`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Attorney Docket No.: 19473-0370IP1
`
`In re Patent of: Rojas
`
`U.S. Pat. No.:
`
`8,724,622
`Issue Date:
` May 13, 2014
`App. Serial No.: 13/546,673
`Filing Date:
`
`July 11, 2012
`Title:
` SYSTEM & METHOD FOR INSTANT VOIP MESSAGING
`
`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. 8,724,622
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`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) ................... 4
`D. Service Information ................................................................................. 5
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 5
`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 ’622 PATENT ............................................................. 8
`A. Brief Description ..................................................................................... 8
`B. Summary of Prosecution ......................................................................... 9
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3) ................ 10
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’622 PATENT IS UNPATENTABLE .................... 11
`A. Ground 1 [Anticipated under § 102 by Zydney] sets forth
`a reasonable likelihood to prevail on claims 3-8, 11, 13,
`18-21 .................................................................................................... 11
`B. Ground 2 [Obvious under § 103 based on Zydney in view
`of Enete] sets forth a reasonable likelihood to prevail on
`claims 3-8, 11, 13, and 18-23 .............................................................. 33
`
`V.
`
`i
`
`
`
`
`
`C. Ground 3 [Obvious under § 103 based on Zydney in view
`of Enete and Stern] sets forth a reasonable likelihood to
`prevail on claims 10 and 14-17 ........................................................... 46
`D. Ground 4 [Obvious under § 103 based on Zydney in view
`of Enete and Coussement] sets forth a reasonable
`likelihood to prevail on claim 12 ........................................................ 61
`E. Ground 5 [Obvious under § 103 based on Zydney in view
`of Enete and RFC2131] sets forth a reasonable likelihood
`to prevail on claim 9 ............................................................................ 65
`VIII. CONCLUSION .............................................................................................. 68
`
`
`ii
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`
`
`
`
`EXHIBITS
`
`GOOGLE1001 U.S. Pat. No. 8,724,622 to Rojas (“the ’622 patent”)
`
`GOOGLE1002 Prosecution History of the ’622 Patent (Serial No. 13/546,673)
`
`GOOGLE1003 Declaration of Dr. Paul S. Min
`
`GOOGLE1004 Prosecution History of U.S. Pat. No. 7,535,890 (“Serial No.
`10/740,030)
`International Publication No. WO 01/11824 (“Zydney”)
`
`GOOGLE1005
`
`GOOGLE1006
`
`International Publication No. WO 98/47252 (“Stern”)
`
`GOOGLE1007
`
`[RESERVED]
`
`GOOGLE1008 U.S. Pub. No. 2002/0055967 (“Coussement”)
`
`GOOGLE1009 U.S. Pub. No. 2003/0208543 (“Enete”)
`
`GOOGLE1010
`
`[RESERVED]
`
`GOOGLE1011 M. Day, et al., A Model for Presence and Instant Messaging,
`Internet Engineering Task Force, Request for Comments 2778
`(“RFC2778”)
`GOOGLE1012 R. Droms, Dynamic Host Configuration Protocol, Internet
`Engineering Task Force, Request for Comments 2131
`(“RFC2131”)
`GOOGLE1013 M. Day, et al., Instant Messaging / Presence Protocol
`Requirements, Internet Engineering Task Force, Request for
`Comments 2779 (“RFC2779”)
`[RESERVED]
`
`GOOGLE1014
`
`GOOGLE1015
`
`[RESERVED]
`
`GOOGLE1016 Declaration of Sandy Ginoza
`
`GOOGLE1017 U.S. Pat. No. 7,372,826 (“Dahod”)
`
`iii
`
`
`
`
`
`I.
`
`INTRODUCTION
`Google Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) of
`
`claims 3-23 of U.S. Patent 8,724,622 (“the ’622 patent”).
`
`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
`
`Motorola Mobility LLC infringed the ’622 patent. The complaint was served on
`
`September 13, 2016. Patent Owner also filed a complaint on September 6, 2016
`
`(Case No. 2:16-cv-994) alleging that Huawei Device USA, Inc. and Huawei
`
`Technologies USA, Inc. infringed the ’622 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.
`
`1
`
`
`
`
`
`The Patent Owner filed subsequent complaints in 2017 in the Eastern
`
`District of Texas (Case Nos. 2:17-cv-214, 2:17-cv-224, 2:17-cv-231) alleging
`
`infringement of the ’622 patent by Google Inc.
