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
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,995,433
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`TABLE OF CONTENTS
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R §42.8 ..................................... 1
`A. Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1) ................................ 1
`B. Related Matters Under 37 C.F.R. §42.8(b)(2) ............................................ 1
`C. Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3) ....................... 5
`D. Service Information .................................................................................... 6
`PAYMENT OF FEES – 37 C.F.R. §42.103 .................................................... 6
`III.
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104 ............................. 6
`A. Grounds for Standing Under 37 C.F.R. §42.104(a) ................................... 6
`B. Challenge Under 37 C.F.R. §42.104(b) and Relief Requested .................. 6
`SUMMARY OF THE ’433 PATENT ............................................................. 9
`A. Brief Description ........................................................................................ 9
`B. Summary of the Prosecution .................................................................... 10
`VI. Claim Construction under 37 C.F.R. §42.104(b)(3) ...................................... 11
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’433 PATENT IS UNPATENTABLE .................... 12
`A. Ground 1: Claims 9, 12-14, 17, and 25 are Anticipated under
`§102(b) by Zydney ................................................................................... 12
`B. Ground 2: Claims 1-6, 11, and 16 are Obvious under §103 based
`on Zydney and Stern ................................................................................. 22
`C. Ground 3: Claims 7 and 8 are Obvious under §103 based on
`Zydney in view of Stern and Enete .......................................................... 42
`D. Ground 4: Claim 10 is Obvious under §103 based on Zydney in
`view of Trapani ......................................................................................... 47
`E. Ground 5: Claim 15 is Obvious under §103 based on Zydney in
`view of Demsky ........................................................................................ 50
`F. Ground 6: Claims 18-24 are Obvious under §103 based on Zydney
`in view of Katseff ..................................................................................... 53
`G. Ground 7: Claims 26-27 are Obvious under §103 based on Zydney
`in view of Enete ........................................................................................ 65
`VIII. CONCLUSION .............................................................................................. 69
`
`i
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`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`
`EXHIBITS
`
`GOOGLE1001 U.S. Pat. No. 8,995,433 to Rojas (“the ’433 patent”)
`
`GOOGLE1002
`
`Prosecution History of the ’433 patent (Serial No. 14/224,125)
`
`GOOGLE1003 Declaration of Dr. Paul S. Min
`
`GOOGLE1004
`
`Prosecution History of U.S. Pat. No. 7,535,890 (Serial No.
`10/740,030)
`
`GOOGLE1005
`
`International Publication No. WO01/11824 (“Zydney”)
`
`GOOGLE1006
`
`International Publication No. WO98/47252 (“Stern”)
`
`GOOGLE1007
`
`International Publication No. WO02/087135 (“Trapani”)
`
`GOOGLE1008 U.S. Publication No. 2003/0182323 to Demsky et al.
`(“Demsky”)
`
`GOOGLE1009 U.S. Pat. No. 6,301,258 to Katseff et al. (“Katseff”)
`
`GOOGLE1010 U.S. Publication No. 2003/0208543 to Enete et al. (“Enete”)
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`
`I.
`
`INTRODUCTION
`Google Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) of
`
`claims 1-27 of U.S. Patent 8,995,433 (“the ’433 patent”). The specification of the
`
`’433 patent describes “an instant voice messaging system for delivering instant
`
`messages over a packet-switched network.” GOOGLE1001, 2:61-63. As
`
`explained below and in the accompanying testimony of Dr. Paul S. Min, Ph.D., a
`
`number of publications such as Zydney (GOOGLE1005) show that patentee’s
`
`claimed solution for an instant voice messaging system was known in the prior art
`
`before 2003. Zydney and the predictable combinations cited in Grounds 1-7 were
`
`not considered during prosecution. If they had been, the ’433 patent never would
`
`have issued. Petitioner therefore requests the Board to institute IPR of claims 1-27
`
`as set forth below.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R §42.8
`A. Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1)
`Google Inc. is the Petitioner. Google is a real party-in-interest in this
`
`proceeding, along with 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.
