Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 10
`Entered: March 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02080
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-02080
`Patent 8,724,622 B2
`
`
`I.
`INTRODUCTION
`Google, Inc., now known as Google LLC1 (“Petitioner”), filed a
`Petition requesting inter partes review of claims 3–23 of U.S. Patent
`No. 8,724,622 B2 (Ex. 1001, “the ’622 patent”). Paper 2 (“Pet.”). Uniloc
`Luxembourg S.A. (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). With authorization from the Board, Petitioner
`additionally filed a Reply to Patent Owner’s Preliminary Response. Paper 9.
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons given below, we determine after having
`considered the information presented in the Petition, the Preliminary
`Response, and the Reply that Petitioner has not established a reasonable
`likelihood of prevailing as to any of the challenged claims of the ’622 patent,
`and we deny institution of inter partes review.
`
`II. BACKGROUND
`
`A. Related Matters
`Concurrently with the instant Petition, Petitioner additionally filed a
`petition requesting inter partes review of claims 1, 2, and 24–39 of the
`’622 patent (Case IPR2017-02081). IPR2017-02081, Paper 2. In that case,
`as in the instant case, Petitioner identifies Motorola Mobility LLC, Huawei
`Device Co., Ltd., Huawei Device USA, Inc., Huawei Investment & Holding
`
`
`
`1 See Paper 6, 2.
`
`2
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`
`Co., Ltd., Huawei Technologies Co., Ltd., and Huawei Device (Dongguan)
`Co., Ltd. as additional real parties in interest. See Pet. 1; IPR2017-02081,
`Paper 2 at 1. The ’622 patent also has been the subject of petitions for inter
`partes review in Cases IPR2017-00223, IPR2017-00224, IPR2017-01804,
`and IPR2017-01805 (filed by Apple Inc.), all of which were denied; Cases
`IPR2017-01667 and IPR2017-01668 (filed by Facebook and WhatsApp), in
`which we instituted inter partes review on January 19, 2018; Cases
`IPR2017-01797 and IPR2017-01798 (filed by Samsung Electronics
`America, Inc.), in which we instituted inter partes review on February 6,
`2018; and Case IPR2017-02090 (filed by Huawei Device Co., Ltd. and LG
`Electronics, Inc.), in which we instituted inter partes review and granted a
`motion for joinder with Case IPR2017-01667 on March 6, 2018. Apple Inc.
`additionally has filed petitions for inter partes review of certain claims of
`the ’622 patent in Cases IPR2018-00579 and IPR2018-00580, accompanied
`by motions for joinder with Cases IPR2017-01667 and IPR2017-01668,
`respectively.
`The parties additionally indicate that the ’622 patent is involved in
`Uniloc USA, Inc. v. Google, Inc., No. 2:17-cv-00214 (E.D. Tex.), Uniloc
`USA, Inc. v. Google, Inc., No. 2:17-cv-00224 (E.D. Tex.), Uniloc USA, Inc.
`v. Google, Inc., No. 2:17-cv-00231 (E.D. Tex.), Uniloc USA, Inc. v.
`Motorola Mobility LLC, No. 2:16-cv-00992 (E.D. Tex.), and Uniloc USA,
`Inc. v. Huawei Device USA, Inc., No. 2:16-cv-00994 (E.D. Tex.), among
`numerous other actions in the United States District Court for the Eastern
`District of Texas. Pet. 13; Paper 4, 2.
`
`3
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`Patent 8,724,622 B2
`
`
`B. The ’622 Patent
`The ’622 patent, titled “System and Method for Instant VoIP
`Messaging,” relates to Internet telephony, and more particularly, to instant
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`Ex. 1001, [54], 1:18–22. The ’622 patent acknowledges that “[v]oice
`messaging” and “instant text messaging” in both the VoIP and public
`switched telephone network environments were previously known. Id.
