IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Rojas
`In re Patent of:
`
`8,995,433
`U.S. Pat. No.:
`March 31, 2015
`Issue Date:
`Appl. Serial No.: 14/224,125
`Filing Date:
`March 25, 2014
`Title:
` SYSTEM AND METHOD FOR INSTANT VOIP
`MESSAGING
`
`
`
`Attorney Docket No.: 19473-0371IP1
`
`
`
`DECLARATION OF PAUL S. MIN, Ph.D.
`
`
`
`1
`
`
`
`
`
`GOOGLE 1003
`
`
`
`Rojas
`In re Patent of:
`
`8,995,433
`U.S. Pat. No.:
`March 31, 2015
`Issue Date:
`Appl. Serial No.: 14/224,125
`Filing Date:
`March 25, 2014
`Title:
` SYSTEM AND METHOD FOR INSTANT VOIP
`MESSAGING
`
`
`
`Attorney Docket No.: 19473-0371IP1
`
`
`
`DECLARATION OF PAUL S. MIN, Ph.D.
`
`
`
`1
`
`
`
`
`
`GOOGLE 1003
`
`
`
`TABLE OF CONTENTS
`
`ASSIGNMENT ................................................................................................. 4
`I.
`II. QUALIFICATIONS ......................................................................................... 4
`III. LEGAL PRINCIPLES ...................................................................................... 9
`A. Anticipation ................................................................................................... 9
`B. Obviousness ................................................................................................. 10
`C. Claim Construction ...................................................................................... 12
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 13
`V. MATERIALS CONSIDERED ....................................................................... 14
`VI. BACKGROUND OF THE ’433 PATENT ..................................................... 16
`A. Subject Matter Overview............................................................................. 16
`B.
`File History of the ’433 Patent .................................................................... 19
`VII. OVERVIEW OF CONCLUSIONS FORMED AND PRIOR ART
`REFERENCES................................................................................................ 22
`VIII. ANALYSIS OF ZYDNEY (CLAIMS 9, 12-14, 17, 25) ................................ 23
`IX. ANALYSIS OF ZYDNEY IN VIEW OF STERN (CLAIMS 1-6, 11, AND
`16) ................................................................................................................... 38
`
`
`
`2
`
`
`
`X. ANALYSIS OF ZYDNEY IN VIEW OF STERN AND ENETE (CLAIMS 7
`AND 8) ............................................................................................................ 65
`XI. ANALYSIS OF ZYDNEY IN VIEW OF TRAPANI (CLAIM 10) .............. 74
`XII. ANALYSIS OF ZYDNEY IN VIEW OF DEMSKY (CLAIM 15) ............... 79
`XIII. ANALYSIS OF ZYDNEY IN VIEW OF KATSEFF (CLAIMS 18-24) ....... 84
`XIV. ANALYSIS OF ZYDNEY IN VIEW OF ENETE (CLAIMS 26-27) .........103
`XV. ADDITIONAL REMARKS .........................................................................109
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`I, Dr. Paul S. Min of St. Louis, Missouri, declare that:
`
`I.
`
`ASSIGNMENT
`
`I have been retained as a technical expert by counsel on behalf of
`
`Google Inc. (“Google” or “Petitioner”). I understand that Google is requesting that
`
`the Patent Trial and Appeal Board (“PTAB” or “Board”) institute inter partes
`
`review (“IPR”) proceedings of U.S. Patent No. 8,995,433 (“the ’433 patent”) (Ex.
`
`1001).
`
`
`
`I have been asked to provide my independent analysis of the ’433
`
`patent in light of the prior art publications cited below.
`
`
`
`I am not, and never have been, an employee of Google. I received no
`
`compensation for this declaration beyond my normal hourly compensation based
`
`on my time actually spent analyzing the ’433 patent, the prior art publications cited
`
`below, and the issues related thereto, and I will not receive any added
`
`compensation based on the outcome of any IPR or other proceeding involving
`
`the ’433 patent.
