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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
`
`
`
`Case: IPR2017-01801
`U.S. Patent No. 8,995,433
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2017-01801 – Petitioner’s Reply
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. CLAIM CONSTRUCTION ........................................................................... 1
`
`A.
`
`“Instant Voice Message” (All Challenged Claims) ............................. 1
`
`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 ................................................................................................................ 7
`
`A. Griffin Discloses an “Instant Voice Message” ..................................... 7
`
`B. Griffin Discloses an Instant Voice Messaging Over a Packet
`Switched Network ................................................................................ 9
`
`C. A POSA Would Have Been Motivated to Combine Griffin and
`Zydney for the Reasons Explained in the Petition .............................. 10
`
`1.
`
`Griffin Is Compatible With Zydney ......................................... 11
`
`2. Messages Would Not Be Lost in the Combined System ......... 12
`
`3.
`
`PO’s Arguments Regarding Griffin’s Text-Only Buddies
`Are Misplaced .......................................................................... 13
`
`The Combination of Griffin and Zydney Discloses “Attaching
`One or More Files to the Instant Voice Message” ............................. 15
`
`Clark Teaches a Message Database Containing a Database
`Record With Both a Unique Identifier and the Message Itself .......... 19
`
`Clark Does Not Teach Away From the Griffin-Zydney-Clark
`Combination ....................................................................................... 21
`
`The Combination of Griffin and Clark Discloses a File Manager
`System That Can Store, Delete, and Retrieve Instant Voice
`Messages ............................................................................................ 21
`
`D.
`
`E.
`
`F.
`
`G.
`
`i
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`

`

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`IV. CONCLUSION ............................................................................................. 23
`IV. CONCLUSION ............................................................................................. 23
`
`IPR2017-01801– Petitioner’s Reply
`IPR2017-01801— Petitioner’s Reply
`
`
`
`
`
`ii
`ii
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`

`

`IPR2017-01801 – Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .................................................................... 13, 14
`
`EWP Corp. v. Reliance Universal Inc.,
`755 F.2d 898 (Fed. Cir. 1985) ............................................................................ 10
`
`Hybritech Inc. v. Monoclonal Antibodies, Inc.,
`802 F.2d 1367 (Fed. Cir. 1986) .......................................................................... 10
`
`In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303 (Fed. Cir. 2011) ............................................................................ 2
`
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 4
`
`
`
`
`
`iii
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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`LIST OF EXHIBITS1
`
`No.
`
`Description
`
`1001 U.S. Patent No. 8,995,433
`
`1002 Declaration of Dr. Zygmunt J. Haas
`
`1003 Curriculum Vitae of Dr. Zygmunt J. Haas
`
`1004
`
`File History of U.S. Patent Application No. 14/224,125,
`which issued as U.S. Patent No. 8,995,433
`
`1005 U.S. Patent No. 8,150,922 (“Griffin”)
`
`1006
`
`International Published Application No. WO01/11824A2
`(“Zydney”)
`
`1007 U.S. Patent No. 6,725,228 (“Clark”)
`
`1008 WO 02/17650A1 (“Vaananen”)
`
`1009
`-
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`RESERVED
`
`U.S. Patent Application Publication No. 2002/0101848A1
`(“Lee”)
`
`U.S. Patent Application Publication No. 2002/0146097A1
`(“Vuori”)
`
`E. Levinson, Request for Comments (RFC) 2387: The
`MIME Multipart/Related Content-type (Aug. 1998)
`
`File History of U.S. Patent Application No. 13/546,673,
`which issued as U.S. Patent No. 8,724,622
`
`1018 U.S. Patent No. 8,724,622
`
`
`
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`X
`
`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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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`No.
`
`Description
`
`Previously
`Submitted
`
`1019
`
`File History of U.S. Patent Application No. 12/398,063,
`which issued as U.S. Patent No. 8,243,723
`
`1020 U.S. Patent No. 8,243,723
`
`1021
`
`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
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`Uniloc Patent Local Rule 4-2 Proposed Construction of
`Terms, Case No. 2:16-cv-00642-JRG (Lead) (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)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
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`v
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`

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` IPR2017-01801 – Petitioner’s Reply
`
`Description
`
`Previously
`Submitted
`
`No.