`
`The Patent Owner also filed complaints in the Eastern District of Texas
`
`alleging infringement of the ’622 patent by other parties: Kik Interactive, Inc.
`
`(2:17-cv-347), Hike Ltd. (2:17-cv-349), HeyWire, Inc. (2:16-cv-1313), HTC
`
`America, Inc. (2:16-cv-989), Kyocera America, Inc. et al (2:16-cv-990), LG
`
`Electronics USA, Inc. (2:16-cv-991), ZTE (USA) Inc. et al (2:16-cv-993),
`
`Telegram Messenger, LLP (2:16-cv-892), Vonage Holdings Corp. et al (2:16-cv-
`
`893), Avaya Inc. (2:16-cv-777), Avaya Inc. (2:16-cv-777), ShoreTel, Inc. (2:16-cv-
`
`779), AOL Inc. (2:16-cv-722), BeeTalk Private Ltd. (2:16-cv-725), Facebook, Inc.
`
`(2:16-cv-728), Green Tomato Limited (2:16-cv-731), Sony Interactive
`
`Entertainment LLC (2:16-cv-732), 2:16-cv-TangoMe, Inc. d/b/a Tango (2:16-cv-
`
`733), Tencent America, LLC et al (2:16-cv-694, 2:16-cv-577), Snap Inc. (2:16-cv-
`
`696), Apple Inc. (2:16-cv-638), BlackBerry Corp. et al (2:16-cv-639), Kakao Corp.
`
`(2:16-cv-640), Line Euro-Americas Corp. et al (2:16-cv-641), Samsung Electronics
`
`America, Inc. (2:16-cv-642), Viber Media Sarl (2:16-cv-643), Voxer Net LLC
`
`(2:16-cv-644), and WhatsApp, Inc. (2:16-cv-645).
`
`Petitioner is concurrently petitioning for Inter Partes Review of three other
`
`patents at issue in the above-noted litigations: U.S. Pat. No. 8,995,433 (“the ’433
`
`2
`
`
`
`
`
`patent”); U.S. Pat. No. 7,535,890 (“the ’890 patent”); and U.S. Pat. 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 ’622 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;
`
`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;
`
`3
`
`
`
`
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`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;
`
`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.
`
`4
`
`
`
`
`
`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
`
`Nicholas Stephens, Reg. No. 74,320
`
`Tel: 612-766-2018
`
`Kim Leung, Reg. No. 64,399
`
`Tel: 858-678-4713
`
`Patrick J. Bisenius, Reg. No. 63,893
`
`Tel: 612-766-2048
`
`Kenneth Darby, Reg. No. 65,068
`
`Tel: 512-226-8126
`
`
`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-
`
`0370IP1@fr.com (referencing No. 19473-0370IP1 and cc’ing
`
`JMillerPTAB@apks.com, PTABInbound@fr.com, hawkins@fr.com,
`
`nstephens@fr.com, leung@fr.com, bisenius@fr.com, and kdarby@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
`
`5
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`
`
`
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`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 ’622 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 3-23 on the grounds listed in the table
`
`below and supported by the declaration of Dr. Paul Min (GOOGLE1003).
`
`Ground
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Claims
`3-8, 11, 13, 18-
`
`Basis for Rejection
`Anticipated under § 102 based upon Zydney
`
`21
`
`(GOOGLE1005)
`
`3-8, 11, 13, 18-
`
`Obvious under § 103 based upon Zydney in view of
`
`23
`
`Enete (GOOGLE1009)
`
`10, 14-17
`
`12
`
`9
`
`Obvious under § 103 based upon Zydney in view of
`
`Enete and Stern (GOOGLE1006)
`
`Obvious under § 103 based upon Zydney in view of
`
`Enete and Coussement (GOOGLE1008)
`
`Obvious under § 103 based upon Zydney in view of
`
`Enete and RFC2131 (GOOGLE1012)
`
`
`Zydney, Stern, Coussement, and RFC2131 were all published more than one
`
`6
`
`
`
`
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`year before the alleged priority date, and thus qualify as prior art under 35 U.S.C.
`
`§102(b). See GOOGLE1016, ¶¶4-13 (evidencing public availability of RFC2131
`
`by April 1997). Enete qualifies as prior art under 35 U.S.C. §§102(a) and 102(e).
`
`During prosecution of the ’890 patent, to which the ’622 patent claims priority,
`
`Patent Owner filed an affidavit alleging it had a date of conception for the claims
`
`of the ’890 patent “prior to August 15, 2003,” and Enete was filed years before that
`
`time. GOOGLE1004, 124-127. None of these references were cited during the
`
`prosecution of the ’622 patent.