`
`II. QUALIFICATIONS
`
`I earned a Bachelor of Science degree in Electrical Engineering in
`
`1982, a Master of Science degree in Electrical Engineering in 1984, and a Ph.D.
`
`degree in Electrical Engineering in 1987, all from the University of Michigan in
`
`Ann Arbor. All of my degrees from the University of Michigan are with
`
`
`
`4
`
`
`
`distinction. In addition, I received several academic awards, including a best
`
`graduate student award and a best teaching assistant award, during my study at the
`
`University Michigan. I also received a best paper award in a major international
`
`symposium for the paper based on my Ph.D. thesis.
`
`
`
`After obtaining my Ph.D., I worked at Bellcore (now Telcordia
`
`Technologies, Inc.) in New Jersey from August 1987 until August 1990, as a lead
`
`engineer in major projects for the Regional Bell Operating Companies. In these
`
`projects, I was responsible for developing and analyzing next generation
`
`technologies to be incorporated in Regional Bell Operating Companies’
`
`communication networks, including transmission and switching technologies based
`
`on wireless and optical media and a variety of service and application
`
`infrastructures.
`
`
`
`In September 1990, I joined the faculty at Washington University in
`
`St. Louis. I was an Assistant Professor of Electrical Engineering until June 1996,
`
`and then was promoted to an Associate Professor of Electrical Engineering with
`
`tenure. Since July 2002, I have been an Associate Professor of Electrical and
`
`Systems Engineering at Washington University.
`
` My research activities at Washington University have focused on
`
`multi-media, high-speed communication and computing, including high
`
`performance switches and routers used in the Internet and in various types of local
`
`
`
`5
`
`
`
`area networks (“LANs”). I have received grants from the National Science
`
`Foundation, the Air Force Office of Scientific Research, and the Defense
`
`Advanced Research Project Agency. I have also received numerous grants and
`
`contracts from companies and organizations around the world, and have
`
`undertaken many research projects involving development of high performance
`
`switches and routers for the Internet and LANs, which include multi-media and
`
`multi-services capabilities.
`
`
`
`At Washington University, I have taught many courses in electronics,
`
`communications, and computing, and supervised more than 50 graduate students,
`
`10 of whom received a doctoral degree under my direction. I have trained a
`
`number of students in these fields, many of whom are now leading professionals in
`
`their respective specialties.
`
`
`
`Outside the university, I have also founded two companies: MinMax
`
`Technologies, Inc. (May 1997), a fabless semiconductor company, which
`
`developed switch fabric semiconductor chips for the Internet, and Erlang
`
`Technology, Inc. (March 1999), which focused on the design and development of
`
`semiconductor chips and software for the Internet. Erlang’s switch fabric chips
`
`received a best product of the year award for 2004 from a major Internet industry
`
`trade journal.
`
`
`
`6
`
`
`
`
`
`In 1996, I participated in a competitive wireless licensure process
`
`offered by the government of the Republic of Korea. Among numerous entries
`
`from Korea and overseas countries including many from the U.S.A., I was the
`
`primary technical author of the winning proposal by Hansol PCS for nation-wide
`
`deployment of Qualcomm's CDMA cellular technology. The Hansol PCS network,
`
`which I have designed, is one of the earliest commercial scale digital wireless
`
`networks in the world. I also understand that the Hansol PCS network may have
`
`been the first commercial scale CDMA wireless network in the world.
