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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`IPR2017-1801
`PATENT 8,995,433
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.120
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`i
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`I.
`II.
`
`INTRODUCTION ............................................................................................ 1
`THE ’433 PATENT DESCRIBES INSTANT VOICE
`MESSAGING OVER A PACKET-SWITCHED NETWORK. ................ 2
`A.
`Effective Filing Date of the ’433 Patent ............................................... 2
`B.
`Overview of the Technology Protected by the ’433 Patent .................. 3
`C.
`Claims 1, 6, and 9 of the ’433 Patent Are in Independent Format. ...... 5
`III. PERSON OF ORDINARY SKILL IN THE ART ...................................... 6
`IV. PETITIONER FAILS TO PROVE ANY OF THE
`CHALLENGED CLAIMS 1–5, 7–12, 14–17, 25, OR 26 IS
`UNPATENTABLE. ....................................................................................... 7
`A.
`There Was No Motivation to Combine Zydney with Griffin. ............... 8
`1.
`Petitioner Does Not Establish a Prima Facie Case that Griffin
`Discloses an “Instant Voice Message.” ...................................... 8
`Griffin Does Not Teach Real Time Communication. ................. 9
`Petitioner’s Suggestion to Combine Griffin and Zydney Is
`Improper, Unworkable, and Is Incompatible with Zydney. ...... 14
`Griffin Does Not Teach Instant Voice Messaging Over a Packet
`Switched Network as Required by All Challenged Claims. ............... 20
`Petitioner Fails to Make a Prima Facie Showing that Zydney or Griffin
`Describes Attaching One or More Files to an Audio File................... 24
`1.
`Neither Griffin nor Zydney Attach a File to an Audio File. ...... 24
`2.
`Zydney Teaches Away from “Wherein the Instant Voice
`Message Application Attaches One or More Files to the Instant
`Voice Message.” ....................................................................... 31
`Petitioner Shows No Motivation to Combine Griffin and
`Zydney, Nor How such a Combination Could Work. ............... 32
`D. No Prima Facie Showing of an “Instant Voice Message Is
`Represented by a Database Record Including a Unique Identifier.” .. 34
`1.
`Clark and Griffin Lack a Database Record in a Message
`Database, where That Database Record Includes Both a Unique
`Identifier and an Instant Voice Message. .................................. 34
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`2.
`3.
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`3.
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`Table of Contents
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`ii
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`B.
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`C.
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`V.
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`
`Exhibit No.
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`2001
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`2002
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`2003
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`2.
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`Petitioner Shows No Motivation to Combine Griffin with Clark
`to Devise a Database Record That Included a Unique Identifier.
` ................................................................................................... 37
`Neither Griffin nor Clark Disclose a File Manager System Storing,
`Retrieving, and Deleting the Instant Voice Message. ......................... 39
`CONCLUSION .............................................................................................. 43
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`E.
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`List of Exhibits
`Description
`
`Declaration of William C. Easttom II
`
`Invalidity Contentions Submitted on December 16, 2016 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America’s, Inc., Case No. 2:16-cv-642
`U.S. Pat. App. Pub. No. 2004/0128356 (“Bernstein”)
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`iii
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`II.
`
`INTRODUCTION
`Patent Owner, Uniloc Luxembourg S.A., submits this Owner’s Response to
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`Petitioner Samsung Electronics America, Inc.’s Petition for Inter Partes Review
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`(“Petition” or “Pet. at _”) of United States Patent No. 8,995,433 B2 (“the ’433
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`Patent” or “EX1001”) challenging Claims 1-5, 7-12, 14-17, 25, and 26 for
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`obviousness.
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`The Petition should be denied in its entirety. Petitioner fails to meet its burden
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`of proving that even one challenged claim is unpatentable. Specifically, the Petition
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`fails to satisfy the All Elements Rule and also fails to show that even one challenged
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`claim would have been obvious in view of the asserted references when the claimed
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`subject matter is taken as a whole at the time the application was filed.
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`1
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`III. THE ’433 PATENT DESCRIBES INSTANT VOICE MESSAGING
`OVER A PACKET-SWITCHED NETWORK.
`A. Effective Filing Date of the ’433 Patent
`
`The ’433 Patent is in a family of patents including United States Patent Nos.