`
`This Petition is not duplicative or substantially similar to earlier IPR
`
`petitions challenging the ’622 patent. First, while Zydney is asserted as a primary
`
`reference in other IPR Petitions against the ’622 patent, one of which is
`
`concurrently filed by Petitioner-Google, this Petition challenges a different subset
`
`of claims than all other IPR Petitions based on Zydney. 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)
`
`(different IPR filings uniquely challenged different claims from a patent). Second,
`
`Google is not a party to any of the earlier IPR proceedings against the ’622 patent
`
`and was only recently named in a complaint filed by Patent Owner alleging
`
`infringement of the ’622 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
`
`7
`
`
`
`
`
`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).
`
`Although this Petition challenges an overlapping subset of claims in
`
`Grounds 1 and 2, the Grounds are not redundant. Ground 2 provides further
`
`teachings for independent claim element [3.3], and relies upon a different statutory
`
`ground (§103). Additionally, Ground 2 challenges dependent claims 22 and 23,
`
`which are not challenged in Ground 1.
`
`V.
`
`SUMMARY OF THE ’622 PATENT
`A. Brief Description
`The ’622 patent is directed to “an instant voice messaging system for
`
`delivering instant messages over a packet-switched network.” GOOGLE1001,
`
`2:61-62. The system includes an instant voice message (IVM) server and IVM
`
`clients that transmit instant voice messages over the packet-switched network (e.g.,
`
`the Internet) via the IVM server. Id., 6:50-7:52. Figure 2, for example, illustrates
`
`a preferred embodiment of an IVM system in which a local IVM server 202
`
`facilitates instant voice messaging between IVM clients 206 and 208.
`
`GOOGLE1001, FIG. 2.
`
`8
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`
`
`
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`The ’622 patent admits that prior art Voice-over Internet Protocol (“VOIP”)
`
`and public-switched telephone network (“PSTN”) systems allowed users to leave
`
`voice messages for later pickup by recipients. Id., 1:24-50. The ’622 patent
`
`further admits that sending instant text messages to recipients who are currently
`
`online was in the prior art. Id., 2:22-46. However, the ’622 patent incorrectly
`
`asserts that voice messaging had not previously been combined with instant
`
`messaging and that this is the problem being solved. See id., 2:47-52. As shown
`
`in detail below with respect to claims 3-23, prior art instant voice messaging
`
`systems existed that already implemented or otherwise plainly suggested such a
`
`solution. GOOGLE1003, ¶¶29-36.
`
`B.
`Summary of Prosecution
`The ’622 patent was filed July 11, 2012, and issued on May 13, 2014, from
`
`an application that claimed priority to an earlier application filed December 18,
`
`2003. GOOGLE1001, Cover Page. Following examination involving references
`
`not at issue here, the Examiner thereafter allowed the application, stating as
`
`reasons for allowance:
`
`The prior art fails to disclose applicant’s instant voice
`messaging system that has a database of user records
`where each record includes a user’s name, password, and
`a list of other users selected by a user. Neither does the
`prior art teach applicant’s instant voice messaging system
`that has an object field including a digitized audio file,
`
`9
`
`
`
`
`
`nor does the instant voice messaging system include
`displaying a list of recipients for an instant voice
`message.
`
`GOOGLE1002, 114. Notably, the “database” limitations are not found in claim 3,
`
`the independent claim at issue here. Regardless, as described below, other prior art
`
`patents and publications taught all elements of the claims challenged in this
`
`Petition. GOOGLE1003, ¶¶37-42.
`
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3)
`For the purposes of IPR only, terms of the ’622 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 ’622
`
`patent’s specification. 37 C.F.R. §42.100(b); GOOGLE1003, ¶¶24-25 (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 ’622 patent. Wellman, Inc. v. Eastman Chem.
`
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed to the extent
`
`necessary to resolve the controversy”).
`
`10
`
`
`
`
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’622 PATENT IS UNPATENTABLE
`A. Ground 1 [Anticipated under § 102 by Zydney] sets forth a
`reasonable likelihood to prevail on claims 3-8, 11, 13, 18-21
`Zydney “relates to the field of packet communications, and more particularly
`
`to voice packet communication systems.” GOOGLE1005, 1:4-5. Zydney sought
`
`to improve upon well-known text-based communication systems such as email and
`
`instant text messaging. Id., 7-17. According to Zydney, these text-based
`
`communication systems allowed for the attachment of audio files, but “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., 1:15-17. The solution proposed by Zydney sought to
`
`overcome this problem by disclosing “a system and method for voice exchange
`
`and voice distribution utilizing a voice container . . . [that] can be stored,
`
`transcoded and routed to the appropriate recipients instantaneously or stored for
`
`later delivery.” Id., 1:19-22. More specifically, Zydney’s technique “provides the
`
`ability to store messages both locally and centrally at the server whenever the
`
`recipient is not available for a prescribed period of time.” Id., 2:3-5.
