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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`
`
`Case: IPR2017-01802
`U.S. Patent No. 7,535,890
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2017-01802 – Petitioner’s Reply
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. CLAIM CONSTRUCTION ........................................................................... 2
`
`A.
`
`B.
`
`“Transmitting” / “Receiving” the “Selected Recipients and the
`Instant Voice Message” (Claims 1 and 40) .......................................... 2
`
`“Delivering the Instant voice Message to the Selected
`Recipients” and “Temporarily Storing the Instant Voice
`Message if a Selected Recipient is Unavailable” (Claims 1 and
`40) ......................................................................................................... 5
`
`C.
`
`“Temporarily Storing” (Claims 1, 14, 40, and 51) ............................... 6
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART ................................................................................................................ 7
`
`A. Griffin Discloses “Transmitting the Selected Recipients and the
`Instant Voice Message” and “Receiving the Selected Recipients
`and the Instant Voice Message” Under the Proper Construction. ....... 7
`
`B.
`
`The Combination of Griffin and Zydney Discloses “Delivering
`the Instant Voice Message to the Selected Recipients Over the
`Network” and “Storing the Instant Voice Message if a Selected
`Recipient is Unavailable” ..................................................................... 8
`
`C. Malik Discloses a Local/External Network Configuration. ............... 11
`
`D. A POSA Would Have Been Motivated to Combine Griffin and
`Zydney for the Reasons Explained in the Petition .............................. 13
`
`1.
`
`2.
`
`Griffin’s and Zydney’s Teachings Related to Availability
`are Compatible ......................................................................... 14
`
`PO’s Arguments Regarding Griffin’s Text-Only Buddies
`Are Misplaced .......................................................................... 17
`
`3. Messages Would Not Be Lost in the Combined System ......... 20
`
`E.
`
`PO’s Redundancy Arguments Were Already Found to be
`Unpersuasive ...................................................................................... 21
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`i
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`

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`IPR2017-01802 – Petitioner’s Reply
`IPR2017-01802 — Petitioner’s Reply
`
`IV. CONCLUSION ............................................................................................. 21
`IV. CONCLUSION ............................................................................................. 21
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`
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`
`ii
`ii
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`

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`IPR2017-01802 – Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments,
`825 F.3d 1373 (Fed. Cir. 2016) .................................................................... 15, 18
`
`Apple Inc. v. Uniloc USA, Inc.,
`No. IPR2017-00221, Paper 33 (P.T.A.B. May 23, 2018) .................................... 1
`
`Enercon GmbH v. Int’l Trade Comm’n,
`151 F.3d 1376 (Fed. Cir. 1998) ............................................................................ 3
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ............................................................................ 3
`
`In re Merck & Co.,
`800 F.2d 1091 (Fed. Cir. 1986) ............................................................................ 8
`
`SuperGuide Corp. v. DirecTV Enters., Inc.,
`358 F.3d 870 (Fed. Cir. 2004) .............................................................................. 3
`
`
`
`
`
`iii
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`

`

` IPR2017-01802 – Petitioner’s Reply
`
`LIST OF EXHIBITS1
`
`No.
`
`Description
`
`1001 U.S. Patent No. 7,535,890
`
`1002 Declaration of Dr. Zygmunt J. Haas
`
`1003 Curriculum Vitae of Dr. Zygmunt J. Haas
`
`1004
`
`File History of U.S. Patent Application No. 10/740,030,
`which issued as U.S. Patent No. 7,535,890
`
`1005 U.S. Patent No. 8,150,922 (“Griffin”)
`
`1006
`
`International Published Application No. WO01/11824A2
`(“Zydney”)
`
`1007 RESERVED
`
`1008 WO 02/17650A1 (“Vaananen”)
`
`1009 RESERVED
`
`1010 RESERVED
`
`1011 U.S. Patent No. 7,016,978
`
`1012 U.S. Patent No. 7,123,695 (“Malik”)
`
`1013
`-
`1023
`
`1024
`
`1025
`
`RESERVED
`
`Harry Newton, Newton’s Telecom Dictionary (16th. ed.
`2000)
`
`John Rittinghouse, IM Instant Messaging Security (1st ed.
`2005)
`
`Previously
`Submitted
`
`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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`