`
`B. Related Matters Under 37 C.F.R. §42.8(b)(2)
`Patent Owner filed a complaint on September 6, 2016 in the U.S. District
`
`Court for the Eastern District of Texas (Case No. 2:16-cv-992) alleging that
`
`1
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`Motorola Mobility LLC infringed the ’433 patent. The complaint was served on
`
`September 13, 2016. Patent Owner also filed another complaint on September 6,
`
`2016 (Case No. 2:16-cv-994) alleging that Huawei Device USA, Inc. and Huawei
`
`Technologies USA, Inc. infringed the ’433 patent (the complaint was also served
`
`on September 13, 2016). On October 6, 2016, Patent Owner filed an amended
`
`complaint, which eliminated Huawei Technologies USA, Inc. as a defendant and
`
`added Huawei Device Co., LTD., as a defendant.
`
`Patent Owner filed subsequent complaints in 2017 in the Eastern District of
`
`Texas (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) alleging that Google infringed the ’433 patent.1
`
`The Patent Owner also filed complaints in the Eastern District of Texas
`
`alleging infringement of the ’433 patent by other parties: Avaya Inc. (2:16-cv-
`
`777); Shoretel, Inc. (2:16-cv-779); Sony Interactive Entertainment LLC (2:16-cv-
`
`732); Tangome, Inc. (2:16-cv-733); Green Tomato Limited (2:16-cv-731);
`
`Facebook, Inc. (2:16-cv-728); Voxernet LLC (2:16-cv-644); Viber Media S.A.R.L.
`
`(2:16-cv-643); Samsung Electronics America, Inc. (2:16-cv-777, 2:16-cv-642);
`
`Apple Inc. (2:16-cv-638); AOL Inc. (2:16-cv-722); Beetalk Private Ltd. (2:16-cv-
`
`
`1 Patent Owner amended its complaints in Case Nos. 2:17-cv-214, 2:17-cv-224,
`
`and 2:17-cv-231 to remove any allegations that Google infringed the’433 patent.
`
`2
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`725); Vonage Holdings Corp. and Vonage Americas, Inc. (2:16-cv-893); Telegram
`
`Messenger, LLP (2:16-cv-892); Whatsapp, Inc. (2:16-cv-645); Line Euro-
`
`Americas Corp. and Line Corporation (2:16-cv-641); Blackberry Corporation and
`
`Blackberry Limited (2:16-cv-639); HTC America, Inc. (2:16-cv-989); Kyocera
`
`America, Inc. and Kyocera Communications, Inc. (2:16-cv-990); LG Electronics
`
`U.S.A., Inc. (2:16-cv-991); ZTE (USA), Inc. and ZTE (TX), Inc. (2:16-cv-993);
`
`Kakao Corporation (2:16-cv-640); Snapchat, Inc. (2:16-cv-696); Tencent America
`
`LLC and Tencent Holdings Limited (2:16-cv-694, 2:16-cv-577); Heywire, Inc.
`
`(2:16-cv-1313); Hike Ltd. (2:17-cv-349); Kik interactive, Inc. (2:17-cv-347, 2:17-
`
`cv-481); and Hike Ltd. (2:17-cv-475, 2:17-cv-349).
`
`Petitioner is concurrently petitioning for Inter Partes Review of three other
`
`patents at issue in the above-noted litigations: U.S. Patent No. 8,724,622 (“the ’622
`
`patent”); U.S. Patent No. 7,535,890 (“the ’890 patent”); and U.S. Patent No.
`
`8,199,747 (“the ’747 patent”). The ’433, ’622, ’890, and ’747 patents are all in the
`
`same family. Other petitioners have filed IPR proceedings challenging certain
`
`claims of the ’433, ’622, ’890, and ’747 patents, as well as U.S. Patent No.
`
`8,243,723, which is also in the same patent family as the ’433 patent:
`
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-00220;
`
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-00221;
`
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-00222;
`
`3
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-00223;
`
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-00224;
`
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-00225;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01257;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01365;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01427;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01428;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01523;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01524;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01635;
`
`Snap Inc. v. Uniloc USA, Inc. et al., IPR2017-01611;
`
`Snap Inc. v. Uniloc USA, Inc. et al., IPR2017-01612;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01634;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01636;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01667;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01668;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01797;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01798;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01799;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01800;
`
`4
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01801;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01802;
`
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-01804; and
`
`Apple Inc. v. Uniloc USA, Inc. et al., IPR2017-01805.