`at 2:22–46. In prior art instant text messaging systems, according to the
`’622 patent, a server would present a user of a client terminal with a “list of
`persons who are currently ‘online’ and ready to receive text messages,” the
`user would “select one or more” recipients and type the message, and the
`server would immediately send the message to the respective client
`terminals. Id. at 2:34–46. According to the ’622 patent, however, “there is
`still a need in the art for . . . a system and method for providing instant VoIP
`messaging over an IP network,” such as the Internet. Id. at 1:18–22, 2:47–
`59, 6:47–49.
`In one embodiment, the ’622 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1001,
`6:22–24.
`
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`
`
`As illustrated in Figure 2, local packet-switched IP network 204, which may
`be a local area network (“LAN”), “interconnects” IVM clients 206, 208 and
`legacy telephone 110 to local IVM server 202. Id. at 6:50–7:2; see id.
`at 7:23–24, 7:61–65. Local IVM server 202 enables instant voice messaging
`functionality over network 204. Id. at 7:61–65.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Ex. 1001, 7:57–59, 7:65–8:4. IVM
`client 208 then transmits the selections to IVM server 202 and “records the
`user’s speech into . . . digitized audio file 210 (i.e., an instant voice
`message).” Id. at 8:4–11.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`
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`
`recipients via local IP network 204. Ex. 1001, 8:1529. “[O]nly the
`available IVM recipients, currently connected to . . . IVM server 202, will
`receive the instant voice message.” Id. at 8:3334. IVM server 202
`“temporarily saves the instant voice message” for any IVM client that is “not
`currently connected to . . . local IVM server 202 (i.e., is unavailable)” and
`“delivers it . . . when the IVM client connects to . . . local IVM server 202
`(i.e., is available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the
`instant voice message, the recipients can audibly play the message. Id.
`at 8:29–32.
`
`C. Illustrative Claim
`Independent claim 3 is illustrative of the challenged claims and is
`reproduced below.
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`Ex. 1001, 24:12–27.
`
`6
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`IPR2017-02080
`Patent 8,724,622 B2
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`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts five grounds of unpatentability (Pet. 6):
`
`Challenged Claim(s)
`
`Basis
`
`Reference(s)
`
`3–8, 11, 13, 18–21
`
`§ 102(b) Zydney2
`
`3–8, 11, 13, 18–23
`
`§ 103(a) Zydney and Enete3
`
`10, 14–17
`
`§ 103(a) Zydney, Enete, and Stern4
`
`12
`
`9
`
`§ 103(a) Zydney, Enete, and Coussement5
`
`§ 103(a) Zydney, Enete, and RFC21316
`
`Petitioner also relies on a Declaration of Paul S. Min, Ph.D., filed as
`Exhibit 1003.
`
`III. DISCUSSION
`
`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
`
`
`2 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (Ex. 1005).
`3 Enete et al., US 2003/0208543 A1, published Nov. 6, 2003 (Ex. 1009).
`4 Stern, WO 98/47252, published Oct. 22, 1998 (Ex. 1006).
`5 Coussement, US 2002/0055967 A1, published May 9, 2002 (Ex. 1008).
`6 R. Droms, “Dynamic Host Configuration Protocol,” Request for Comments
`2131, Standards Track, Internet Engineering Task Force Network Working
`Group, 1–45 (March 1997) (Ex. 1012).
`
`7
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`
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). 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);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Neither Petitioner nor Patent Owner proffers a construction for any
`claim term. Pet. 10; Prelim. Resp. 19. Based on our review of the record
`and the dispositive issues in our determination of whether to institute inter
`partes review, we determine that no claim terms require an express
`construction to resolve the issues presented by the patentability challenges.
`
`B. Analysis of Asserted Grounds of Unpatentability
`
`1. Principles of Law
`A claim is anticipated under 35 U.S.C. § 102 “only if each and every
`element as set forth in the claim is found, either expressly or inherently
`described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
`Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover,
`unless a reference discloses within the four corners of the
`document not only all of the limitations claimed but also all of
`
`8
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`
`
`the limitations arranged or combined in the same way as recited
`in the claim, it cannot be said to prove prior invention of the thing
`claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008);
`accord In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art;7 and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.8 Graham v. John Deere Co.,
`
`
`7 Petitioner’s declarant, Dr. Min, opines that a person of ordinary skill in the
`art of the ’622 patent “would have had at least an undergraduate 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.” Ex. 1003 ¶ 24. Patent Owner’s declarant, William Easttom II,
`proffers substantially the same opinion as to the educational background of
`the person of ordinary skill in the art, but opines that such a person’s
`post-educational experience would be “in computer programming and
`software development, including the development of software for
`communication with other computers over a network.” Ex. 2001 (Easttom
`Declaration) ¶ 14. To the extent there is any substantive difference between
`the declarants’ assessments, we adopt Dr. Min’s assessment for purposes of
`this Decision.