`
`1034
`
`1035
`
`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)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`
`
`
`
`
`
`1036 U.S. Patent Application Publication No. 2003/0039340
`
`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
`
`vi
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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) submits this reply to
`
`Patent Owner’s (“PO’s”) Response (Paper 12, “Resp.”) concerning claims 1-5, 7-
`
`12, 14-17, 25, and 26 of the ’433 patent (Ex. 1001). PO’s arguments should be
`
`rejected and the challenged claims found unpatentable for at least the reasons set
`
`forth in the Petition (Paper 1, “Pet.”) and accompanying exhibits, the Board’s
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`decision to institute IPR (Paper 8, “Dec.”), Mr. Easttom’s cross-examination
`
`testimony, and the additional reasons discussed below. Indeed, PO’s Response
`
`copies, with only minor non-substantive edits, its already-rejected arguments from
`
`its preliminary response, and PO did not submit new testimonial evidence. Thus,
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`there is no reason for the Board to alter its initial determinations from its institution
`
`decision.
`
`II. CLAIM CONSTRUCTION
`
`Petitioner addresses the BRI of the following terms.
`
`A.
`
`“Instant Voice Message” (All Challenged Claims)
`
`As applied in the Petition, the BRI of the term “instant voice message”
`
`(IVM) is a message containing digitized speech that is capable of being transmitted
`
`in real time to a recipient device. In response, PO offers an implied construction of
`
`IVM in an attempt to avoid the prior art. In particular, PO argues (1) that the IVM
`
`is the “audio file” or is within the “audio file” and (2) that “instant” requires real
`
`time receipt. As discussed below, PO’s positions should be rejected as they are
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`1
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`

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` IPR2017-01801 – Petitioner’s Reply
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`unsupportable and introduce ambiguity.
`
`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 is within an audio file. For example, PO argues that “Neither Griffin
`
`nor Zydney Attach a File to an Audio File” (Resp., 24), even though the claims do
`
`not require attachment to an “audio file.” Rather, claim 9 requires “attach[ing] one
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`or more files to the instant voice message.” (Ex. 1001, 24:66-67.) PO argues,
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`however, that “[t]he ‘instant voice message’ claimed in all the challenged claims is
`
`recorded in the audio file and is not an encapsulating transport package.” (Resp.,
`
`30.) This implicit construction of IVM conflicts with the disclosure of the ’433
`
`patent itself, as well as claims in related patents that also recite an IVM.
`
`For example, claim 4 of the ’433 patent recites an “audio file creation
`
`system creating an audio file for the instant voice message.” (Ex. 1001, 24:24-25.)
`
`Based on this claim language, PO’s interpretation that the audio file is the claimed
`
`IVM makes no sense. Instead, the claimed IVM is a message containing audio and
`
`other data. This understanding of IVM is further evidenced by claims in related
`
`patents that share the same specification as the ’433 patent. See In re Katz
`
`Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011). For
`
`example, claim 13 of related patent 8,199,747 (“the ’747 patent”) recites
`
`“separating the instant voice message into an audio file and one or more files.”
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`2
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`

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` IPR2017-01801 – Petitioner’s Reply
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`(Ex. 1043, 25:6-26:3.) This limitation only makes sense if the IVM is a message
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`object that contains at least “an audio file and one or more files,” as recited in
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`claim 13. It would be impossible to separate the IVM into an audio file and one or
`
`more files if the IVM is the audio file (or contained within the audio file).
`
`Similarly, claim 2 of related U.S. Patent No. 8,243,723 recites “the instant voice
`
`message includes one or more files attached to an audio file.” (Ex. 1020, 24:17-20
`
`(emphasis added).) Likewise, 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
`
`digitized audio file,” an “action field,” an “identifier field,” a “source field,” and a
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`“destination field.” (Ex. 1018, 24:26-30 (emphasis added), 24:36-52.) Thus, it
`
`would be improper to construe the claimed IVM to be an audio file (or contained
`
`within the audio file). Instead, as the above claim language indicates, the IVM is a
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`message containing audio and other data.
