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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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`APPLE INC.,
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`Case IPR2017-01804
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`Tables of Contents
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`2
`INTRODUCTION
`I.
`3
`II. RELATED MATTERS OF THE ’622 PATENT
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`III. THE BOARD SHOULD DENY INSTITUTION under § 325(d)
`IV. PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. § 315(e)(1) 12
`V.
`THE ’622 PATENT
`12
`Effective Filing Date of the ’622 Patent
`12
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`Overview of the ’622 Patent
`12
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`VI. PERSON OF ORDINARY SKILL IN THE ART
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`VII. PETITIONER RELIES ON INCORRECT CLAIM
`CONSTRUCTIONS
`“instant voice messaging application”
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`“client platform system”
`“communication platform system”
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`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Zydney does not render obvious “wherein the instant voice
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`messaging application includes a document handler system
`for attaching one or more files to the instant voice message”
`(claim 27)
`Zydney does not render obvious “wherein the instant voice
`message includes an object field” (independent claim 3)
`No prima facie obviousness for “wherein the instant voice
`messaging application includes a message database storing
`the instant voice message, wherein the instant voice message
`is represented by a database record including a unique
`identifier” (dependent claims 14-17 and 28-31)
` No prima facie obviousness for “a display [at the client
`device] displaying a list of one or more potential recipients”
`(claims 38-39)
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`17
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`22
`24
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`26
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`28
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`32
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`37
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`45
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`VI. THE SUPRENIE COURT IS CURRENTLY REVIEWING THE
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`CONSTITUTIONALITY OF INTER PARTES REVIEW
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`PROCEEDINGS
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`51
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`IPR2017-1804
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`US. Patent 8,724,622
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`List of Exhibits
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`enabled com ression over HTTP
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`Declaration of William Easttom II
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`Descri . tion
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`Microsoft TechNet article showing Microsoft IIS 6.0
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`iii
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`I.
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`IPR2017-1804
`U.S. Patent 8,724,622
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`INTRODUCTION
`Petitioner Apple Inc. has now filed four petitions for inter partes review
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`against U.S. Patent No. 8,724,622 (“the ’622 patent”) owned by Uniloc
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`Luxembourg S.A. (“Patent Owner”). See IPR2017-0223, IPR2017-0224,
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`IPR2017-1804 (the present Petition), and IPR2017-1805 (filed concurrently
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`with the present Petition). The Board denied institution on Apple’s first pair of
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`petitions. See IPR2017-0223 and IPR2017-0224. As a procedural matter, the
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`Board should deny the instant Petition under 35 U.S.C. § 325(d) because
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`Petitioner provides no persuasive justification for its latest piecemeal and
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`harassing challenges based on a combination of references it admittedly knew
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`of a year ago. Contrary to what Petitioner alleges, the non-exhaustive example
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`factors set forth in Blue Coat Systems v. Finjan1 confirm the present facts
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`warrant denial pursuant to 35 U.S.C. § 325(d).
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`Even if the Board were inclined to consider the merits of the present
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`Petition, notwithstanding the fact that the present circumstances invoke 35
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`U.S.C. § 325(d), the Petition is admittedly duplicative of the petition filed in
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`IPR2017-1667 and, consequently, the instant Petition has at least the same
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`substantive deficiencies previously identified in Patent Owner’s Preliminary
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`Response filed in that earlier matter. See IPR2017-1667.
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`1 IPR2016-01443, Paper 13, pp. 8-9.
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`IPR2017-1804
`U.S. Patent 8,724,622
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`II. RELATED MATTERS OF THE ’622 PATENT
`The ’622 patent is in a family of patents including United States Patent
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`Nos. 7,535,890 (the ’890 Patent); 8,243,723 (the ’723 Patent); 8,199,747 (the
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`’747 Patent); and 8,995,433 (the ’433 Patent). The diagram below illustrates
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`how this family of patents are interrelated by priority claims.
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`Petitioner has filed eight of the thirty-six petitions for inter partes review
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`filed against these five patents, as highlighted in the table below. See Case Nos.
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`IPR2017-0220, -221, -222, -223, -224, -225, -1804, and -1805. No less than
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`3
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`IPR2017-1804
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`US. Patent 8,724,622
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`eighteen interpartes review petitions filed against this family of patents predate
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`Petitioner’s latest filings.