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` IPR2017-01802 – Petitioner’s Reply
`
`Description
`
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`
`
`No.
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`Dreamtech Software Team, Instant Messaging Systems:
`Cracking the Code (2002)
`
`Upkar Varshney et al., Voice over IP, Communication of
`the ACM (2002, Vol. 45, No. 1)
`
`Iain Shigeoka, Instant Messaging
`Protocols (2002)
`
`in Java: Jabber
`
`Trushar Barot & Eytan Oren, Guide to Chat Apps, TOW
`Center for Digital Journalism, Columbia University (2005)
`
`Samir Chatterjee et al., Instant Messaging and Presence
`Technologies for College Campuses, IEEE Network (Nov.
`9, 2005)
`
`Daniel Minoli & Emma Minoli, Delivering Voice Over IP
`Networks (2nd ed. 2002)
`
`Thomas Porter & Michael Gough, How to Cheat at VoIP
`Security (1st ed. 2007)
`
`Harry Newton, Newton’s Telecom Dictionary (18th. ed.
`2002)
`
`Justin Berg, The IEEE 802.11 Standardization Its History,
`Specification, Implementations and Future, George Mason
`University, Technical Report Series (2011)
`
`Wolter Lemstra & Vic Hayes, Unlicensed Innovation: The
`Case of Wi-Fi, Competition and Regulation in Network
`Industries (2008, Vol. 9, No. 2)
`
`1036 U.S. Patent Application Publication No. 2003/0039340
`
`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
`
`Deposition Transcript of William C. Easttom II (August 3,
`2018)
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`v
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`

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` IPR2017-01802 – Petitioner’s Reply
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`No.
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`Description
`
`1042
`
`Deposition Transcript of William C. Easttom II (August 6,
`2018)
`
`1043 RESERVED
`
`Previously
`Submitted
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`
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`vi
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`

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` IPR2017-01802 – Petitioner’s Reply
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`I.
`
`INTRODUCTION
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`Samsung Electronics America, Inc. (“Petitioner”) submits this reply to
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`Patent Owner’s (“PO’s”) Response (Paper 12, “Resp.”) concerning claims 1-6, 9,
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`14, 15, 17-20, 23, 40-43, 51-54, and 57 of U.S. Patent No. 7,535,890 (“the ’890
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`patent”) (Ex. 1001).2 PO’s arguments should be rejected and the claims found
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`unpatentable for at least the reasons set forth in the Petition (Paper 1, “Pet.”) and
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`accompanying exhibits, the Board’s decision to institute inter partes review (Paper
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`8, “Dec.”), Mr. Easttom’s cross-examination testimony, and the additional reasons
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`discussed below. Indeed, PO’s Response copies, with only minor non-substantive
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`edits, its already-rejected arguments from its preliminary response, and PO did not
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`submit new testimonial evidence. Thus, there is no reason for the Board to alter its
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`initial determinations from its institution decision.
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`
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`2 Notably, all of the ’890 patent claims challenged in this proceeding, except
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`claims 9, 23, and 57, were held unpatentable in IPR2017-00221. See Apple Inc. v.
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`Uniloc USA, Inc., No. IPR2017-00221, Paper 33 at 54 (P.T.A.B. May 23, 2018).
`
`For these remaining claims, PO only asserts their patentability based on their
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`dependency. (Resp., 39-40 (regarding claim 9), 44 (regarding claims 23 and 57).)
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`The Board is currently considering PO’s request for rehearing in IPR2017-00221.
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`1
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`