`
`
`
`I have also served as an advisor and consultant to a number of
`
`companies and organizations around the world, including Bell Atlantic Personal
`
`Communications, AT&T, SBC Communications, NTT Docomo, Korea Telecom,
`
`Southern New England Telecom, Electronics and Telecommunications Research
`
`Institute, and SK Telecom. For example, I have designed metropolitan scale
`
`wireless networks for Bell Atlantic Personal Communications (now Verizon
`
`Wireless) in 1995-1996, developed routing and switching technologies for
`
`Electronics and Telecommunications Research Institute during 1993-2003, and
`
`consulted on traffic management and service deployment for Korea Telecom
`
`during mid to late 1990s. Most of my advisory and consultant roles included
`
`development, deployment, and assessment of wireless and/or wired technologies
`
`integrated together to provide state-of-art communication infrastructures.
`
`
`
`7
`
`
`
`
`
`I have served on the program committee for the International
`
`Association of Science and Technology for Development International Conference
`
`on Communications, Internet and Information Technology, the Wireless and
`
`Optical Communications Conference, and the International Conference on
`
`Computer Communications and Networks.
`
`
`
`I am a member of, and actively involved in, professional
`
`organizations. For example, I am a Senior Member of the Institute of Electrical
`
`and Electronics Engineers (IEEE), an Ambassador of the McDonnell International
`
`Scholars Academy, the Secretary for the Saint Louis Section of the IEEE, and a
`
`member of the Eta Kappa Nu Honor Society for electrical engineers.
`
`
`
`I am a named inventor on nine U.S. patents and have authored
`
`numerous technical papers, reports, and memoranda, and presented at numerous
`
`conferences, seminars, and workshops around the world. I have also organized
`
`several international conferences and served as an editor for international journals.
`
`I have received a number of professional awards, such as the Wall Street Journal
`
`Businessman of the Year (2003), the Outstanding Achievement Award from
`
`Bellcore (1990), and the Rockwell Fellowship (1985 and 1986).
`
` Based on my experience and education, I believe that I am qualified to
`
`opine as to knowledge and level of skill of one of ordinary skill in the art at the
`
`time of the alleged invention of the ’433 patent (which I further describe below)
`
`
`
`8
`
`
`
`and what such a person would have understood at that time, and the state of the art
`
`during that time.
`
` My curriculum vitae, which includes a more detailed summary of my
`
`background, experience, and publications, is attached as Appendix A.
`
`III. LEGAL PRINCIPLES
`
`In forming my analysis and conclusions expressed in this declaration,
`
`I have applied the legal principles described in the following paragraphs, which
`
`were provided to me by counsel for the Petitioner.
`
`A. Anticipation
`
`I have been informed that a patent claim is invalid as anticipated
`
`under 35 U.S.C. § 102 if each and every element of a claim, as properly construed,
`
`is found either explicitly or inherently in a single prior art reference. Under the
`
`principles of inherency, if the prior art necessarily functions in accordance with, or
`
`includes the claimed limitations, it anticipates.
`
`
`
`I have been informed that a claim is invalid under 35 U.S.C. § 102(a)
`
`if the claimed invention was known or used by others in the U.S., or was patented
`
`or published anywhere, before the Applicant’s invention. I further have been
`
`informed that a claim is invalid under 35 U.S.C. § 102(b) if the invention was
`
`patented or published anywhere, or was in public use, on sale, or offered for sale in
`
`this country, more than one year prior to the filing date of the patent application
`
`
`
`9
`
`
`
`(critical date). And a claim is invalid, as I have been informed, under 35 U.S.C. §
`
`102(e), if an invention described by that claim was described in a U.S. patent
`
`granted on an application for a patent (or in a published application for a U.S.
`
`patent) that was filed by another in the U.S. before the date of invention for such a
`
`claim.