`
`Google is not a real party-in-interest to any of these above-listed IPR proceedings.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. §42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Jeffrey A. Miller, Reg. No. 35,287
`
`Michael T. Hawkins, Reg. No. 57,867
`
`3000 El Camino Real
`
`3200 RBC Plaza, 60 South Sixth Street
`
`Five Palo Alto Square, Suite 500
`
`Minneapolis, MN 55402
`
`Palo Alto, CA 94306
`
`Tel: 612-337-2569 / Fax 612-288-9696
`
`Tel. 650-319-4538 / Fax 650-319-4938
`
`Kim Leung, Reg. No. 64,399
`
`
`
`Tel: 858-678-4713
`
`Patrick J. Bisenius, Reg. No. 63,893
`
`Tel: 612-776-2048
`
`Kenneth Darby, Reg. No. 65,068
`
`Tel: 512-226-8126
`
`Nicholas Stephens, Reg. No. 74,320
`
`Tel: 612-776-2018
`
`5
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`
`D.
`Service Information
`Please address all correspondence to the address above. Petitioner consents
`
`to electronic service by email at jeffrey.miller@apks.com and IPR19473-
`
`0371IP1@fr.com (referencing No. 19473-0371IP1 and cc’ing
`
`JMillerPTAB@apks.com, PTABInbound@fr.com, hawkins@fr.com,
`
`leung@fr.com, bisenius@fr.com, kdarby@fr.com, and nstephens@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. §42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
`
`the petition fee set in 37 C.F.R. §42.15(a) and for any other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104
`A. Grounds for Standing Under 37 C.F.R. §42.104(a)
`Petitioner certifies that the ’433 patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. §42.104(b) and Relief Requested
`Petitioner requests IPR of claims 1-27 of the ’433 patent on the grounds
`
`listed below. In support, this Petition includes a declaration of Dr. Paul S. Min,
`
`Ph.D. (GOOGLE1003).
`
`
`
`
`
`Grounds Claims
`
`Basis for Rejection
`
`6
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`Anticipated under §102(b) based upon International
`
`9, 12-14,
`
`17, 25
`
`Publication No. WO01/11824 (“Zydney”)
`
`1-6, 11,
`
`Obvious under §103 based upon Zydney in view of
`
`16
`
`International Publication No. WO98/47252 (“Stern”)
`
`Ground 1
`
`Ground 2
`
`Ground 3
`
`7, 8
`
`Obvious under §103 based upon Zydney in view of
`
`Stern and U.S. Publication No. 2003/0208543 (“Enete”)
`
`Obvious under §103 based upon Zydney in view of
`
`Ground 4
`
`10
`
`International Publication No. WO02/087135
`
`Ground 5
`
`15
`
`Ground 6
`
`18-24
`
`Ground 7
`
`26-27
`
`(“Trapani”)
`
`Obvious under §103 based upon Zydney in view of U.S.
`
`Publication No. 2003/0182323 (“Demsky”)
`
`Obvious under §103 based upon Zydney in view of U.S.
`
`Patent 6,301,258 (“Katseff”)
`
`Obvious under §103 based upon Zydney in view of
`
`Enete
`
`
`
`Zydney, Stern, Trapani, and Katseff qualify as prior art under at least 35
`
`U.S.C. §102(b) because they were published over a year before the alleged priority
`
`date. Demsky and Enete qualify as prior art under 35 U.S.C. §§102(a) and 102(e).
`
`During prosecution of the ’890 patent, to which the ’433 patent claims priority,
`
`7
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`Patent Owner filed an affidavit pursuant to 37 CFR 1.131 alleging it had a date of
`
`conception for the claims of the ’890 patent “prior to August 15, 2003,” and each
`
`of Demsky and Enete was filed long before that time. GOOGLE1004, 172-175.
`
`None of the proposed combination of references were used in any office action by
`
`the examiner during the prosecution of the ’433 patent.
