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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`Case: IPR2017-01800
`U.S. Patent No. 8,243,723
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2017-01800 – Petitioner’s Reply
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. CLAIM CONSTRUCTION ........................................................................... 1
`
`A.
`
`“Node” (All Challenged Claims) ......................................................... 1
`
`B.
`
`“Instant Voice Message” (All Challenged Claims) ............................. 2
`
`1.
`
`2.
`
`The IVM Is a Message Containing Digitized Speech ............... 2
`
`“Instant” Means Capable of Being Transmitted in Real
`Time to a Recipient Device ........................................................ 5
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART ................................................................................................................ 6
`
`A.
`
`Zydney Discloses “Controlling a Method of Generating” an
`Instant Voice Message ......................................................................... 6
`
`1.
`
`2.
`
`3.
`
`Zydney and the ’723 Patent Disclose “Controlling a
`Method of Generating” an Instant Voice Message in the
`Same Way .................................................................................. 7
`
`PO Does Not Accurately Characterize Petitioner’s
`Arguments or Zydney’s Two Modes of Generating ................ 11
`
`The Board’s Reasoning in IPR2017-01257 Is Not
`Applicable Here ....................................................................... 12
`
`B.
`
`C.
`
`The Combination of Griffin and Zydney Discloses “Attaching
`One or More Files to the Audio File” ................................................ 13
`
`The Combination of Griffin and Zydney Render Obvious the
`Limitations of Claim 1 ....................................................................... 16
`
`1.
`
`2.
`
`Griffin Discloses an “Instant Voice Message” ........................ 16
`
`Griffin Discloses “Associating a Sub-Set of Nodes With
`a Client” ................................................................................... 17
`
`i
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`

`

`TABLE OF CONTENTS
`(continued)
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`Page
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`3.
`
`4.
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`Griffin Alone or in Combination with Zydney Discloses
`“Nodes Within the Packet-Switched Network,” Even If
`“Within” Requires a Direct Connection .................................. 23
`
`The Griffin-Zydney Combination Discloses Transmission
`of a List of Connectivity Statuses ............................................ 25
`
`IV. CONCLUSION ............................................................................................. 26
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`-ii-
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`Case IPR2017-01800 – Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) .......................................................................... 19
`
`Facebook, Inc. v. Uniloc USA, Inc.,
`IPR2017-01257, Paper 8 (P.T.A.B. Dec. 4, 2017) ....................................... 12, 13
`
`Hybritech Inc. v. Monoclonal Antibodies, Inc.,
`802 F.2d 1367 (Fed. Cir. 1986) .......................................................................... 19
`
`In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303 (Fed. Cir. 2011) ............................................................................ 3
`
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) .......................................................................... 24
`
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 4
`
`
`
`
`
`iii
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`LIST OF EXHIBITS1
`
`No.
`
`Description
`
`1001 U.S. Patent No. 8,199,723
`
`1002 Declaration of Dr. Zygmunt J. Haas
`
`1003 Curriculum Vitae of Dr. Zygmunt J. Haas
`
`1004
`
`File History of U.S. Patent Application No. 12/398,063
`which issued as U.S. Patent No. 8,243,723
`
`1005 U.S. Patent No. 8,150,922 (“Griffin”)
`
`1006
`
`International Published Application No. WO 01/11824A2
`(“Zydney”)
`
`1007 RESERVED
`
`1008
`
`International Published Application No. WO 02/17650A1
`
`1009
`-
`1017
`
`RESERVED
`
`1018 U.S. Patent No. 8,724,622
`
`1019
`-
`1020
`
`1021
`
`RESERVED
`
`File History of U.S. Patent Application No. 10/740,030,
`which issued as U.S. Patent No. 7,535,890
`
`1022 U.S. Patent No. 7,535,890
`
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`X
`
`
`
`
`
`
`
`X
`
`X
`
`
`
`1 Citations to non-patent publications are to the original page numbers of the
`
`publication, and citations to U.S. patents are to column:line number of the patents.
