`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Attorney Docket No.: 19473-0370IP2
`
`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
`
`I.
`INTRODUCTION ........................................................................................... 1
`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 [Obvious under § 103 based on Zydney in view
`of Appelman] sets forth a reasonable likelihood to prevail
`on claim 1 ............................................................................................ 11
`B. Ground 2 [Obvious under § 103 based on Zydney in view
`of Appelman and Boneh] sets forth a reasonable
`likelihood to prevail on claim 2........................................................... 23
`
`V.
`
`i
`
`
`
`
`
`C. Ground 3 [Obvious under § 103 based on Zydney in view
`of RFC793] sets forth a reasonable likelihood to prevail
`on claims 24-26 ................................................................................... 25
`D. Ground 4 [Anticipated under § 102 by Zydney] sets forth
`a reasonable likelihood to prevail on claims 27, 32-34,
`and 36-38 ............................................................................................. 34
`E. Ground 5 [Obvious under § 103 based on Zydney in view
`of Enete] sets forth a reasonable likelihood to prevail on
`claims 27 and 32-39 ............................................................................ 47
`F. Ground 6 [Obvious under § 103 based on Zydney in view
`of Enete and Stern] sets forth a reasonable likelihood to
`prevail on claims 28-31 ....................................................................... 60
`VIII. CONCLUSION .............................................................................................. 71
`
`
`ii
`
`
`
`
`
`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 Transmission Control Protocol, DARPA Internet Program
`Protocol Specification, Request for Comments 793 (“RFC793”)
`[RESERVED]
`
`GOOGLE1008
`
`GOOGLE1009 U.S. Pub. No. 2003/0208543 (“Enete”)
`
`GOOGLE1010
`
`[RESERVED]
`
`GOOGLE1011
`
`[RESERVED]
`
`GOOGLE1012
`
`[RESERVED]
`
`GOOGLE1013
`
`[RESERVED]
`
`GOOGLE1014 U.S. Pat. Pub. No. 2002/0112167 (“Boneh”)
`
`GOOGLE1015 U.S. Pat. No. 6,750,881 (“Appelman”)
`
`GOOGLE1016 Declaration of Sandy Ginoza
`GOOGLE1017 U.S. Pat. No. 7,372,826 (“Dahod”)
`GOOGLE1018 Oxford (Online) Dictionaries, Definition of “Default” (cached
`2000), https://en.oxforddictionaries.com/definition/default
`
`iii
`
`
`
`
`
`I.
`
`INTRODUCTION
`Google Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) of
`
`claims 1, 2, and 24-39 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
`
`
`
`
`
`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-
`
`0370IP2@fr.com (referencing No. 19473-0370IP2 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
`
`
`
`
`
`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 1, 2, and 24-39 on the grounds listed in the
`
`table below and supported by the declaration of Dr. Paul Min (GOOGLE1003).
`
`Ground
`
`Claims
`
`Basis for Rejection
`Obvious under § 103 based on Zydney
`
`1
`
`1
`
`(GOOGLE1005) in view of Appelman
`
`2
`
`3
`
`4
`
`5
`
`2
`
`24-26
`
`27, 32-34, and
`
`36-38
`
`27 and 32-39
`
`(GOOGLE1015)
`
`Obvious under § 103 based on Zydney in view of
`
`Appelman and Boneh (GOOGLE1014)
`
`Obvious under § 103 based on Zydney in view of
`
`RFC793 (GOOGLE1007)
`
`Anticipated under § 102 by Zydney
`
`Obvious under § 103 based on Zydney in view of
`
`Enete (GOOGLE1009)
`
`6
`
`
`
`
`
`6
`
`28-31
`
`Obvious under § 103 based on Zydney in view of
`
`Enete and Stern (GOOGLE1006)
`
`
`Zydney, Stern, Appelman, Boneh, and RFC793 were all published more
`
`than one year before the alleged priority date, and thus qualify as prior art under 35
`
`U.S.C. §102(b). See GOOGLE1016, ¶¶4-13 (confirming that RFC793 was
`
`published years before the alleged priority date of the ’622 patent). 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,
`
`7
`
`
`
`
`
`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
`
`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 4 and 5, the Grounds are not redundant. Ground 5 provides further
`
`teachings for independent claim elements [27.2], [37], and [38.2], and relies upon a
`
`different statutory ground (§103). Additionally, Ground 5 challenges dependent
`
`claims 35 and 39, which are not challenged in Ground 4.
`
`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.,
`
`8
`
`
`
`
`
`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.
`
`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:
`
`9
`
`
`
`
`
`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,
`nor does the instant voice messaging system include
`displaying a list of recipients for an instant voice
`message.
`
`GOOGLE1002, 114. As described below, other prior art patents and publications
`
`taught all elements of the claims challenged in this Petition, including those
`
`elements identified in the examiner’s reasons for allowance. GOOGLE1003, ¶37-
`
`42.
