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 IPR2017-01801
`Patent 8,995,433 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-01801
`Patent 8,995,433 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics America, Inc. (Petitioner or “Samsung”) filed a
`Petition requesting inter partes review of claims 1−5, 7−12, 14−17, 25, and
`26 of U.S. Patent No. 8,995,433 B2 (Ex. 1001, “the ’433 patent”). Paper 1
`(“Pet.”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review of claims 1−5, 7−12, 14−17, 25, and 26 of the ’433 patent.
`
`Related Matters
`A.
`The parties indicate that the ’433 patent is involved in a multitude of
`district court cases, including Uniloc USA, Inc. v. Samsung Electronics
`America, Inc., Case No. 2-16-cv-00641-JRG (E.D. Tex.). Pet. 1−5, Paper 4,
`2. The ’433 patent also has been the subject of multiple inter partes review
`petitions (id.), and is the subject of Case IPR2017-00225 (filed by Apple
`Inc.), which we instituted on May 25, 2017.
`
`The ’433 Patent
`B.
`The ’433 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, 1:19−23. The ’433 patent acknowledges that “instant
`text messaging is [] known” in the VoIP and public switched telephone
`network (“PSTN”) environments, with its server presenting the user a “list
`of persons who are currently ‘online’ and ready to receive text messages on
`their own client terminals.” Id. at 2:35−42. In one embodiment, such as
`
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`Patent 8,995,433 B2
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`depicted in Figure 2 (reproduced below), the system of the ’433 patent
`involves an instant voice message (“IVM”) server and IVM clients. Id.
`at 7:21−22.
`
`
`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`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 7:27−49. The media gateway converts the PSTN audio
`signal to packets for transmission over a packet-switched IP network, such
`as local network 204. Id. at 7:53–56. In one embodiment, when in “record
`mode,” the user of an IVM client selects one or more IVM recipients from a
`list. Id. at 8:2−5. 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
`8:12−15. “Once the recording of the user’s speech is finalized, IVM client
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`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
`8:19−22. 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 8:25−33. “[O]nly the
`available IVM recipients, currently connected to the IVM server, will
`receive the instant voice message.” Id. at 8:36−38. 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 8:38−43.
`The ’433 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:34−37. The specification states that the “intercom
`mode” represents real-time instant voice messaging. Id. at 11:37−38. 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 11:38−41. Successive portions of the instant voice message are
`written to the one or more buffers. The content of each buffer is, as it fills,
`automatically transmitted to the IVM server for transmission to the one or
`more IVM recipients. Id. Buffering is repeated until the entire instant voice
`message has been transmitted to the IVM server. Id. at 11:46−59.
`
`Illustrative Claim
`C.
`Of the challenged claims, claim 1, 6, and 9 are independent and claim
`1 is illustrative of the subject matter.
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`4
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`Patent 8,995,433 B2
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`
`A system comprising:
`1.
`an instant voice messaging application including a client
`platform system for generating an instant voice message and a
`messaging system for transmitting the instant voice message
`over a packet-switched network via a network interface;
`wherein the instant voice messaging application displays
`a list of one or more potential recipients for the instant voice
`message;
`wherein the instant voice messaging application includes
`a message database storing the instant voice message, wherein
`the instant voice message is represented by a database record
`including a unique identifier; and
`wherein the instant voice messaging application includes
`a file manager system performing at least one of storing, deleting
`and retrieving the instant voice messages from the message
`database in response to a user request.
`
`Ex. 1001, 23:65−24:14.
`
`Asserted Prior Art and Grounds of Unpatentability
`D.
`This proceeding relies on the following prior art references:
`
`a) Griffin: U.S. Patent No. 8,150,922 B2, issued April 3, 2012, filed
`in the record as Exhibit 1005;
`
`b) Zydney: PCT App. Pub. No. WO 01/11824 A2, published
`February 15, 2001, filed in the record as Exhibit 1006;
`
`c) Clark: U.S. Patent No. US 6,725,228 B1, issued April 20, 2004,
`filed in the record as Exhibit 1007;
`
`d) Väänänen: PCT App. Pub. No. WO 02/17650 A1, published
`February, 28, 2002, filed in the record as Exhibit 1008;
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`
`e) Lee: U.S. Patent Application Pub. No. US 2002/0101848 A1,
`published on August, 1, 2002, filed in the record as Exhibit 1014;
`and
`
`f) Vuori: U.S. Patent Application Pub. No. US 2002/0146097 A1,
`published on October 10, 2002, filed in the record as Exhibit 1015.