`
`iv
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`Description
`
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`No.
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`Joint Claim Construction Chart, Uniloc USA, Inc. v.
`Samsung Elecs. Am., Inc., Case No. 2:16-cv-642 (Lead
`Case) (E.D. Tex.)
`
`Harry Newton, Newton’s Telecom Dictionary (16th. ed.
`2000)
`
`John Rittinghouse, IM Instant Messaging Security (1st ed.
`2005)
`
`Dreamtech Software Team, Instant Messaging Systems:
`Cracking the Code (2002)
`
`Upkar Varshney et al., Voice over IP, Communication of
`the ACM (2002, Vol. 45, No. 1)
`
`Iain Shigeoka, Instant Messaging
`Protocols (2002)
`
`in Java: Jabber
`
`Trushar Barot & Eytan Oren, Guide to Chat Apps, TOW
`Center for Digital Journalism, Columbia University (2005)
`
`Samir Chatterjee et al., Instant Messaging and Presence
`Technologies for College Campuses, IEEE Network (Nov.
`9, 2005)
`
`Daniel Minoli & Emma Minoli, Delivering Voice Over IP
`Networks (2nd ed. 2002)
`
`Thomas Porter & Michael Gough, How to Cheat at VoIP
`Security (1st ed. 2007)
`
`Harry Newton, Newton’s Telecom Dictionary (18th. ed.
`2002)
`
`Justin Berg, The IEEE 802.11 Standardization Its History,
`Specification, Implementations and Future, George Mason
`University, Technical Report Series (2011)
`
`Wolter Lemstra & Vic Hayes, Unlicensed Innovation: The
`Case of Wi-Fi, Competition and Regulation in Network
`Industries (2008, Vol. 9, No. 2)
`
`1036 U.S. Patent Application Publication No. 2003/0039340
`
`v
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`

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` IPR2017-01800 – Petitioner’s Reply
`
`No.
`
`Description
`
`Previously
`Submitted
`
`1037
`
`International Published Application No. WO 01/24036
`
`1038 U.S. Patent No. 9,179,495
`
`1039 U.S. Patent Application Publication No. 2005/0025080
`
`1040
`
`1041
`
`1042
`
`Deposition Transcript of William C. Easttom II (August 3,
`2018)
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`1043 U.S. Patent No. 8,199,747
`
`X
`
`X
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`X
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`
`
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`vi
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) submits this reply to
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`Patent Owner’s (“PO”) Response (Paper 16, “Resp.”) concerning claims 1-3 of the
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`’723 patent (Ex. 1001). PO’s arguments should be rejected and the claims found
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`unpatentable for at least the reasons set forth in the Petition (Paper 1, “Pet.”) and
`
`accompanying exhibits, the Board’s decision to institute inter partes review (Paper
`
`8, “Dec.”), the cross-examination testimony of PO’s expert (Mr. Easttom), and the
`
`additional reasons discussed below.
`
`II. CLAIM CONSTRUCTION
`
`Consistent with its positions in the Petition, Petitioner addresses the BRI of
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`the following terms.
`
`A.
`
` “Node” (All Challenged Claims)
`
`Despite arguing for a broader construction in district court, here PO argues
`
`that “node” is a “potential recipient that is a device” (i.e., cannot be a user). (See
`
`Resp., 10-12; Ex. 1023, 6.) The Board need not decide whether the term “node”
`
`excludes users, because—as the Board recognized—Petitioner points to devices as
`
`disclosing the claimed “nodes.” (See, e.g., Pet., 19.) Thus, the Board should again
`
`reject PO’s interpretation of “node” as explicitly requiring “a device.” (Dec., 18-
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`19.)
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`
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`
`
`1
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`B.
`
`“Instant Voice Message” (All Challenged Claims)
`
`PO offers an implied construction of the term “instant voice message”
`
`(IVM) in hopes of avoiding the prior art. For the reasons discussed below,
`
`Petitioner submits that the BRI of IVM is a message containing digitized speech
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`that is capable of being transmitted in real time to a recipient device.