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`Facebook / WhatsApp
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`7-Apr-l7
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`Facebook / WhatsApp
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`Semeugglee
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`Samsung Elec
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`Semeggglee
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`Samsunglee
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`eemeueglee
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`eemeengglee
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`Apple
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`Aggle
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`——_
`IPR201 7—1798
`20—Jul-17
`'622
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`IPR2017-1804
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`US. Patent 8,724,622
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`As shown in the table above, on November 14, 2016, Apple Inc. filed two
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`petitions against the ’622 patent (case Nos. IPR2017-00223 and IPR2017-
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`00224). On May 25, 2017, the Board fully denied (at the preliminary stage) both
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`of those petitions.
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`Having failed in its initial attempts to present a primafacie challenge, and
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`with the benefit of a year’s worth of multiple filings in these related matters,
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`Petitioner now seeks additional bites at the apple by concurrently filing two
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`additional petitions against
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`the ’622 patent (case nos. IPR2017-l804 and
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`IPR2017-1805). Notably, Petitioner filed its latest challenges on the eve of the
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`one-year §315(b) time bar. See 35 U.S.C. § 315(b) (“An inter partes review may
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`not be instituted if the petition requesting the proceeding is filed more than 1
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`year after the date on which the petitioner .
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`.
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`. is served with a complaint alleging
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`infringement of the patent). It is also worth noting that Petitioner concurrently
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`filed its latest round of petitions on the same day (July 20, 2017) that Samsung
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`Elec. filed its six petitions against this patent family. Although presumably the
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`parties coordinated their efforts, neither party identifies the other as a real party
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`in interest.
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`The instant Petition neglects to identify all the related matters pursuant to
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`the requirements of 37 C.F.R. § 42.8(b)(2) and 35 U.S.C. § 312(a)(4). The Board
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`has previously held that “[t]he Petition’s failure to comply with 37 C.F.R. §
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`42.8(b)(2), and thus also 35 U.S.C. § 312(a)(4), could be grounds for denial of
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`the Petition.” See Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00356,
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`Paper No. 9 (P.T.A.B. June 26, 2015) (Decision Denying Institution of Inter
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`Partes Review) (citations omitted). In its decision denying institution, the Board
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`offered the following explanation:
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`A petition for an inter partes review “may be considered only
`if,” among other things, ‘the petition provides such other
`information as the Director may require by regulation.” 35
`U.S.C. § 312(a)(4). In that regard, the Director requires a
`petitioner to include certain mandatory notices with its petition.
`37 C.F.R. § 42.8(a)(1). The mandatory notices include a
`requirement to “[i]dentify any other judicial or administrative
`matter that would affect, or be affected by, a decision in the
`proceeding.” 37 C.F.R. § 42.8(b)(2) (titled “Related matters”);
`see also 35 U.S.C. § 312(a)(4). “Judicial matters include
`actions involving the patent in federal court. Administrative
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`matters include every application and patent claiming, or which
`may claim, the benefit of the priority of the filing date of the
`party’s involved patent or application as well as any ex parte
`and inter partes reexaminations for an involved patent.” Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug.
`14, 2012).
`Id., at pp. 5-6. At a minimum, the Petition fails to notify the Board of all the
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`related inter parties review matters listed in the table above which predate the
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`filing of the present Petition. This procedural deficiency provides independent
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`grounds for denial of the Petition, particularly given Apple Inc. has been
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`admonished by the Board already for this very defect. See Apple, Inc. v.
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`ContentGuard Holdings, Inc., IPR2015-00356, Paper No. 9 (P.T.A.B. June 26,
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`2015) (Decision Denying Institution of Inter Partes Review) (citations omitted).
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`The instant Petition does provide what appears to be an accurate summary
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`of pending litigation related to the ’622 patent. Pet. 1-3.