`
`Petitioner asserts seven grounds of unpatentability as follows (Pet.
`6−7):
`
`Challenged
`Claim(s)
`1−3, 8
`
`Basis
`
`References
`
`§ 103(a)
`
`Griffin and Clark
`
`4 and 7
`
`§ 103(a)
`
`Griffin, Clark, and Zydney
`
`5
`
`§ 103(a)
`
`Griffin, Clark, and Väänänen
`
`9, 11, 14−17, 25,
`and 26
`
`§ 103(a)
`
`Griffin and Zydney
`
`12
`
`10
`
`26
`
`§ 103(a)
`
`Griffin, Zydney, and Väänänen
`
`§ 103(a)
`
`Griffin, Zydney, and Lee
`
`§ 103(a)
`
`Griffin, Zydney and Vuori
`
`Petitioner also relies on a Declaration of Dr. Zygmunt J. Haas.
`Ex. 1002 (“Haas Declaration”).
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`
`II. DISCUSSION
`Claim Construction
`E.
`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).
`Petitioner asserts that “the Board need not construe the challenged
`claims to resolve the underlying controversy.” Pet. 9−10. Patent Owner
`does not challenge this assertion. We agree that for purposes of determining
`whether to institute review, we need not construe expressly any term at this
`time.
`
`F. Overview of Asserted Prior Art
`We discuss more fully certain disclosures in the asserted references in
`
`our analysis below.
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`Patent 8,995,433 B2
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`
`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
`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.
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`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
`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
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`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.
`
`
`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.
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`Id. at 8:45−52, 8:60−9:1–5. “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.
`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.
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`
`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.
`
`
`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
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`
`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.
`
`3. Clark
`Clark, titled “System for Managing and Organizing Stored Electronic
`
`Messages,” is directed to systems for managing and organizing electronic
`messages. Ex. 1007, [54], 1:8−9. According to Clark,
`A computer-based system catalogs and retrieves electronic
`messages saved in a message store. The system automatically
`organizes each saved message into multiple folders based on the
`contents and attributes of the message, and implements improved
`methods for manually organizing messages.
`Id. at [57]. A particularly relevant embodiment in Clark is shown in
`Figure 4A, reproduced below.
`
`Figure 4A illustrates system 40A with client computer 18 implementing
`catalog server 29 and catalog database 28, and also including message
`
`14
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`client 27, message store 23, and message store server 24. Id. at 10:29−33.
`“Each message store 23 comprises a memory, file, or database structure that
`provides temporary or permanent storage for the contained messages.” Id.
`at 9:13−15. Clark describes the invention as providing catalog database 28
`(and preferably catalog server 29) to organize the contents of one or more
`message stores 23. Id. at 9:54−56. “[C]atalog database 28 and message
`store 23 may be separate from one another or may be integrated in a single
`integrated message store.” Id. at 11:1−3. In the embodiment where they are
`separate from each other, illustrated in Figure 5A (reproduced below),
`catalog database 28 may be linked to a separate external message store 23.
`Id. at 11:3−7.
`
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`Figure 5A depicts the linking between catalog database 28 and external
`message store 23, where StoreLink table 51 contains rows, each with a
`StoreId pointing to a linked message store 23, and catalog database 28
`includes MessageSummary table 52, which contains StoreMessageId 52A of
`messages in message store 23. Id. at 11:25−33. The Figure 5A embodiment
`also shows that messages 22 are stored in Message table 54 in message store
`23 and that attachments are stored in Attachment table 55 in message store
`23. Id. at 35−37.
`
`Petitioner’s Contentions
`G.
