Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 10
`
`
` Entered: March 29, 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 IPR2017-02081
`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, 42.122; 35 U.S.C. §§ 315(d), 325(d)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 10
`
`
` Entered: March 29, 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 IPR2017-02081
`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, 42.122; 35 U.S.C. §§ 315(d), 325(d)
`
`
`
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`I.
`
`INTRODUCTION
`
`Google, Inc., now known as Google LLC1 (“Petitioner”), filed a
`
`Petition requesting inter partes review of claims 1, 2, and 24–39 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 8 (“Prelim. Resp.”). With authorization from the Board,
`
`Petitioner additionally filed a Reply to Patent Owner’s Preliminary
`
`Response, to address Patent Owner’s arguments concerning application of
`
`the Board’s institution discretion under 35 U.S.C. §§ 314(a) and 325(d).
`
`Paper 9.
`
`We have authority under 35 U.S.C. § 314. Upon considering the
`
`information presented in the Petition, the Preliminary Response, and
`
`Petitioner’s Reply, and for reasons discussed below, we deny the Petition
`
`and do not institute inter partes review of claims 1, 2, and 2439 of the
`
`’622 patent.
`
`II. BACKGROUND
`
`A. Related Matters
`
`Concurrently with the instant Petition, Petitioner additionally filed a
`
`petition requesting inter partes review of claims 3–23 of the ’622 patent
`
`(Case IPR2017-02080). IPR2017-02080, 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 Co.,
`
`Ltd., Huawei Technologies Co., Ltd., and Huawei Device (Dongguan) Co.,
`
`Ltd. as additional real parties in interest. See Pet. 1; IPR2017-02080,
`
`1 See Paper 5.
`
`
`
`2
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`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. 12; Paper 3, 2.
`
`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.
`
`3
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`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.
`
`4
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`
`
`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
`
`5
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`recipients via local IP network 204. Ex. 1001, 8:1529. “[O]nly the
`
`available IVM recipients, currently connected to . . . IVM server 202, will
`
`receive the instant voice message.” Id. at 8:3334. 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 Claims
`
`Of the challenged claims, claims 1, 24, 27, and 38 are independent.
`
`Independent claims 1 and 27 are illustrative of the claims discussed below
`
`and are reproduced below.
`
`1. 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;
`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; and
`a user database storing user records identifying users of the
`plurality of instant voice message client systems, wherein
`each of the user records includes a user name, a password
`and a list of other users selected by a user.
`
`27. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`
`6
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`wherein the instant voice messaging application includes a
`document handler system for attaching one or more files to
`the instant voice message.
`
`Ex. 1001, 23:62–24:9, 26:17–30.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts six grounds of unpatentability (Pet. 6–7):
`
`Challenged Claim(s)
`
`Basis
`
`Reference(s)
`
`1
`
`2
`
`§ 103(a) Zydney2 and Appelman3
`
`§ 103(a) Zydney, Appelman, and Boneh4
`
`24–26
`
`§ 103(a) Zydney and RFC7935
`
`27, 32–34, 36–38
`
`§ 102(b) Zydney
`
`27, 32–39
`
`§ 103(a) Zydney and Enete6
`
`
`
`2 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (Ex. 1005).
`
`3 Appelman, US 6,750,881 B1, issued June 15, 2004 (Ex. 1015).
`
`4 Boneh et al., US 2002/0112167 A1, published Aug. 15, 2002 (Ex. 1014).
`
`5 “Transmission Control Protocol,” Request for Comments 793, DARPA
`Internet Program, Defense Advanced Research Projects Agency (Sept.
`1991) (Ex. 1007).
`
`6 Enete et al., US 2003/0208543 A1, published Nov. 6, 2003 (Ex. 1009).
`
`7
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`Challenged Claim(s)
`
`Basis
`
`Reference(s)
`
`28–31
`
`§ 103(a) Zydney, Enete, and Stern7
`
`Petitioner also relies on a Declaration of Paul S. Min, Ph.D., filed as
`
`Exhibit 1003.