`
`B. Obviousness
`
`I have been informed that a patent claim is invalid as “obvious” under
`
`35 U.S.C. § 103 in light of one or more prior art references if it would have been
`
`obvious to a person of ordinary skill in the art at the time of the alleged invention
`
`(“POSITA”), taking into account (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the claims, (3) the level of ordinary skill in
`
`the art, and (4) any so called “secondary considerations” of non-obviousness,
`
`which include: (i) “long felt need” for the claimed invention, (ii) commercial
`
`success attributable to the claimed invention, (iii) unexpected results of the claimed
`
`invention, and (iv) “copying” of the claimed invention by others. While I do not
`
`know the exact date that the alleged invention claimed in the ’433 patent was
`
`made, I do know that the ’433 patent claims priority to applications filed as early
`
`as December 18, 2003 (Ex. 1001, cover page) and that during the prosecution of
`
`one of the priority applications, the applicant provided declarations testifying to an
`
`invention date as early as August 15, 2003 (Ex. 1004, 172-175). For purposes of
`
`
`
`10
`
`
`
`my analysis here, I have applied a date of August 15, 2003 as the date of the
`
`alleged invention in my obviousness analysis, although in many cases the same
`
`analysis would hold true even if the date of the alleged invention occurred earlier
`
`than August 15, 2003 (especially given the earlier publication or filing dates of the
`
`prior art in Exhibits 1005, 1006, 1007, 1008, 1009, and 1010 as described below).
`
`See, infra, ¶25.
`
`
`
`I have been informed that a claim can be obvious in light of a single
`
`prior art reference or multiple prior art references. To be obvious in light of a
`
`single prior art reference or multiple prior art references, there must be a reason
`
`that would have prompted a POSITA to modify the single prior art reference, or
`
`combine two or more references, in a manner that provides the elements of the
`
`claimed invention. This reason may come from a teaching, suggestion, or
`
`motivation to combine, or may come from the reference(s) themselves, the
`
`knowledge or “common sense” of a POSITA, or from the nature of the problem to
`
`be solved, and this reason may be explicit or implicit from the prior art as a whole.
`
`I have been informed that, under the law, the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. I also understand it is improper to rely on hindsight in
`
`making the obviousness determination.
`
`
`
`11
`
`
`
`C. Claim Construction
`
`I understand that, for purposes of my analysis in this inter partes
`
`review proceeding, the terms appearing in the patent claims should be interpreted
`
`according to their “broadest reasonable construction in light of the specification of
`
`the patent in which it appears.” 37 C.F.R. § 42.100(b). In that regard, I understand
`
`that the best indicator of claim meaning is its usage in the context of the patent
`
`specification as understood by a POSITA. I further understand that the words of
`
`the claims should be given their plain meaning unless that meaning is inconsistent
`
`with the patent specification or the patent’s history of examination before the
`
`Patent Office. Also, I understand that it is important not to import into a claim any
`
`limitation from the specification that is not part of the claim language. Under the
`
`broadest reasonable interpretation standard, an inventor can act as his own
`
`lexicographer for a claim term only where the inventor clearly and unambiguously
`
`sets forth an explicit definition of a claim term in the specification.
`
`
`
`I also understand that the words of the claims should be interpreted as
`
`they would have been interpreted by a POSITA at the time the alleged invention
`
`was made (not today). Because I do not know at what date the alleged invention
`
`was made, I have used the date of August 15, 2003 for reasons explained in ¶20
`
`(above) and ¶25 (below). However, the plain meanings/interpretations that I
`
`
`
`12
`
`
`
`employed in my analysis below would have also been correct if the date of
`
`invention was anywhere within the late-1990s to early-2000s.
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
` Based on my knowledge and experience in the field and my review of
`
`the ’433 patent and file history, I believe that a POSITA would have had at least a
`
`bachelor’s degree in computer science, electrical engineering, or a related field,
`
`and at least two years of experience in the field of telecommunications devices and
`
`systems, or an equivalent advanced education in the field of telecommunications
`
`systems. My analysis and conclusions as expressed herein are thus based on the
`
`perspective of a person of ordinary skill in the art having this level of knowledge
`
`and skill at the time of the’433 patent.