`8 Patent Owner does not contend in its Preliminary Response that any such
`9
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`
`383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a
`petitioner cannot employ mere conclusory statements. The petitioner must
`instead articulate specific reasoning, based on evidence of record, to support
`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds
`with the principles stated above in mind.
`
`2. Ground 1: Anticipation by Zydney
`(Claims 3–8, 11, 13, and 18–21)
`
`a. 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 online 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
`recipients instantaneously or stored for later delivery.” Id. at 1:19–22; 12:6–
`8. Figure 1 of Zydney is reproduced below.
`
`
`secondary considerations are present.
`
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`
`
`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. Id. at 11:3–6.
`
`11
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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. Ex. 1005, 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 communications 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
`
`12
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`
`device and the software agent. Ex. 1005, 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 whether to transport the voice
`container to a central file system and/or to send 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 online 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 online, 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. Ex. 1005, 19:6–7. Formatting the container
`
`13
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`
`using 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.
`Figure 3 of Zydney is reproduced below.
`
`
`Figure 3, above, illustrates an exemplary embodiment of Zydney’s voice
`container structure, including voice data and voice data properties
`components. Ex. 1005, 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
`
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`
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
`
`b. Independent Claim 3
`As reproduced above, independent claim 3 of the ’622 patent recites a
`messaging system that receives an “instant voice message” from one of a
`plurality of instant voice message client systems, “wherein the instant voice
`message includes an object field including a digitized audio file.” Ex. 1001,
`24:23–27. In asserting that Zydney anticipates claim 3, Petitioner maps
`Zydney’s voice container to the recited “instant voice message” and
`Zydney’s digitized voice message to the recited “digitized audio file.” See
`Pet. 14–19.
`With respect specifically to the limitation “wherein the instant voice
`message includes an object field including a digitized audio file” (the “object
`field limitation”), Petitioner contends that Zydney teaches that the voice
`container “includes a ‘body,’ which . . . holds the digitized voice message”
`and “corresponds to the claimed ‘object field’ in an instant voice message to
`carry a digitized audio file.” Id. at 19 (citing Ex. 1005, 23:1–2, 34:4–7,
`Fig. 7). Pointing to Figure 3 and corresponding text of Zydney, Petitioner
`alleges that “Zydney teaches an arrangement of fields 302–338 for the ‘voice
`data properties components’ of a voice container” and that “[t]he voice
`container carries data organized in a set of fields.” Id. (citing Ex. 1005,
`23:1–12, Fig. 3). Petitioner concedes that “Figure 3 does not expressly show
`the ‘body’ of the voice container that carries the digitized voice message,”
`but contends that “Zydney teaches elsewhere that the voice container
`
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`includes a ‘body,’ which is in addition to the voice data properties
`components shown in Figure 3.” Id. Relying on Dr. Min’s testimony,
`Petitioner further contends that a person of ordinary skill in the art “would
`have appreciated that providing the digitized voice message in an object
`field (e.g., body) of the voice container would allow the recipient software
`agent to locate and extract the digitized voice message from other data
`stored in the voice container.” Id. (citing Ex. 1003 ¶ 62).
`Patent Owner disputes Petitioner’s evidence with regard to the object
`field limitation. Prelim. Resp. 20–27. Patent Owner argues, inter alia, that,
`“[w]hile the Petition points . . . to an alleged ‘arrangement of fields’ in
`Figure 3 of Zydney, . . . Zydney does not use the word ‘field’ at all in relation
`to its structural description of the voice container.” Id. at 22. “[E]ven if
`Zydney had described elements 302 through 338 of Figure 3 as fields,”
`Patent Owner contends, “none of [those] twenty-five ‘voice data
`components’ . . . is an ‘object field including a digitized audio file.’” Id.