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`8,199,747 (the ’747 Patent); 7,535,890 (the ’890 Patent); 8,243,723 (the ’723
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`Patent); and 8,724,622 (the ’622 Patent). The diagram below charts how this
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`family of patents is interrelated.
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`The ’433 Patent is titled “System and Method for Instant VoIP Messaging.”
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`The ’433 Patent issued March 31, 2015 from United States Patent Application
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`2
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`No. 14/224,125, which is a Continuation of Application No. 13/546,673, filed on
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`Jul. 11, 2012, now Pat. No. 8,724,622, which is a Continuation of Application No.
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`12/398,063, filed on Mar. 4, 2009, now Pat. No. 8,243,723, which is a Continuation
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`of Application No. 10/740,030, filed on Dec. 18, 2003, now Pat. No. 7,535,890.
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`B. Overview of the Technology Protected by the ’433 Patent
`
`The Abstract of the ’433 Patent provides an overview of the technical
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`disclosure:
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`Methods, systems and programs for instant voice messaging over
`a packet-switched network are provided. A method for instant voice
`messaging may comprise 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.
`EX1001, Abstract.
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`Conventional circuit-switched communications enabled traditional telephony
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`yet had a variety of technical disadvantages that limited developing other forms of
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`communication over such networks. According to the ʼ433 Patent, “[c]ircuit
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`switching provides a communication path (i.e., dedicated circuit) for a telephone call
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`from the telephone terminal to another device . . . over the [public switched telephone
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`3
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`network or] PSTN, including another telephone terminal. During the telephone call,
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`voice communication takes place over that communication path.” EX1001, 1:30–35.
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`The ʼ433 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks at least in that the latter routes packetized digital
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`information, such as “Voice over Internet Protocol (i.e., ‘VoIP’), also known as IP
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`telephony or Internet telephony.” Id. at 1:36–38. Because legacy circuit-switched
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`devices were unable to communicate directly over packet-switched networks, media
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`gateways were designed to receive circuit-switched signals and packetize them for
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`transmittal over packet-switched networks, and vice versa. Id. at 2:9–22. The
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`conversion effected by media gateways highlights the fact that packetized data
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`carried over packet-switched networks is different from and incompatible with an
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`audio signal carried over a dedicated circuit-switched network. Id. The ʼ433 Patent
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`explains that, notwithstanding the advent of instant text messages, at the time of the
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`claimed invention there was no similarly convenient analog to leaving an instant
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`voice message over a packet-switched network. Id. at 2:35–48. Rather,
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`“[c]onventionally, leaving a voice message involves dialing the recipient’s telephone
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`number (often without knowing whether the recipient will answer), waiting for the
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`connection to be established, speaking to an operator or navigating through a menu
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`of options, listening to a greeting message, and recording the message for later
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`4
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`pickup by the recipient. In that message, the user must typically identify himself or
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`herself in order for the recipient to return the call.” Id. at 2:27– 34.
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`The ʼ433 Patent describes a user-accessible client configured for instant voice
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`message and for direct communication over a packet-switched network (e.g.,
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`through an Ethernet card). Id. at 12:13–16. Certain clients are specially configured
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`to “listen[] to the input audio device 212,” “record[] the user’s speech into a digitized
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`audio file 210 (i.e., instant voice message) stored on the IVM client 208,” and
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`“transmit[] the digitized audio file 210” as packetized data (e.g., using TCP/IP) over
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`a packet-switched network (e.g., network 204) “to the local IVM server 202.” Id. at
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`8:12–26, Fig. 2.
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`C. Claims 1, 6, and 9 of the ’433 Patent Are in Independent Format.
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`Independent Claims 1, 6, and 9 recite systems for transmitting instant voice
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`messages over a packet-switched network:
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`1. A system comprising:
`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
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`5
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`retrieving the instant voice messages from the message database in
`response to a user request.
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`EX1001, 23:65 to 24:15.
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`6. A system comprising:
`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 file
`manager system performing at least one of storing, deleting and
`retrieving the instant voice messages from a message database in
`response to a user request; and
`wherein the instant voice messaging application includes a
`compression/decompression system for compressing the instant voice
`messages to be transmitted over the packet-switched network and
`decompressing the instant voice messages received over the packet-
`switched network.