`
` Because Patent Owner has alleged a date of conception before August
`
`15, 2003, I have used this alleged invention date as the point in time from which
`
`my opinions from the perspective of one of ordinary skill in the art are based. Here
`
`again, my analysis of the prior art and the conclusion herein would also apply even
`
`if the date of the alleged invention as claimed was anywhere within the late-1990s
`
`to early-2000s (e.g., refer to the earlier publication or filing dates of Exhibits 1005,
`
`1006, 1007, 1008, 1009, and 1010).
`
`
`
`13
`
`
`
`V. MATERIALS CONSIDERED
` My analyses set forth in this declaration are based on my experience
`
`in the field of network communication systems and associated technologies. Based
`
`on my above-described experience in the field of network communication systems,
`
`I believe that I am considered to be an expert in the field. Also, based on my
`
`experiences, I understand and know of the capabilities of persons of ordinary skill
`
`in this field during the late-1990s to early-2000s and specifically during the time
`
`before the alleged invention date (August 15, 2003) for the ’433 patent, and I
`
`taught, participated in organizations, and worked closely with many such persons
`
`in the field during that time frame.
`
` As part of my independent analysis for this declaration, I have
`
`considered the following: the background knowledge/technologies that were
`
`commonly known to persons of ordinary skill in this field during the time before
`
`the alleged invention date for the ’433 patent; my own knowledge and experiences
`
`gained from my work experience in the fields of electrical engineering and
`
`network communication systems generally; my experience in teaching and
`
`advising others in those subjects; and my experience in working with others
`
`involved in those fields. In addition, I have analyzed the following publications
`
`and materials:
`
` U.S. Pat. No. 8,995,433 to Rojas (“the ’433 patent”) (Ex. 1001)
`
`
`
`14
`
`
`
` Prosecution History of the ’433 patent (Serial No. 14/224,125) (Ex.
`
`1002)
`
` Prosecution History of U.S. Pat. No. 7,535,890 (Serial No.
`
`10/740,030) (Ex. 1004)
`
` International Publication No. WO01/11824 (“Zydney”) (Ex. 1005)
`
` International Publication No. WO98/47252 (“Stern”) (Ex. 1006)
`
` International Publication No. WO02/087135 (“Trapani”) (Ex. 1007)
`
` U.S. Publication No. 2003/0182323 to Demsky et al. (“Demsky”) (Ex.
`
`1008)
`
` U.S. Pat. No. 6,301,258 to Katseff et al. (“Katseff”) (Ex. 1009)
`
` U.S. Publication No. 2003/0208543 to Enete et al. (“Enete”) (Ex.
`
`1010)
`
` Although this Declaration refers to selected portions of the cited
`
`references for the sake of brevity, it should be understood that these are examples,
`
`and that one of ordinary skill in the art would have viewed the references cited
`
`herein in their entirety and in combination with other references cited herein or
`
`cited within the references themselves. The references used in this Declaration,
`
`therefore, should be viewed as being incorporated herein in their entireties.
`
`
`
`15
`
`
`
`VI. BACKGROUND OF THE ’433 PATENT
`A.
`Subject Matter Overview
` The technology of the ’433 patent is directed to an “instant voice
`
`messaging (IVM) system.” Ex. 1001, 6:54-56. The IVM system includes an IVM
`
`server that provides instant voice messaging to IVM clients and that supports
`
`instant voice messaging for legacy telephones. Id., 6:61-65. A packet-switched
`
`Internet Protocol (IP) network interconnects the IVM clients and the legacy
`
`telephones to the IVM server. Id., 7:2-6, 7:27-28.
`
` An IVM client can be a general-purpose programmable computer
`
`equipped with a network interface to provide connectivity to the network. Id.,
`
`12:14-16. The IVM client includes a client platform for generating an instant
`
`voice message and a messaging system for messaging between the IVM client and
`
`the IVM server. Id., 12:8-13, FIG. 3. The client platform includes a client engine
`
`which controls other components such as the document handler, file manager,
`
`audio file creation, signal processing, encryption/decryption, and
`
`compression/decompression. Id., 12:19-52.