`(citing Ex. 2001 ¶¶ 43–57). Further, Patent Owner contends, “[t]here is
`likewise no merit to Petitioner’s suggestion that Zydney’s use of the word
`‘body’ somehow anticipates the ‘object field’ as claimed.” Id. at 23. Patent
`Owner points out that although Zydney recites the word “body” two times,
`nothing in those recitations characterizes the body as an “object field,” and
`“[i]ndeed, Zydney provides no detail on the structure of the ‘body.’” Id.
`(citing Ex. 1005, 34:4–10; Ex. 2001 ¶¶ 56–57). Patent Owner also argues
`that, to the extent Petitioner intended implicitly to rely on an inherency
`argument, such argument fails because Petitioner has not shown that Zydney
`“necessarily requires its ‘voice container’ to include a specific ‘object field
`including a digitized audio file.’” Id. at 26–27.
`
`16
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`
`We agree with Patent Owner that Petitioner has not demonstrated a
`reasonable likelihood of showing that the object field limitation of claim 3 is
`disclosed by Zydney. We recognize that we previously instituted trial with
`respect to claim 3 over the combined teachings of Zydney and other
`references in Cases IPR2017-01667 and IPR2017-01797. In those cases,
`however, the respective petitioners proffered expert testimony and advanced
`arguments, different from those presented here, sufficient to establish a
`reasonable likelihood that the claimed object field would have been obvious
`to a person of ordinary skill in the art. There is insufficient evidence on the
`record to support Petitioner’s contention that Zydney’s disclosure of a
`message “body,” without any disclosure of the structure of that body,
`expressly discloses the recited object field.
`We also agree with Patent Owner that Petitioner has not established a
`reasonable likelihood of showing that the claimed object field is inherently
`anticipated by Zydney. See Prelim. Resp. 27–28. Although Zydney
`discloses that its voice container includes “voice data” and “information
`concerning codec type, size, sample rate, and data,” in addition to the “voice
`data properties components” depicted in Figure 3 (see Ex. 1005, 23:1–2,
`23:10–12), and we understand that Figure 3, therefore, does not provide a
`“comprehensive . . . list” of voice container components (cf. Prelim.
`Resp. 27), we agree with Patent Owner that Petitioner has not shown that
`voice data necessarily would be included in an “object field” (see id. at 26–
`27).
`
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing in its contention that
`claim 3 is anticipated by Zydney.
`
`17
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`
`c. Dependent Claims 4–8, 11, 13, and 18–21
`Claims 4–8, 11, 13, and 18–21 depend directly or indirectly from
`independent claim 3. Ex. 1001, 24:28–52, 24:61–25:3, 25:9–13, 25:31–50.
`Accordingly, the deficiency in Petitioner’s anticipation showing for
`independent claim 3, discussed above, also applies to these claims.
`Petitioner’s arguments directed to the additional limitations of these
`dependent claims do not cure the deficiencies. See Pet. 19–33.
`
`3. Ground 2: Obviousness over Zydney and Enete
`(Claims 3–8, 11, 13, and 18–23)
`
`a. Independent Claim 3
`Petitioner advances an alternative theory that claim 3 is unpatentable
`over the combined teachings of Zydney and Enete. Pet. 33–38. In
`particular, Petitioner relies on Enete as “confirm[ing] that an instant voice
`messaging system having a central server . . . that communicates with instant
`voice message client systems via a network interface was a predictable
`option before the ’622 patent” (id. at 34) and as demonstrating that the
`features of a central server maintaining connection information for client
`software agents (corresponding to the “communication platform system” and
`“instant voice message client systems” recited in claim 3, respectively) were
`well-known in instant voice messaging systems before the invention of the
`’622 patent (id. at 35). Regarding the object field limitation of claim 3,
`however, Petitioner relies only on its arguments presented in connection
`with its assertion that Zydney anticipates claim 3. Id. at 38. For the reasons
`stated in our discussion of those arguments above, we also conclude that
`Petitioner has not demonstrated a reasonable likelihood of prevailing in
`
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`IPR2017-02080
`Patent 8,724,622 B2
`
`establishing that claim 3 is unpatentable over the combined teachings of
`Zydney and Enete.