`
`Petitioner provides additional details of Zydney’s teachings below in the
`
`context of the grounds for invalidation. GOOGLE1003, ¶¶44-47.
`
`11
`
`
`
`
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`[3.P] A system comprising:
`Even if treated as a limitation (which it is not here under BRI), Zydney
`
`discloses the preamble of claim 3. GOOGLE1005, 1:19-20 (“a system and method
`
`for voice exchange and voice distribution”); see also id., 2:14-15, 5:3-14, 10:11-
`
`11:9, FIGS. 1, 1A, 2; GOOGLE1003, ¶48.
`
`[3.1] a network interface connected to a packet-switched network;
`Zydney discloses this element. GOOGLE1003, ¶¶49-51. As shown in
`
`Figure 1A below, Zydney discloses a “central server 24” for communicating with
`
`software agents (e.g., software agent 22) over the Internet:
`
`GOOGLE1005, FIG. 1A (color added); GOOGLE1003, ¶49. As seen in Fig. 1,
`
`Zydney’s central server 24 connects clients (Sender 22 with PC software agent and
`
`
`
`12
`
`
`
`
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`Recipient 28 with PC software agent) over the Internet, e.g., a network. Because
`
`the central server 24 communicates through the Internet, central server 24 has a
`
`network interface. For example, Zydney’s central server 24 includes a “transport
`
`server 72” that can correspond to the claimed network interface. GOOGLE1003,
`
`¶50. GOOGLE1005, FIG. 2, 13:7-10; GOOGLE1003, ¶50. A person of ordinary
`
`skill in the art (“POSITA”) would have known that the Internet (and other
`
`networks such as intranets and extranets) discussed in Zydney are “packet-
`
`switched networks.” GOOGLE1003, ¶50. Zydney expressly refers to this fact
`
`when stating that its “invention relates to the field of packet communications.”
`
`GOOGLE1005, 1:2-3 (emphasis added); see also id., 5:3-4, 5:15-18, 10:14-16,
`
`23:11-12, 29:1-2. Moreover, the background of the ’622 patent lists the Internet as
`
`one example of a “packet-switched network.” See GOOGLE1001, 1:37-38 (“In
`
`the IP telephony, a VoIP terminal device is connected to a packet-switched
`
`network (e.g., Internet) …”) (emphasis added). Thus, Zydney teaches a network
`
`interface that is connected to a packet-switched network as claimed.
`
`[3.2] a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`Zydney discloses a “central server” that communicates with a plurality of
`
`instant voice message client systems via the network interface, e.g., transport
`
`server 72. GOOGLE1003, ¶¶52-54. Zydney’s central server 24 encompasses the
`
`recited “messaging system,” while Zydney’s software agents (e.g., software agents
`
`13
`
`
`
`
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`22, 28), or the client devices/systems that host the software agents, correspond to
`
`the claimed instant voice message client systems.1 For example, Zydney states that
`
`“[t]he central server in conjunction with the software agent controls, stores, and
`
`switches [] voice containers to the appropriate recipients.” GOOGLE1005, 14:6-9.
`
`Figure 1A above shows a “central server 24” communicating with a first instant
`
`voice messaging client system (e.g., “sender PC software agent 22”) and a second
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`instant voice messaging client system (e.g., “recipient PC software agent 28”).
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`GOOGLE1005, FIG. 1; GOOGLE1003, ¶52. Additionally, Figure 2 shows
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`components of a server (e.g., central server 24) configured to communicate with
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`instant voice message client systems (e.g., software agents 22, 28). GOOGLE1005,
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`FIG. 2.
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`Zydney describes that the central server includes an “authentication server”
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`to “permit or deny access to software agents,” a “proxy server” to “permit software
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`1 For simplicity, this Petition at times refers to Zydney’s “software agents”
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`themselves as the instant voice message client systems, although the client
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`devices/systems (e.g., “Internet compatible appliance[s]” (see GOOGLE1005,
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`14:1-3, FIGS. 1, A1)) that host the software agents may more precisely be
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`considered the instant voice messaging clients. GOOGLE1003, ¶52. Zydney’s
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`software agents, which are loaded on the client systems, then correspond to the
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`claimed “instant voice messaging application” recited in subsequent claims. Id.
