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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`IPR2017-01802
`PATENT 7,535,890
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`i
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`INTRODUCTION ......................................................................................... 1
`I.
`PERSON OF ORDINARY SKILL IN THE ART ...................................... 2
`II.
`III. THE ʼ890 PATENT ....................................................................................... 2
`A.
`Effective Filing Date of the ʼ890 Patent ............................................... 2
`B.
`Overview of the ʼ890 Patent .................................................................. 4
`IV. PETITIONER FAILS TO PROVE ANY OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE ..................................... 6
`A.
`Claim Construction................................................................................ 6
`1.
`The Board Should Construe “Transmitting the Selected
`Recipients and the Instant Voice Message” as “Transmitting the
`Selected Recipients (in Response to the Selecting) and
`Separately Transmitting the Instant Voice Message” ................. 7
`The Board Should Construe “Receiving the Selected Recipients
`and the Instant Voice Message” as “Receiving the Selected
`Recipients and Separately Receiving the Instant Voice
`Message.” .................................................................................. 12
`The Board Should Construe “Delivering the Instant Voice
`Message to the Selected Recipients” as “Delivering the Instant
`Voice Message (from the Server) to (a Subset of) the Selected
`Recipients that are Determined by the Server to be Available.”
` ................................................................................................... 13
`The Board Should Construe “Storing the Instant Voice Message
`if a Selected Recipient is Unavailable” as “Storing the Instant
`Voice Message for a Selected Recipient Determined by the
`Server to be Unavailable.” ........................................................ 14
`The Board Should Construe “Temporarily Storing . . . and
`Delivering the Stored Instant Voice Message” as “Temporarily
`Storing . . . until Delivering the Stored Instant Voice Message.”
` ................................................................................................... 16
`Ground 1 Fails Because Petitioner Fails to Provide Prima Facie
`Evidence that Griffin plus Zydney Renders Obvious Claims 1, 3–6, 9,
`and 40–43. ...........................................................................................17
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`B.
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`4.
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`5.
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`2.
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`3.
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`Table of Contents
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`ii
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`1.
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`2.
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`Zydney is Materially the Same as the art Cited During
`Prosecution of the ʼ890 Patent and Therefore is Demonstrably
`Duplicative for the Purposes Relied on by Petitioner. .............. 17
`Including Zydney with Griffin Frustrates the Purpose of Griffin
`of a Server-Based Messaging Paradigm. ................................... 21
`The Combination of Griffin and Zydney is also Inoperable for
`Text-only Buddies. .................................................................... 27
`The Combination of Griffin and Zydney Is Also Inoperable
`Because it would Result in Messages Being Lost. ................... 29
`The Combination of Griffin and Zydney Would Require
`Changing the Principle of Operation of One or the Other. ....... 30
`Griffin plus Zydney Does Not Disclose or Render Obvious a
`Client “Transmitting the Selected Recipients and the Instant
`Voice Message” or a Server “Receiving the Selected Recipients
`and the Instant Voice Message.” ............................................... 31
`Griffin plus Zydney Does Not Disclose or Render Obvious a
`Server “Delivering the Instant Voice Message to the Selected
`Recipients Over the Network” and “Storing the Instant Voice
`Message if a Selected Recipient is Unavailable.” .................... 36
`Independent Claims 1 and 40 are not Obvious Over Griffin plus
`Zydney ....................................................................................... 38
`Dependent Claims 3–6, 9, and 41–43 are Not Obvious Over
`Griffin plus Zydney. .................................................................. 39
`Ground 2 Fails Because Petitioner Fails to Provide Prima Facie
`Evidence that Griffin plus Zydney and Malik Renders Obvious Claims
`2, 14, 15, 17–20, 23, 51–54, and 57. ...................................................40
`1. Malik is Cumulative with a Continuation Application Thereof
`Previously Considered by the Examiner During Prosecution. . 40
`Independent Claims 14 and 51 are not Obvious Over Griffin
`plus Zydney and Malik. ............................................................. 43
`Dependent Claims 2, 15, 17–20, 23, 52–54, and 57 are not
`Obvious Over Griffin plus Zydney and Malik. .......................... 44
`V. CONCLUSION ............................................................................................ 44
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`C.
