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` Paper 10
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`Entered: March 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02067
`Patent 8,995,433 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122; 35 U.S.C. §§ 315(d), 325(d)
`
`
`
`
`
`1 Petitioner filed Updated Mandatory Notices alerting the Board that Google
`Inc. filed a Certificate of Conversion with the Delaware Secretary of State,
`whereby Google Inc. converted from a corporation to a limited liability
`company and changed its name to Google LLC. Paper 5.
`
`
`
`IPR2017-02067
`Patent 8,995,433 B2
`
`
`Petitioner filed a Petition requesting inter partes review of claims 127
`of U.S. Patent No. 8,995,433 B2 (Ex. 1001, “the ’433 patent”). Paper 2
`(“Pet.”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). Petitioner filed a Reply to Patent
`Owner’s Preliminary Response, upon authorization of the Board, to address
`Patent Owner’s arguments concerning application of the Board’s institution
`discretion under 35 U.S.C. §§ 314(a) and 325(d). Paper 9.
`We have authority under 35 U.S.C. § 314. Upon considering the
`information presented in the Petition, the Preliminary Response, and Reply,
`and for reasons discussed below, we deny the Petition and do not institute
`inter partes review of claims 127 of the ’433 patent.
`
`I.
`
`BACKGROUND
`
`A. Real Parties In Interest and Related Matters
`Petitioner asserts that following entities are real parties in interest:
`Motorola Mobility, LLC, Huawei Device Co., Ltd., Huawei Device USA,
`Inc., Huawei Investment & Holding Co., Ltd., Huawei Technologies Co.,
`Ltd., and Huawei Device (Dongguan) Co., Ltd. Pet. 1.
`Petitioner indicates that the ’433 patent has been asserted against
`Motorola Mobility LLC in the Eastern District of Texas. Id. at 12
`(identifying Case No. 2:16-cv-992). Petitioner also indicates that a
`complaint was filed against the Huawei entities (Case No. 2:16-cv-994). Id.
`at 2. Finally, Petitioner asserts that Patent Owner filed, in the Eastern
`District of Texas, several complaints against Petitioner (Case Nos. 2:17-cv-
`465, 2:17-cv-466, 2:17-cv-467, 2:17-cv-231, 2:17-cv-224, 2:17-cv-214). Id.
`
`2
`
`
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`IPR2017-02067
`Patent 8,995,433 B2
`
`
`The ’433 patent is the subject matter of several inter partes reviews:
`IPR2017-00225 (instituted May 25, 2017), IPR2017-01427 (instituted
`December 4, 2017), and IPR2017-01428 (instituted December 4, 2017).
`
`B. The ’433 Patent
`The ’433 patent relates to Internet telephony, and more particularly, to
`instant voice over IP (“VoIP”) messaging over an IP network, such as the
`Internet. Ex. 1001, 1:1923. The ’433 patent acknowledges that “instant
`text messaging is [] known” in the VoIP and public switched telephone
`network (“PSTN”) environments, with its server presenting the user a “list
`of persons who are currently ‘online’ and ready to receive text messages on
`their own client terminals.” Id. at 2:3542. In one embodiment, such as
`depicted in Figure 2 (reproduced below), the system of the ’433 patent
`involves an instant voice message (“IVM”) server and IVM clients. Id. at
`7:2122.