`
`III. DISCRETIONARY AUTHORITY: 35 U.S.C §§ 315(d) and 325(d)
`
`Section 325(d) states that “[i]n determining whether to institute . . .
`
`the Director may take into account whether, and reject the petition . . .
`
`because, the same or substantially the same prior art or arguments previously
`
`were presented to the Office.” In this proceeding, Patent Owner argues that
`
`the same or substantially the same prior art has been presented to the Office
`
`previously because Zydney has been asserted in multiple inter partes
`
`reviews. Prelim. Resp. 3–4. Specifically, Zydney previously was asserted
`
`against various claims of the ’622 patent by different petitioners in
`
`IPR2017-01667 and IPR2017-01668, in which we instituted on January 19,
`
`2018; IPR2017-01797 and IPR2017-01798, in which we instituted on
`
`February 6, 2018; and IPR2017-01804 and IPR2017-01805, in which we
`
`denied institution on January 19, 2018 (“the previous IPRs”); as well as in
`
`subsequent petitions filed against claims of the ’622 patent in
`
`IPR2017-02090, IPR2018-00579, and IPR2018-00580. In several of those
`
`cases, namely, IPR2017-01667, IPR2017-01804, IPR2017-02090, and
`
`IPR2018-00579, the cited Appelman reference also has been asserted.
`
`Petitioner responds that we should not exercise our discretion because,
`
`inter alia, the Petition presents different combinations of Zydney with other
`
`7 Stern, WO 98/47252, published Oct. 22, 1998 (Ex. 1006).
`
`
`
`8
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`references than earlier IPRs. Reply 2. Petitioner also proffers that it has not
`
`filed any previous petition challenging the ’622 patent, thus precluding the
`
`characterization of this proceeding as a follow-on petition. Id. at 1–2.
`
`Finally, Petitioner argues that claims 1, 2, 36, and 37 have never before been
`
`challenged, and that where, as here, the Petitioner is different from any
`
`petitioner of previously filed petitions based on Zydney, the facts weigh
`
`heavily against a discretionary denial. Id. at 1–3. We are not persuaded by
`
`Petitioner’s arguments.
`
`There is no question that Zydney have been previously presented to
`
`the Office in previous IPRs challenging many of the same claims of the
`
`’622 patent. The question is whether, based on this fact, we should exercise
`
`our discretion and deny the Petition. Applicability of § 325(d) is not limited
`
`to situations where the same petitioner has filed a follow-on petition. The
`
`statute allows for the exercise of discretion upon consideration only of
`
`whether the same or substantially the same prior art or arguments were
`
`presented previously to the Office. Further, the statutory authority to deny
`
`the petition based on the same previously presented prior art is not tied to the
`
`format of how that prior art is presented or whether every aspect of the
`
`asserted grounds is identical in both petitions. Therefore, we have statutory
`
`authority to deny this Petition because Zydney was previously presented to
`
`the Office in the previous IPRs, notwithstanding that Petitioner is not a party
`
`to the previous IPRs and the asserted grounds here are not exactly the same
`
`as the previous IPRs.
`
`9
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`We further note that under the current circumstances, where the
`
`patent-at-issue is involved in ongoing trials,8 we also have discretionary
`
`authority, under 37 C.F.R. § 42.122, to issue “any appropriate order
`
`regarding the additional matter[, i.e., this proceeding,] including providing
`
`for the stay, transfer, consolidation, or termination or any such matter.” See
`
`35 U.S.C. § 315(d). We recognize that in exercising our discretion we
`
`determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in
`
`a manner consistent with securing the just, speedy, and inexpensive
`
`resolution of the proceeding (37 C.F.R. § 42.1(b)).
`
`Here, our exercise of discretion to deny institution under §§ 315(d)
`
`and 325(d) is warranted for several reasons. To start with, IPR2017-01667,
`
`IPR2017-01668, and the present Petition rely on Zydney as the primary
`
`reference against which the majority of the claim limitations are mapped.