`
`1.
`
`The IVM Is a Message Containing Digitized Speech
`
`In addressing the prior art, PO implicitly argues that the claimed IVM is an
`
`audio file or within an audio file. For example, PO argues that neither Griffin nor
`
`Zydney discloses attaching files “to the ‘audio file itself,’” because “[c]laim 1
`
`expressly distinguishes between the ‘instant voice message’ and the ‘audio file.’”
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`(Resp., 30.) According to PO’s expert, this is because the language of claim 1
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`“requires one or more files be attached to an audio file, and not to the instant voice
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`message that is recorded in that audio file or to some other container that might
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`contain the audio file.” (Ex. 2009, ¶67.) However, the only reasonable reading of
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`the disclosure of the ’723 patent is that the term IVM refers to both the message
`
`object itself and the digitized speech (i.e., audio file) contained within the message
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`object.
`
`In particular, claim 2 of the ’723 patent states that “the instant voice message
`
`includes one or more files attached to an audio file.” (Ex. 1001, 24:17-20
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`(emphasis added).) This understanding of IVM is further evidenced by claims in
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`2
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`

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` IPR2017-01800 – Petitioner’s Reply
`
`related patents that share the same specification as the ’723 patent. See In re Katz
`
`Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011). For
`
`example, claim 13 of related U.S. Patent No. 8,199,747 recites “separating the
`
`instant voice message into an audio file and one or more files.” (Ex. 1043, 25:7-
`
`26:3.) Similarly, the claims of related U.S. Patent No. 8,724,622 (“the ’622
`
`patent”) recite “the instant voice message includes an object field including a
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`digitized audio file,” along with other field (e.g., an “action field”). (Ex. 1018,
`
`24:26-30 (emphasis added), 24:36-52.) Thus, the claims of the ’723 patent and
`
`related patents support Petitioner’s construction.
`
`This understanding corresponds with the description of a “message object”
`
`in the specification as a message that “comprises an action field, an ID field, a
`
`source field, a destination field, and an object field.” (Ex. 1001, 14:1-2; see also
`
`id., 14:2-5, 14:14-16, 14:31-32, 14:32-35.) Here, like the IVM in the claims, the
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`message object includes “a block of data being carried by the message object,
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`which may be, for example, a digitized instant voice message,” along with other
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`data associated with the IVM. (Id., 14:2-5, 14:14-16, 14:31-32, 14:32-35.) Thus,
`
`the specification further establishes that the claimed IVM is a message object that
`
`includes an audio file, among other data.
`
`PO’s position is even contradicted by its expert, Mr. Easttom, who testified
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`during his deposition regarding the ’622 patent that the claimed IVM must include
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`3
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`information in addition to the audio file in order for the disclosed system to operate
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`as described in the specification. (Ex. 1040, 107:18-109:24.) 2 For example, he
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`explained that the IVM must include information identifying the sender (the source
`
`field) and information identifying the recipient (the destination field), “or else [the
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`IVM] couldn’t get to the recipient.” (Id., 109:5-22.)
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`Mr. Easttom’s testimony also confirms that the term IVM refers to not only
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`the message object but also the “digital representation of the audio” contained
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`within the message object. (Id., 111:21-112:5.) Accordingly, in context, the
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`claimed IVM is a message object that includes an audio file containing the
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`digitized instant voice message, but it is not itself the audio file (or within the
`
`audio file).
`
`Thus, the Board should construe the claimed IVM as a message containing
`
`digitized speech (that is capable of being transmitted in real time to a recipient
`
`
`2 While Mr. Easttom’s testimony in Exhibit 1040 pertains to the ’622 patent, the
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`’723 and ’622 patents are part of the same chain of continuation patents and share
`
`the same specification. (Compare Ex. 1001 with Ex. 1018; see also Ex. 1042,
`
`18:19-19:7.) Accordingly, Mr. Easttom’s testimony related to the ’622 patent is
`
`relevant to the ’723 patent and should be considered. See Ultratec, Inc. v.