`
`
`
`3
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`IPR2017-02067
`Patent 8,995,433 B2
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`
`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`local IVM server 202, where IVM client 206 is a VoIP telephone, and where
`legacy telephone 110 is connected to legacy switch 112 and further to media
`gateway 114. Id. at 7:2749. The media gateway converts the PSTN audio
`signal to packets for transmission over a packet-switched IP network, such
`as local network 204. Id. at 7:4953. In one embodiment, when in “record
`mode,” the user of an IVM client selects one or more IVM recipients from a
`list. Id. at 8:25. The IVM client listens to the input audio device and
`records the user’s speech into a digitized audio file at the IVM client. Id. at
`8:1215. “Once the recording of the user’s speech is finalized, IVM client
`208 generates a send signal indicating that the digitized audio file 210
`(instant voice message) is ready to be sent to the selected recipients.” Id. at
`8:1922. The IVM client transmits the digitized audio file to the local IVM
`server, which, thereafter, delivers that transmitted instant voice message to
`the selected recipients via the local IP network. Id. at 8:2526. Only the
`available IVM recipients, currently connected to the IVM server, will
`receive the instant voice message. Id. at 8:3638. If a recipient “is not
`currently connected to the local IVM server 202,” the IVM server
`temporarily saves the instant voice message and delivers it to the IVM client
`when the IVM client connects to the local IVM server (i.e., is available). Id.
`at 8:3843.
`The ’433 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:3437. The specification states that the “intercom
`mode” represents real-time instant voice messaging. Id. at 11:3738. In this
`mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
`4
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`IPR2017-02067
`Patent 8,995,433 B2
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`Id. at 11:3841. Successive portions of the instant voice message are
`written to the one or more buffers, which as they fill, automatically transmit
`their content to the IVM server for transmission to the one or more IVM
`recipients. Id. at 11:4146. Buffering is repeated until the entire instant
`voice message has been transmitted to the IVM server. Id. at 11:4659.
`
`C. Illustrative Claim
`Of the challenged claims, claim 1, 6, and 9 are independent. Claim 1
`is illustrative, and is reproduced below.
`1.
`A system comprising:
`an instant voice messaging application including a client
`platform system for generating an instant voice message and a
`messaging system for transmitting the instant voice message
`over a packet-switched network via a network interface;
`wherein the instant voice messaging application displays
`a list of one or more potential recipients for the instant voice
`message;
`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; and
`wherein the instant voice messaging application includes
`a file manager system performing at least one of storing, deleting
`and retrieving the instant voice messages from the message
`database in response to a user request.
`Ex. 1001, 23:6524:14.
`
`5
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`Patent 8,995,433 B2
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`
`D. Asserted Prior Art and Grounds of Unpatentability
`This proceeding relies on the following prior art references:
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published February
`15, 2001, filed in the record as Exhibit 1005 (with line numbers
`added by Petitioner);
`
`b) Stern: PCT App. Pub. No. WO 98/47252, published October 22,
`1998, filed in the record as Exhibit 1006;
`
`c) Enete: US 2003/0208543 A1, published November 6, 2003, filed
`in the record as Exhibit 1010;
`
`d) Trapani: PCT App. Pub. No. WO 02/087135 A2, published
`October 31, 2002, filed in the record as Exhibit 1007;
`
`e) Demsky: US 2003/0182323 A1, publication date September 25,
`2003, filed in the record as Exhibit 1008; and
`
`f) Katseff: US 6,301,258 B1, issued October 9, 2001, filed in the
`record as Exhibit 1009.
`
`Petitioner asserts two grounds of unpatentability (Pet. 67):
`
`Challenged
`Claim(s)
`9, 1214, 17, 25
`
`Basis
`
`§ 102
`
`Zydney
`
`Reference(s)
`
`16, 11, 16
`
`§ 103(a)
`
`Zydney and Stern
`
`7, 8
`
`10
`
`§ 103(a)
`
`Zydney, Stern, and Enete
`
`§ 103(a)
`
`Zydney and Trapani
`
`6
`
`
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`IPR2017-02067
`Patent 8,995,433 B2
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`
`Challenged
`Claim(s)
`15
`
`Basis
`
`Reference(s)
`
`§ 103(a)
`
`Zydney and Demsky
`
`1824
`
`2627
`
`§ 103(a)
`
`Zydney and Katseff
`
`§ 103(a)
`
`Zydney and Enete
`
`Petitioner also relies on a Declaration of Paul S. Min, Ph.D., filed as
`Exhibit 1003.