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`2.
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`3.
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`iii
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`List of Exhibits
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`Exhibit No.
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`Description
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`Declaration of William C. Easttom II
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`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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`U.S. Pat. App. Pub. No. 2007/0112925 (Malik II)
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`2001
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`2002
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`2003
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`2004
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`iv
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`I.
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`INTRODUCTION
`Uniloc Luxembourg S.A. (“Patent Owner”) pursuant to 35 U.S.C. § 313 and
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`37 C.F.R. § 42.107(a), submits this Response to the Petition for Inter Partes Review
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`(“the Petition” or “Pet. at __”) of United States Pat. No. 7,535,890 (EX1001; “the
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`ʼ890 Patent”)
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`filed by SAMSUNG ELECTRONICS AMERICA,
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`INC.
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`(“Petitioner”).
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`The Petition fails to “specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`Rather, Petitioner uses the claim language as a blue-print to speculate (outside the
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`four corners of the cited references) various ways in which the duplicative (i.e.,
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`cumulative) references could possibly be modified and combined to atone for
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`missing limitations. Petitioner further impermissibly attempts to fill in the missing
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`limitations, at least in part, by offering interpretations that conflict with contents of
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`the duplicative references, with express language in the claims, and with
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`unambiguous constructions in the prosecution history. The Petition’s approach
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`invites reversible error and should be rejected outright.
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`1
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`II.
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`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 ’890 Patent
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`(‘POSA’) would have had at least a bachelor’s degree in computer science, computer
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`engineering, electrical engineering, or the equivalent and at least two years of
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`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 8 (citing Ex.
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`1002, ¶¶1-58.)
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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 ‘890 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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`III. THE ʼ890 PATENT
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`A. Effective Filing Date of the ʼ890 Patent
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`The ʼ890 Patent is in a family of patents including United States Patent Nos.
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`2
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`8,243,723 (the ’723 Patent); 8,724,622 (the ’622 Patent); 8,199,747 (the ’747
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`Patent); and 8,995,433 (the ’433 Patent).1 The diagram below charts how this family
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`of patents is interrelated.
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`
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`The ʼ890 Patent is titled “System and Method for Instant VoIP Messaging.”
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`The ʼ890 Patent issued from U.S. Pat. App. No. 10/740,030, filed December 18,
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`2003. The ʼ890 Patent issued May 19, 2009.
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`1 All five related patents derive from United States Patent Application No.
`10/740,030. Also referred to collectively as the ’890 Patent family.
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`3
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`B. Overview of the ʼ890 Patent
`The
`ʼ890 Patent
`recognizes
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`that
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited development of other forms of communication over such
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`networks. According to the ʼ890 Patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the telephone
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`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`including another
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`telephone
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`terminal. During
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`the
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`telephone call, voice
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`communication takes place over that communication path.” EX1001, 1:18–23.
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`The ʼ890 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
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`also known as IP telephony or Internet telephony.” Id. at 1:24–26. Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways (114) were designed to receive circuit-switched signals
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`and packetize them for transmittal over packet-switched networks, and vice versa.
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`Id. at 1:54–2:10. The conversion effected by media gateways (e.g., 114 and 118)
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`highlights the fact that packetized data carried over packet-switched networks (e.g.,
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`IP network 102) are different from and are incompatible with an audio signal carried
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`over a dedicated packet-switched circuit. Id. at 1:18–23.
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`4
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`The ʼ890 Patent further recognizes that, notwithstanding the advent of instant
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`text messages, at the time of the claimed invention there was no similarly convenient
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`analog to leaving an instant voice message (IVM) over a packet-switched network.