`
`CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017).
`
`4
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`device).
`
`2.
`
`“Instant” Means Capable of Being Transmitted in Real
`Time to a Recipient Device
`
`As to the “instant” aspect of the claimed IVM, PO argues that messages that
`
`are not “heard on the receiving end in real time” are not IVMs. (Resp., 28-29.) PO
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`provides no real support for this added requirement, which is: (1) contrary to the
`
`specification and claims, and (2) inconsistent with PO’s expert’s explanation of
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`instant messaging.
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`First, the specification and claims of the ’723 patent explain that a message
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`can be an IVM even if it is not received by a recipient device in real time. For
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`example, when a recipient device is not available, the specification and claims
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`explain that an IVM may be temporarily stored at a server for later delivery to the
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`recipient device. (See, e.g., Ex. 1001, 8:28-35, 9:13-17, 10:3-7, 10:48-52, 16:30-
`
`35, 17:27-30, 18:14-19, 19:1-6, 19:60-64, 24:13-16.) These portions of the ’723
`
`patent establish that IVMs transmitted to the recipient devices need not always be
`
`received in real time, much less heard in real time.
`
`PO’s argument that an IVM must be heard in real time is also at odds with
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`Mr. Easttom’s deposition testimony where he explained that “instant messaging”
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`requires the capability of immediate receipt (not actual receipt) by a device (not
`
`heard by a user). (See 1040, 25:12-22, 30:7-16, 34:4-10, 50:2-10, 97:7-20 (“Q. In
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`that particular scenario, would the message that’s temporarily stored on the server
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`5
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` IPR2017-01800 – Petitioner’s Reply
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`be an instant voice message in the context of the claims of the ’622 patent? A.
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`Yes, and the reason being is that I, as sender, have sent this right now. I just didn’t
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`know you weren’t available….That’s still an instant message.” (emphasis
`
`added)).)
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`Therefore, the Board should find that the BRI of the claimed IVM is a
`
`message containing audio data that is capable of being transmitted in real time to a
`
`recipient device.
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART
`
`For the reasons discussed below, the Board should reject PO’s arguments
`
`and find that Petitioner has proven the unpatentability of the challenged claims.
`
`A.
`
`Zydney Discloses “Controlling a Method of Generating” an
`Instant Voice Message
`
`As explained in the Petition, Zydney discloses “controlling a method of
`
`generating,” as recited in claim 3, because its disclosure of “pack-and-send” and
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`“intercom” modes is nearly identical to the only disclosed methods of generating in
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`the ’723 patent—i.e., the “record” and “intercom” modes. (Pet., 61-66.)
`
`Notwithstanding these nearly identical disclosures, PO still contends that Zydney
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`does not disclose the claimed “controlling a method of generating.” (Resp., 33-36.)
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`PO is wrong for the reasons discussed below.
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`6
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`1.
`
`Zydney and the ’723 Patent Disclose “Controlling a Method
`of Generating” an Instant Voice Message in the Same Way
`
`Claim 3 recites “controlling a method of generating the instant voice
`
`message based upon the connectivity status of said one or more recipient.” (Ex.
`
`1001, 24:24-26.) These “method[s] of generating” are explained further in
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`dependent claims 4-8. (Id., 24:27-54.) In particular, claim 4 explains that “said
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`method of generating…is selected from a group comprising a record mode and an
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`intercom mode.” (Id., 24:28-30.) Thus, the “method[s] of generating” in claim 3 at
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`least covers the “record” and “intercom” modes of generating, which are described
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`in more detail in claims 7 and 8. (Id., 24:39-45, 24:46-54.) Additionally, claim 5
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`recites that “record mode is selected as default when at least one recipient is
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`unavailable” (id., 24:31-34), and claim 6 recites that “intercom mode is selected as
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`a default when said one or more recipients are available” (id., 24:35-38).