`
`This understanding of the claimed IVM also corresponds with the
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`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.”
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`(Ex. 1001, 14:8-9; see also id., 14:9-12, 14:21-23, 14:38-39, 14:39-42.) Here, like
`
`in the claims, the object field “is a block of data being carried by the message
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`object, which may be, for example, a digitized instant voice message,” while the
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`other fields include other information associated with the IVM. (Id., 14:9-12,
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`3
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`

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` IPR2017-01801 – Petitioner’s Reply
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`14:21-23, 14:38-39, 14:39-42.) Thus, the specification further establishes that the
`
`claimed IVM is not the audio file (or within an audio file), but rather a message
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`object that includes an audio file, among other data.
`
`PO’s position is even contradicted by its expert, Mr. Easttom, who testified
`
`during his deposition regarding the ’622 patent that the claimed IVM must include
`
`information in addition to the audio file in order for the disclosed system to operate
`
`as described in the specification. (Ex. 1040, 107:18-109:24.)2 For example, he
`
`explained that the IVM must include information identifying the sender (the source
`
`field) and information identifying the recipient (the destination field), “or else [the
`
`IVM] couldn’t get to the recipient.” (Id., 109:5-22.)
`
`Mr. Easttom’s testimony also confirms that the term IVM is used to refer to
`
`not only the message object but also the “digital representation of the audio”
`
`contained within the message object. (Id., 111:21-112:5.) Accordingly, in context,
`
`
`2 While Mr. Easttom’s testimony in Exhibit 1040 pertains to the ’622 patent, the
`
`’433 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 ’433 patent and should be considered. See Ultratec, Inc. v.
`
`CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017).
`
`4
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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`the claimed IVM is a message object that includes an audio file containing the
`
`digitized instant voice message but is not itself the audio file (or within the audio
`
`file).
`
`Thus the Board should reject PO’s nonsensical construction that the claimed
`
`IVM is the audio file (or is within the audio file), and instead find that the BRI of
`
`IVM is a message containing digitized speech (that is capable of being transmitted
`
`in real time to a recipient 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 “[n]o POSITA
`
`would have understood Griffin to disclose an ‘instant voice message’” because
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`Griffin purportedly does not disclose “instant” communication. (Resp., 8-12 (citing
`
`Ex. 2001, ¶¶33-36).) According to PO, this is because “[r]eal-time communication
`
`requires the capability for receipt in real time.” (Resp., 9.) To the extent that this is
`
`an accurate interpretation, it is not significant to this dispute because Griffin
`
`explicitly discloses “real-time speech and text conversations.” (Ex. 1005, 1:7-11;
`
`see infra Section III.A.)3 Griffin also explains that its messages are automatically
`
`
`
`3 In other proceedings, PO has pressed an even more narrow interpretation of IVM
`
`that requires instant playback to the user (i.e., “heard on the receiving end in real
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`5
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`

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` IPR2017-01801 – Petitioner’s Reply
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`heard in real time if the chat history display is visible when the messages are
`
`received. (Ex. 1005, 11:48-67.)
`
`In any event, the specification and claims of the ’433 patent explain that a
`
`message can be an IVM even if it is not received by a recipient device in real time.
`
`For example, when a recipient device is not available, the specification and claims
`
`explain that an IVM may be temporarily stored at a server for later delivery to the
`
`recipient device. (See, e.g., Ex. 1001, Abstract, 8:36-43, 9:21-25, 10:11-15, 10:56-
`
`60, 16:37-42, 17:34-38, 18:21-26, 19:8-13, 19:67-20:4, 26:26-32.) Additionally,
`
`Mr. Easttom testified that “instant messaging” only requires the capability of
`
`immediate receipt (not actual receipt) by a device. (See 1040, 25:12-22, 30:7-16,
`
`34:4-10, 50:2-10, 97:7-20.) Thus, a message transmitted to a recipient device need
`
`not be received in real time in order to be an IVM.
`
`Therefore, the Board should find that the BRI of the claimed “instant voice
`
`message” is a message containing audio data that is capable of being transmitted in
`
`real time to a recipient device.