`
`b. Dependent Claims 4–8, 11, 13, and 18–23
`Claims 4–8, 11, 13, and 18–23 depend directly or indirectly from
`independent claim 3. Ex. 1001, 24:28–52, 24:61–25:3, 25:9–13, 25:31–58.
`Accordingly, the deficiency in Petitioner’s obviousness showing for
`independent claim 3, discussed above, also applies to these claims.
`Petitioner’s arguments directed to the additional limitations of these
`dependent claims do not cure the deficiencies. See Pet. 38–46.
`
`4. Remaining Grounds (Claims 9, 10, 12, and 14–17)
`Claims 9, 10, 12, and 14–17 depend directly or indirectly from
`independent claim 3. Petitioner contends that claim 9 is unpatentable over
`the combined teachings of Zydney, Enete, and RFC2131; that claims 10 and
`14–17 are unpatentable over the combined teachings of Zydney, Enete, and
`Stern; and that claim 12 is unpatentable over the combined teachings of
`Zydney, Enete, and Coussement. Pet. 46–68. Petitioner, however, does not
`rely on any of RFC2131, Stern, and Coussement as teaching or suggesting
`the object field limitation of claim 3 that we conclude Zydney and Enete
`lack. Accordingly, for the reasons stated in our analysis above of
`Petitioner’s contentions with respect to claim 3, we determine that Petitioner
`does not show a reasonable likelihood of prevailing in establishing that any
`of claims 9, 10, 12, and 14–17 are unpatentable on the respective grounds
`presented.
`
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`IPR2017-02080
`Patent 8,724,622 B2
`
`
`C. Additional Considered Arguments
`Patent Owner has advanced a variety of additional arguments
`concerning the repeated challenges to the ’622 patent and related patents
`asserted by other parties, an alleged failure on the part of Petitioner to name
`all real parties in interest, and the constitutionality of inter partes review
`proceedings. Prelim. Resp. 1–15, 31–32. We have considered those
`arguments, but in view of our determination not to institute trial on the basis
`of Petitioner’s substantive grounds, we do not address those arguments
`further herein.
`
`IV. CONCLUSION
`In summary, we do not institute inter partes review on any challenged
`claim as shown below:
`
`Ground
`1
`
`Basis
`§ 102 Zydney
`
`Claims Challenged Claims Instituted
`3–8, 11, 13, 18–21
`none
`
`2
`
`3
`
`4
`
`5
`
`§ 103 Zydney and
`Enete
`
`§ 103 Zydney,
`Enete, and Stern
`
`§ 103 Zydney,
`Enete, and
`Coussement
`
`§ 103 Zydney,
`Enete, and
`RFC2131
`
`Summary
`
`
`
`
`3–8, 11, 13, 18–23
`
`none
`
`none
`
`none
`
`none
`
`none
`
`10, 14–17
`
`12
`
`9
`
`3–23
`
`20
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`IPR2017-02080
`Patent 8,724,622 B2
`
`
`V. ORDER
`Upon consideration of the record before us, it is, therefore,
`ORDERED that the Petition is denied, and no trial or inter partes
`review is instituted on any asserted ground.
`
`
`
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`IPR2017-02080
`Patent 8,724,622 B2
`
`FOR PETITIONER:
`
`Jeffrey A. Miller
`ARNOLD & PORTER KAYE SCHOLER LLP
`jmillerptab@apks.com
`
`Michael T. Hawkins
`Nicholas Stephens
`Kim Leung
`Patrick J. Bisenius
`Kenneth Darby
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`nstephens@fr.com
`leung@fr.com
`bisenius@fr.com
`kdarby@fr.com
`
`
`FOR PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`22
`
`