`
`14
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`
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`agents accesses to backend servers and to retrieve/store voice files in the backend
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`servers,” an “operations, administration and maintenance (OA&M) server” to
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`“communicate with the software agent, telephone devices, and other Internet based
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`agents to manage many functions and services,” and a “messaging server” to store
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`voice containers and send voice containers to recipients when they become
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`available. GOOGLE1005, 23:14-17, 24:3-14, 25:1-9, 25:14-16, 33:22-34:1. Thus,
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`Zydney’s central server 24 encompasses the recited “messaging system.”
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`The central server communicates with the instant voice message client
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`systems (software agents) via the network interface, e.g., using transport server 72.
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`See, e.g., GOOGLE1005, 29:1-2 (“The transport mechanism for all
`
`communications will be over TCP/IP, Universal Data Protocol (UDP) …”), 23:11-
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`12 (“The voice container will be sent using standard TCP/IP transport.”); Supra
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`Analysis of Element [3.1]. Thus, Zydney discloses this claim element.
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`[3.3] 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,
`Zydney’s central server includes a communication platform system that
`
`maintains connection information for each of a plurality of instant voice message
`
`client systems (software agents) indicating whether there is a current connection to
`
`each of the plurality of instant voice message client systems. GOOGLE1003,
`
`15
`
`
`
`
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`¶¶55-57. For instance, Zydney discloses the central server “track[s] and
`
`maintain[s] the status of all software agents” associated with the system.
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`GOOGLE1005, 14:8-9. Zydney explains that the “status” of a software agent
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`includes whether the software agent is “online or offline,” and can further include
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`“whether the recipient does not want to be disturbed.” Id., 14:20-15:1. Zydney’s
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`“status” information thus aligns with the ’622 patent’s discussion of “connection”
`
`information, which the ’622 patent equates with an IVM client’s “contact
`
`presence.” See GOOGLE1001, 14:67-15:2 (discussing “contact presence
`
`(connection) information”); GOOGLE1003, ¶55.
`
`Zydney further includes multiple references to the central server maintaining
`
`and communicating connection information (e.g., status information) to software
`
`agents connected to the server. GOOGLE1005, 13:12-14 (“The Central Server …
`
`maintain[s] and provide[s] the status of all software agents”); 14:8-9 (the central
`
`server “will track and maintain the status of all software agents”); 14:20-22; 24:17-
`
`21; 30:13-15; 32:12-17; 24:21-23; FIG. 2.
`
`Thus, Zydney discloses this claim element.
`
`[3.4] wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`Zydney discloses this element. GOOGLE1003, ¶¶58-59. For example,
`
`Figure 8 describes how the central server (which encompasses the claimed
`
`16
`
`
`
`
`
`“messaging system”) polls an instant voice message client system (e.g., software
`
`agent) to determine if the client has any voice containers (e.g., “instant voice
`
`messages”) available for transmission. GOOGLE1005, FIG. 8 (step 1.2.2). If the
`
`client system has stored a voice container in a “reserved temporary storage
`
`location,” the voice container is then uploaded to a “central file server” of the
`
`messaging system. GOOGLE1005, FIG. 8 (step 1.2.3: “UPLOADING THE
`
`VOICE CONTAINER(S) TO A CENTRAL FILE SERVER”); see also id., 15:19-
`
`21 (“the voice containers are delivered to the central server”), 16:8-9 (“transport
`
`the voice containers to a central file system”), 14:6-8 (“[t]he central server in
`
`conjunction with the software agent controls, stores and switches the voice
`
`containers to the appropriate recipients”), 10:21-22 (“a software agent 22 …
`
`send[s], receive[s] and store[s] messages”). The central server encompasses the
`
`claimed messaging system, and receives a voice container (e.g., “instant voice
`
`message”) from one of the software agents.
`
`Thus, Zydney discloses this claim element.
`
`[3.5] wherein the instant voice message includes an object field
`including a digitized audio file.
`Zydney discloses this element. GOOGLE1003, ¶¶60-63. For context, the
`
`’622 patent teaches that a messaging system 436 in its central server (e.g., instant
`
`messaging server 202) communicates with the server engine 404 in its central
`
`server via what it calls message objects. GOOGLE1001, 14:3-5. The ’622 patent
`
`17
`
`
`
`
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`further teaches that a message object has several “fields.” Id., 14:6-7. Under BRI,
`
`such fields encompass fields that are present in a data packet. GOOGLE1003, ¶60.