`
` The IVM client is connected to a microphone that enables the
`
`recording of an instant voice message into an audio file for transmission to the
`
`IVM server over the network. Id., 7:10-14. The IVM client is connected to an
`
`input device by which a user selects recipients that are to receive the recorded
`
`instant voice message. Id., 7:14-17. The IVM client is connected to a display
`16
`
`
`
`
`
`device to display instant voice messages recorded and received by the IVM client.
`
`Id., 7:19-21, 7:29-32. The IVM client is also connected to a speaker for audibly
`
`playing the instant voice messages. Id., 7:21-23.
`
` The IVM system supports a “record mode” and an “intercom mode”
`
`of operation. Id., 7:61-65. In the “record mode,” a user of the IVM client selects
`
`one or more recipients from a list of recipients displayed by the IVM client. Id.,
`
`8:2-8, 8:56-62, 13:15-17. The IVM client transmits the user’s selection of
`
`recipients to the IVM server. Id., 8:8, 8:62-63. The IVM client records the user’s
`
`speech into a digitized audio file, compresses and encrypts the audio file, and
`
`transmits the audio file to the IVM server. Id., 8:9-30, 8:63-9:16, 10:61-11:33,
`
`13:17-30. After receiving the audio file, the IVM server delivers the instant voice
`
`message to the selected recipients via the IP network. Id., 8:30-33, 9:16-18. If a
`
`recipient is not current connected to the IVM server, the IVM server temporarily
`
`saves the instant voice message and delivers it when the recipient connects to the
`
`IVM server. Id., 8:38-43, 9:21-25. The recipient’s device displays an indication
`
`that the instant voice message has been received and audibly plays the instant voice
`
`message. Id., 8:33-36, 9:18-21, 13:2-5.
`
`
`
`In the “intercom mode,” the IVM system provides real-time instant
`
`voice messaging. Id., 11:34-38. Instead of creating an audio file, the IVM client
`
`uses one or more buffers to write successive portions of the instant message. Id.,
`
`
`
`17
`
`
`
`11:38-43. Once a buffer is full, the IVM client transmits the content of the buffer
`
`to the IVM server for transmission to a recipient while writing the next successive
`
`portion to another buffer. Id., 11:43-51. The contents of the buffer can be
`
`encrypted and compressed before transmission. Id., 12:2-5. The buffering is
`
`repeated until the entire instant voice message has been transmitted to the IVM
`
`server for transmission to the recipient. Id., 11:51-60.
`
` Both recorded and received instant voice messages are stored in a
`
`message database of the IVM client and represented as database records. Id.,
`
`12:36-40. Each database record includes a message identifier and the instant voice
`
`message. Id. One or more documents may be attached to an instant voice message
`
`to be stored or displayed by a recipient. Id., 12:32-36, 13:30-40. A listing of
`
`available messages are displayed on the IVM client, and the messages stored in the
`
`database can be sent, played, deleted, and retrieved at the request of the user of the
`
`IVM client. Id., 12:28-42, 13:6-11.
`
` The ’433 patent describes traditional voice messaging used “in both
`
`the VoIP and PSTN” that were well-known prior to the ’433 patent, and further
`
`concedes that “[i]nstant text messaging is likewise known.” Id., 2:23-47. The ’433
`
`patent goes on to explain the widely known techniques for sending text messages
`
`by “select[ing] one or more persons to whom the message will be sent and typ[ing]
`
`
`
`18
`
`
`
`in a text message. The text message is sent immediately via the text-messaging
`
`server to the selected one or more persons.” Id. at 2:35-46.