`
`EX1001, 24:33–51.
`
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`9. A system, comprising:
`an instant voice messaging application comprising:
`a client platform system for generating an instant voice message;
`a messaging system for transmitting the instant voice message
`over a packet-switched network, and wherein the instant voice message
`application attaches one or more files to the instant voice message.
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`EX1001, 24:60–67.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
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`Petitioner alleges through its declarant, Zygmunt J. Haas, that a “person of
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`ordinary skill in the art at the time of the alleged invention of the ’433 Patent
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`(“POSA”) would have had at least a bachelor’s degree in computer science,
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`computer engineering, electrical engineering, or the equivalent and at least two years
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`of experience in the relevant field, e.g., network communication systems. More
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`education can substitute for practical experience and vice versa.” Pet. at 9 (citing Ex.
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`1002, ¶¶15-16.).
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`Uniloc’s declarant, Chuck Easttom, testified that a person of ordinary skill in
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`the art is “someone with a baccalaureate degree related to computer technology and
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`2 years of experience with network communications technology, or 4 years of
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`experience without a baccalaureate degree.” EX2001 ¶ 16.
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`As shown by his declaration and attached curriculum vitae, Mr. Easttom’s
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`qualifications and experience exceed those of the hypothetical person having
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`ordinary skill in the art defined above. Nevertheless, his analysis and opinions
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`regarding the ‘723 Patent have been based on the perspective of a person of ordinary
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`skill in the art as of December 2003. Id.
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`V. PETITIONER FAILS TO PROVE ANY OF THE CHALLENGED
`CLAIMS 1–5, 7–12, 14–17, 25, OR 26 IS UNPATENTABLE
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`“In an inter partes review ..., the petitioner shall have the burden of proving a
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`
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`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. §
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`316(e). Because IPR2017-1801 only presents theories of obviousness, Petitioner
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`must demonstrate a that at least one of the challenged patent claims would have been
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`obvious to a person having ordinary skill in the art (“PHOSITA”) most pertinent to
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`the claimed subject matter as a whole at the time the application was filed in view
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`of the art cited in the Petition. Petitioner fails to meet this burden. The Petition
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`should, therefore, be denied.
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`
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`A. There Was No Motivation to Combine Zydney with Griffin
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`Griffin does not disclose an instant voice message, does not disclose
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`communication over a packet-switch network, and cannot be combined with Zydney
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`without losing Zydney’s primary purpose.
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`1.
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`Petitioner Does Not Establish a Prima Facie Case that Griffin
`Discloses an “Instant Voice Message.”
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`Petitioner relies on the argument that the user interface patent to Griffin
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`discloses an “instant voice message.” (Pet. pp. 9–10). That argument is
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`unsupportable, and Petitioner fails to support it. Petitioner also ignores the contrary
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`import of Griffin, which is amply illustrated by significant passages in Griffin that
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`contradict Petitioner’s suggestion. For at least these reasons, as shown below,
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`Petitioner fails to establish a prima facie case that Griffin discloses an “instant voice
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`message,” as recited by all the challenged Claims 1–5, 7–12, 14–17, 25, or 26.
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`The Griffin user interface patent is not as Petitioner asserts “a system for
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`exchanging speech (i.e., voice) chat messages in real time between wireless mobile
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`terminals . . . .”. Pet. p. 9. Rather, Griffin is a user interface patent for “displaying
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`and interacting with speech and text group chat threads.” Griffin, 1:62–65. The
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`distinction is important because Griffin is concerned with the details of how to
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`8
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`manage “a plurality of chat threads in a single chat history on a limited display.” Id.
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`at 1:65–67. The Griffin user interface patent focuses on building “dynamic and static
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`buddy-lists, as well as a technique to incorporate user friendly and small screen
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`friendly nicknames that better enable users to identify and interact with users.” Id.
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`at 1:67–2:6. Griffin is unrelated to exchanging speech chat messages in real time.