`
`The specification of the ’723 patent describes controlling a method of
`
`generating an IVM by selecting a record mode or an intercom mode in the same
`
`way. For example, consistent with claims 5 and 6, the specification explains: “The
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`‘intercom mode’ may be designated as a default mode when an IVM recipient is
`
`on-line, while the ‘record mode’ may be designated as a default if the IVM
`
`recipient is unavailable, i.e., not on-line.” (Id., 11:55-59.) According to the
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`specification, in record mode, the voice message is recorded until a stop signal is
`
`received, after which the recorded instant voice message is transmitted. (Id., 7:49-
`
`7
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`8:22.) In intercom mode, the voice message is recorded by writing successive
`
`portions of a voice message into one or more buffers. (Id., 11:26-55.) Once a
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`buffer is full, the content of the buffer is transmitted. (Id.) In both modes, the voice
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`message is recorded using a microphone (id., 7:2-6, 8:3-7, 11:30-43) and may be
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`compressed and/or encrypted before transmission (id., 10:53-11:25, 11:61-64,
`
`12:38-44, 13:1-17). The specification does not disclose “controlling” either mode
`
`at a finer level of detail than simply selecting the mode based upon a connectivity
`
`status.
`
` Mr. Easttom’s deposition testimony confirms this understanding. (Ex. 1042,
`
`39:10, 67:15-21.) Based on his understanding of the ’723 patent, both the record
`
`and intercom modes record a voice message using a microphone. (Ex. 1042, 39:10-
`
`18, 43:23-46:6, 55:12-16; Ex. 1040, 123:14-25.) Also, in both modes the voice
`
`message may be compressed and/or encrypted before transmission. (Ex. 1042,
`
`47:21-49:20, 61:24-62:20.) Additionally, Mr. Easttom agreed that the difference
`
`between these modes is that in record mode “the entire message is recorded before
`
`it’s sent,” (id., 46:7-47:17), whereas in intercom mode the message is recorded in
`
`small portions, e.g., “buffers,” which are transmitted once they become full (id.,
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`54:11-55:11, 60:4-8, 61:8-23). Finally, he agreed that the mode used for generating
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`an IVM (e.g., intercom or record) may be based on whether the recipient is
`
`available. (Id., 63:10-65:23, 67:22-68:18.)
`
`8
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`Accordingly, based on the specification and claims of the ’723 patent and
`
`the testimony of Mr. Easttom, “controlling a method of generating the instant voice
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`message” (e.g., claim 3) in the ’723 patent encompasses selecting either a “record
`
`mode” or an “intercom mode” (e.g., claims 5 and 6), and the only difference
`
`between these two modes is that in record mode the entire voice message is
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`recorded before transmission, while in intercom mode, portions of the voice
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`message are recorded and transmitted in succession. These same two modes are
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`described in Zydney as “pack-and-send” and “intercom” modes, and the mode used
`
`depends on the connectivity status of the recipient.
`
`In particular, Zydney teaches that the software agent “permits a number of
`
`distinct modes of communication based on the status of the recipient.” (Ex. 1006,
`
`14:19-20.) As explained in the Petition, if the recipient is online, Zydney’s system
`
`can communicate in either pack-and-send mode or intercom mode, whereas if the
`
`recipient is offline, the message must be sent in pack-and-send mode. (Pet., 63-64
`
`(citing, e.g., Ex. 1006, 14:19-15:21); Ex. 1002, ¶¶188-91.) Similar to the record
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`mode in the ’723 patent, in the pack-and-send mode of Zydney the entire message
`
`is recorded before it is sent. (Ex. 1006, 11:1-3.) Likewise, the identically-named
`
`“intercom” modes operate in the same manner in the ’723 patent and Zydney—
`
`small portions of the message are recorded and transmitted piece-by-piece before
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`9
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`

`

` IPR2017-01800 – Petitioner’s Reply
`
`the message is completed.3 (Ex. 1006, 16:4-7.)