`
`II. DISCRETIONARY AUTHORITY: 35 U.S.C §§ 315(d) and 325(d)
`Section 325(d) states that “[i]n determining whether to institute . . .
`the Director may take into account whether, and reject the petition . . .
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.” In this proceeding, Patent Owner argues that
`the same or substantially the same prior art has been presented to the Office
`previously because Zydney has been asserted in multiple inter partes
`reviews. Prelim. Resp. 3. Specifically, Zydney has been asserted by a
`different petitioner in IPR2017-01427 and IPR2017-01428, which we
`instituted in December 4, 2017, and which also address the ’433 patent (“the
`previous IPRs”).
`Petitioner responds that we should not exercise our discretion because
`although Zydney has been presented previously, the Petition presents
`different combinations with Zydney, such as by including the references
`Stern, Enete, Trapani, Demsky, and Katseff. Reply 2. Petitioner also
`proffers that Google has not filed any previous petition challenging the
`’433 patent, thus precluding the characterization of this proceeding as a
`
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`Patent 8,995,433 B2
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`follow-on petition. Id. at 1. Finally, Petitioner argues that dependent claims
`13, 1824, and 27 have never been challenged on a ground based on
`Zydney, and that where, as here, the Petitioner is different from any
`petitioner of previously filed petitions based on Zydney, the facts weigh
`heavily against a discretionary denial. Id. at 23. We are not persuaded by
`Petitioner’s arguments.
`There is no question that Zydney has been previously presented to the
`Office in the previous IPRs challenging the ’433 patent. The question is
`whether, based on this fact, we should exercise our discretion and deny the
`Petition. Applicability of § 325(d) is not limited to situations where the
`same petitioner has filed a follow-on petition. The statute allows for the
`exercise of discretion upon consideration only of whether the same or
`substantially the same prior art or arguments were presented previously to
`the Office. Further, the statutory authority to deny the petition based on the
`same previously presented prior art is not tied to the format of how that prior
`art is presented or whether every aspect of the asserted grounds is identical
`in both petitions. Therefore, we have statutory authority to deny this
`Petition because Zydney was previously presented to the Office in the
`previous IPRs, notwithstanding that Petitioner is not a party to the previous
`IPRs and the asserted grounds here are not exactly the same as the previous
`IPRs.
`We further note that under the current circumstances, where the
`patent-at-issue is involved in ongoing trials,2 we also have discretionary
`
`
`2 Trials in IPR2017-00225, IPR2017-01427, and IPR2017-01428 are
`pending as of the issuance of this Decision.
`8
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`Patent 8,995,433 B2
`
`authority, under 37 C.F.R. § 42.122, to issue “any appropriate order
`regarding the additional matter[, i.e., this proceeding,] including providing
`for the stay, transfer, consolidation, or termination or any such matter.” See
`35 U.S.C. § 315(d). We recognize that in exercising our discretion we
`determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in
`a manner consistent with securing the just, speedy, and inexpensive
`resolution of the proceeding (37 C.F.R. § 42.1(b)).
`Here, our exercise of discretion to deny institution under §§ 315(d)
`and 325(d) is warranted for several reasons. To start with, the previous IPRs
`and the present Petition rely on Zydney as the primary reference against
`which the majority of the claim limitations are mapped. Petitioner has
`proffered no reasoning regarding how it has relied on Zydney in any way
`that differs materially from the previous IPRs. And Petitioner’s reliance on
`different secondary references does not remedy this shortcoming. Moreover,
`Petitioner, here, does not explain whether the secondary references in this
`case are used in a different manner or add anything materially different to
`the secondary references used in the previous IPRs.
`Further, Zydney is being considered on the merits in pending IPRs. In
`fact, two trials regarding the ’433 patent are ongoing, with Zydney as the
`hallmark, i.e., a distinctive feature, of those trials. See IPR2017-01427 and
`IPR2017-01428. Under these circumstances, we look to Petitioner to
`provide some reason that convinces us to institute yet another trial that
`features Zydney as prominently as the previously presented IPRs. Again, if
`there was a manner in which Petitioner here distinguishably relied on
`Zydney, Petitioner did not proffer that fact explicitly.