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`Id. at 2:11–43. Rather, “conventionally, leaving a voice message involves dialing
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`the recipient’s telephone number (often without knowing whether the recipient will
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`answer), waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” Id. at 2:15–
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`22.
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`In certain disclosed aspects, the ʼ890 Patent describes a user-accessible client
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`208 that is specially configured for IVM communication and for direct
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`communication over a packet-switched network (e.g., through an Ethernet card). Id.
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`at 12:4–5. More specifically, the ʼ890 Patent teaches that certain clients (208) are
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`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
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`speech into a digitized audio file 210 (i.e., [IVM]) stored on the IVM client 208,”
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`and “transmit[] the digitized audio file 210” as packetized data (e.g., using TCP/IP)
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`over a packet-switched network (e.g., network 204) “to the local IVM server 202.”
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`Id. at 7:65–8:1.
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`5
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`IV. PETITIONER FAILS TO PROVE ANY OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE
`The Petition presents the following grounds, which are all based on
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`obviousness theories. As Ground 1, Petitioner alleges obviousness of Claims 1, 3–
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`6, 9, and 40–43 under 35 U.S.C. § 103 over U.S. Pat. No. 8,150,922 to Chris Michael
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`Griffin et al. (EX1005; “Griffin”) in view of International Pat. App. Pub. No. WO
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`01/11824 to Herbert Zydney et al. (EX1006; “Zydney”). As Ground 2, the Petition
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`alleges obviousness of Claims 2, 14, 15, 17–20, 23, 51–54, and 57 under 35 U.S.C.
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`§ 103 over Griffin in view of Zydney and U.S. Pat. No. 7,016,978 to Dale Malik et
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`al. (EX1011; “Malik”).
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`“In an inter partes review ..., the petitioner shall have the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. §
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`316(e). Because the Petition only presents theories of obviousness, Petitioner must
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`demonstrate a that at least one of the challenged patent claims would have been
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`obvious in view of the art cited in the Petition. Petitioner “must specify where each
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`element of the claim is found in the prior art patents or printed publications relied
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`upon.” 37 C.F.R. § 42.104(b)(4). The Board should reject Grounds 1–2 because
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`Petitioner fails to meet this burden.
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`A. Claim Construction
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`Petitioner does not contend that any term from the ʼ890 patent requires an
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`explicit construction and requests that the Board adopt the broadest reasonable
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`6
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`construction consistent with the “plain and ordinary meaning” of the challenged
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`claims. Pet. at 9.
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`Patent Owner requests that the Board adopt the broadest reasonable
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`construction consistent with the ordinary and customary meaning of the challenged
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`claims and with the specification as a whole.
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`Under the broadest reasonable interpretation standard used by the Board,
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`claim terms carry their ordinary and customary meaning, as would be understood by
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`one of ordinary skill in the art in the context of the entire disclosure. See In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also Cuozzo Speed
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use in IPRs of
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`the broadest reasonable interpretation).
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`1.
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`The Board Should Construe “Transmitting the Selected
`Recipients and the Instant Voice Message” as “Transmitting
`the Selected Recipients (in Response to the Selecting) and
`Separately Transmitting the Instant Voice Message”
`Independent Claim 1 recites “a client connected to the network, the client
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`selecting one or more recipients, generating an [IVM] therefor, and transmitting the
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`selected recipients and the [IVM] therefor over the network.” EX1001, 23:58–61
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`(emphasis added). The appropriate construction for this “transmitting” limitation
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`7
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`reflects that the transmitting of the selected recipients and the IVM are done
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`separately.2
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`In order to appropriately construe the “transmitting” limitation, the Board
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`must consider the specification as a whole. See, e.g., Phillips v. AWH Corp., 415
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`F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (claims must be construed as a whole
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`consistent with the entire specification); Playtex Prods., Inc. v. Procter & Gamble
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`Co., 400 F.3d 901, 906 (Fed. Cir. 2005) (“[C]laims must be construed so as to be
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`consistent with the specification, of which they are a part”) (citation omitted).