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` IPR2017-01802 – Petitioner’s Reply
`
`II. CLAIM CONSTRUCTION
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`PO’s Response proposes the same constructions PO proposed in its
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`preliminary response, without adding any additional reasoning or citations to
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`supporting evidence. (Compare Resp., 6-16, with POPR, 19-28.) In its institution
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`decision, the Board construed the “transmitting”/“receiving” limitations but did not
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`address the remaining limitations. (Dec., 6-11.) For the reasons discussed below,
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`the Board should maintain its construction of the “transmitting”/“receiving”
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`limitations and reject PO’s other proposed constructions.
`
`A.
`
`“Transmitting” / “Receiving” the “Selected Recipients and the
`Instant Voice Message”3 (Claims 1 and 40)
`
`Claim 1 recites, “transmitting the selected recipients and the instant voice
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`message” and “receiving the selected recipients and the instant voice message.”
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`(Ex. 1001, 23:60-64; see also id. 28:27-31.) As the Board recognized in its
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`institution decision (Dec., 10-11), PO attempts, without justification, to inject the
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`
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`3 PO’s additional requirement that “the server receives all of the selected
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`recipients” (Resp., 12-13) is unnecessary for this proceeding because it is
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`undisputed that Griffin discloses such a total reception. (Resp., 35 (only
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`challenging Griffin’s reception based on PO’s erroneous requirement for separately
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`receiving the recipients and the message); see Section III.A.)
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`2
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`

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` IPR2017-01802 – Petitioner’s Reply
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`word “separately” into each of these limitations so that the selected recipients and
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`the instant voice message are transmitted/received separately. (See Resp., 7-13.) As
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`can be seen from the plain language of the claims, however, nothing within the
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`“transmitting” or “receiving” limitations requires separate transmission/reception.
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`See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
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`1116 (Fed. Cir. 2004) (“a claim construction analysis must begin and remain
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`centered on the claim language itself”). The claims only require that the selected
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`recipients and the instant voice message be transmitted/received.
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`PO attempts to support its narrow constructions by importing limitations into
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`the challenged claims from embodiments in the specification. (Resp., 7-13.)
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`However, it is a fundamental principle of patent law that, “while claims are to be
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`construed in light of the specification, they are not necessarily limited by the
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`specification.” Enercon GmbH v. Int’l Trade Comm’n, 151 F.3d 1376, 1384 (Fed.
`
`Cir. 1998); see also Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371
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`(Fed. Cir. 2014) (“we do not read limitations from the embodiments in the
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`specification into the claims”) (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358
`
`F.3d 898, 904 (Fed.Cir.2004)). This is particularly true where, as here, the claims
`
`are worded more broadly than the embodiments pointed to in the specification. See
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`SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
`
`Indeed, the ’890 patent itself notes that embodiments in the specification are
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`3
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`

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` IPR2017-01802 – Petitioner’s Reply
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`intended to be non-limiting. (Ex. 1001, 23:47-52.)
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`Additionally, PO’s proposed construction is in tension with other portions of
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`the specification. In particular, the ’890 patent
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`teaches that the system
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`communicates using a “message object [that] comprises an action field an ID field,
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`a source field, a destination field, and an object field.” (Ex. 1001, 13:66-67
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`(emphasis added).) As the specification explains, “[t]he content of the destination
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`field is a GUID of an intended IVM recipient of the instant voice message” and the
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`“object field is a block of data being carried by the message object” (e.g., the audio
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`data). (Ex. 1001, 14:29-33.) Thus, the recipients and the message are sent together
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`in the same “message object.” PO’s requirement of separate transmission/receipt
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`would exclude this disclosure from the scope of the claims.
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`PO also argues that dependent claims 8 and 45 demand its proposed
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`construction requiring separate transmission/reception. (Resp., 10.) But these
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`claims require nothing of the sort. Instead, these claims merely capture the known
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`technique of transmitting a voice message via a plurality of successive portions.
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`Nothing in the claim language precludes the transmission (or receipt) from also
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`including the selected recipients.
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`Thus the Board should again reject PO’s proposal to inject the word
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`“separately” into the “transmitting” and “receiving” claim limitations.
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`4
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`