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`III. THE BOARD SHOULD DENY INSTITUTION UNDER § 325(d)
`After twice failing in its attempt to challenge the validity of the ’622
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`patent, and with the benefit of Patent Owner’s Preliminary Responses and the
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`Board’s decisions in those matters, Petitioner now seeks third and fourth
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`attempts to challenge the same claims previously addressed. In doing so,
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`Petitioner makes no attempt to differentiate the art it now cites from the art cited
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`in the previously-denied petitions (IPR2017-00223 and IPR2017-00224). Such
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`IPR2017-1804
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`piecemeal and harassing attacks against the same patent invokes 35 U.S.C.
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`§ 325(d).
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`To the extent the example and non-exhaustive factors set forth in Blue
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`Coat Systems v. Finjan 2 are informative to the present analysis, they only serve
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`to confirm that § 325(d) applies here. The first factor, “the finite resources of
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`the Board,” disfavors permitting Petitioner to serially-file multiple petitions
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`against the same patent. Id. The second factor (addressing the one-year
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`requirement under 35 U.S.C. § 316(a)(11)) is neutral at best, given that
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`multiplying a proceeding with multiple petitioners can only put further strain on
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`the Board regarding this statutory requirement. The third factor, “whether the
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`same petitioner previously filed a petition directed to the same claims of the
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`same patent” is directly applicable here and independently confirms denial is
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`appropriate. Id.
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`The fourth factor, “whether, at the time of filing of the earlier petition, the
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`petitioner knew of the prior art asserted in the later petition or should have
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`known of it,” also confirms denial is appropriate. Id. While Petitioner vaguely
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`alleges that its search for “prior art did not uncover Zydney, Shinder, Clark, and
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`Appelman” (Pet. 76-77), Petitioner makes no attempt to support that allegation
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`2 IPR2016-01443, Paper 13, pp. 8-9 (collecting cases). Notably, nothing in the
`Blue Coat order suggests its example factors are exhaustive or provide a bright-
`line test as to whether 35 U.S.C. § 325(d).
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`with a sworn declaration or an explanation of the how it had previously
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`conducted its prior art searches in a manner that did not encompass the
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`references it now cites.
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`Regardless whether Petitioner actually knew of the Zydney , Shinder,
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`Clark, and Appelman references at the time of the earlier filings, the evidence
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`before the Board confirms Petitioner should have known of those references.
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`Apple Inc. can hardly be considered a small enterprise without resources to
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`conduct a thorough search for what it considers to be the best prior art.
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`Moreover, Petitioner admits that it knew of the references cited in the present
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`Petition within mere weeks of filing its original petitions in Case Nos. IPR2017-
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`0223 and IPR2017-0224. Pet. 77. Petitioner provides no explanation for why it
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`was able to locate the cited references in December 2016, but was purportedly
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`unable to do so just a few weeks earlier (i.e., as of the filing date of the prior
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`petitions). Given that nearly coincident timing, it is reasonable to conclude
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`Petitioner should have known of those references as of the earlier filings.
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`Turning to the references themselves, the primary reference cited in the
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`instant petition (Zydney) is a PCT patent application that is text searchable using
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`the same free online search engines Petitioner no doubt used in selecting the
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`U.S. patents cited in the pair of denied petitions. The same is true for the
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`Appelman and Clark references, which are both U.S. patents. Similarly, it should
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`not have been difficult for Apple Inc. to have located the Shinder reference a
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`few weeks earlier. Given the overwhelming evidence that Petitioner should have
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`known of these references as of the original petitions, the fourth example factor
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`of Blue Coat independently confirms denial is appropriate.
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`The fifth factor also favors denial—i.e., “whether, at the time of filing of
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`the later petition, the petitioner already received the patent owner’s preliminary
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`response to the earlier petition or received the Board’s decision on whether to
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`institute review in the earlier petition.” Blue Coat, PR2016-01443, Paper 13, pp.
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`8-9. Here, Petitioner now seeks through joinder to derive at least the benefit
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`provided by Patent Owner’s two preliminary responses (both filed on March 17,
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`2017) and the Board’s two decisions to deny institution (both dated May 25,
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`2017).
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`The sixth and seventh factors strongly favor denial. The sixth factor
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`addresses “the length of time that elapsed between the time the petitioner learned
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`of the prior art asserted in the later petition and the filing of the later petition.”
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`Blue Coat, PR2016-01443, Paper 13, pp. 8-9. The seventh factor is “whether the
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`petitioner provides adequate explanation for the time elapsed between the filing
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`dates of multiple petitions directed to the same claims of the same patent.” Id.