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`Nonetheless, Petitioner argues that Griffin’s “disclosed method is ‘for instant
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`messaging’” because: (1) a voice message is “transmitted in ‘real-time,’” EX1002,
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`¶ 81; (2) “real-time speech chat messaging is consistent with how instant voice
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`messaging is described in the specification of the ʼ433 Patent,” EX1002, ¶ 82; and,
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`(3) terminals are “presented with information regarding the availability of other
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`terminals.” EX1002, ¶ 83. These arguments do not follow from Griffin; instead, they
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`ignore the disclosure in Griffin or misrepresent it.
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`2.
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`Griffin Does Not Teach Real Time Communication.
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`Petitioner’s first flawed argument is that Griffin discloses an instant voice
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`message simply because a message is “transmitted in ‘real-time.’” EX1002, ¶ 81.
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`Petitioner is mistaken. EX2001, ¶ 33.
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`Transmission in real time is not communication in real time. Real-time
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`communication requires the capability for receipt in real time. Petitioner does not
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`account for when the message is actually received. Moreover, Petitioner does not
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`show that there is any support in Griffin for real-time transmission.
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`Petitioner’s expert cites Griffin’s recitals of capturing speech, a passing
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`reference to “speech and text messages” or “voice message,” a “buddy list,” and
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`“recording and “transmitting.” EX1002, ¶ 81. Petitioner relies solely on these
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`recitations to argue that Griffin shows instant voice messaging. Pet. pp. 21–22.
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`Petitioner’s argument fails. The one and only mention of “real-time” in the entirety
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`of the Griffin user interface patent is in the general Technical Field, which recites:
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`“a novel technique of managing the display of a plurality of real-time speech and
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`text conversations (e.g., chat threads) on limited display areas.” Griffin, 1:9–11.
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`EX2001, ¶34.
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`The passages in Griffin on which Petitioner relies demonstrate only that a
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`message is sent, not when. Griffin, 11:48–67. Griffin does not disclose any detail
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`about how or why any such conversations might be communicated in real-time.
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`Moreover, Griffin teaches away from real-time communication. As shown below,
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`Griffin explicitly addresses communicating when the recipient is not available for
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`real-time communication.
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`Griffin expressly contradicts Petitioner’s position that Griffin discloses an
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`“instant voice message.” Communication in Griffin is not instant. EX2001, ¶ 35.
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`Griffin teaches a system that has no knowledge of, or interest in, and no way to know
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`whether a recipient is positioned to hear a message. EX2001, ¶ 35. Griffin is
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`interested only in whether a terminal is configured to be able to receive a message
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`10
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`at some arbitrary point in the future.
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`Griffin is a user interface patent, it is about managing a display of various
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`group chat messages. EX1005, Abstract (“A single content region in a chat history
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`display is used to display entries representative of . . . all chat histories for all of chat
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`threads currently engaged in by a given mobile terminal.”). One aspect of this
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`interface is the use of a “buddy’s presence status” to identify terminals that are able
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`to receive a message. EX1005, 8:47–52, Fig. 9. Griffin uses a “presence manager to
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`establish” this status. Id. at 5:9–15, Fig. 7 (internal citations omitted). As examples
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`of “status,” Griffin lists “Available,” “Off,” and “TextOnly.” Id. at Fig. 7.
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`These statuses in Griffin indicate only that a terminal may be configured to
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`receive a message at some point in the future. A message may not actually be
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`delivered to a terminal even when the terminal is “Available.” EX1005, 5:9–22,
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`6:56–7:1, 11:48–67. Griffin describes a message broadcaster determining “the status
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`of the target by locating the target’s identifier in a presence record.” Id. at 6:62–7:1
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`(internal citations omitted). Then, for “each available target (i.e., where the presence
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`record indicates that the recipient can receive the message type), the broadcast
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`manager[] composes an inbound chat message.” Id. (internal citations omitted)
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`(underling added). The broadcast manager prepares a chat message only for
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`“Available” terminals. Id. But even after composing the inbound chat message for
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`an “Available” terminal, however, the message still may not be delivered: “It should
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`11
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`be noted, that if an inbound speech message arrives while the chat history display is
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`not visible to the user, the received speech is queued up.” Id. at 11:48–50. Thus, even
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`if a terminal is listed as “Available,” the terminal still may not receive the message.