`
`This Petition is not duplicative or substantially similar to earlier IPR
`
`petitions challenging the ’433 patent. First, while other IPR petitions rely on
`
`Zydney to challenge certain claims of the ’433 Patent, the present Petition
`
`challenges all claims of the ’433 patent. Thus, Petitioner respectfully submits that
`
`any Patent Owner argument suggesting that the Board exercise its discretion to
`
`deny institution because other IPR Petitions challenge the ’433 patent using
`
`Zydney would unfairly allow Patent Owner to use those challenges “as a shield to
`
`considering whether additional claims are also [unpatentable].” Fitbit, Inc., v.
`
`BodyMedia, Inc., IPR2016-00545, Paper 8 at 8 (PTAB Aug. 8, 2016); see also
`
`Ford Motor Company, v. Paice LLC et al., IPR2015-00606, Paper 14 at 8 (PTAB
`
`Nov. 9, 2015) (trial instituted when earlier IPR petitions challenged different sets
`
`of claims in challenged patent); see also Ford Motor Company, v. Paice LLC et al.,
`
`IPR2015-00792, Paper 13 at (PTAB Oct. 26, 2015) (same). Second, Google is not
`
`a party to any of the earlier IPR proceedings against the ’433 patent and was only
`
`recently named in a complaint filed by Patent Owner alleging infringement of the
`
`8
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`’433 patent. Supra, Section II. Google’s due process rights and its interest in
`
`having a fair opportunity to be heard on the merits in this forum weigh heavily
`
`against any exercise of discretion to deny institution. Indeed, the Board has often
`
`recognized that independent proceedings are often warranted when different
`
`petitioners are involved. Sony Mobile Communications (USA) Inc., v. E-Watch,
`
`Inc., IPR2015-00402, Paper 7 at 6 (PTAB July 1, 2015); Apple Inc., v. E-Watch,
`
`Inc., IPR2015-00414, Paper 13 at 8 (July 1, 2015).
`
`V.
`
`SUMMARY OF THE ’433 PATENT
`A. Brief Description
`The ’433 patent is directed to “an instant voice messaging system for
`
`delivering instant messages over a packet-switched network.” GOOGLE1001,
`
`2:61-63. The system includes an instant voice message (IVM) server and IVM
`
`clients. Id., 6:54-7:6, FIG. 2. The ’433 patent describes two modes of operation.
`
`Id., 7:61-65. In “record mode,” the user of an IVM client selects one or more IVM
`
`recipients from a list and records an instant voice message which the IVM client
`
`delivers to the selected recipients via the IVM server and IP network. Id., 7:61-
`
`8:43. In the “intercom mode,” the IVM client provides real-time instant voice
`
`messaging using one or more buffers to store and transmit successive portions of
`
`an instant voice message until the entire instant voice message has been
`
`transmitted to the IVM server. Id., 11:34-59.
`
`9
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`The ’433 patent admits that prior art VOIP and PSTN systems allowed users
`
`to leave voice messages for later pickup by recipients. Id., 2:23-47. The ’433
`
`patent further admits that sending instant text messages to recipients who are
`
`currently online was in the prior art. Id. The ’433 patent incorrectly asserts that
`
`voice messaging had not been combined with instant messaging and that this is the
`
`problem being solved. See Id., 2:48-53 (“However, notwithstanding the foregoing
`
`advances in the VoIP/PSTN voice communication and voice/text messaging, there
`
`is still a need in the art for providing a system and method for providing instant
`
`VoIP messaging over an IP network.”). The ’433 patent, however, was wrong. As
`
`shown in detail below with respect to claims 1-27, prior art instant voice
`
`messaging systems existed that already implemented or otherwise plainly
`
`suggested such a solution. GOOGLE1003, ¶¶42-163.
`
`B.
`Summary of the Prosecution
`The ’433 patent, filed on March 25, 2014, issued from a patent application
`
`that claimed priority to an application filed on December 18, 2003. Other than
`
`amending certain of the claims to include limitations from allowed dependent
`
`claims, applicant did not specifically comment on any prior art references used to
`
`reject those claims. Id., 128-132, 145, 165-166. The examiner subsequently
`
`allowed the claims, 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
`
`10
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`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. As described below, other prior art patents and publications taught all
`
`elements of the claims, including those elements identified in the examiner’s
`
`reasons for allowance.