`
`Thus, the Board should find that Zydney discloses this limitation. To find
`
`otherwise would be to read out of the claims the only embodiment of “controlling a
`
`method of generating” described and claimed in the ’723 patent. Moreover, as
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`discussed in the Petition, based on Zydney’s disclosure, a POSA would have been
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`motivated to modify Griffin’s system/process to control the method of generating
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`instant voice messages based on the connectivity status of potential recipients to
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`account for situations when the potential recipient is unavailable (e.g., using a
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`mode like that disclosed by the Griffin-Zydney combination (see Pet., 15-54)) and
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`to provide alternative functionalities when the recipient is available (e.g., using a
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`mode like Zydney’s intercom mode (see Pet., 62-64)). (Pet., 62-64; Ex. 1002,
`
`¶¶193-195.)
`
`
`
`3 A POSA would have been aware of well-known techniques for recording and
`
`transmitting small portions of a voice message, including using buffers. Indeed,
`
`according to Mr. Easttom, buffers were “[v]ery, very commonly used” and referred
`
`to “small segments of memory…[that] contain things for a short period of time.”
`
`(Ex. 1042, 55:4-11; see also id., 57:25-58:11.)
`
`10
`
`

`

` IPR2017-01800 – Petitioner’s Reply
`
`2.
`
`PO Does Not Accurately Characterize Petitioner’s
`Arguments or Zydney’s Two Modes of Generating
`
`In response, PO first focuses on only one of the modes described in Zydney,
`
`stating that “‘pack and send’ has but ‘one’ unvarying process” and that “the
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`Petition identifies no teaching in Zydney for controlling how a ‘pack-and-send’
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`message is generated based upon connectivity status.” (Resp., 35.) Petitioner,
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`however, does not argue that Zydney discloses controlling how its pack-and-send
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`message is generated. Instead, Petitioner argues that the pack-and-send and
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`intercom modes are “two different modes of generating an instant voice message.”
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`(Pet. at 62-64; Ex. 1002, ¶¶188-90.)
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`PO next argues that “choosing between pack and send mode and other
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`mode(s) is not controlling how a message is generated, but rather it determines
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`how a message will be delivered.” (Resp., 35.) As Dr. Haas explained, however,
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`the pack-and-send and intercom modes affect how the message is generated. (Ex.
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`1002, ¶¶188-89.) That the two modes may also affect delivery does not change this
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`conclusion. (Id.) This point is clearly illustrated by dependent claims 7 and 8 of the
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`’723 patent, which describe the “record” and “intercom” modes. In those claims,
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`the “transmi[ssion]” and “deliver[y]” of the IVM differs between the “record” and
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`“intercom” modes (Ex. 1001, 30:27-30), but, by the express terms of the patent
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`claims, these modes are “method[s] of generating” (id., 24:39-54).
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`PO cites one sentence in Zydney in support of its argument that Zydney’s
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` IPR2017-01800 – Petitioner’s Reply
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`pack-and-send/intercom modes are ways in which a message may be delivered.
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`(Resp., 35-36 (citing Ex. 1006, 15:17-19).) But this portion of Zydney is describing
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`the choice between two delivery options for sending a pack-and-send message to
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`an offline recipient—not the choice between the pack-and-send and intercom
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`modes. (Pet., 63-64; Ex. 1002, ¶¶190-91; Ex. 1006, 15:15-19.)
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`3.
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`The Board’s Reasoning in IPR2017-01257 Is Not Applicable
`Here
`
`In a related proceeding, IPR2017-01799, the Board denied institution of a
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`claim reciting a limitation nearly identical to the one at issue here. 4 Case No.
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`IPR2017-01799, Paper 9 at 30-33, 35-36 (P.T.A.B. Feb. 6, 2018). In that
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`proceeding, the Board found the choice between Zydney’s pack-and-send and
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`intercom modes “does not change how the instant voice message is generated in
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`the pack and send mode.” IPR2017-01799, Paper 9 at 33 (emphasis altered). The
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`Board’s reasoning in that case, however, appears to be drawn from its decision
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`denying institution in a prior IPR filed by Facebook challenging the ’747 patent.