`
`9
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`
`Moreover, the time of filing of this Petition leads us to conclude that
`Petitioner gained the benefit of Patent Owner’s preliminary responses in the
`previous IPRs. Patent Owner filed those responses on September 9, 2017.
`Three days later Petitioner filed the instant petition. Petitioner, as the party
`with the knowledge of this fact, failed to allege that it did not gain the
`benefit of the preliminary responses in previous IPRs. We look to Petitioner
`to explain its delay in its filing. Petitioner provides no reason here.
`Finally, although not a dispositive fact, we note that in the previous
`IPRs, Patent Owner requested authorization to file a motion to amend
`challenged claims of the ’433 patent. This fact raises concerns regarding the
`complexity and potential for inconsistency inherent in allowing this
`proceeding to occur in tandem with ongoing trials that arise in large part
`from the considerable role Zydney plays each proceeding. Further, we are
`concerned not only with ensuring consistency across multiple trials focused
`on Zydney, but also with administrative efficiency because significant
`resources of the Board would be consumed reconciling arguments, issues,
`and evidence across multiple, independent trials,3 especially in light of the
`forthcoming motion to amend in the previous IPRs. Cf. Heckler v. Chaney,
`470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to
`take action in a particular matter, must determine whether its resources are
`best spent on one matter or another).
`With regard to the non-overlap of claims between the previous IPRs
`and those challenged in this Petition, we recognize the interests of Petitioner
`in challenging claims that are not challenged in the previous IPRs (i.e.,
`
`
`3 See MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373 (Fed. Cir. 2018).
`10
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`IPR2017-02067
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`
`claims 13, 1824, and 27). The interest of Petitioner in this regard weigh
`heavily against our exercise of discretion. But we can exercise our
`discretion in a manner that balances the interests of Petitioner in challenging
`different claims here with the concern for duplication of Board resources and
`repeated challenges against the same claims of the same patents over
`Zydney, either alone or in combination with other references.
`Therefore, based on the foregoing and to secure the just, speedy, and
`inexpensive resolution of the dispute, we exercise our discretion under
`§§ 315(d) and 325(d), and deny institution of all challenged claims that
`overlap with the previous IPRs, namely, claims 112, 1417, 25, and 26.
`We do not exercise our discretion to deny institution with respect to the
`claims that have not been challenged in the previous IPRs: claims 13,
`1824, and 27.
`
`III. DISCUSSION OF CONSIDERED GROUNDS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). We presume a claim
`term carries its plain meaning, which is the meaning customarily used by
`those of skill in the relevant art at the time of the invention. Trivascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). We note that only
`those claim terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`
`11
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`For purposes of determining whether to institute review, we need not
`construe expressly any term.
`
`B. Overview of Zydney
`Zydney, titled “Method and System for Voice Exchange and Voice
`Distribution,” relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
`Ex. 1005, [54], [57], 1:4–5. While acknowledging that e-mail and instant
`messaging systems were well-known text-based communication systems
`utilized by users of on-line services and that it was possible to attach files for
`the transfer of non-text formats via those systems, Zydney states that the
`latter technique “lack[ed] a method for convenient recording, storing,
`exchanging, responding and listening to voices between one or more parties,
`independent of whether or not they are logged in to their network.” Id. at
`1:7–17. Zydney thus describes a method in which “voice containers”—i.e.,
`“container object[s] that . . . contain[] voice data or voice data and voice data
`properties”—can be “stored, transcoded and routed to the appropriate
`
`12
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`Patent 8,995,433 B2
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`recipients instantaneously or stored for later delivery.” Id. at 1:19–22; 12:6–
`8. Figure 1 of Zydney is reproduced below.