`
`
`
`
`
`
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`time”). Case No. IPR2017-01799, Paper 21 at 32 (P.T.A.B. June 11, 2018). PO has
`
`not proposed such an interpretation here.
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`6
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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART
`
`PO merely regurgitates its already-rejected arguments from its preliminary
`
`response. For the reasons below, the Board should again reject PO’s arguments and
`
`find that Petitioner has proven the unpatentability of the challenged claims to a
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`preponderance of the evidence.
`
`A. Griffin Discloses an “Instant Voice Message”
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`PO’s argument (at Resp., 8-14) that Griffin does not disclose an “instant
`
`voice message” is based on its strained construction of this term, which should be
`
`rejected for the reasons discussed above in Section II.A.2. Properly construed,
`
`there is no dispute that Griffin discloses this limitation. (Pet., 13-14.)
`
`However, Griffin discloses this limitation even under PO’s improper
`
`construction. For example, Griffin expressly discloses “real-time speech and text
`
`conversations.” (Ex. 1005, 1:10-11 (emphasis added).) PO argues that such a
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`message is not an “instant voice message” because: (1) it “may not be delivered” to
`
`an available terminal when queued (Resp., 11-12), (2) only discloses an instant text
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`message (id., 12-13), and (3) is based on “push-to-talk” (id., 13-14). None of these
`
`rationales withstand scrutiny.
`
`First, PO’s argument that “the terminal still may not receive the message”
`
`when it is queued (Resp., 11-12) is irrelevant and wrong. PO does not dispute that
`
`when the chat history display is visible Griffin’s messages are transmitted,
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`7
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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`received, and heard by a user of a terminal 100 in real time. (Ex. 1005, 11:48-67;
`
`see also IPR2017-01799, Paper 21, 32-33 (explaining Griffin’s messages are
`
`“delivered if the user has the ‘chat history display’ visible on the user interface”).)
`
`Even when the chat history display is not visible, Griffin explicitly teaches that the
`
`terminal 100 can queue a message after it is received. (Ex. 1005, 11:48-50; 11:52-
`
`53; see also Dec., 19; IPR2017-01797, Ex. 2001, ¶69 (P.T.A.B. June 11, 2018)
`
`(Mr. Easttom explaining that “[o]nce the inbound chat message 500 is received at
`
`a recipient terminal, the…message 500 is either shown in a chat history
`
`display…or queued…for later playback….”).) Finally, Griffin teaches “an
`
`alternative embodiment [in which] queuing can occur at the server complex.” (Ex.
`
`1005, 11:53-55.) These messages also qualify as IVMs because the ’433 patent
`
`describes IVMs that are temporarily stored for later delivery, which Mr. Easttom
`
`confirmed are “still…instant message[s].” (See 1040, 97:7-20; Section II.A.2.)
`
`Second, PO’s assertion that “[e]very passage of Griffin that Petitioner relies
`
`on is directed explicitly toward text messaging” is wrong and contradicted by its
`
`own argument (on the very same page) explicitly referring to Griffin’s description
`
`of “speech message[s].” (Resp., 12 (citing Ex. 1005, 11:48-50).) Petitioner
`
`thoroughly explained that Griffin’s speech chat messages are instant voice
`
`messages. (Pet., 13-14 (compiling numerous examples in Griffin).)
`
`Finally, PO’s argument that Griffin does not teach an “instant voice
`
`8
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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`message” because it contains the term “push-to-talk” ignores how that term is
`
`actually used in Griffin, and instead speculates about “walkie-talkie” technology
`
`not discussed in the challenged patents or the asserted prior art. (Resp., 13-14; Ex.
`
`2001, ¶¶38-39.) As explained in the Petition, Griffin’s terminal 100 includes a
`
`“push to talk” button that the user activates to “record and transmit a speech
`
`message,” i.e., an IVM. (Pet., 13 (citing Ex. 1005, 9:20-31, 11:42-47, 12:1-3).)