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`Petitioner offers no explanation whatsoever for why it waited nearly a year,
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`indeed the very last day before expiration of the statutory time bar, before
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`attempting to challenge the same claims of the ’622 patent based on the
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`references cited in the present Petition. The Board in Blue Coat emphasized
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`similar circumstances as strongly favoring denial:
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`Further, as Patent Owner points out (Prelim. Resp. 12), the
`instant Petition was filed on the one-year anniversary of the
`filing of Patent Owner’s complaint against Petitioner in the
`district court on July 15, 2015—i.e., just before the raising
`of the bar against further challenges by Petitioner to any
`claims of the ’494 patent. … Thus, it is appropriate to
`consider the harassing impact that the resulting piecemeal
`challenges have on Patent Owner in defending its patent.
`Blue Coat Systems v. Finjan, IPR2016-01443, Paper 13, pp. 14-15 (citations
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`omitted).3
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`The eighth factor also favors denial because “the same or substantially
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`same prior art or arguments were previously presented to the office.” Petitioner
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`provides no explanation for why the arguments and art cited in its Petition differ
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`in any way from either the art cited during prosecution or the art Petitioner
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`previously cited in Case No. IPR2017-0223.
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`For the foregoing reasons, each one of the eight model factors set forth in
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`Blue Coat provides an independent basis to confirm the Board should deny the
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`Petition under § 325(d).
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`3 Notably, the Board in Blue Coat stated “[t]hese various considerations also
`inform our consideration of the first and second factors.” Id. (citing Alarm.com
`Inc. v. Vivint, Inc., Case IPR2016-01091, slip op. at 13 (PTAB Nov. 23, 2016)
`(Paper 11)).
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`IV. PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. § 315(e)(1)
`35 U.S.C. § 315(e)(1) will estop Petitioner from maintaining this IPR. As
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`explained in the preceding section, Petitioner’s grounds raised in the current
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`Petition either were raised or “reasonably could have been raised” in either of
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`Petitioner’s two previous petitions concerning the ’622 Patent, mandating
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`dismissal of this proceeding.
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`V.
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`THE ’622 PATENT
` Effective Filing Date of the ’622 Patent
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`The ’622 patent is titled “SYSTEM AND METHOD FOR INSTANT
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`VOIP MESSAGING.” Ex. 1001. The ’622 patent issued from U.S. Patent
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`Application No. 13/546,673, which is a continuation of U.S. Patent No.
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`8,243,723, which is a continuation of U.S. Patent No. 7,535,890, filed on
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`December 18, 2003. The ’622 patent issued on May 13, 2014. Petitioners do
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`not contest that the ’622 patent is at least entitled to an effective filing date of
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`December 18, 2003.
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` Overview of the ’622 Patent
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`The
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`’622 patent
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`recognized
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`that conventional circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks. According to the ’622 patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the
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`telephone terminal to another device 20 over the [public switched telephone
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`network or] PSTN, including another telephone terminal. During the telephone
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`call, voice communication takes place over that communication path.” Ex.
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`1001, 1:29-34. Ex. 2001 ¶18.
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`The ’622 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.,
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`“VoIP”), also known as IP telephony or Internet telephony.”4 Ex. 1001., 1:35-
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`36. Ex. 2001 ¶19.Because legacy circuit-switched devices were unable to
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`communicate directly over packet-switched networks, media gateways (114)
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`were designed to receive circuit-switched signals and packetize them for
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`transmittal over packet-switched networks, and vice versa. Ex. 1001., 2:8-18.
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`4 Consistent with the ’622 patent specification, the USPTO has also recognized
`there are significant differences between circuit-switched and packet-switched
`networks during the relevant timeframe. See, e.g., U.S. Application No.
`90/012,728 and 90/012,789 (Notice of Intent to Issue Ex Parte Reexamination
`Certificate, dated April 10, 2014) at page 9, where the USPTO confirmed the
`following:
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`Ethernet packet switching protocol, including TCP/IP, are very
`specific connectionless/packet switched protocols. In contrast to
`connection-oriented protocols, connectionless/packet switched
`protocols do not need to set up a dedicated path in advance. Rather,
`routers send fragmented messages or “packets” to their destination
`independently. Connectionless protocols have a number of
`advantages over connection-oriented protocols, including better
`use of available bandwidth.