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` IPR2017-01802 – Petitioner’s Reply
`
`B.
`
`“Delivering the Instant voice Message to the Selected Recipients”
`and “Temporarily Storing the Instant Voice Message if a Selected
`Recipient is Unavailable” (Claims 1 and 40)
`
`PO urges the Board to adopt constructions that merely add words to the
`
`claims and are irrelevant to Petitioner’s unpatentability positions. (Resp., 13-14;
`
`see Section III.B.) In particular, PO seeks to read “delivering the instant voice
`
`message to the selected recipients,” as recited in claims 1 and 40, as “delivering the
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`instant voice message (from the server) to (a subset of) the selected recipients that
`
`are determined by the server to be available.” (Resp., 13 (added language
`
`underlined).) PO also attempts to read in “determined by the server” into the
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`“storing” limitation as follows: “storing the instant voice message for a selected
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`recipient determined by the server to be unavailable.” (Resp., 14-15 (added
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`language underlined).) PO’s constructions should be rejected because they are
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`inconsistent with and/or not supported by the claim language and the specification
`
`of the ’890 patent.
`
`For example, PO asks the Board to construe the claims to require sending
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`the instant voice message to “a subset of” the selected recipients “that are
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`determined by the server to be available.” But the claim language requires that the
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`instant voice message be delivered to all “available” recipients—not a subset of
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`available recipients. The only time the instant voice message is not delivered to a
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`recipient is if the recipient is “unavailable,” in which case the message is
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`5
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`

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` IPR2017-01802 – Petitioner’s Reply
`
`“temporarily stor[ed].” Unlike PO’s construction, this understanding of the claim
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`language is consistent with how the specification of the ’890 patent describes
`
`delivering instant voice messages. (See, e.g., Ex. 1001, 8:22-29.) Additionally,
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`while availability/unavailability may be “determined by the server,” as PO’s
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`construction requires, the claim language does not preclude other system
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`components from doing so. It is therefore improper to limit the claims in such a
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`way. Finally, PO’s addition of “from the server” is superfluous, as the claims
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`already explicitly state, “the server…delivering the instant voice message.”
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`Therefore, PO’s constructions should be rejected.
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`C.
`
`“Temporarily Storing” (Claims 1, 14, 40, and 51)
`
`Claim 1 recites, “temporarily storing the instant voice message if a selected
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`recipient is unavailable and delivering the stored instant voice message to the
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`selected recipient once the selected recipient becomes available.” Claims 14, 40,
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`and 51 recite similar limitations. According to PO, “temporarily” means “that the
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`IVM is temporarily stored until the IVM is later delivered to the selected
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`recipient.” (Resp., 16.) No such requirement appears in the claims or the
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`specification, and PO offers nothing but attorney argument in support of its
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`construction. Additionally, PO does not appear to apply its construction when
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`analyzing the prior art. Nor does PO dispute that this limitation is disclosed.
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`Accordingly, while Petitioner believes PO’s construction is wrong, the Board need
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`6
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`

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` IPR2017-01802 – Petitioner’s Reply
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`not address PO’s construction to resolve the dispute between the parties.
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`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER THE PRIOR
`ART
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`Although PO’s Response contains numerous sections, it contains relatively
`
`few arguments that challenge the actual disclosures of the prior art. Instead, PO
`
`speculates that the references would not have been combined or would be
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`redundant with art previously considered—the latter being an argument the Board
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`has found “unworthy of further substantive discussion.” (Dec., 28). The few
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`sections that do actually discuss the relevant disclosures of the prior art (Resp., 31-
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`38, 43-44) are either entirely based on an erroneous claim construction or a
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`misreading of the prior art. (See Section III.C.) Therefore, PO’s arguments should
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`be rejected in their entirety, and the Board should find all challenged claims to be
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`unpatentable.
`
`A. Griffin Discloses “Transmitting the Selected Recipients and the
`Instant Voice Message” and “Receiving the Selected Recipients
`and the Instant Voice Message” Under the Proper Construction.
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`PO’s arguments regarding these limitations rest entirely on its constructions,
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`which require separate transmission and receipt of the selected recipients and
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`instant voice message. (Resp., 31-35.) For the reasons discussed above in Section
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`II.A, PO’s constructions should be rejected. PO does not address the proper
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`constructions of these limitations, which encompass transmitting and receiving the
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`selected recipients and instant voice message together. Therefore, under the proper
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`7
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`