`
`The ’622 patent further teaches that one such field is an “object field,” which “is a
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`block of data being carried by the message object, which may be, for example, a
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`digitized instant voice message.” GOOGLE1001, 14:37-40. Claim 3 requires that
`
`the recited “instant voice message” have an “object field” that includes a “digitized
`
`audio file.” Thus, under BRI, the recited “object field” is a field of a data packet
`
`that includes a digitized audio file. GOOGLE1003, ¶60.
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`In Zydney’s system, digitized audio files in the form of “voice messages”
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`(also referred to as “voice data”) are distributed in “voice containers” that include
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`the digitized voice messages and “voice data properties components” that indicate
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`parameters for the voice message’s distribution. GOOGLE1005, 11:2-3 (“the
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`message is first acquired, compressed and then stored in a voice container 26
`
`which is then sent to its destination(s)”), 6:6-8 (a “voice container” includes “voice
`
`data or voice data and voice data properties”). Zydney explains that the voice
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`message may be encoded as digitized audio files using a codec such as “GSM,”
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`“G.723, or “G.729.” GOOGLE1005, 25:10-13. The “voice container” in Zydney
`
`corresponds to the claimed instant voice message, and the “digitized voice
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`message” embedded in Zydney’s voice container corresponds to the claimed
`
`digitized audio file. GOOGLE1003, ¶61.
`
`18
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`
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`
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`Zydney teaches an arrangement of fields 302-338 for the “voice data
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`properties components” of a voice container. GOOGLE1005, FIG. 3, 23:1-12.
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`The voice container carries data organized in a set of fields, although Figure 3 does
`
`not expressly show the “body” of the voice container that carries the digitized
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`voice message. Id. Nonetheless, Zydney teaches elsewhere that the voice
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`container includes a “body,” which is in addition to the voice data properties
`
`components shown in Figure 3, and which holds the digitized voice message itself.
`
`The “body” of the voice container corresponds to the claimed “object field” in an
`
`instant voice message to carry a digitized audio file. GOOGLE1005, 34:4-7
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`(“Each message will have … [a] body of the message”), 23:1-2 (“the voice
`
`container [has] voice data and voice data properties components”), FIG. 7 (1.1.5)
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`(recorded voice message compressed and stored “in a voice ‘container’”). Indeed,
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`a POSITA would have appreciated that providing the digitized voice message in an
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`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
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`voice container. GOOGLE1003, ¶62.
`
`Thus, Zydney anticipates claim 3.
`
`[4] The system according to claim 3, wherein the instant voice
`message includes an action field identifying one of a
`predetermined set of permitted actions requested by the user.
`As discussed, the “fields” recited in the claims of the ’622 patent are fields
`
`19
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`
`
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`of a data packet. The ’622 patent teaches that the “content of the action field is
`
`selected from a list of permitted actions, which among other actions includes:
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`connect, disconnect, subscribe, unsubscribe, and post message.” GOOGLE1001,
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`14:7-10. This list is plainly non-exhaustive, since the specification says that the
`
`examples only “include[]” the listed actions. Regardless, the claim language does
`
`not specify what such permitted actions arethe claim only requires that there be
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`one.2 In addition, claim 4 recites that the permitted actions are requested by “the”
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`user. Because the term “the user” lacks antecedent basis, the claim never clarifies
`
`whether “the user” is the originator or the recipient. Under BRI (for this
`
`proceeding only), such users therefore can be either an originator or recipient of an
`
`instant voice message. Thus, under BRI (and for this proceeding only), the
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`claimed “permitted actions” can be any action that either an originator or recipient
`
`of an instant voice message can perform.
`
`Zydney’s voice container, i.e., an instant voice message, includes multiple
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`action fields identifying one of a predetermined set of permitted actions requested
`
`by a user. GOOGLE1003, ¶¶64-65. As discussed, Figure 3 discloses various
`
`fields 302-338 corresponding to “voice data properties components” of a voice
`
`container. GOOGLE1005, FIG. 3, 23:1-12. The fields 302-338 of the voice
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`2 Under the BRI standard here, a “set” can plainly include only one item, as in a set
`
`of one. Regardless, Zydney discloses various examples of the claimed action field.
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`20
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`
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`container include fields that identify a “number of ‘plays’ 310,” “voice cont
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