`
`IPR2017-01797 and IPR2017-01798 also rely on Zydney as teaching or
`
`suggesting numerous limitations of the challenged claims. Petitioner has
`
`proffered no reasoning regarding how it has relied on Zydney in any way
`
`that differs materially from the previous IPRs. And Petitioner’s reliance on
`
`different secondary references does not remedy this shortcoming. Moreover,
`
`Petitioner, here, does not explain whether the secondary references in this
`
`case are used in a different manner or add anything materially different to
`
`the secondary references used in the previous IPRs.
`
`Further, Zydney is being considered on the merits in pending IPRs. In
`
`fact, four trials against the ’622 patent are ongoing, with Zydney being used
`
`
`
`8 Trials in IPR2017-01667, IPR2017-01668, IPR2017-01797, and
`IPR2017-01798 are pending as of the issuance of this Decision.
`
`10
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`as a prior art reference in every instituted ground in those trials. See
`
`IPR2017-01667, IPR2017-01668, IPR2017-01797, and IPR2017-01798.
`
`Under these circumstances, we look to Petitioner to provide some reason
`
`that convinces us to institute yet another trial that features Zydney as
`
`prominently as the previously presented IPRs. Again, if there was a manner
`
`in which Petitioner here distinguishably relied on Zydney, Petitioner did not
`
`proffer that fact explicitly.
`
`Moreover, the time of filing of this Petition leads us to conclude that
`
`Petitioner gained the benefit of Patent Owner’s preliminary response, filed
`
`March 3, 2017, and our decision denying institution, entered May 25, 2017,
`
`in IPR2017-00223—i.e., more than three months before Petitioner filed the
`
`instant Petition. Petitioner, as the party with the knowledge of this fact,
`
`failed to allege that it did not gain the benefit of the preliminary response
`
`and decision denying institution in that previous IPR.9 We look to Petitioner
`
`to explain its delay in its filing. Petitioner provides no reason here.
`
`Finally, we are not just concerned with ensuring consistency across
`
`proceedings. We are also concerned with the significant resources of the
`
`Board that would be consumed reconciling arguments, issues, and evidence
`
`across proceedings.10
`
`With regard to the non-overlap of claims between the previous IPRs
`
`and those challenged in this Petition, we recognize the interests of Petitioner
`
`
`
`9 In this regard, in contrast, we acknowledge that Petitioner expressly asserts
`non-reliance on our decision denying institution in IPR2017-00224, entered
`the same day as the decision in IPR2017-00223. See Reply 2 (contending
`“IPR2017-00224 was denied on a procedural issue that never provided a
`substantive ‘roadmap’ for the instant Petition”).
`
`10 See MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373 (Fed. Cir. 2018).
`
`11
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`in challenging claims that are not challenged in the previous IPRs (i.e.,
`
`claims 1, 2, 36, and 37). The interest of Petitioner in this regard weigh
`
`heavily against our exercise of discretion. But we can exercise our
`
`discretion in a manner that balances the interests of Petitioner in challenging
`
`different claims here with the concern for duplication of Board resources and
`
`repeated challenges against the same claims of the same patents over
`
`Zydney, either alone or in combination with other references.
`
`Therefore, based on the foregoing and to secure the just, speedy, and
`
`inexpensive resolution of the dispute, we exercise our discretion under
`
`§§ 315(d) and 325(d), and deny institution of all challenged claims that
`
`overlap with the previous IPRs, namely, claims 24–35, 38, and 39. We do
`
`not exercise our discretion to deny institution with respect to the claims that
`
`have not been challenged in the previous IPRs: claims 1, 2, 36, and 37.
`
`IV. DISCUSSION OF CONSIDERED GROUNDS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); 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). We presume a claim term
`
`carries its plain meaning, which is the meaning customarily used by those of
`
`skill in the relevant art at the time of the invention. Trivascular, Inc. v.