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` IPR2017-01802 – Petitioner’s Reply
`
`constructions, there is no dispute that Griffin discloses the “transmitting” and
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`“receiving” limitations. (See, e.g., Pet., 21-23, 45-46.) Therefore, as it did in its
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`institution decision (Dec., 24-25), the Board should reject PO’s arguments and find
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`that Griffin discloses these limitations.
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`B.
`
`The Combination of Griffin and Zydney Discloses “Delivering the
`Instant Voice Message to the Selected Recipients Over the
`Network” and “Storing the Instant Voice Message if a Selected
`Recipient is Unavailable”
`
`Claim 1 recites, “delivering the instant voice message to the selected
`
`recipients over the network” and “storing the instant voice message if a selected
`
`recipient is unavailable.” Claims 14 and 51 recite similar limitations. PO’s
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`arguments with respect to these claims are based on its erroneous claim
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`constructions, which should be rejected for the reasons discussed above in Section
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`II.B. Under the proper construction, PO does not dispute that the combination of
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`Griffin and Zydney discloses these limitations. (See, e.g., Pet., 23-32, 63-66.)
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`Even under PO’s constructions, the combination of Griffin and Zydney
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`discloses these limitations for the reasons provided in the Petition. (Id.) Rather than
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`address the combined teachings of Griffin and Zydney, as discussed in the Petition,
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`PO improperly attacks the references individually. (Resp., 36-38; Dec., 25-26.)
`
`However, “[n]on-obviousness cannot be established by attacking references
`
`individually where the rejection is based upon the teachings of a combination of
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`references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re
`
`8
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`

`

` IPR2017-01802 – Petitioner’s Reply
`
`Keller, 642 F.2d 413, 425 (CCPA 1981)).
`
`For example, PO does not dispute that Griffin discloses “server 204
`
`‘delivering the instant voice message to the selected recipients over the network,’”
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`as claimed. (Pet., 22-23 (citing, e.g., Ex. 1005, 6:56-7:1, 7:8-11); Resp., 36-38.)
`
`Nor does PO dispute that “server 204’s message broadcaster 303 only composes
`
`and transmits an inbound message 500 to selected recipients that are determined to
`
`be ‘available.’” (Pet., 23 (quoting Ex. 1005, 6:61-7:11); see also, e.g., Ex. 1005,
`
`4:62-5:2, 5:9-30, 6:61-7:11, Fig. 7; Resp., 36-38.) Instead, PO argues that Griffin
`
`“determines only which of the targeted recipient terminals are technically able to
`
`receive the particular type of message rather than determining which of the
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`targeted recipient terminals are and are not available, i.e., connected.” (Resp., 36-
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`37.) But, in the combination, Petitioner relies on Zydney for its teachings related to
`
`the claim terms “available” and “unavailable”—not Griffin. (Pet., 25-32.)
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`Similarly, when addressing Zydney, PO again ignores the proposed
`
`combination, arguing that Zydney’s connectivity status “is used by the sending
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`device rather than the central server” and “the central server only receives a
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`communication (from a sending device for forwarding to a receiving device) that
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`has already been determined by the sending device as not technically capable of
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`being sent directly by the sending device to the receiving device.” (Resp., 37.) The
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`proposed combination, however, does not rely on Zydney’s teachings regarding
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`9
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`