`Claims 1 and 9 are independent claims, and Petitioner asserts slightly
`different grounds for the two claims. For claim 1, Petitioner asserts
`obviousness over Griffin and Clark, and for claim 9, Petitioner asserts
`obviousness over Griffin and Zydney. In both of these grounds, Petitioner
`points to Griffin as disclosing all the independent claim limitations, except
`that it relies on the following aspects of Clark and Zydney:
`a) Clark’s disclosure of a client including a message store, catalog
`database(s), where a message record is identified by a
`“StoreMessageId;”
`b) Clark’s disclosure of a user interface that “permits a user to select a
`folder and to view and manipulate messages;” and
`c) Zydney’s disclosure of attachments to the voice container,
`including MIME standard attachment.
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`Pet. 22−23, 28, 49.1 For certain dependent claims, Petitioner relies on other
`disclosures of Zydney and Clark, or other asserted references. For example,
`for claim 4, which depends from claim 1, Petitioner relies on Zydney’s
`disclosure of an MP3 format. Id. at 35 (citing Ex. 1006, 39:16, 21:15−18).
`For claims 7, 25, and 26, Petitioner points to Zydney’s disclosure of the
`central server tracking and maintaining the status of all software agents,
`where the status indicates “whether the recipient is online or offline,” or
`whether the recipient does not want to be disturbed. Id. at 41, 58−59.
`Zydney is further relied on for the disclosure of storing messages both
`locally and centrally at the server when the recipient is not available. Id. at
`64−66.
`
`Väänänen is relied upon for its disclosure of encryption prior to
`sending a file to the recipient and decrypting the file prior to opening the
`message, in connection with dependent claims 5 and 12. Id. at 45, 68. And
`finally, Lee is relied upon for its disclosure of connecting wirelessly to the
`Internet via a conventional cellular phone telecommunication network and
`its disclosure of a WiFi network. Id. at 71−72.
`
`Petitioner proffers a second ground of unpatentability with respect to
`claim 26. Pet. 76−78. This ground is based on Vuori’s disclosure of a short
`voice messaging service center (“SVMSC”) that sends short voice messages
`immediately to the available intended recipients and that “continue[s]
`attempting to send to those not then available until they become available or
`
`
`1 The attachment aspects of Zydney also feature prominently in connection
`with claim 14, for which Petitioner argues that “attaching a file to a speech
`message creates an association between the message and the file, which
`discloses the claimed ‘link’.” Pet. 53.
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`until a time out occurs.” Id. (citing Ex. 1015 ¶ 34). 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”).
`
`H. 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 1−5, 7−12,
`14−17, 25, and 26 of the ’433 patent are unpatentable as obvious over the
`asserted references identified in Petitioner’s grounds (see supra Section
`I.D.). 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.
`24−30);
`b) Griffin’s communication does not occur over a “packet-switched
`network” (id. at 36−39);
`c) Griffin would not have been combined with Zydney (id. at 30−36);
`d) Neither Griffin nor Zydney discloses attaching a file to an “audio
`file” (id. at 40−49);
`e) Clark does not disclose a database record that includes both an
`instant voice message and a unique identifier, and there is no
`motivation to combine Griffin and Clark (id. at 50−55); and
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`f) The combination of Griffin and Clark does not disclose the recited
`“file manager system storing, retrieving, and deleting the instant
`voice message” (id. at 55−58).
`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 25–29. 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. 27–28 (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 30. 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. 32. 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.
`at 31. 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 30−31, 33–34. 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 30–34. As stated above, however,
`we do not agree that the record at this time supports Patent Owner’s
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`characterization of Griffin’s queuing disclosure as meaning that the message
`is not received at the terminal—the queuing 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.2
`With regard to the argument concerning file attachment, claim 9
`recites “wherein the instant voice message application attaches one or more
`files to the instant voice message.” For this limitation of “attach[ing] one or
`more files to the instant voice message,” Petitioner relies on Zydney’s
`disclosures of “attachment to the voice container,” such as the following:
`“Another important application of the present invention system and method
`for voice exchange and voice distribution is attaching other media to the
`voice containers.” Id. at 49 (citing Ex. 1103, 19:1−7). Patent Owner’s
`challenge to Petitioner’s showing rests on two premises: (1) that Zydney
`does not attach files to the instant voice message because Zydney’s voice
`container is not analogous to the recited “instant voice message”; and
`(2) that Zydney teaches away from attaching one or more files to the voice
`
`
`2 We also find unpersuasive the argument that Griffin and Zydney are not
`combinable for “text-only” buddy situation. Prelim. Resp. 34−36. 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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`message itself. Prelim. Resp. 40–48. We are not persuaded by any of Patent
`Owner’s arguments on the record developed at this stage of the proceeding.