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`The ʼ890 Patent describes systems and methods in which a user selects one or
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`more intended recipients of a message from a list provided by a server. “The IVM
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`client displays a list of one or more IVM recipients on its display, provided and
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`stored by the local IVM server . . . . The user operates the IVM client by using the
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`input device to indicate a selection of one or more IVM recipients from the list.”
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`EX1001, 7:55–61 (internal citations omitted). Once this selection is made, the “user
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`selection is transmitted to the IVM server.” Id. at 7:61. Thus, the selected recipients
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`are transmitted to the server in response to the user selecting the recipients. The
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`2 The other independent claims recite similar limitations. ʼ890 Patent, 25:21-39
`(independent Claim 14), 28:21-40 (independent Claim 40), 30:8-30 (independent
`Claim 51).
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`8
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`selected recipients are also transmitted to the server separately from (i.e., prior to)
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`recordation and transmission of the IVM to the server, as outlined below.
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`The user's selection of the recipients triggers the process by which the user
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`may record the IVM. Id. at 7:62–8:4. “Once the recording of the user’s speech is
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`finalized, IVM client 208 generates a send signal indicating that the digitized audio
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`file 210 ([IVM]) is ready to be sent to the selected recipients.” Id. at 8:5–8. The client
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`then sends the IVM to an IVM server. Id. at 8:11–12.
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`Thus, the client transmits the selected recipients and the IVM separately.
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`Indeed, throughout the ʼ890 Patent, in over 10 separate instances, the client
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`communicates the selected recipients to the server before recording and transmitting
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`the IVM. For instance, the ʼ890 Patent mentions the client transmitting the IVM
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`without regard to communication of the selected recipients.3 In each of these
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`3E.g., EX1001, 8:11-12 (“The IVM client 208 transmits the digitized audio file 210
`and the send signal to the local IVM server 202”); 9:56-58 (“The IVM client
`thereafter transmits the recorded audio file 210 ([IVM]) to IVM server 202 for
`delivery to the selected one or more IVM recipients”); 10:37-40 (“Returning the
`handset to its cradle also generates a send signal to the IVM server to transmit the
`recorded audio file ([IVM]) to the selected one or more IVM recipients”); 11:32-35
`(“Once a first buffer is full, i.e., input audio of the predetermined size is written to
`the buffer, the content of the first buffer is automatically transmitted to the IVM
`server 202 for transmission to the one or more IVM recipients”); 16: 17-21 (“The
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`9
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`instances, the transmission of the IVM takes place after, and separate from, the
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`transmission of the selected recipients. See Id.
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`Further, other claims of the ʼ890 Patent provide additional context that
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`supports a construction of the IVM and the selected recipients being transmitted,
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`received, and generally processed separately. For example, Claims 8 and 45 recite
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`buffering operations that are performed with respect to the IVM or portions thereof
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`(and not performed with respect to the selected recipients). EX1001, 25:28–35 and
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`29:1–10. It is notable that the above referenced dependent claims do not recite that
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`any buffering operations are performed with respect to the selected recipients. The
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`specification makes it clear that such buffering operations are not performed with
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`respect to the selected recipients. This is because by the time buffering operations
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`on the IVM (or portions thereof) are even possible, the selected recipients have
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`already been communicated from the client to the server. That is, the selected
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`recipients are communicated from the client to the server first, and only thereafter is
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`the IVM buffered and communicated from the client to the server.4
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`user generates the send signal when the user operates the IVM client 208 via the
`input device 218. The IVM client 208 transmits the digitized audio file 210 and the
`send signal to the global IVM server system”).
`4 For example, the specification states “[i]n the ‘intercom mode,’ instead of
`creating an audio file 210, one or more buffers (not shown) of a predetermined size
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`10
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`For at least these reasons, the Board should properly construe “transmitting
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`the selected recipients and the [IVM]” in the independent claims as “transmitting the
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`selected recipients and separately transmitting the [IVM]” (i.e., first transmitting the
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`selected recipients and then later transmitting the IVM).