`

` IPR2017-01802 – Petitioner’s Reply
`
`which component in Zydney’s system uses the connectivity status. As discussed
`
`above, in the proposed combination, the Petition points to Griffin’s teaching that
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`server 204 determines whether or not to send a message to a terminal 100 based on
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`terminal 100’s status. (Pet., 23.) Zydney is relied on solely for its teachings related
`
`to the specifics of its disclosed connectivity status, which may represent “the core
`
`states of whether the recipient is online or offline.” (Pet. 25-26 (quoting Ex. 1006,
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`14:17-15:1).)
`
`Moreover, as a factual matter, PO is wrong that Zydney’s central server does
`
`not use the connectivity status. For example, Zydney explains that the central
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`server (i) “will track and maintain the status of all software agents,” (ii) “will
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`notify the software agent to send the voice container directly to the recipient if the
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`recipient is available,” and (iii) “will store the voice container for the intended
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`recipient if the recipient is not available.” (Ex. 1006, 14:6-13; see also id., 13:12-
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`18.) Additionally, as shown in the Figure 8 embodiment of Zydney, the central
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`server performs different actions depending on whether or not the software agent is
`
`“available.” (Id., Fig. 8 (Step 1.2.5).) Indeed, Mr. Easttom has the same
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`understanding of Zydney. For example, during his deposition, Mr. Easttom testified
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`that Zydney’s “server is responsible for directing where the voice containers are
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`sent based on the server determining the availability of the software agents.” (Ex.
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`1040, 187:13-16.)
`
`10
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`