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`See Facebook, Inc. v. Uniloc USA, Inc., IPR2017-01257, Paper 8 at 20-23
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`(P.T.A.B. Dec. 4, 2017). In its Response, PO urges the Board to adopt its reasoning
`
`
`
`4 Unlike in IPR2017-01799, here PO did not challenge Petitioner’s showing that
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`this limitation was disclosed by the prior art.
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` IPR2017-01800 – Petitioner’s Reply
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`from these proceedings. (Resp., 33-36.)
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`The Board’s reasoning in these separate proceedings does not apply here
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`because the differences between Petitioner’s and Facebook’s positions are
`
`significant—they raise different grounds and positions. While Petitioner and
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`Facebook both rely on Zydney, as noted by the Board in IPR2017-01257,
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`Facebook’s petition “explicitly relies exclusively on Zydney’s ‘pack and send’
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`mode of operation as the ‘method of generating the instant voice message.’”
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`Facebook, IPR2017-01257, Paper 8 at 22. That is not the case in this proceeding
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`(or in IPR2017-01799). Here, the Petition relies on both of Zydney’s pack-and-send
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`and intercom modes as the claimed “method[s] of generating.” (Pet., 62-63; Ex.
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`1002, ¶¶188-89.)
`
`B.
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`The Combination of Griffin and Zydney Discloses “Attaching One
`or More Files to the Audio File”
`
`Claim 2 recites “the instant voice message includes one or more files
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`attached to an audio file.” As explained in the Petition and by Dr. Haas, the
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`combination of Griffin and Zydney discloses this limitation. PO’s argument in
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`response is based on an overly narrow understanding of the term “attaching,”
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`which the Board adopted in its institution decision. (Dec., 19-23.) This
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`understanding should be rejected, especially in view of Mr. Easttom’s subsequent
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`deposition testimony endorsing the true, broader meaning of “attaching.”
`
`The experts’ initial declarations reach opposite conclusions regarding
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` IPR2017-01800 – Petitioner’s Reply
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`whether Griffin’s disclosure of attaching files to its message 400 discloses
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`“attached to an audio file.” On the one hand, Dr. Haas testified that “[b]ecause a
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`speech chat message 400 includes an audio file,...a [POSA] would have understood
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`that attaching a file to the message discloses attaching a file to the audio file
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`included in the message.” (Ex. 1002, ¶179.) On the other, Mr. Easttom testified
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`that “[a]ttaching a file to the message 400 does not disclose attaching a file to an
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`audio file….” (Ex. 2009, ¶69.) During his deposition, however, Mr. Easttom
`
`provided a broader definition of “attaching” that is more in line with Dr. Haas’
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`declaration testimony. (Ex. 1040, 133:13-139:19.)
`
`In particular, Mr. Easttom testified that there are “[a]ny number of ways you
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`could [attach files],” noting that “the patent inventor was clearly saying [that] any
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`of the conventional methods” could be used. (Ex. 1040, 135:22-136:5 (referring to
`
`the portion of the ’622 patent specification that corresponds to Ex. 1001 at 13:28-
`
`33).) Elaborating on these “conventional methods,” Mr. Easttom gave two
`
`examples that he considered to be within the scope of “attaching.” First, he
`
`explained that “additional information” may be added to the attachment to identify
`
`the message to which it is attached and added to the message to identify the
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`attached file. (Id., 136:4-10.) Second, he explained that even if the two files have
`
`not been altered to include additional information, they would still be considered
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`“attached” so long as the recipient device “knows that those two documents were
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` IPR2017-01800 – Petitioner’s Reply
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`associated.” (Id., 136:16-137:13.) When asked specifically “[h]ow would you
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`attach a document to an audio file,” he answered that the system need only be
`
`aware that the two are “meant to go together.” (Id., 139:10-19.) Under this
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`interpretation, the prior art clearly discloses the “attaching” limitation.