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`
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`
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`are generated in the IVM client 206, 208 or local IVM server 202. The one or more
`buffers are used to automatically write successive portions of the [IVM].” EX1001,
`11:27-32. This passage makes it clear that the buffering operations are the intercom
`mode’s alternative to the record mode’s creation of the audio file. However, creation
`of the audio file does not happen until a start signal is generated, and the start signal
`is not generated until after the selected recipients are transmitted from the client to
`the server: “The user operates the IVM client 208 by using the input device 218 to
`indicate a selection of one or more IVM recipients from the list. The user selection
`is transmitted to the IVM server 202. The user selection also generates a start signal
`to the IVM client 208 that the user is ready to begin instant voice messaging
`according to the present invention. In response to the start signal, the IVM client
`(softphone) 208 listens to the input audio device 212 and records the user's speech
`into a digitized audio file 210 (i.e., [IVM]) stored on the IVM client 208.” Id. at 7:58-
`8:1 (emphases added). The buffering operations recited in the above-referenced
`dependent claims, though not challenged in the Petition, provide additional context
`that demonstrates the appropriate construction of transmitting the IVM and
`separately transmitting the selected recipients.
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`
`11
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`2.
`
`The Board Should Construe “Receiving the Selected
`Recipients and the Instant Voice Message” as “Receiving the
`Selected Recipients and Separately Receiving the Instant
`Voice Message.”
`Independent Claim 1 recites “a server connected to the network, the server
`
`receiving the selected recipients and the [IVM] therefor and delivering the [IVM] to
`
`the selected recipients over the network.” EX1001, 23:62–65 (emphasis added).5 It
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`is noted that this limitation is the server-side “receiving” analogue of the client-side
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`“transmitting” limitation discussed above. As explained above, the appropriate
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`construction for the “transmitting” limitation requires that the transmission of the
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`selected recipients and the IVM are performed separately. For analogous reasons,
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`the appropriate construction for the “receiving” limitation requires that the receiving
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`of the selected recipients and the IVM are performed separately.
`
`Independent Claim 1 further recites “the server . . . delivering the [IVM] to
`
`the selected recipients over the network . . . and the server temporarily storing the
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`[IVM] if a selected recipient is unavailable.” EX1001, 23:62–24:1. Since the claim
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`recites that the server delivers the IVM to available recipients and saves the IVM for
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`unavailable recipients, it is only logical that the server must receive the IVM for both
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`the available and unavailable recipients. Hence, the server receives all of the selected
`
`
`5The other independent claims recite similar limitations. ʼ890 Patent, 25:21-39
`(independent Claim 14), 28:21-40 (independent Claim 40), 30:8-30 (independent
`Claim 51).
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`12
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`recipients (e.g., not just the recipients that are unavailable) and the independent
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`claims should be construed accordingly to require that the server receives all of the
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`selected recipients including the selected recipients that are available and the
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`selected recipients that are unavailable.
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`3.
`
`The Board Should Construe “Delivering the Instant Voice
`Message to the Selected Recipients” as “Delivering the
`Instant Voice Message (from the Server) to (a Subset of) the
`Selected Recipients that are Determined by the Server to be
`Available.”
`As described above, the server receives from the client all of the selected
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`recipients, including both the available recipients selected by the client and the
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`unavailable recipients selected by the client. For analogous reasons to those
`
`described above, the appropriate construction for the “delivering the [IVM] to the
`
`selected recipients” limitation clearly requires that the server perform the delivering.
`
`Further, as noted above, Claim 1 recites “the server . . . delivering the [IVM]
`
`to the selected recipients . . . and temporarily storing the [IVM] if a selected recipient
`
`is unavailable.” EX1001, 23:62–24:1. Clearly, the server delivers the IVM to the
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`available selected recipients rather than the client.
`
`In order for the server to deliver the IVM to available selected recipients and
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`store the IVM for unavailable selected recipients, the server must determine which
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`of the selected recipients are available and which of the selected recipients are
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`unavailable. In other words, for the server to deliver the IVM to only a subset of the
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`13
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`received selected recipients, the server must determine which of the selected
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`recipients are available.