`

` IPR2017-01802 – Petitioner’s Reply
`
`Finally, PO argues that Zydney’s server does not deliver “the” IVM because
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`“the communication downloaded from the central server to the receiving device in
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`Zydney is not the same as the communication sent by the sending device as
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`required in the challenged claims.” (Resp., 38.) First, this argument should be
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`rejected because PO provides no evidence in support. Second, this argument is
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`contrary to Zydney’s disclosure, which explains that the message sent to the server
`
`is the same message that is sent to the receiving device. (See, e.g., Ex. 1006, 11:3-
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`6, 14:8-11, 14:14-16, 33:7-8, Figs. 4, 8 (Steps 1.2.2-1.2.6).) Third, this argument
`
`overlooks that the Petition relies on Griffin’s teaching that the outbound chat
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`message 400 sent to server complex 204 is sent by server complex 204 to a
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`receiving terminal 100 as part of an inbound chat message 500. (Pet., 22-23 (citing,
`
`e.g., Ex. 1005, 4:62-65, 5:2-5, 6:38-44, 6:56-7:11, 7:19-25).) Therefore, PO’s focus
`
`on Zydney (instead of the combined teachings of Griffin and Zydney) is misplaced.
`
`Accordingly, the Board should again reject PO’s arguments regarding the
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`“delivering” and “storing” limitations. (Dec., 25-26).
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`C. Malik Discloses a Local/External Network Configuration.
`
`Claims 14 and 51 recite limitations related to “local” and “external”
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`networks. PO’s arguments with respect to these limitations are based on a
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`misunderstanding of Malik. (Resp., 43-44.)
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`For example, PO argues that “Fig. 2 in Malik and the accompanying text
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` IPR2017-01802 – Petitioner’s Reply
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`provide only for situations in which the server translates an incoming message into
`
`a format required for a third party instant messenger server.” (Resp., 43 (citing Ex.
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`2001, ¶42).) Malik’s Figure 2 is shown below:
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`
`
`(Ex. 1012, Fig. 2.)
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`Nothing about Figure 2 requires (or even mentions) “translation.” The
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`“accompanying text” (which PO does not bother to cite) similarly contains no
`
`mention of “translation.” (Ex. 1012, 2:49-3:31, 3:66-67, 4:45-47, 5:6-10.) Mr.
`
`Easttom’s declaration also provides no help, because it provides no citation or
`
`explanation beyond what was given in the Response. (See Ex. 2001, ¶42.)
`
`This is likely because PO has confused the asserted reference Malik (U.S.
`
`Patent No. 7,123,695, Ex. 1012; see Pet., 7), with U.S. Patent No. 7,016,978 (“the
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` IPR2017-01802 – Petitioner’s Reply
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`’978 Malik”), which was also issued to Dale Malik (Ex. 1011). For example, as can
`
`be seen below, Figure 2 of the ’978 Malik refers to a “translator” (225, 230, 235).
`
`(Ex. 1011, Fig. 2.) Accordingly, PO’s arguments are directed to the wrong
`
`
`
`reference.
`
`Thus, the Board should reject PO’s arguments related to claims 14 and 51.
`
`D. A POSA Would Have Been Motivated to Combine Griffin and
`Zydney for the Reasons Explained in the Petition
`
`Again, PO adds literally nothing to its already-rejected arguments that
`
`Griffin purportedly would not have been combined with Zydney. (Compare POPR,
`
`33-43, with Resp., 21-31 (same); see Dec., 21-24.) PO even reuses its preliminary
`
`expert report (Ex. 2001), which was already considered by the Board, adding no
`
`new testimony during this trial. Thus, the Board should again reject PO’s
`
`arguments.
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` IPR2017-01802 – Petitioner’s Reply
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`As explained in the Petition, both Griffin and Zydney describe a
`
`system/method for instant messaging that includes speech (i.e., voice) content. As
`
`the Board recognized, Griffin is Petitioner’s primary reference, which is relied on
`
`for its disclosure of the bulk of the claim limitations, and Zydney is relied on for a
`
`few discrete limitations. (Dec., 19-20.) In each instance, Petitioner provided a
`
`detailed explanation as to why a POSA would have been motivated to incorporate
`
`a particular teaching of Zydney into Griffin’s system. (See, e.g., Pet., 16-18 (direct
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`connection), 26-28 (connectivity status), 31-32 (temporary storage).) Rather than
`
`address each of these rationales, PO launches broad-sweeping attacks against the
`
`combination, speculating that the combination might be inoperable (for features
`
`not relied upon) and self-servingly redefining the “purpose of Griffin” and
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`“Principle[s] of Operation” of Griffin and Zydney. (Resp., 21-31.) Each of PO’s
`
`arguments should be rejected for the reasons previously provided by the Board and
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`for the reasons discussed below. (Dec., 21-24.)
`
`1.
`
`Griffin’s and Zydney’s Teachings Related to Availability are