`
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3)
`For the purposes of IPR only, Petitioner submits that the terms of the ’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 (a “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, 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
`
`10
`
`
`
`
`
`Zydney reference and the preferred embodiment of the ’622 patent. Wellman, Inc.
`
`v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need
`
`only be construed to the extent necessary to resolve the controversy”).
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’622 PATENT IS UNPATENTABLE
`A. Ground 1 [Obvious under § 103 based on Zydney in view of
`Appelman] sets forth a reasonable likelihood to prevail on claim 1
`
`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.
`
`11
`
`
`
`
`
`Petitioner provides additional details of Zydney’s teachings, along with
`
`Appelman’s pertinent teachings, below in the element-by-element analysis of
`
`Ground 1.
`
`[1.P] A system comprising:
`Even if the preamble is limiting (which it is not here under the BRI
`
`standard), Zydney discloses a “system for voice exchange and voice distribution.”
`
`GOOGLE1005, 1:19-20; see also id., 2:14-15, 5:3-14, 10:11-11:9, FIGS. 1, 1A, 2;
`
`GOOGLE1003, ¶51.
`
` [1.1] a network interface connected to a packet-switched network;
`Zydney discloses this element. GOOGLE1003, ¶¶52-54; see also ¶¶44-47.
`
`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, ¶52. As seen in Fig. 1A,
`
`12
`
`
`
`
`
`Zydney’s central server 24 connects clients (Sender 22 with PC software agent and
`
`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. GOOGLE1005,
`
`FIG. 2, 13:7-10; GOOGLE1003, ¶53. A POSITA would have known that the
`
`Internet (and other networks such as intranets and extranets) discussed in Zydney
`
`are “packet-switched networks.” GOOGLE1003, ¶53. 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 (“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.
`
`[1.2] a messaging system communicating with a plurality of instant
`voice message client systems via the network interface;
`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, ¶¶55-59. Zydney’s central server 24 encompasses the
`
`recited “messaging system,” while Zydney’s software agents (e.g., software agents
`
`13
`
`
`
`
`
`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, ¶57. 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).
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`GOOGLE1005, FIG. 2.
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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 voice instant messaging clients themselves. GOOGLE1003, ¶56.
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`Zydney’s software agents, which are loaded on the client systems, may then be
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`considered an “instant voice messaging application” corresponding to the instant
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`voice messaging applications recited in subsequent claims (e.g., claims 27-38).
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`GOOGLE1003, ¶56.
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`14
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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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`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 [1.1]. Thus, Zydney discloses this claim element.
`
`[1.3] 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; and
`Zydney’s central server includes a communication platform system that
`
`maintains connection information for each of a plurality of instant voice message
`
`15
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`
`
`
`
`client systems (software agents) indicating whether there is a current connection to
`
`each of the plurality of instant voice message client systems. GOOGLE1003,
`
`¶¶60-62. 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”
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`information, which the ’622 patent equates with an IVM client’s “contact
`
`presence.” See GOOGLE1001, 14:67-15:2 (discussing “contact presence
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`(connection) information”); GOOGLE1003, ¶60.
`
`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.
`
`[1.4] a user database storing user records identifying users of the
`plurality of instant voice message client systems,
`
`16
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`
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`The combination of Zydney in view of Appelman teaches this element.
`
`GOOGLE1003, ¶¶63-66; see also ¶¶48-50. Zydney discloses an “authentication
`
`server” that uses a database to authenticate users who log on to Zydney’s
`
`centralized voice instant messaging server. GOOGLE1005, 32:1-4 (“The
`
`authentication server should keep track of which user in its database belongs to
`
`which backend server.”); see also id., 24:1-4 (discussing known SQL server for
`
`database access), 30:1-3 (“user identifier” and “password” “established during []
`
`initial registration process”); 31:1-12, 32:1-8, 24:1-4, FIG. 15 (step 4.1.2);
`
`GOOGLE1003, ¶64.
`
`Appelman teaches an instant messaging platform that includes a “Buddy List
`
`System 26” that “maintains a database 28 for storing user information.”
`
`Appelman’s database 28 stores user records identifying end users of the instant
`
`messaging platform. GOOGLE1015, FIG. 2a and 3:34-47 (disclosing database
`
`tables maintaining “Buddy Lists” for users of the instant messaging platform);
`
`FIG. 2b and 3:48-62 (disclosing database tables maintaining “Permissions Lists
`
`34” for users of the instant messaging platform). A POSITA would have been
`
`motivated to implement Appelman’s teachings in Zydney’s voice instant
`
`messaging system for at least the reasons articulated below in the analysis of
`
`element [1.5]. GOOGLE1003, ¶65. Likewise, for the reasons described below, a
`
`17
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`
`
`
`
`POSITA would have had an expectation that the combination of Zydney and
`
`Appelman would have worked for its intended purpose. Id.