`
`Petitioner appears to agree that “the server . . . delivering the [IVM] to the
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`selected recipients . . . and temporarily storing . . . [if] unavailable” in the claims
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`requires a determination by the server of the availability/unavailability of each
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`selected recipient. For example, Petitioner's expert addresses the claim limitations
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`by stating “Griffin does not explicitly disclose temporarily storing a message if a
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`recipient is unavailable, as determined based on status 702 [at the server] and
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`delivering the stored message to the recipient once the recipient becomes available,
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`as determined based on 702 [at the server].” EX1002, p. 69 (emphasis added); see
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`also Pet.at 25 (“Griffin does not, however . . . would have been obvious . . . to modify
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`Griffin’s . . . status 702”).
`
`Accordingly, the independent claims should be construed to require that the
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`server, not the client, delivers the IVM to those selected recipients that are
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`determined, by the server, to be available.
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`4.
`
`The Board Should Construe “Storing the Instant Voice
`Message if a Selected Recipient is Unavailable” as “Storing
`the Instant Voice Message for a Selected Recipient
`Determined by the Server to be Unavailable.”
`For analogous reasons, the appropriate construction for the “the server . . .
`
`storing the [IVM] if a selected recipient is unavailable” as “the server . . . storing the
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`14
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`[IVM] for a selected recipient determined by the server to be unavailable.”
`
`According to Claim 1, for “the server . . . [to deliver] the [IVM] to the selected
`
`recipients. . . and temporarily stor[e] the [IVM] if a selected recipient is unavailable,”
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`(EX1001, 23:62–24:1), the server must determine which of the selected recipients
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`are available and which of the selected recipients are unavailable.
`
`Petitioner appears to agree that “the server . . . delivering the [IVM] to the
`
`selected recipients . . . and temporarily storing . . . [if] unavailable” in the claims
`
`requires a determination by the server of the availability/unavailability of each
`
`selected recipient. The statement by Petitioner's expert referenced in the preceding
`
`section that “Griffin does not explicitly disclose temporarily storing a message if a
`
`recipient is unavailable, as determined based on status 702 [at the server] and
`
`delivering the stored message to the recipient once the recipient becomes available,
`
`as determined based on 702 [at the server]” likewise applies here. EX1002, p. 69
`
`(emphasis added); see also Pet. at 25 (“Griffin does not, however . . . would have
`
`been obvious . . . to modify Griffin’s . . . status 702”).
`
`Hence, the independent claims should be construed accordingly to require that
`
`the server, not the client, stores the IVM for the selected recipients that are
`
`determined by the server to be unavailable.
`
`
`
`15
`
`

`

`5.
`
`The Board Should Construe “Temporarily Storing . . . and
`Delivering
`the Stored
`Instant Voice Message” as
`“Temporarily Storing . . . until Delivering the Stored Instant
`Voice Message.”
`Independent Claim 1 recites “the server . . . temporarily storing the [IVM] if
`
`a selected recipient is unavailable and delivering the [IVM] to the selected recipient
`
`once the selected recipient becomes available.” EX1001, 23:62–65.6 In other words,
`
`the server relatively briefly (temporarily) stores the IVM and then later delivers it.
`
`That is, the ʼ890 Patent does not describe the server delivering a copy of the IVM
`
`but rather describes, after temporarily storing the IVM, delivering the stored IVM at
`
`a later time. Noting that nothing is forever, as is known or commonly stated,
`
`“temporarily” in Claim 1 carries no meaning if construed as “anything less than
`
`forever.” In order to ascribe temporal meaning to the “temporarily storing” term at
`
`the end of Claim 1 (i.e., to interpret “temporarily”), it is appropriate to consider the
`
`temporal language directly adjacent to “temporarily” in Claim 1. Here, the sensible
`
`meaning for “temporarily” in Claim 1, based on language in the claim adjacent and
`
`following “temporarily,” is that the IVM is temporarily stored until the IVM is later
`
`delivered to the selected recipient.