`
`VI. Claim Construction under 37 C.F.R. §42.104(b)(3)
`For the purposes of IPR only, Petitioner submits that the terms of the ’433
`
`patent are to be given their broadest reasonable interpretation (“BRI”) as
`
`understood by a person of ordinary skill in the art at the time of the alleged
`
`invention (“POSITA”) in view of the ’433 patent’s specification. 37 C.F.R.
`
`§42.100(b); GOOGLE1003, ¶24 (level of ordinary skill). Also for purposes of this
`
`IPR only, Petitioner submits that all claim terms should be given their plain
`
`meaning under the BRI standard, and that in doing so, no explicitly proposed claim
`
`constructions are necessary here—especially in light of the overwhelming
`
`similarity between the Zydney reference and the preferred embodiment of the ’433
`
`patent. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`
`2011) (“claim terms need only be construed to the extent necessary to resolve the
`
`controversy”).
`
`11
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’433 PATENT IS UNPATENTABLE
`A. Ground 1: Claims 9, 12-14, 17, and 25 are Anticipated under
`§102(b) by Zydney
`[9.P] A system, comprising:
`Zydney discloses the preamble of claim 9. GOOGLE1003, ¶48; see Pitney
`
`Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)
`
`(preamble is not a limitation). Zydney describes a “system for voice exchange and
`
`voice distribution.” GOOGLE1005, 1:1-2, 2:14-15, 5:3-14, 10:11-11:9, FIG. 1.
`
`[9.1] an instant voice messaging application comprising:
`a client platform system for generating an instant voice message;
`a messaging system for transmitting the instant voice message over a
`packet-switched network, and
`Zydney discloses this element. GOOGLE1003, ¶¶49-52. Zydney’s system
`
`includes an instant voice messaging application. Id., ¶49. For example, Zydney
`
`describes its system as “a voice intercom system with instant messaging,
`
`distributed over the Internet.” GOOGLE1005, 10:14-16, see also 5:3-7. The
`
`system includes a software agent “loaded on a Personal Computer (PC) or other
`
`Internet compatible appliance.” GOOGLE1005, 14:2-3; cf. GOOGLE1001, 12:13-
`
`14 (“The IVM client 208 is a general-purpose programmable computer…”).
`
`Zydney’s software agent is an “instant voice messaging application” as recited in
`
`claim 9.
`
`12
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`Zydney’s software agent allows a user to digitally record messages for one
`
`or more recipients using a microphone-equipped device. GOOGLE1005, 16:1-3,
`
`FIG. 7 (step 1.1.3). Therefore, Zydney’s software agent, i.e., its instant voice
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`messaging application, plainly includes a client platform system for generating an
`
`instant voice message. GOOGLE1003, ¶¶50, 52.
`
`As described in Zydney, a voice container (also referred to as a “voice
`
`packet”) “contains voice data,” that “can be stored, transcoded and routed to the
`
`appropriate recipients instantaneously or stored for later delivery,” and “will be
`
`sent using standard TCP/IP transport.” Id., 5:10-14, 12:6-8, 1:21-22, 23:11-12
`
`(emphasis added), see also 5:15-18 (“TCP/IP defines the basic format of the digital
`
`data packets on the Internet”) (emphasis added), 10:14-16, 29:1-3; cf.
`
`GOOGLE1001, 15:37 (“a packet-switched network 102 (i.e., Internet)”). Thus,
`
`Zydney’s software agent, i.e., its instant voice messaging application, includes a
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`messaging system for transmitting the instant voice message over a packet-
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`switched network. GOOGLE1003, ¶¶51-52.
`
`Indeed, Zydney explains with reference to FIG. 2 (a portion of which is
`
`reproduced below) that:
`
`A Software Agent utilized by the sender of the voice container
`provides the following functionality: … pack message into a voice
`container or multiple voice containers 50; and, enable transport 52
`of the voice container to the recipient or the central server.
`
`13
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`GOOGLE1005, 13:2-6 (emphasis added), see also 1:22-2:3, 10:20-11:1, 14:4-5,
`
`FIG. 1 (software agent 22), FIG. 2, FIG. 7 (step 1.1.5). Zydney’s FIG. 2 (a portion
`
`of which is annotated below) illustrates components of Zydney’s software agent:
`
`
`
`Id., FIG. 2; GOOGLE1003, ¶52. As is seen, FIG. 2 illustrates Zydney’s software
`
`
`
`agent, corresponding to the claimed instant voice message application, and
`
`demonstrates that Zydney’s software agent includes element 50, which
`
`corresponds to portions of the claimed client platform system, and element 52,
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`which corresponds to portions of the claimed messaging system. GOOGLE1003,
`
`¶52. Thus, Zydney plainly teaches this claim element.