`
` A significant portion of the ’433 patent specification is directed
`
`toward acknowledging techniques and features that were already well-known with
`
`respect to sending and receiving instant text messages and then applying them to
`
`voice messages. For example, the ’433 patent descries functions such as
`
`displaying a list of potential recipients for a message on a client device, allowing a
`
`user of the device “to select one or more recipients that are to receive the recorded
`
`instant voice message” and transmitting the instant voice message over a packet-
`
`switched network (e.g., the Internet, a WAN, or a LAN) to the one or more
`
`selected recipients. Id., 8:44-9:25; 7:14-26. Each of these features was well-
`
`known with respect to instant text messages prior to the earliest asserted priority
`
`date of the ’433 patent (as admitted by the ’433 patent itself) and are simply
`
`applied by the ’433 patent to instant voice messages rather than instant text
`
`messages. As I explain in greater detail below, these features were also well-
`
`known in the area of instant voice messaging long before the earliest asserted
`
`priority date of the ’433 patent, as exemplified by the Zydney reference.
`B.
`File History of the ’433 Patent
` As part of my preparation of this declaration, I reviewed the file
`
`history of the ’433 patent (Ex. 1002). I understand that the application that led to
`
`
`
`19
`
`
`
`the ’433 patent was filed on March 25, 2014, and claimed priority to an application
`
`that was filed on December 18, 2003. The ’433 patent eventually issued on March
`
`31, 2015. See Ex. 1001, Cover Page.
`
` The USPTO issued an office action on October 21, 2014. Ex. 1002,
`
`95-101. In that Office Action, the Examiner reject all original claims 1-14 based
`
`on nonstatutory double patenting. Id., 97-98. Additionally, claims 1 and 9 were
`
`rejected under 35 U.S.C. § 102(e), and claims 6, 7, 10, and 11 were rejected under
`
`35 U.S.C. § 103(a). Id., 98-100. In response, the Applicant amended independent
`
`claim 1 to include the features of “a file manager system” from claim 5. Id., 123.
`
` The USPTO subsequently issued another office action on February 5,
`
`2015, rejecting independent claim 1 and allowing independent claim 12 (now
`
`independent claim 9). Id., 149-153. In response to the second office action, the
`
`Applicant rewrote claims 2 and 8 as independent claims, incorporating the features
`
`of claim 1. Id., 159-164. In particular, claim 2 (now independent claim 1)
`
`included the features of “a message database” and “the instant voice message is
`
`represented by a database record including a unique identifier.” Id., 159. Claim 8
`
`(now independent claim 6) included the features of “a compression/decompression
`
`system.” Id., 160. Other than amending the claims to include limitations from
`
`allowed dependent claims, the Applicant never commented on any prior art
`
`reference in response to any office action. Id., 128-132, 145, 165-166.
`
`
`
`20
`
`
`
` The Examiner subsequently issued a Notice of Allowance on
`
`February 24, 2015, stating as reasons for allowance:
`
`The prior art fails to disclose applicant’s instant voice messaging
`system which stores the instant voice messages in a database with a
`unique identifier. Neither does the prior art disclose compressing and
`decompressing instant voice messages for transmission and reception
`over the packet-switched network/Internet.
`
`Id., 175. Based on my review of the record, it appears that some of the more
`
`pertinent references I listed above (and which I analyze below) were never cited in
`
`any office action by the Examiner during prosecution.
`
` As explained in detail below, based upon my knowledge and
`
`experience in this field and my review of the publications cited here, I do not agree
`
`that claims 1-27 are patentable over the prior art. The Zydney reference (Ex.
`
`1005), for example, does in fact provide a straightforward teaching of an instant
`
`voice messaging system that compresses/decompresses instant voice messages,
`
`attaches files to instant voice messages, and stores instant voice messages using
`
`unique identifiers. Furthermore, when Zydney is considered in view of the
`
`traditional practice of storing instant voice messages in a database, as described for
`
`example in the Stern reference (Ex. 1006), the predictable combination would have
`
`provided for a method that includes every element of the independent claims
`
`
`
`21
`
`
`
`including “the instant voice messaging application includes a message database
`
`storing the instant voice message.”