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`For example, in Griffin, it is indisputable that a recipient terminal 100 will
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`determine that any attachment and the audio file included in message 400 go
`
`together. Specifically, attaching a file to one of Griffin’s messages 400 containing
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`audio data means the file is also attached to the audio data because the file and
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`audio data travel together in the same message to their destination, and, for that
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`reason, the destination can determine that the file and audio data are associated.
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`Indeed, as illustrated in Figure 11, Griffin explains that terminal 100 would display
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`an “attachment indicator 1104” next to a speech chat message “that indicates if
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`there is any attached content” associated with the message. (Ex. 1005, 10:53-55,
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`Fig. 11.) That the file and audio data are determined to go together is further
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`supported by the fact that Griffin explains that attachments may be part of the
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`payload of message 400, which also includes the audio data of message 400, so
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`attaching to message 400 would be understood by a POSA to be attaching to the
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`audio data in message 400. (Id., 6:50-52; see also id., 6:38-50.)
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`Zydney’s voice containers—containing an audio
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`file and having
`
`attachments—would also have been understood by a POSA to disclose attaching a
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` IPR2017-01800 – Petitioner’s Reply
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`file to an audio file for the same reasons. Moreover, it is clear that Zydney’s system
`
`recognizes that the files are meant to go together in light of Zydney’s disclosure
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`that the voice container must be unpacked before “presenting the graphical and
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`sound components.” (Ex. 1006, 19:1-7, Fig. 18; see also Resp., 32.)
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`Thus, PO’s argument that both Griffin and Zydney fail to disclose the
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`“attaching” limitation should be rejected.
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`C. The Combination of Griffin and Zydney Render Obvious the
`Limitations of Claim 1
`
`Regarding claim 1, PO attacks Petitioner’s positions by arguing: (1) Griffin
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`does not disclose an “instant voice message;” (2) Griffin does not disclose
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`“associating a sub-set of nodes” (which it argues must be devices) with a client; (3)
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`Griffin and Zydney do not disclose “within a packet-switched network,” under
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`PO’s interpretation of “within” as requiring a direct connection; and (4) Griffin
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`does not disclose transmitting the “list.” (Resp., 14-29.) These arguments fail for
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`the reasons discussed below.
`
`1.
`
`Griffin Discloses an “Instant Voice Message”
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`PO’s argument (at Resp., 27-29) that Griffin does not disclose an “instant
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`voice message,” as recited in all challenged claims, is based on a strained
`
`construction of this term, which should be rejected for the reasons discussing
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`above in Section II.B. Properly construed, there is no dispute that Griffin discloses
`
`this limitation. (See Pet., 17-18.)
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` IPR2017-01800 – Petitioner’s Reply
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`This
`
`limitation
`
`is also disclosed by Griffin under PO’s
`
`improper
`
`construction. For example, Griffin expressly discloses “real-time speech and text
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`conversations (e.g., chat threads).” (Ex. 1005, 1:10-11 (emphasis added).) In
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`response, PO argues that such a message is not “instant” because it is not instantly
`
`“heard on the receiving end in real time.” (See Resp., 28 (emphasis added).) Yet,
`
`at the same time, PO recognizes that a speech chat message in Griffin is
`
`immediately played back if the chat history display is visible on the receiving
`
`device. (Resp., 28; Ex. 2001, ¶49; Ex. 1005, 11:48-65.) If the chat history display
`
`is not visible, consistent with the disclosure of the ’723 patent (e.g., Ex. 1001,
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`8:28-35), the message is temporarily stored at the receiving device and/or server
`
`for automatic playback upon the user’s return to the chat history display (Ex. 1005,
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`11:48-64). Thus, Griffin discloses an “instant voice message,” even under PO’s
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`narrow interpretation requiring instant playback.
`
`2.
`
`Griffin Discloses “Associa