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`Ex. 2001 ¶19.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
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`(e.g., IP network 102) are different from, and are incompatible with, an audio
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`signal carried over a dedicated packet-switched circuit. Ex. 1001., 2:8-21. Ex.
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`2001 ¶19.
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`The ’622 patent further recognized that, notwithstanding the advent of
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`instant text messages, at the time of the claimed invention there was no similarly
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`convenient analog to leaving an instant voice message over a packet-switched
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`network. Ex. 1001., 2:22-53. Ex. 2001 ¶20. Rather, “conventionally, leaving a
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`voice message involves dialing the recipient’s telephone number (often without
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`knowing whether the recipient will answer), waiting for the connection to be
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`established, speaking to an operator or navigating through a menu of options,
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`listening to a greeting message, and recording the message for later pickup by
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`the recipient. In that message, the user must typically identify himself or herself
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`in order for the recipient to return the call.” Ex. 1001., 2:26-33. Ex. 2001 ¶20.
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`The inventor observed, therefore, that “notwithstanding the foregoing
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`advances in the VoIP/PSTN voice communication and voice/text messaging,
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`there is still a need in the art for providing a system and method for providing
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`instant VoIP messaging over an IP network.” Ex. 1001., 2:47-51. Ex. 2001 ¶21.
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`In certain disclosed embodiments, the ’622 patent addressed that need, in part,
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`by providing a user-accessible client (208) that is specially configured for
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`instant voice message (IVM) and for direct communication over a packet-
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`switched network (e.g., through an Ethernet card). Ex. 1001., 12:13-14. Ex.
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`2001 ¶21.More specifically, the ’622 patent teaches that certain clients (208) are
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`specially configured to “listen[] to the input audio device 212,” “record[] the
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`user’s speech into a digitized audio file 210 (i.e., instant voice message) stored
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`on the IVM client 208,” and “transmit[] the digitized audio file 210” as
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`packetized data (e.g., using TCP/IP) over a packet-switched network (e.g.,
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`network 204) “to the local IVM server 202.” Ex. 1001., 8:8-11 and 8:21-22. Ex.
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`2001 ¶21.
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`The Petition challenges two independent (claims 3, 27, and 38) and
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`seventeen dependent claims (6-8, 10, 11, 13, 14-23, 28-35, and 39). For the
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`convenience of the Board, independent claim 3 is reproduced below:
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`3. A system comprising:
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`a network interface connected to a packet-switched
`network;
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`a messaging system communicating with a plurality
`of instant voice message client systems via the
`network interface; and
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`a communication platform system maintaining
`connection information for each of the plurality of
`instant voice message client systems indicating
`whether there is a current connection to each of the
`plurality of instant voice message client systems,
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`wherein the messaging system receives an instant
`voice message from one of the plurality of instant
`voice message client systems, and
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`wherein the instant voice message includes an object
`field including a digitized audio file.
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`VI. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner alleges through its declarant, Dr. Lavian, that “a person of
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`ordinary skill in the art for purposes of the ’622 patent would have possessed at
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`least a bachelor’s degree in computer science, computer engineering, or
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`electrical engineering with at least two years of experience in development and
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`programming relating to network communication systems (or equivalent degree
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`or experience).” Pet. 6 (citing Ex. 1002 ¶¶13-15). To simplify the issues before
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`the Board at this preliminary stage, Patent Owner does not presently offer a
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`different definition for a person of ordinary skill in the art. Mr. Easttom opines
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`that a POSITA is someone who would have possessed on the priority date a
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`bachelor’s degree in electrical engineering or computer science (or equivalent
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`degree/experience) with at least two years of experience in computer
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`programming and software development, including the development of software
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`for communication with other computers over a network. Ex. 2001 ¶21. Mr
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`Easttom believes Dr. Lavian’s opinions concerning a POSITA are essentially
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`the same as his, and any differences are inconsequential to the dispute before
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`the Board. Id.