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`Petitioner’s misplaced reliance on this “presence status” to argue that Griffin
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`“includes terminals 100 that are presented with information regarding the
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`availability of other terminals 100 for messaging and facilitates the real-time (i.e.,
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`immediate) transmission of speech chat messages between available terminals”
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`distorts the teaching of Griffin. EX1002, ¶ 83. Nowhere, for example, does Petitioner
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`reference Griffin’s failure to deliver a message even when the terminal is
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`“Available.” Id. Griffin expressly contradicts Petitioner’s position. No PHOSITA
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`would have understood Griffin to disclose an “instant voice message.” EX2001, ¶
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`36.
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`a)
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`Griffin Discloses Text Messages Not Instant Voice
`Messages.
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`Petitioner argues that because Griffin’s “real-time speech chat messaging is
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`consistent with how instant voice messaging is described in the specification of the
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`ʼ433 Patent,” then it somehow naturally follows that Griffin discloses an instant
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`voice message. EX1002, ¶ 82 (underling added). Petitioner is mistaken.
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`Every passage of Griffin that Petitioner relies on is directed explicitly toward
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`text messaging. Id. Petitioner does not cite to any part of Griffin that describes instant
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`voice messaging. Thus, even if it were true that Griffin is “consistent with” these
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`passages in the ʼ433 Patent, Petitioner has not established how this somehow results
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`in Griffin disclosing an “instant voice message,” which it does not. EX2001, ¶ 37.
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`b)
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`“Push-to-Talk” Does Not Disclose an Instant Voice
`Message.
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`In addition to relying on flawed arguments, Petitioner also relies on flawed
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`evidence. Throughout the Petition, Petitioner relies on a connotation of “push-to-
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`talk” that is applicable today but was not applicable in 2003. Pet. at pp. 10, 16, 35,
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`61. EX2001, ¶ 38. When the 2017 application for Griffin was filed, a PHOSITA
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`would have recognized “push-to-talk” as technology that enables a mobile device to
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`operate as a half-duplex radio similar to a walkie-talkie. EX2001, ¶ 38. This half-
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`duplex communication allows a user device to transmit or receive a message, but not
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`both at the same time.
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`When Griffin was filed, “push-to-talk” was used by radio operators in, for
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`instance, the Citizens Band. EX2001, ¶ 38. Push-to-talk over cellular did not begin
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`to be formalized until 2006, when the Open Mobile Alliance opened its Request for
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`Comments No. 4354. https://tools.ietf.org/html/rfc4354 (last accessed Oct. 20,
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`2017). Every mention of push-to-talk in Griffin refers to that half-duplex, radio-
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`based communication method. No PHOSITA would equate such a method with the
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`claimed “instant voice message.” EX2001, ¶ 38.
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`13
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`But even if “push-to-talk” could be stretched to cover an “instant voice
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`message,” the communication in Griffin did not take place “over a packet-switched
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`network,” as recited in the challenged claims. In 2003, all such communication was
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`made over circuit-switched networks. EX2001, ¶ 39.
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`3.
`
`Petitioner’s Suggestion to Combine Griffin and Zydney Is
`Improper, Unworkable, and Is Incompatible with Zydney.
`
`As shown, a PHOSITA would recognize that the proposed combination of
`
`Griffin with Zydney would not work. The features of Griffin cannot be substituted
`
`for the features of Zydney because they are incompatible. Moreover, if the
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`combination were to be attempted, the result would vitiate the primary purpose of
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`Zydney. EX2001, ¶ 52.
`
`a) The Combination of Griffin and Zydney Would Render
`Zydney Inoperable for Its Intended Purpose.