`Compatible
`
`PO argues that a POSA would not have combined Griffin and Zydney
`
`because Griffin discloses a “server-based messaging paradigm,” which would not
`
`benefit from Zydney’s “peer-to-peer direct communication paradigm.” (Resp., 21-
`
`27, 30-31.) This argument fails for several reasons.
`
`First, Petitioner does not propose the bodily incorporation of Zydney’s
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` IPR2017-01802 – Petitioner’s Reply
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`features into Griffin’s system wholesale. Nor is it required. See Allied Erecting and
`
`Dismantling Co., Inc. v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir.
`
`2016). Instead, Petitioner relies on Zydney for certain specific teachings, such as
`
`those related to availability and unavailability. (Pet., 23-32.) For example, as
`
`explained in the Petition, while Griffin’s server 204 considers the “status 702” of
`
`each terminal 100 when composing and sending inbound chat messages 500,
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`“Griffin does not…provide additional details regarding what precisely status 702
`
`indicates.” (Id., 23-25; Ex. 1002, ¶¶119-21.) It would have been obvious, however,
`
`to modify status 702 to include connectivity information indicating whether client
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`100 is available or unavailable for messaging based on whether terminal 100 is
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`currently connected to server 204, based on Zydney’s teachings related to instant
`
`voice messaging based on a recipient’s connectivity status. (Pet., 25-32; Ex. 1002,
`
`¶¶122-30.) And Petitioner provided several reasons why the modification would
`
`have been obvious. (Pet., 26-32; Ex. 1002, ¶¶126-30.)
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`PO’s argument that a POSA would not have combined Griffin and Zydney in
`
`this way because, unlike Griffin’s server-based system, Zydney’s system relates to
`
`peer-to-peer communication is unfounded and overlooks both Griffin’s and
`
`Zydney’s disclosures. (Resp., 21-27, 30-31.) For example, like Zydney, Griffin
`
`teaches that its system can operate in a peer-to-peer mode. (Ex. 1005, 4:18-21, 8:8-
`
`14.) Additionally, Zydney is not limited to peer-to-peer communication (Ex. 1006,
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` IPR2017-01802 – Petitioner’s Reply
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`Fig. 8) and discloses embodiments were the central server temporarily stores voice
`
`containers (id., Abstract, 11:3-6, 13:12-18, 14:6-13, 15:19-21, 16:7-10, Fig. 8).
`
`Also, as Mr. Easttom agreed during his deposition, Zydney’s “server is responsible
`
`for directing where the voice containers are sent based on the server determining
`
`the availability of the software agents.” (Ex. 1040, 187:13-16; Ex. 1006, 14:6-11,
`
`14:20-22.) Thus, PO’s assertion that the sending device in Zydney “independently
`
`determines which messages can be delivered instantaneously (i.e. without relying
`
`on the central server)” is inconsistent with Zydney’s disclosure. (Resp., 22-23.)
`
`But, even if Griffin were limited to a server-based system and Zydney to a
`
`peer-to-peer system, the provided rationales for combining these teachings still
`
`hold true. (Pet., 26-32; Ex. 1002, ¶¶126-30.) The alleged differences in these
`
`systems do not detract from the benefits that would have been provided by
`
`maintaining and utilizing status information indicating whether a recipient is
`
`currently connected and available, as described in the Petition. (Pet., 26-32; Ex.
`
`1002, ¶¶126-30.) Indeed, knowing the current connectivity and availability status
`
`of potential recipients facilitates Griffin’s objective of “real-time speech and text
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`conversations.” (Ex. 1005, 1:7-11.)
`
`Furthermore, PO’s argument that “Griffin is indifferent to a recipient’s
`
`immediate availability” is contrary to Griffin’s teaching of a status indicator 911 in
`
`a buddy list display that is updated based on status 702 (Ex. 1005, 8:1-7, 15-59,
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` IPR2017-01802 – Petitioner’s Reply
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`Figs. 6, 9), and Mr. Easttom’s testimony that the “entire purpose of Griffin” is to
`
`update indications of availability in buddy lists. (Ex. 1040, 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.”).)
`
`Thus, PO’s attempt to artificially separate the methods of managing
`
`availability in Griffin and Zydney fails.4
`
`2.
`
`PO’s Arguments Regarding Griffin’s Text-Only Buddies
`Are Misplaced
`
`PO
`
`argues
`
`that
`
`“to
`
`replace Griffin’s
`
`status
`
`702 with
`
`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
`
`the server complex 204 would be considered ‘available’…simply by virtue of
`
`
`
`4 Confusingly, in arguing against combinability, PO asserts that Griffin’s and
`
`Zydney’s methods of managing availability are incompatible with “near-opposite
`
`principles of operation” (Resp., 30-31), but at the same time asserts that their
`
`methods of availability “overlap” and “would introduce redundancy” if combined
`
`(id., 25-26). These two assertions cannot stand side-by-side and demonstrate the
`
`stretched nature of PO’s arguments against the combination.
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` IPR2017-01802 – Petitioner’s Reply
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`having an Internet connection…and would therefore be available for selection as a
`
`recipient of a speech message.” (Resp., 27-28.) This argument rewrites Petitioner’s
`
`proposed combination. Petitioner does not argue that the combination would
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`“replace” status 702, as PO conten