`
`VII. OVERVIEW OF CONCLUSIONS FORMED AND PRIOR ART
`REFERENCES
` This Declaration explains the conclusions that I have formed based on
`
`my independent analysis. To summarize those conclusions:
`
` Based upon my knowledge and experience, and my review of the
`
`prior art publications listed above, I believe that claims 9, 12-14, 17,
`
`and 25 of the ’433 patent are anticipated in light of International
`
`Publication No. WO01/11824 (“Zydney”).
`
` Based upon my knowledge and experience, and my review of the
`
`prior art publications listed above, I believe that claims 1-7, 11, and
`
`16 of the ’433 patent are obvious in light of Zydney in view of
`
`International Publication No. WO98/47252 (“Stern”).
`
` Based upon my knowledge and experience, and my review of the
`
`prior art publications listed above, I believe that claim 8 of the ’433
`
`patent is obvious in light of Zydney in view of Stern and U.S.
`
`Publication No. 2003/0208543 to Enete et al. (“Enete”)
`
` Based upon my knowledge and experience, and my review of the
`
`prior art publications listed above, I believe that claim 10 of the ’433
`
`
`
`22
`
`
`
`patent is obvious in light of Zydney in view of International
`
`Publication No. WO02/087135 (“Trapani”).
`
` Based upon my knowledge and experience, and my review of the
`
`prior art publications listed above, I believe that claim 15 of the ’433
`
`patent is obvious in light of Zydney in view of U.S. Publication No.
`
`2003/0182323 to Demsky et al. (“Demsky”).
`
` Based upon my knowledge and experience, and my review of the
`
`prior art publications listed above, I believe that claims 18-24 of
`
`the ’433 patent are obvious in light of Zydney in view of U.S. Patent
`
`6,301,258 to Katseff et al. (“Katseff”).
`
` Based upon my knowledge and experience, and my review of the
`
`prior art publications listed above, I believe that claims 26 and 27 of
`
`the ’433 patent are obvious in light of Zydney in view of Enete.
`
`VIII. ANALYSIS OF ZYDNEY (CLAIMS 9, 12-14, 17, 25)
` For the reasons articulated in detail below, and based on my review of
`
`the ’433 patent, file history, and the prior art references cited here, I am confident
`
`that a POSITA would have readily understood that the teachings of Zydney
`
`provide all elements of claims 9, 12-14, 17, and 25.
`
` Zydney describes a system for “voice exchange and voice distribution
`
`[that] allows a software agent with a user interface in conjunction with a central
`
`
`
`23
`
`
`
`server to send, receive and store messages using voice containers.” Ex. 1005, 2:1-
`
`3. Zydney describes that “voice containers can be stored, transcoded and routed to
`
`the appropriate recipients instantaneously or stored for later delivery.” Id., 1:24-
`
`25. Specifically, Zydney discloses the features identified by the examiner of
`
`the ’433 patent in the reasons for allowance that was allegedly missing from the
`
`prior art: “instant voice messaging system which stores the instant voice
`
`messages … with a unique identifier” and “compressing and decompressing instant
`
`voice messages for transmission and reception over the packet-switched
`
`network/Internet.” Id., 10:20-23, 34:4-8, 11:14-22, 16:1-15.
`
` Not only does Zydney disclose the features believed to be missing
`
`from the prior art, Zydney further discloses each and every element of claims 9,
`
`12-14, 17, and 25, including communication of instant voice messages over a
`
`packet switched network. FIGs. 1 and 1A (reproduced below) of Zydney show the
`
`system architecture of Zydney that allows for recording and transmission of instant
`
`voice messages to and from devices connected to both a packet-switched network
`
`(e.g., the Internet). Zydney’s system utilizes a sender software agent (22, yellow)
`
`interfacing with a central server (24, pink) to send a voice container (26) to a
`
`recipient software agent (28, blue). Id., 10
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