`
`
`6The other independent claims recite similar limitations. ʼ890 Patent, 25:21-39
`(independent Claim 14), 28:21-40 (independent Claim 40), 30:8-30 (independent
`Claim 51).
`
`16
`
`

`

`B. Ground 1 Fails Because Petitioner Fails to Provide Prima Facie
`Evidence that Griffin plus Zydney Renders Obvious Claims 1, 3–6,
`9, and 40–43.
`The Petitioner and the Petitioner’s expert admit that:
`
`Griffin does not explicitly disclose temporarily storing a
`message if a recipient is unavailable, as determined based
`on status 702 [at the server complex 204] and delivering
`the stored message to the recipient once the recipient
`becomes available, as determined based on 702 [at the
`server complex 204].
`
`EX1002, p. 69; see also Pet. p. 25 (“Griffin does not, however . . . would have been
`
`obvious . . . to modify Griffin’s . . . status 702”).
`
`To cure the deficiencies of Griffin, Petitioner relies on Zydney which, for such
`
`purposes, is cumulative to the art cited in the application from which the ʼ890 Patent
`
`was granted.
`
`1.
`
`Zydney is Materially the Same as the art Cited During
`Prosecution of
`the
`ʼ890 Patent and Therefore
`is
`Demonstrably Duplicative for the Purposes Relied on by
`Petitioner.
`As explained above, the Petition fails to “set forth . . . [h]ow [each] construed
`
`claim is unpatentable under the statutory grounds identified [in the Petition and]
`
`specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon,” as required by 37 C.F.R. § 42.104(b)(4). See Kingston
`
`Technology Company, Inc. v. SPEX Technologies, Inc., IPR2017-00824 (Paper 8)
`
`17
`
`

`

`(PTAB August 17, 2017) (denying institution in part because “the rules require the
`
`petition to identify 'how the construed claim is unpatentable under the statutory
`
`grounds identified' and 'specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon'”). Further, of the two primary
`
`references relied upon in the Petition, Griffin and Zydney, the latter is materially the
`
`same as the art cited during prosecution of the ʼ890 Patent.
`
`All of the assertions in the Petition against the claims of the ʼ890 Patent, under
`
`Ground 1 and Ground 2, are based in part on Zydney. In other words, Petitioner relies
`
`on Zydney for the purpose of providing an allegedly missing teaching (i.e., absent
`
`from the record during prosecution of the application for the ʼ890 Patent) to allegedly
`
`invalidate each referenced claim of the ʼ890 Patent. Notwithstanding Petitioner's
`
`purpose to introduce Zydney for the missing teachings needed to support its grounds,
`
`Zydney is demonstrably duplicative for those purposes.
`
`Lines 9–12 on p. 14 of the Petition rely on an alleged teaching in Zydney,
`
`stating “it would have been obvious to a POSA at the time of the alleged invention
`
`to modify Griffin’s system/process such that terminal 100 is directly connected to
`
`network 203 in view of the teachings of Zydney.” (Emphasis added.) However, U.S.
`
`Pat. App. Pub. No 2004/0128356 (EX2003; “Bernstein”), listed on the face of the
`
`ʼ890 Patent and asserted by the Primary Examiner in rejecting the claims of the ʼ890
`
`18
`
`

`

`Patent during prosecution of the ʼ890 Patent, similarly describes the terminal directly
`
`connected to the network – just like Zydney. EX2003, ¶ 0013, Fig. 1.
`
`Lines 5–8 on p. 25 of the Petition rely on another alleged teaching in Zydney,
`
`stating “it would have been obvious to a POSA to modify Griffin’s system/process
`
`based on the teachings of Zydney so that status 702 indicates whether terminal 100
`
`is 'available' or 'unavailable' for messaging.” (Emphasis added.) However, Bernstei