`
`This is not a “walkie-talkie.” PO’s additional argument that “push-to-talk” is
`
`circuit-switched ignores Griffin’s teaching that its messages are delivered through
`
`“packet-based” communication network 203. (Ex. 1005, 3:49-65; Dec., 20; see
`
`Section III.B.) PO’s “walkie-talkie” interpretation of “push-to-talk” is simply
`
`inapplicable to Griffin.
`
`Thus, Griffin discloses an “instant voice message” even under PO’s narrow
`
`interpretation requiring instant receipt.
`
`B. Griffin Discloses an Instant Voice Messaging Over a Packet
`Switched Network
`
`PO’s argument that Griffin fails to disclose messaging over a packet-
`
`switched network is unsustainable. (Resp., 20-24.) Griffin teaches that its speech
`
`chat messages are transmitted through “packet-based” network 203. (Pet., 17-18;
`
`Ex. 1002, ¶109.) Griffin also discloses that network 203 can be the “Internet.” (Ex.
`
`1005, 3:61-65.) The’433 patent provides the “Internet” as an example of a “packet-
`
`switched network.” (Ex. 1001, 1:39.) Thus, Griffin describes that its speech chat
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`9
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`

`

` IPR2017-01801 – Petitioner’s Reply
`
`messages are transmitted over a network that the ’433 patent itself explains is
`
`packet-switched.
`
`PO’s argument that “network 203 is not part of Griffin’s invention” is
`
`legally erroneous because “[a] reference must be considered for everything it
`
`teaches…and is not limited to the particular invention it is describing and
`
`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907
`
`(Fed. Cir. 1985). Similarly, PO’s argument that “Griffin does not describe or
`
`enable a packet-switched network” (Resp., 23) is also legally erroneous because “a
`
`patent need not teach, and preferably omits, what is well known in the art.”
`
`Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir.
`
`1986). And, as Dr. Haas testified, packet-switched networks and their method of
`
`operation were well-known. (Ex. 2001, ¶¶31-51 (citing Exs. 1024, 1027, 1031,
`
`1033-1035, 1038-1039).)
`
`Therefore, the Board should find that Griffin teaches instant voice messaging
`
`over a packet-switched network.
`
`C. A POSA Would Have Been Motivated to Combine Griffin and
`Zydney for the Reasons Explained in the Petition
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`As with its other arguments, PO adds literally nothing to its already-rejected
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`arguments that Griffin purportedly would not have been combined with Zydney.
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`(Compare POPR, 24-58, with Resp., 8-42; see Dec., 20-21.) Thus, the Board
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`should reject PO’s arguments for the same reasons provided in its institution
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` IPR2017-01801 – Petitioner’s Reply
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`decision. Additionally, these arguments do not apply to Petitioner’s challenges of
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`claims 1-3, 4, 7, and 8, which do not rely on Zydney. (Pet., 6-7.)
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`1.
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`Griffin Is Compatible With Zydney
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`PO argues that Griffin and Zydney are incompatible because “Griffin has
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`nothing to do with whether the terminal can receive a message at the instant it was
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`sent,” which PO identifies as Zydney’s purpose. (Resp., 14-17.) However, Zydney
`
`indicates that its voice containers can be transmitted either “instantaneously or
`
`stored for later delivery.” (Ex. 1006, 1; id., 13:12-18, 14:6-13, 15:19-21, 16:7-21,
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`Figs. 4, 8). Moreover, contrary to PO’s offered purpose, Mr. Easttom testified that
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`the purpose of Zydney is its voice containers, which can be transmitted
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`immediately or stored for later delivery. (Ex. 1040, 181:17-22, 182:21-24, 185:3-4,
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`185:21-22, 191:3-17.) Nevertheless even if Zydney’s purpose was instantaneous,
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`peer-to-peer communication, Griffin states that its messages are transmitted and
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`received in real-time by terminals 100. (See Section III.A.) Moreover, Griffin
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`explicitly states that its system can also operate in a peer-to-peer mode. (Ex. 1005,
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`4:18-21, 8:8-14.) Thus PO’s arguments fails.
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`Furthermore, PO’s argument regarding “Griffin’s indifference toward a
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`recipient’s immediate availability” (Resp., 16) is contrary to Griffin’s teaching of a
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`status indicator 911 in a buddy list display that is updated based on status 702 (Ex.