`
`
`Figure 1, above, illustrates a high level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
`Referring to Figure 1, system 20 allows software agent 22, with a user
`interface, in conjunction with central server 24 to send messages using voice
`containers illustrated by transmission line 26 to another software agent 28,
`as well as to receive and store such messages, in a “pack and send” mode of
`operation. Id. at 10:20–11:1. Zydney explains that a pack and send mode of
`operation “is one in which the message is first acquired, compressed and
`then stored in a voice container 26 which is then sent to its destination(s).”
`Id. at 11:1–3. The system has the ability to store messages both locally and
`centrally at server 24 whenever the recipient is not available for a prescribed
`period of time. Id. at 11:3–6.
`
`13
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`
`In the use of Zydney’s system and method, the message originator
`selects one or more intended recipients from a list of names that have been
`previously entered into the software agent. Id. at 14:17–19. The agent
`permits distinct modes of communication based on the status of the
`recipient, including the “core states” of whether the recipient is online or
`offline and “related status information” such as whether the recipient does
`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
`software agent offers the originator alternative ways to communicate with
`the recipient, the choice of which can be either dictated by the originator or
`automatically selected by the software agent, according to stored rules. Id.
`at 15:3–6. If the recipient is online, the originator can either begin a
`real-time “intercom” call, which simulates a telephone call, or a voice instant
`messaging session, which allows for an interruptible conversation. Id. at
`15:8–10. If the recipient is offline, the originator can either begin a voice
`mail conversation that will be delivered the next time the recipient logs in or
`can be delivered to the recipient’s e-mail as a digitally encoded
`Multipurpose Internet Mail Extension (“MIME”) attachment. Id. at 15:15–
`17. Zydney explains that the choice of the online modes “depends on the
`activities of both parties, the intended length of conversation and the quality
`of the communication path between the two individuals, which is generally
`not controlled by either party,” and that the choice of the offline delivery
`options “is based on the interests of both parties and whether the recipient is
`sufficiently mobile that access to the registered computer is not always
`available.” Id. at 15:10–14, 15:17–19.
`Once the delivery mode has been selected, the originator digitally
`records messages for one or more recipients using a microphone-equipped
`
`14
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`device and the software agent. Id. at 16:1–3. The software agent
`compresses the voice and stores the file temporarily on the PC if the voice
`will be delivered as an entire message. Id. at 16:3–4. If the real-time
`“intercom” mode has been invoked, a small portion of the digitized voice is
`stored to account for the requirements of the Internet protocols for
`retransmission and then transmitted before the entire conversation has been
`completed. Id. at 16:4–7. Based on status information received from the
`central server, the agent then decides on whether to transport the voice
`containers to a central file system and/or sends it directly to another software
`agent using the IP address previously stored in the software agent. Id. at
`16:7–10. If the intended recipient has a compatible active software agent on
`line after log on, the central server downloads the voice recording almost
`immediately to the recipient. Id. at 16:10–12. The voice is uncompressed
`and the recipient can hear the recording through the speakers or headset
`attached to its computer. Id. at 16:12–14. The recipient can reply in a
`complementary way, allowing for near real-time communications. Id. at
`16:14–15. If the recipient’s software agent is not on line, the voice
`recording is stored in the central server until the recipient’s software agent is
`active. Id. at 16:15–17. In both cases, the user is automatically notified of
`available messages once the voice recordings have been downloaded to
`storage on their computer. Id. at 16:17–19. The central server coordinates
`with software agents on all computers continuously, updating addresses,
`uploading and downloading files, and selectively retaining voice recordings
`in central storage. Id. at 16:19–21.
`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Id. at 19:6–7. Formatting the container using
`
`15
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`MIME format, for example, “allows non-textual messages and multipart
`message bodies attachments [sic] to be specified in the message headers.”
`Id. at 19:7–10.