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`RELIES
`VII. PETITIONER
`CONSTRUCTIONS
`Petitioner seeks to construe three terms: (1) “instant voice messaging
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`ON
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`INCORRECT
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`CLAIM
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`application”; (2) “client platform system”; and (3) “communication platform
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`system.” Petitioner’s proposed definitions should be rejected as violating
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`fundamental canons of claim construction equally applicable in this forum when
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`applying the broadest reasonable interpretation. Petitioner’s reliance on incorrect
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`claim constructions taints the entire Petition and provides an independent basis
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`for denial at the preliminary stage.
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`“instant voice messaging application”
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`A POSITA would have understood the term “application” in the context
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`of the ’622 patent to mean a software program that performs a particular task or
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`function(s). Ex. 2001 ¶23. Thus, a POSITA would have understood that whole
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`phrase “instant voice messaging application” means “a software program that
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`performs instant voice messaging tasks or functions. Ex. 2001 ¶23, 32.
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`Petitioner and its expert, Dr. Lavian, acknowledge that a POSITA would
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`understand the term “application” means “computer software for performing a
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`particular function.” Pet. at 7 (citing Ex. 1002 at ¶ 53 [citing Ex. 1012, the
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`Microsoft Computer Dictionary defining “application as “[a] program designed
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`to assist in the performance of a specific task, such as word processing,
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`accounting, or inventory management.”]). Ex. 2001 ¶24. However, Petitioner
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`and Dr. Lavian then assert that, based on the written description of the ’622
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`patent, the term “instant voice messaging application” should not be limited to
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`software. Pet. at 7-8; see also Ex. 1002 at ¶ 54. Petitioner’s sole motivation for
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`taking such an expansive view is to argue that the Zydney reference discloses
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`certain claim features.
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`As explained by Mr. Easttom, a POSITA reading the’622 patent would
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`NOT deviate from the Petitioner’s acknowledged and understood meaning. Ex.
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`2001 ¶23-32.
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`Petitioner asserts that the ’622 patent discloses that functions associated
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`with instant voice messaging are performed by the IVM client 208, which is a
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`“general-purpose programmable computer.” Pet. at 7 (citing Ex. 1001 at 12:11-
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`14). Ex. 2001 ¶26. Petitioner also points to FIG. 3, reproduced below, which is
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`“an exemplary illustration of the architecture in the IVM client 208 for enabling
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`instant voice messaging according to the present invention.” Ex. 1001 at 12:4-
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`6. A POSITA would have understood that “architecture” in the context of FIG.
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`3, means the structure and functions of the software in the client computer. Ex.
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`2001 ¶26.
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`FIG. 3 in the ’622 Patent: Client Architecture
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`Referring to FIG. 3, the IVM client 208, which is a device that includes
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`software running on a processor, “comprises a client platform 302 for
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`generating an instant voice message and a messaging system 320 for messaging
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`between the IVM client 208 and the IVM server 202 for enabling instant voice
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`messaging.” Ex. 1001 at 12:7-10 (boldface added). Ex. 2001 ¶27. Petitioner
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`appears to contend that because the “written description does not identify any
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`particular software program capable of performing all of the functions
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`associated with the ‘instant voice messaging application’ recited in the claims,”
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`and because the “client” is a computer system that the “application” may be
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`hardware. Pet. at 7. This argument is incorrect. Ex. 2001 ¶¶27-32.
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`A patent need not include every detail of an invention if the descriptions
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`are adequate for a POSITA to understand it. FIG. 3 is such a case because it does
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`not explicitly show a labeled box for the “application” that comprises a “client
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`platform 302” and a “messaging system 320,” but a POSITA would have
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`understood that, despite the lack of an explicit application label in FIG. 3, the
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`application as claimed is an implied box around client platform 302 and
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`messaging system 320. Ex. 2001 ¶28. Furthermore, the application is software
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`(and not hardware) because it is comprised of two software blocks, the client
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`platform 302 and the messaging system 320. Ex. 2001 ¶28. This understanding
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`is confirmed by the remainder of the disclosure for several reasons.
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`First, the ’622 patent teaches that “[the] messaging system and the client
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`engine 304 communicate via standard inter-process communication.” Ex.