`
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). We note that only those
`
`claim terms that are in controversy need to be construed, and only to the
`
`extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`
`12
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`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. 10–11; Prelim. Resp. 19–20. 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
`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
`
`13
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`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;11 and (4) objective evidence of
`
`nonobviousness, i.e., secondary considerations.12 Graham v. John Deere
`
`Co., 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.
`
`
`
`11 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) ¶ 13. To the extent there is any substantive difference between
`the declarants’ assessments, we adopt Dr. Min’s assessment for purposes of
`this Decision.
`
`12 Patent Owner does not contend in its Preliminary Response that any such
`secondary considerations are present.
`
`14
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`2. Obviousness of Claim 1 over Zydney and Appelman
`
`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.
`
`15
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`
`
`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.
`
`16
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`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
`
`17
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`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
`
`18
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`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
`
`19
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`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. Overview of Appelman
`
`Appelman, titled “User Definable On-line Co-user Lists,” describes a
`
`real-time notification system that enables a user to define “buddy lists” to
`
`track co-users of an online or network system. Ex. 1015, [54], [57]. The
`
`system tracks for the user the log-on status of the co-users and displays that
`
`information in real time to the tracking user in a graphical interface. Id.
`
`at [57]. When the user logs on to a system, the user’s set of buddy lists is
`
`presented to a buddy list system, which attempts to match co-users currently
`
`logged into the system with the entries on the user’s buddy list, and any
`
`matches are displayed to the user. Id. As co-users log on and log off, the
`
`user’s buddy list is updated to reflect the changes. Id.
`
`Figure 2a of Appelman is reproduced below.
`
`20
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`
`
`Figure 2a, above, illustrates “a set of symbolic data records showing
`
`the basic types of data used by one embodiment of [Appelman’s] invention
`
`for a buddy list[] and the conceptual relationship of data elements.” Id.
`
`at 2:15–18. With reference to Figure 2a, Group Name table 30 stores user-
`
`defined group names for buddy lists. Id. at 3:36–37. Each user may define
`
`multiple buddy lists by group names. Id. at 3:38. Two buddy lists, “Home
`
`List” and “Work List,” are shown in Group Name table 30. Id. at 3:39.
`
`Each group name in Group Name table 30 has an associated Buddy List
`
`table 32, comprising multiple records that each correspond to a co-user (or
`
`“buddy”) that the user wishes to track. Id. at 3:39–43. Each record may
`
`include data elements for the screen name (or address, such as an Internet
`
`address) of a particular co-user to be tracked, and the logon status of that
`
`user (e.g., codes for “In” or “Out”). Id. at 3:43–47.
`
`21
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`
`Figure 11 of Appelman is reproduced below.
`
`
`
`Figure 11, above, is a flowchart showing an implementation of Appelman’s
`
`invention. Id. at 2:41–42. In the illustrated implementation, a user logs into
`
`a Logon System (Step 200), which notifies the Buddy List System about the
`
`User (i.e., passes the User’s ID, address, or screen name to the Buddy List
`
`System) (Step 202). Id. at 6:53–58. The Buddy List System accesses the
`
`user’s buddy lists from a database, which may be, for example, on the user’s
`
`own station (Step 204). Id. at 6:58–60. The entries in the user’s buddy lists
`
`then are compared to the records of the Logon System (Step 206). Id.
`
`at 6:60–62. Appelman explains that this step is shown in dotted outline to
`
`indicate that the comparison can be done by passing records from the Logon
`
`22
`
`
`
`IPR2017-02081
`Patent 8,724,622 B2
`
`System to the Buddy List System, or vice versa, or could be done by a
`
`separate system. Id. at 6:62–65. The Buddy List System then displays a
`
`buddy list window showing the status (i.e., logged in or not) of the co-users
`
`on the user’s buddy lists with any of various indicator markings (Step 208).
`
`Id. at 6:66–7:2. Thereafter, while the user’s buddy list window is open, the
`
`Logon Sy
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