`Petitioner relies on a hypothetical combination of Griffin and Zydney as
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`disclosing each of the independent claims. Pet. at 15–66. But as shown above, Griffin
`
`has nothing to do with whether the terminal can receive a message at the instant it
`
`was sent. The message is prepared based on a terminal’s technical ability to receive
`
`the message at some arbitrary point in the future. The message is only delivered if
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`the user has the “chat history display” visible. EX1005, 11:48–67. This is not
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`14
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`“instant” communication. EX2001, ¶¶ 33, 37.1
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`By contrast, Zydney relies on peer-to-peer communication of its “voice
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`containers.” EX1006, 15:33–34. This peer-to-peer communication occurs only when
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`both the transmitting and receiving devices are online and capable of transmitting
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`and receiving at the time of communication. EX1006, 15:33–34. For this to work,
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`Zydney requires a transmitting device to know that the receiving device is available
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`at the time of communication. Indeed, the stated purpose of Zydney is to route voice
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`containers “to the appropriate recipients instantaneously.” EX1006, at 1 (Summary
`
`of the Invention). Griffin’s inability to provide the sending device with the
`
`
`1 Petitioner attempts to wave away these deficiencies in Griffin by arguing that
`Griffin “does not, however, provide additional details regarding what precisely
`current status 702 indicates.” Pet. at 31. That statement is disingenuous. Griffin
`shows: (1) assigning “Available” as “current status 702”; (2) creating inbound chat
`messages only for an “Available” target; and (3) not delivering those messages to an
`“Available” target if the terminal isn’t displaying the proper window. See EX1005,
`5:9–22 describing Fig. 7 (“recipients’ current status 702 (i.e., an indicator of whether
`the recipient is ready to receive the particular type of message, speech and/or text
`messages only, etc.”)); 6:56–7:1 (“For each available target (i.e., where the presence
`record indicates that the recipient can receive the message type 401), the broadcast
`manager 303, composes an inbound chat message 500.”); 11:48–67 (“if an inbound
`speech message arrives while the chat history display is not visible to the user, the
`received speech is queued up.”).
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`15
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`appropriate information about the receiving device is incompatible with the technical
`
`assumptions underlying Zydney’s entire function, which is to communicate
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`instantaneously.
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`Including Griffin in the system described by Zydney would frustrate, if not
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`eliminate, the purpose of Zydney. EX2001, ¶ 54. While Petitioner proposes several
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`grounds for combining Griffin and Zydney, none addresses the fundamental
`
`incompatibility (Griffin’s indifference toward a recipient’s immediate availability).
`
`Petitioner’s grounds all rely on a fundamental misunderstanding—because the
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`“connectivity status” in Griffin and Zydney mean entirely different things. Pet. at 37
`
`(Petitioner’s suggestions for motivations to combine Griffin and Zydney). Zydney
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`requires status to include “the core states of whether the recipient is online or
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`offline.” EX1006, 14 (underlining added). Griffin doesn’t know and doesn’t care
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`whether a recipient is actually online (i.e., whether the recipient currently has the
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`chat history displayed). EX2001, ¶ 54.
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`A PHOSITA would not be motivated to combine Griffin and Zydney. Griffin
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`would have to be substantially changed, which would require time and expense,
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`before it could be compatible with Zydney. MPEP §2143 (If a proposed modification
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`amounts to extra work and greater expense for no apparent reason, there is no prima
`
`facie obviousness.). Where, as here, the features of one reference cannot be
`
`substituted into the structure of a second reference, there is no prima facie
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`obviousness. Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
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`1983) (“The fact that features of one reference cannot be substituted into the
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`structure of a second reference may indicate that the claims were nonobvious in view
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`of the combined teachings of the two references.”).
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`A proposed modification that changes the principle of operation of the
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`reference being modified cannot render the challenged claims prima facie obvious.
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`See In re Ratti, 270 F.2d 810, 813 (C.C.P.A. 1959) (“The teaching of the Chinnery
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`et al. patent points away from the addition of any spring element [and nothing in]
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`the disclosure of Jepson’s coffee maker gasket . . . suggest[s] that any part of it has
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`applicability to shaft seals. The two arts are at least somewhat remote from each
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`other even if they both involve sealing.”). IPR2017-1801 should be denied.
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`b) The Combination of Griffin and Zydney Would Result
`in Zydney’s Messages Being Lost.
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`As explained above, Griffin is uninterested in when a message is actually
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`delivered, also Griffin makes available only the most recent message. Griffin states:
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`“In a current implementation, the most recently received speech message (or at least
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`that portion that will fit in available memory) [is] queued at the receiving terminal.”