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`1001 at 12:21-23. A POSITA would have understood the term “inter-process
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`communication” as a term of art that refers to different parts of a software
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`application, known as “processes,” often executing simultaneously and
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`communicating information with each other. Thus, the messaging system and
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`the client platform must be software. Ex. 2001 ¶29.
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`Second, referring to FIG. 3, the term CLIENT ENGINE 304 informs a
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`POSITA that CLIENT ENGINE is software because the term “engine” is a
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`well-known term of art to describe software. Ex. 2001 ¶30. Each of the blocks
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`in client platform 302—Document Handler 306, Audio File 210, Audio File
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`Creation 312, File Manager 308, and Msg Database 310—inform a POSITA
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`that they are software because their functions are clearly implemented in
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`software in view of the written description. The document handler 306 “oversees
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`the retrieving, sending, receiving and storing of one or more documents (or files)
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`attached to instant voice messages ...” Ex. 1001 at 12:26-28. Ex. 2001 ¶30. The
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`file manager and database “accesses a message database,” and “services
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`requests from the user to record, delete, or retrieve messages to/from the
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`message database 310.” Ex. 1001 at 12:34-35 and 12:38-40. “Audio file creation
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`312 creates an instant voice message as audio file 210, and is responsible for ...
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`storing the input speech into audio file 210.” Id. at 12:40-44. The ’622 patent
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`includes similar descriptions for the signal processing, encryption/decryption,
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`and compression/decompression
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`functions of
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`the client engine 304.
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`Id. at 12:44-50. Ex. 2001 ¶30.
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`Third, Petitioner do not point to any support in the ’622 patent that
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`discloses hardware that performs any function of the messaging system or the
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`client platform. Ex. 2001 ¶31.
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`For at least the reasons presented in the section above and in the totality
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`of the ’622 patent, the term “instant voice message application” means “a
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`software program that performs instant voice messaging tasks and functions.”
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`Ex. 2001 ¶32.
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`In the absence of “persuasive evidence” that a term or word has “a
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`specially defined meaning in the field of art” encompassed by the patent, “the
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`ordinary and customary meaning attributed to this term by those of ordinary skill
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`in this art at the time of invention ‘involves little more than the application of
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`the widely accepted meaning of commonly understood words.’” Cat Tech LLC
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`v. TubeMaster, Inc., 528 F.3d 871, 884 (Fed. Cir. 2008) (citing Phillips v. AWH
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`Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)).
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`“client platform system”
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`Petitioner also incorrectly proposes to construe “client platform system”
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`as “hardware and/or software on a client for generating an instant voice
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`message.” Pet. at 9. Again, Petitioner relies upon its incorrect construction to
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`argue that the claimed client platform system is disclosed by Zydney. However,
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`for several independent reasons, a POSITA would have realized that this
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`construction cannot be correct. Ex. 2001 ¶33.
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`First, just as the Petitioners unreasonably include “hardware” in the
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`construction of “application,” they unreasonably include “hardware” in their
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`proposed construction of “client platform system.” As explained above
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`concerning the construction of “application,” the “client platform” is described
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`in FIG. 3 and is understood to be software. For the same reasons that an
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`“application” is software, a “client platform,” and thus, “client platform
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`system,” is also software. Ex. 2001 ¶34.
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`Second, the Petitioners specialize their proposed construction of “client
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`platform system” to the function “for generating an instant voice message.” This
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`construction conflicts with the specification that defines the “client platform
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`system”:
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`“the instant voice message client 208 comprises a client
`platform 302 for generating an instant voice message. .
`.. The client platform 302 comprises a client engine 304,
`which controls other components, namely the document
`handler 306, file manager 308, audio file creation 312,
`signal processing 314, encryption/decryption 316, and
`compression/decompression 318.”
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`Ex. 1001, 12:18-21 (boldface added). Ex. 2001 ¶34. Fig. 3 of the ’622 Patent
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`illustrates:
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`’622 Patent, Fig. 3 (red box annotation added). Thus, Fig. 3 illustrates that the
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`instant voice messaging client 208 includes a client platform 302 for generating
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`an instant voice message. The client platform 302 includes a client engine 304
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`which controls other components, including the document handler 306 and the
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`file manager 308 and components which handle aud
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