`Both of these arguments are premised on an implied construction of “instant
`voice message” as encompassing only the voice message and excluding all
`else. Indeed, Patent Owner’s declarant makes a distinction between
`Zydney’s voice container and the “instant voice message” that appears to be
`rooted in characterizing the “instant voice message” as audio data only. Id.
`at 42−43 (citing Ex. 2001 ¶¶ 41−50, 54).
`This is an argument of claim construction that is underdeveloped at
`this juncture and has been presented only in connection with arguments
`distinguishing Zydney. On the present record, we do not have sufficient
`evidence or argument from either party to render even a preliminary
`construction for the term “instant voice message.” The parties will have an
`opportunity during trial to present fully claim construction briefing for the
`term “instant voice message.”
`Turning to Clark, Petitioner argues that Clark’s message store 23
`discloses a message database and that Clark’s StorageMessageId is the
`recited “unique identifier.” Pet. 22–23. Clark states: “Using the
`StoreMessageId 52A and the related StoreId 51A, catalog server 29 can
`make requests to the message store server 24 to read messages from message
`store 23.” Ex. 1007, 11:38−40 (cited in Pet. 23). Patent Owner challenges
`Petitioner’s assertions as failing to show “that a single database record in
`Clark includes both a unique identifier and an instant voice message,”
`because Clark discloses that the MessageSummary table and the Message
`table are in separate data stores. Prelim. Resp. 52. Patent Owner also argues
`that Petitioner speculates as to whether catalog database 28 and the message
`
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`store 23 could be combined, as shown in Figure 5B of Clark. Id. at 53.
`Further, based on Clark’s disclosures that the message is stored in a message
`store while the StoreMessageID is stored at the catalog, Patent Owner argues
`that Clark teaches away from including the message data in the same
`database record as the unique identifier. Id. at 53−55.
`Patent Owner’s arguments are not persuasive at this time to rebut
`Petitioner’s showing. Patent Owner’s arguments are premised on an
`interpretation of the claim language requiring that: (1) the instant voice
`message is stored in the recited database record; and (2) the message
`database includes the database record. Neither requirement is expressly
`recited in the claim language. And the record at this juncture is devoid of
`briefing of the parties’ claim construction positions for this phrase, such that
`we could determine, even preliminarily, that the scope of claim 1 includes
`these two alleged requirements. Accordingly, guided by the plain reading of
`the claim language, we find that Petitioner has proffered sufficient evidence,
`at this juncture, that Clark discloses the recited “message database” and the
`“database record including a unique identifier.”
`Finally, we address the arguments concerning the “file manager
`system performing at least one of storing, deleting and retrieving the instant
`voice messages,” as recited in claim 1. For this limitation, Petitioner relies
`on Griffin alone as disclosing, for example, “retrieving” because a displayed
`message can be selected for playback. Pet. 27 (citing, e.g., Ex. 1005,
`12:38−42). As an alternative, Petitioner also relies on various disclosures of
`Clark as disclosing adding, changing, or deleting a message. Pet. 27–29.
`For instance, Petitioner cites Clark: “Message client 27 will typically
`generate requests in response to user input such as requests to message store
`
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`sever 24 to add, change or delete a message.” Id. at 28 (citing Ex. 1007,
`18:25−29).
`Patent Owner argues that the claim language requires the sending
`device to include the message database. Prelim. Resp. 55−56. Accordingly,
`Patent Owner reasons that Griffin’s sender does not store a copy of the
`message sent, and, therefore, Griffin does not disclose “storing” as recited in
`the claim. Id. at 57. This argument, however, does not address that
`Petitioner reasonably relies on Griffin for the “retrieving” function of the file
`manager system, at the sending device. As for Petitioner’s reliance on
`Clark’s disclosures, Pa