without changing their respective functions to achieve a
`predictable result, and would have been well within the capabilities of such a
`person.” Id. at 60 (citing Ex. 1002 ¶ 182).
`We are not persuaded that Petitioner has established a reasonable
`likelihood of prevailing in its contention that the combination of Griffin and
`Zydney teaches or suggests “the instant voice message includes one or more
`files attached to an audio file,” as recited in claim 2. To maintain
`consistency across proceedings, we are guided here by our analysis in the
`concurrently filed Decision on Institution concerning Case IPR2017-01799,
`concerning U.S. Patent No. 8,199,747, which is related to the ’723 patent
`and includes a claim that also recites “attaching one or more files to the
`audio file.” In short, we are not persuaded that attaching a file to a message
`is 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. The portions of
`Zydney relied upon by Petitioner teach attachment of additional files (e.g.,
`multimedia files) to its “voice container,” rather than to an audio file as
`recited in claim 2 (see Ex. 1006, 19:6–12, Fig. 16). Zydney discloses that a
`voice container may “contain[] voice data or voice data and voice data
`properties” (id. at 12:6–8) and also “has the ability to have other data types
`attached to it” (id. at 19:6). Even if we regarded Zydney’s voice data as
`being an audio file, however, we are not persuaded that Zydney’s disclosure
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`that another file may be attached to a voice container that contains such an
`audio file teaches or suggests attaching that other file to the audio file.
`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 showing that
`independent claim 2 is unpatentable over Griffin and Zyd