`
`[9.2] wherein the instant voice message application attaches one or
`more files to the instant voice message.
`Zydney discloses this element. GOOGLE1003, ¶53-54. Zydney teaches
`
`14
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`that the software agent used by the originator of an instant voice message can
`
`include “other Internet and file based information, by including that in the data
`
`elements of the [voice container] format.” GOOGLE1005, 16:22-23. In particular,
`
`Zydney discloses that its software agent, i.e., its instant voice message application,
`
`supports attaching multimedia files to Zydney’s voice containers. Id., 19:1-10
`
`(“attaching other media to the voice containers…”), see also FIG. 6 (flow chart
`
`element stating “USER IS ASKED WHAT MULTIMEDIA FILE TO
`
`ASSOCIATE THIS VOICE CONTAINER”), FIG. 16 (step 5.1.4); GOOGLE1003,
`
`¶¶53-54.
`
`In addition, Zydney teaches that it is its software agent (i.e., its instant voice
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`messaging application) that attaches multimedia files to its instant voice messages,
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`just as required by claim 9. GOOGLE1003, ¶54. Zydney’s FIGS. 6 and 16 both
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`illustrate the attachment of multimedia files to a voice container. The discussion
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`regarding FIGS. 6 and 16 in Zydney is located under a heading entitled “Software
`
`Agent.” The “Software Agent” heading is on page 28 of Zydney. The discussion
`
`regarding FIG. 6 is on page 34, while the discussion regarding FIG. 16 is on page
`
`35. Thus, Zydney plainly teaches an instant voice messaging application that can
`
`attach one or more files to an instant voice message, as recited in claim 9.
`
`In sum, Zydney plainly anticipates claim 9.
`
` [12] The system according to claim 9, wherein the instant voice
`messaging application encrypts the instant voice message.
`
`15
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`Zydney discloses this element. GOOGLE1003, ¶55. Zydney’s software
`
`agent includes a “standard codec used for the encryption and decryption of the
`
`voice containers.” GOOGLE1005, 27:1-4, see also FIG. 2 (software agent
`
`including “DATA ENCRYPTION” functionality). Thus, Zydney teaches that its
`
`software agent, i.e., the instant voice messaging application, encrypts voice
`
`containers, i.e., instant voice messages, just as required by claim 12.
`
`GOOGLE1003, ¶55. Thus, Zydney also anticipates claim 12.
`
`[13] The system according to claim 9, wherein the instant voice
`messaging application displays a selectable control for generating
`an instant voice message using an intercom mode based on a
`connectivity status of an intended recipient of the instant voice
`message.
`Zydney discloses this element. GOOGLE1003, ¶¶56-58. Zydney’s software
`
`agent “offers the originator alternative ways to communicate with the recipient.”
`
`GOOGLE1005, 15:3-4. The alternative ways include different modes of
`
`communication such as “a real-time ‘intercom’ call,” “a voice instant messaging
`
`session,” and “a voice mail conversation.” Id., 15:8-21. Zydney’s “intercom
`
`mode” is the same as the “intercom mode” described in the ’433 patent.
`
`GOOGLE1003, ¶56. The ’433 patent teaches its intercom mode “represents real-
`
`time instant voice messaging.” GOOGLE1001, 11:37-41. This is exactly the same
`
`as in Zydney. GOOGLE1005, 15:8-10. Indeed, Zydney teaches that intercom
`
`mode is available if the recipient is online, meaning that its intercom mode is only
`
`16
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`available depending on the connectivity status of the recipient. Id.;
`
`GOOGLE1003, ¶56.
`
`In addition to teaching the same “intercom mode” as is claimed, Zydney
`
`teaches every limitation of claim 13. Zydney teaches that its software agent, i.e.,
`
`the instant voice messaging application, has a “selectable control” that generates
`
`instant voice messages using intercom mode, as required by claim 13.