`
`C. Analysis of Petitioner’s Contentions
`
`Petitioner challenges claims 13, 1824, and 27 relying primarily on
`Zydney. Pet. 7. For example, Petitioner asserts that Zydney anticipates
`claim 13 because, in addition to Zydney disclosing the limitations of
`independent claim 9, Zydney discloses a software agent that “offers the
`originator alternative ways to communicate with the recipient,” and one of
`those alternatives is the intercom mode. Pet. 1618. Petitioner also relies
`on Zydney, in combination with Katseff, as teaching the elements of claims
`1824. Pet. 5365. Petitioner relies on Katseff for its disclosure of data
`buffers. See, e.g., id. at 61 (citing Ex. 1008, 3:543, 3:644:19, Fig. 1; Ex.
`1003 ¶¶ 136, 146-47). Finally, with regard to claim 27, Petitioner relies on
`Zydney’s teachings, but argues that the combination of Zydney and Enete
`would render obvious claim 27 because of its dependence from claim 26.
`Pet. 69. We analyze each of these challenges below.
`
`1. Claim 13
`We determine that Petitioner has not demonstrated a reasonable
`likelihood of prevailing with regard to its contention that claim 13 is
`anticipated by Zydney. In particular, we find that Petitioner has failed to
`show that Zydney’s software agent “displays a selectable control for
`generating an instant voice message using an intercom mode.” This is an
`anticipation challenge, which requires that the art disclose each and every
`limitation of the claim, in the same arrangement as claimed. Net MoneyIn,
`
`16
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`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The Board
`cannot fill in the gaps and consider what an ordinary artisan might
`supplement or envisage. Net MoneyIn, 545 F.3d at 1372; Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor, 851 F.3d 1270, 1274–75 (Fed. Cir. 2017)
`(The Board is not permitted to “fill in missing limitations simply because a
`skilled artisan would immediately envision them.”).
`The Petition sets forth that Zydney teaches a “selectable control”
`because the software agent permits a number of distinct modes of
`communication and that the originator selects a delivery mode, i.e., intercom
`mode. Pet. 1718. But with regard to the display of the “selectable
`control,” Petitioner states that “Zydney plainly teaches that its software
`agent’s user interface displays a selectable control for generating an instant
`voice message using an intercom mode based on the connectivity status
`(e.g., status of the recipient) of an intended recipient.” Pet. 18 (citing Ex.
`1003 ¶ 58). In support, the Min Declaration mentions “display” in reference
`to selecting the recipients, stating, “Once the originator has selected the
`recipients from the display, Zydney’s system allows the originator to select a
`delivery option depending on which ‘core state’ the intended recipient is
`in—online or offline.” Id. This is insufficient support for demonstrating
`that Zydney discloses the display limitation of claim 13.
`Claim 13 recites that the “instant voice messaging application displays
`a selectable control for generating an instant voice message using an
`intercom mode.” Neither the Petition nor the Min Declaration addresses the
`display of the “selectable control for generating an instant voice message.”
`At best, the Min Declaration adduces to the display of a list of recipients and
`their selection. But there is no explanation as to the display of the
`
`17
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`“selectable control” in Zydney or citation of evidence that Zydney displays
`any selection such that it can generate a voice message in intercom mode.
`Without evidence that Zydney discloses the recited “display,” we are
`unpersuaded by Petitioner’s arguments that Zydney anticipates the claim.
`Therefore, Petitioner’s contention of unpatentability regarding claim 13 does
`not meet the reasonable likelihood institution threshold.
`
`2. Claims 1824
`We determine that Petitioner has not demonstrated a reasonable
`likelihood of prevailing with regard to its contention that claims 1824 are
`unpatentable over Zydney and Katseff. Pet. 5365. Claim 18 requires that
`the “client platform system transmits each successive buffered portion to the
`instant voice messaging server for delivery to the one or more intended
`recipients.” Petitioner has not shown that Zydney in combination with
`Katseff teaches or suggests this limitation. Petitioner relies on Zydney’s
`disclosure of the “real time ‘intercom mode’” (Pet. 53) and alleges that
`Zydney’s software agent “also transmits voice containers to the central
`server for delivery” (id. at 54). Although we agree with Petitioner that
`Zydney uses an intercom mode to transmit voice messages in real time by
`transmitting “successive” portions, none of Petitioner’s citations to Zydney
`show that any of those “successive” portions are transmitted to the central
`server for delivery to a recipient.