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`EX1005, 11:50–53. A PHOSITA would understand this to mean that only the most
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`recently received speech message (or portion thereof) is queued at the receiving
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`terminal. EX2001, ¶ 56. Also, as explained above, Zydney is concerned with routing
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`all messages “to the appropriate recipients instantaneously or stored for later
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`delivery.” EX1006, 1:20–22. EX2001, ¶ 42. If Griffin were to be combined with
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`Zydney in the manner suggested by Petitioner, then all messages other than the most
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`recent message would be lost. EX2001, ¶ 56. That would be unacceptable because
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`Zydney stores messages that cannot be heard immediately.
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`Petitioner has failed to show that any PHOSITA would have been motived to
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`combine the user interface patent Griffin with Zydney. An IPR Petition must
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`articulate rationale that demonstrates that a PHOSITA would have a reasonable
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`expectation of success in combining the teachings of asserted references in the
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`manner contemplated by the Petitioner. See In re Rinehart, 531 F.2d 1048, 1053–
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`1054 (C.C.P.A. 1976) (Markey, C.J.) (When it is proposed to combine two
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`references to get a result that “neither is capable” of alone, there is no prima facie
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`obviousness.).
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`c) The Combination of Griffin and Zydney is Inoperable
`for Text-only Buddies.
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`Griffin supports text-only buddies that lack speech messaging capability.
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`EX2001, ¶¶ 53, 59. For example, in FIG. 7 of Griffin, buddy “JaneT” has a status
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`702 of “TextOnly,” indicating that JaneT cannot successfully receive/play a speech
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`message. This status is important, because it prevents a speech message from being
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`erroneously sent to JaneT: “message broadcaster 303, upon receiving the outbound
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`chat message 400, first compiles a list of target recipients . . . . For each target, the
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`message broadcaster 303, determines the status 702 of the target . . . . For each
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`available target (i.e., where the presence record indicates that the recipient can
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`receive the message type 401), the broadcast manager 303, composes an inbound
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`chat message 500.” EX1005, 6:56–7:1 (emphases added); EX2001, ¶ 53.
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`Petitioner’s suggestion to replace Griffin’s status 702 with availability/
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`unavailability as understood by Zydney would result in an inoperable system, at least
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`for text-only buddies. EX2001, ¶ 53. A Text-only buddy connected to the server
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`complex 204 would be considered “available” as understood by Zydney simply by
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`virtue of having an Internet connection (e.g., that enables communication with the
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`server complex 2042) and would therefore be available for selection as a recipient of
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`a speech message. Id. However, Griffin does not disclose or even contemplate, what
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`would happen if a text-only buddy were to be selected to receive a speech message.
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`Id. Petitioner has failed to address a glaring flaw in the posited combination of
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`Griffin and Zydney. 3 Id.
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`Even a single text-only buddy is enough to destroy any proposed rationale for
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`combining Griffin and Zydney. No PHOSITA would intentionally design a
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`
`2 See fn. 14, supra.
`3 See fn.15, supra.
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`system/process that is inoperable (e.g., has erroneous behavior), no matter how
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`unlikely the inoperable use case is. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
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`1984) (finding no prima facie obviousness because resulting modification “would
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`be rendered inoperable for its intended purpose” and therefore the reference “teaches
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`away”); In re Sponnoble, 405 F.2d 578, 587 (C.C.P.A. 1969) (holding claims are not
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`obvious where a proposed combination produces a seemingly inoperative device).
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`Moreover, “[a]n obviousness determination requires finding both ‘that a
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`skilled artisan would have been motivated to combine the teachings of the prior
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`art . . . and that the skilled artisan would have had a reasonable expectation of
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`success in doing so.’” In re Stepan Co., Case No. 2016-1811 (Fed. Cir. Aug. 25,
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`2017), slip op. at 5 (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
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`F.3d 1359, 1367–68 (Fed. Cir. 2016)) (emphasis added). Here, not only is there no
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`reasonable expectation of success, but there is an express indication that the
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`combination will fail, at least for text-only buddies.
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`Thus, the Petition should be denied in its entirety at least because Petitioner’s
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`proposed combination of Griffin and Zydney is inoperable.
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`B. Griffin Does Not Teach Instant Voice Messaging Over a Packet
`Switched Network as Required by All Challenged Claims.
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`The ’433 Patent describes and claims de