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`1005, 8:1-7, 15-59, Figs. 6, 9), and Mr. Easttom’s testimony that the “entire
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` IPR2017-01801 – Petitioner’s Reply
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`purpose of Griffin” is to update indications of availability in buddy lists (Ex. 1040,
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`167:10-13 (“[T]he focus of Griffin was updating these buddy list. That’s what it’s
`
`all about is giving you indication of availability and types of availability. It’s the
`
`entire purpose of Griffin.”).).
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`Accordingly, Griffin and Zydney are compatible.
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`2. Messages Would Not Be Lost in the Combined System
`
`PO argues that there would have been no motivation to combine Griffin and
`
`Zydney because, in Griffin, “only the most recently received speech message…is
`
`queued at the receiving terminal,” while “Zydney is concerned about routing all
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`messages.” (Resp., 17-18.) Griffin, however, describes delivering all messages
`
`when the chat history display is visible. (Ex. 1005, 11:48-67.) If the chat history
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`display is not visible, Griffin explains that more than one unheard speech chat
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`message may be stored at terminal 100, as Mr. Easttom acknowledged during his
`
`deposition. (Ex. 1040, 171:11-172:2.) For example, Griffin explains that terminal
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`100 will indicate that there is “at least one unheard and/or unread inbound chat
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`message 500 that has arrived at the terminal 100.” (Ex. 1005, 8:30-32 (emphasis
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`added).) As the Board recognized (Dec., 19, 21), Griffin’s discussion of “queued”
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`messages merely relates to a functionality for automatically playing back the most
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`recently received speech chat message (Ex. 1005, 11:48-67). There is no indication
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`in Griffin that removing or replacing a message in a queue results in deletion of the
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` IPR2017-01801 – Petitioner’s Reply
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`message from terminal 100.
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`3.
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`PO’s Arguments Regarding Griffin’s Text-Only Buddies
`Are Misplaced
`
`PO
`
`argues
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`that
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`“replac[ing] Griffin’s
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`status
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`702 with
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`availability/unavailability as understood by Zydney would result in an inoperable
`
`system, at least for text-only buddies,” because “[a] Text-only buddy connected to
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`the server complex 204 would be considered ‘available’…simply by virtue of
`
`having an Internet connection…and would therefore be available for selection as a
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`recipient of a speech message.” (Resp., 19-20.) This argument rewrites Petitioner’s
`
`proposed combination. Petitioner does not argue that the combination would
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`“replace” status 702, as PO contends, but rather that status 702 would “include
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`connectivity information,” such that “status 702…indicate[s] whether terminal 100
`
`is currently connected to server 204.” (Pet., 40-43; Ex. 1002, ¶¶167-76.)
`
`Additionally, as the Board recognized, Petitioner’s combination does not rely on
`
`Griffin’s text-only buddy features. (Dec., 21 n.2.)
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`Nevertheless, the inclusion of text-only buddies in the combination would
`
`not result in an inoperable system. As an initial matter, PO’s arguments are based
`
`on what the references teach separately. But it is axiomatic that the test for
`
`obviousness does not require the bodily incorporation of one reference into
`
`another. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825
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`F.3d 1373, 1380-81 (Fed. Cir. 2016). Rather, the test is what the combined
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` IPR2017-01801 – Petitioner’s Reply
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`teachings of the references would have suggested to a POSA. Id. And Petitioner
`
`has established that the combination of Griffin and Zydney would have taught that
`
`status 702 includes connectivity information that indicates whether each client 100
`
`is currently connected to server 204. (Pet., 40-43; Ex. 1002, ¶¶170-176.)
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`Moreover, if text-only buddies were incorporated into the combination,
`
`Griffin’s system would operate in the same manner. As Mr. Easttom admitted in a
`
`related proceeding, Griffin’s server operates by forwarding chat messages 500 to
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`mobile terminals 100 that are “determined by the server complex 204 as ready, i.e.