`Petitioner’s reliance on page 16, lines 710 of Zydney are misplaced.
`We do not agree with Petitioner that the cited portion of Zydney refers to the
`transmission of intercom mode voice messages to the central server. Page
`15 of Zydney explains that the intercom mode occurs (a) when the recipient
`is online; and (b) as a peer-to-peer communication. Ex. 1005, 15:814. On
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`that same page, Zydney explains that voice containers are delivered to the
`central server when the recipient is offline. Id. at 15:1521. Petitioner has
`not explained how Zydney’s voice container discloses the successive
`portions, nor has Petitioner shown any embodiment in which Zydney’s
`intercom mode communications transmit buffered portions to the central
`server. Accordingly, Petitioner has failed to demonstrate a reasonable
`likelihood of prevailing in its contention that Zydney in view of Katseff
`teaches or suggests the subject matter of claim 18, and, thus, any of its
`dependents therefrom (claims 1924).
`
`3. Claim 27
`Claim 27 depends from claim 26, which depends from claim 25,
`which depends from claim 17. Claims 17 and 25 recite as follows:
`17. The system according to claim 9 further
`comprising an instant voice messaging server receiving
`the instant voice message and an indication of one or more
`intended recipients of the instant voice message.
`25. The system of claim 17 wherein the instant
`voice messaging server determines availability of the one
`or more intended recipients for receipt of the instant voice
`message.
`
`Ex. 1001, 25:2528, 26:1821. Petitioner challenges claims 17 and 25 as
`anticipated by Zydney. Pet. 2022. In particular, Petitioner cites to the
`portions of Zydney that describe the “pack and send mode,” in which the
`“message is first acquired, compressed and then stored in a voice container
`26 which is then sent to its destination(s).” Id. at 21 (citing, for example,
`Ex. 1005, 11:123). The portion Petitioner cites also states that Zydney
`provides the “ability to store messages 30 both locally and centrally at the
`server whenever the recipient is not available for a prescribed period of
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`time.” Ex. 1005 11:46. Thus, Petitioner contends that Zydney anticipates
`the “instant voice messaging server” features recited in claim 17 because in
`the “pack and send mode” Zydney delivers a voice container to the central
`server, which stores the voice container for a prescribed period of time.
`For claim 25, Petitioner points out that Zydney maintains the status of
`the recipients, whether they are “online or offline, but also offers related
`status information, for example whether the recipient does not want to be
`disturbed.” Pet. 22 (citing Ex. 1005, 14:2215:1). Based on Zydney’s
`disclosures of the central server maintaining status of software agents in this
`manner, Petitioner concludes that Zydney’s central server determines the
`availability of a recipient for receipt of a voice container, just as required by
`claim 25. Id. (citing Ex. 1003 ¶ 62).
`We are not persuaded that Petitioner’s anticipation challenge to claim
`25 is adequate. Claim 25 requires that the server determine availability of
`“the one or more intended recipients for receipt of the instant voice
`message.” That is, the server’s availability determination is for the intended
`recipients recited in claim 17. In Zydney, the determination of availability,
`and thus why the voice containers are sent to the central server, is made by
`the software agent, not the central server. Zydney notably states that:
`“Based on the status information received from the central server, the agent
`then decides on whether to transport the voice containers to a central file
`system and/or sends it directly to another software agent using the IP address
`previously stored in the software agent.” Ex. 1005, 16:710 (emphasis
`added). Thus, the central server tracks or detects the status of all software
`agents (id. at 14:89, 40:45), and it conveys that information to the
`software agents (id. at 14:2022). The central server, however, receives a
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`voice container after the software agent has made the determination that the
`intended recipient of that voice container is no