`
`[1.5] wherein each of the user records includes a user name, a
`password and a list of other users selected by a user.
`The combination of Zydney in view of Appelman teaches this element.
`
`GOOGLE1003, ¶¶67-73; see also supra Analysis of Element [1.4]. As discussed,
`
`Zydney’s authentication server authenticates software agents using a “user
`
`identifier” and a password that were “established during [an] initial registration
`
`process.” GOOGLE1005, 30:1-4. Zydney teaches that its servers maintain user
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`records identifying a list of other users selected by a user, e.g., users of “software
`
`agents that are permitted to send and receive voice containers and other media[]
`
`types.” Id., 26:10-14. A POSITA would have recognized that storing these user
`
`records in database would have been a predictable option as late as 2003.
`
`GOOGLE1003, ¶67.
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`Even if Zydney did not expressly disclose this element, Appelman
`
`demonstrates that this was a known feature of instant messaging systems at the
`
`time. GOOGLE1003, ¶¶68-69. Appelman teaches a “Buddy List System 26” that
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`“maintains a database 28 for storing user information.” GOOGLE1015, 3:26-27,
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`FIG. 1; FIGS. 2a and 2b, 3:34-63. Among the user information stored in database
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`28 are “Buddy Lists” (GOOGLE1015, 3:34-47, FIG. 2a) and “Permissions List 34”
`
`(GOOGLE1015, 3:48-63, FIG. 2b). For example, Figure 2a (copied below), shows
`
`18
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`
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`a “Group Name table 30 stor[ing] user-defined group names for buddy lists” and a
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`“Buddy List table 32” for each group that identifies “co-users” (“buddies”) “that
`
`the user wishes to track.” GOOGLE1015, FIG. 2a, 3:36-43.
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`GOOGLE1015, FIG. 2a. Additionally, the “Permissions List 34” identifies, for
`
`each user, whether any other users in a linked “Exclusion List 36” or “Inclusion
`
`List 38” are permitted to add that user to their buddy lists:
`
`
`
`19
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`
`
`
`
`
`GOOGLE1015, FIG. 2b, 3:48-63. Appelman thus provides a straightforward
`
`teaching of user records in an instant messaging database that store data indicating
`
`a list of co-users in the instant messaging system that a first user has selected.
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`GOOGLE1003, ¶68.
`
`Appelman also discusses a “Logon System 24” that maintains user names
`
`and passwords for users to logon to the “Buddy List System 26,” and suggests that
`
`the user names are linked to the “Buddy Lists” stored in database 28.
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`GOOGLE1015, FIG. 11, 6:54-59 (“The Logon System performs normal logon
`
`20
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`
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`
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`procedures (e.g., requesting a user ID and/or a password) and notifies the Buddy
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`List System about the User (i.e., passes the User’s ID, address, or screen name to
`
`the Buddy List System) (Step 202). The Buddy List System accesses that User's
`
`Buddy Lists from a database”). A POSITA would have known that the user
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`records in Appelman’s system, including user names, passwords, and lists of
`
`selected users (e.g., “Buddy Lists” and “Permissions List 34”), would be
`
`maintained in a database that is decentralized at least between the “Logon System
`
`24” and the “Buddy List System 26,” although a centralized database that
`
`combined the two would also have been a predictable option at the time. See
`
`GOOGLE1015, 3:27:29 (“database 28 may be of any type, such as relational or
`
`hierarchical, and may be centralized or distributed”); GOOGLE1003, ¶69.
`
`Multiple reasons would have prompted a POSITA to apply Appelman’s
`
`suggestion as discussed above to Zydney’s system before 2003. First, by
`
`maintaining in a database user records that identify username and password
`
`credentials for registered users of the instant messaging system, the combined
`
`system of Zydney in view of Appelman would be capable of authenticating users
`
`or software agents that attempt to logon to the system by checking the credentials
`
`submitted in a logon request against the credentials stored in the user database,
`
`thereby improving system security. GOOGLE1003, ¶70.
`
`21
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`
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`Second, a POSITA would have been motivated to maintain “Buddy Lists” in
`
`a user database in order to provide the capability to “implement a real time
`
`notification system that tracks, for each user, the logon status of selected co-users
`
`and displays that information in real time to the tracking user” for selected users in
`
`the tracking user’s buddy list. GOOGLE1015, 2:51-56; GOOGLE1003, ¶71.
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`Third, a POSITA would have been motivated to use Appelman’s teachings
`
`in Zydney’s system because doing so would be the mere application of a known
`
`technique (e.g., Appelman’s teaching of “Buddy Lists” and “Permission Lists”) to
`
`a known system (e.g., Zydney’s instant voice messaging system) ready for
`
`improvement to yield predictable results. GOOGLE1003, ¶72. The law is clear:
`
`“when a patent ‘simply arranges old elements with each performing t
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