`
`online and technically capable, to receive the particular type of message.” (Case
`
`No. IPR2017-01798, Ex. 2001, ¶78 (emphasis added); see also Ex. 1005, Fig. 7.)
`
`Similarly, during his deposition, Mr. Easttom explained that the statuses 702
`
`“Available” and “TextOnly” both
`
`indicate whether
`
`the
`
`terminal 100
`
`is
`
`“connected.” (Ex. 1040, 166:25-167:9 (“[Q.] So ‘available,’ you would be
`
`connected and you can receive any type of message. ‘Text only,’ you’re connected
`
`but you can only send texts? Is that what you said? A. You can only receive texts.
`
`Q. Okay. But that’s otherwise correct, what I just stated? A. Yes.”).) In Petitioner’s
`
`proposed combination, status 702 still indicates whether a terminal 100 is
`
`connected (i.e., online) but more specifically “indicate[s] whether terminal 100 is
`
`currently connected to server 204.” (Pet., 40-43.) In such a modified system, the
`
`text-only status would indicate that the terminal 100 is connected to server 204 and
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` IPR2017-01801 – Petitioner’s Reply
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`technically capable of receiving only text messages. Thus, contrary to PO’s
`
`assertion, terminal 100 would not be considered available for selection as a
`
`recipient of a speech chat message simply by virtue of having an Internet
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`connection.
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`Thus, as it did in its institution decision, the Board should reject these
`
`arguments as “speculative” and “supported only with conclusory declaration
`
`testimony that is entitled to little or no weight.” (Dec., 21 n.2.)
`
`D. The Combination of Griffin and Zydney Discloses “Attaching One
`or More Files to the Instant Voice Message”
`
`Petitioner proposes two obviousness arguments with respect to the
`
`“attaching” limitation recited in claim 9. First, Petitioner argues that, although
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`Griffin does not expressly describe attaching files to a speech chat message, Griffin
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`does expressly describe: (1) attaching files to a text chat message and (2) that its
`
`messages could be speech. (Pet., 47-48 (citing Ex. 1005, 12:63-66; 5:42-48, 6:39-
`
`52, 7:22-25, 10:53-58, Fig. 4).) Thus, as explained in the Petition, a POSA would
`
`have recognized that Griffin’s system could have attached files to its speech chat
`
`messages in the exact same way as it attached files to its text chat messages for the
`
`same reasons and advantages. (Pet., 48 (citing Ex. 1002, ¶191).) PO failed to
`
`address this argument altogether. Therefore, based on Petitioner’s obviousness
`
`rationale based on Griffin alone, the Board should confirm its preliminary
`
`determination that this limitation would have been obvious. (Dec., 21-22.)
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` IPR2017-01801 – Petitioner’s Reply
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`Second, Petitioner further argues that Zydney’s express teaching of attaching
`
`files to its voice containers provides an additional basis for finding this limitation
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`obvious based on the combined teachings of Griffin and Zydney. (Pet., 48-50 (“It
`
`also would have been obvious to a POSA to modify Griffin’s system/process to
`
`implement such features in view of the teachings of Zydney….”).) PO’s response
`
`to this argument is that “including attachments in a voice container” does not
`
`disclose this limitation because the voice container is not a “voice message.”
`
`(Resp., 24-31.) PO’s argument fails for several reasons.
`
`First, PO’s argument is based on a flawed interpretation of the claimed
`
`“instant voice message.” As discussed in Section II.A.1, the proper construction of
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`IVM is “a message containing digitized speech that is capable of being transmitted
`
`in real time to a recipient device.” Under this construction, Zydney’s voice
`
`container is an IVM, and is undisputed that Zydney describes attaching files to the
`
`voice container. (Pet., 48-50; Ex. 1002, ¶192.)
`
`Second, even if PO were right that the claimed IVM in Zydney is the audio
`
`data contained within the voice container, this limitation would still have been
`
`obvious because attaching a file to a voice container means the file is also attached
`
`to the contents of the voice container, including the contained audio data. Indeed,
`
`based on the testimony of both Dr. Haas and Mr. Easttom, “attaching” requires
`
`only that the file and audio data travel together to their destination, such that the
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` IPR2017-01801