`
`GOOGLE1003, ¶57. First, as discussed, Zydney teaches that its software agent
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`creates and sends messages. GOOGLE1005, 14:2-5. Second, Zydney teaches that
`
`the originator of a message selects the delivery mode and then “digitally records
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`messages for one or more recipients using a microphone-equipped device and the
`
`software agent.” Id., 16:1-3. Third, Zydney teaches that one of the delivery modes
`
`is intercom mode. Id., 16:4-7 (“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.”).
`
`Finally, Zydney teaches that intercom mode (or any other mode) is
`
`selectable based on the connectivity status of the recipient. GOOGLE1003, ¶58.
`
`Zydney teaches that “[t]o use the present invention system and method for voice
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`exchange and voice distribution, the originator selects one or more intended
`
`recipients from a list of names that have been previously entered into the software
`
`17
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`agent.” GOOGLE1005, 14:17-20. This selection will be made via the software
`
`agent’s user interface. See id., 10:20-11:1. Once an originator has selected the
`
`recipients from the display, Zydney teaches that the system allows the originator to
`
`select a delivery option based which “core state” the intended recipient is in –
`
`online or offline:
`
`The agent permits a number of distinct modes of communication
`based on the status of the recipient. The status of all recipients
`entered into the software agent is frequently conveyed to the software
`agent by the central server. This includes whether the core states of
`whether the recipient is online or offline…
`
`Id., 14:19-15:1 (emphasis added). As discussed, one of Zydney’s “modes of
`
`communication” is intercom mode. Thus, 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. GOOGLE1003, ¶58.
`
`[14] The system according to claim 9, wherein the instant voice
`messaging application invokes a document handler to create a link
`between the instant voice message and the one or more files.
`Zydney discloses this element. GOOGLE1003, ¶¶59-60. The ’433 patent
`
`teaches that “[t]he attachment of one or more files is enabled conventionally via a
`
`methodology such as ‘drag-and-drop’ and the like, which invokes the document
`
`handler 306 to make the appropriate linkages to the one or more files…”
`
`18
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`GOOGLE1001, 13:35-38. Thus, the ’433 patent teaches that the instant messaging
`
`application attaches files in the “conventional manner,” which is by linking the
`
`attachment to the instant voice message. This is no different than Zydney, which
`
`teaches that multimedia files are attached by associating them to a voice container.
`
`As discussed above with respect to element [9.2], Zydney teaches that its system
`
`supports attaching multimedia files to voice containers. GOOGLE1005, 16:22-23,
`
`19:1-10. Zydney discloses that the software agent used by the originator of an
`
`instant voice message can include “other Internet and file based information, by
`
`including that in the data elements of the [voice container] format.” Id., 16:22-23.
`
`In particular, Zydney discloses that its software agent, i.e., its instant voice
`
`message application, supports attaching multimedia files to Zydney’s voice
`
`containers, i.e., instant voice messages. Id., 19:1-10. Zydney further explains that
`
`the attachment of files creates an association between a voice container, i.e., the
`
`instant message, and the attached file, which discloses creating a link between the
`
`instant voice message and the file. Id., FIG. 6 (flow chart element stating “USER
`
`IS ASKED WHAT MULTIMEDIA FILE TO ASSOCIATE THIS VOICE
`
`CONTAINER”), FIG. 16 (step 5.1.4). Indeed, Zydney teaches that attachments
`
`can be specified, i.e., linked, in message headers. Id., 19:6-12. As such, Zydney
`
`plainly teaches that the software agent, i.e., the instant voice messaging
`
`application, creates a link between the instant voice message and the one or more
`
`19
`
`

`

`IPR of U.S. Pat. No.: 8,995,433
`Attorney Docket No. 19473-0371IP1
`
`files. GOOGLE1003, ¶¶59-60.
`
`As discussed, Zydney’s FIGS. 6 and 16 both illustrate the attachment of
`
`multimedia files to a voice container. The discussion regarding FIGS. 6 and 16 in
`
`Zydney is located under a heading entitled “Software Agent.” The “Software
`
`Agent” heading is on page 28 of Zydney. The discussion regarding FIG. 6 is on
`
`page 34, while the discussion regarding FIG. 16 is