IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Rojas
`U.S. Patent No.:
`7,535,890 Attorney Docket No.: 19473-0372IP1
`Issue Date:
`May 19, 2009
`
`Appl. Serial No.: 10/740,030
`
`Filing Date:
`December 18, 2003
`
`Title:
`SYSTEM AND 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 UNITED STATES PATENT
`NO. 7,535,890 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`
`In re Patent of: Michael J. Rojas
`U.S. Patent No.:
`7,535,890 Attorney Docket No.: 19473-0372IP1
`Issue Date:
`May 19, 2009
`
`Appl. Serial No.: 10/740,030
`
`Filing Date:
`December 18, 2003
`
`Title:
`SYSTEM AND 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 UNITED STATES PATENT
`NO. 7,535,890 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`TABLE OF CONTENTS
`
`IV.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ............................ 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 1
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 5
`D. Service Information .................................................................................. 5
`II.
`PAYMENT OF FEES – 37 C.F.R. § 42.103 .................................................... 5
`III. GROUNDS FOR STANDING AND CHALLENGE 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 ’890 PATENT .............................................................. 7
`A. Brief Description ....................................................................................... 7
`B. Summary of the Prosecution ..................................................................... 8
`C. Claim Construction ................................................................................... 9
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’890 PATENT IS UNPATENTABLE ............................... 10
`A. [GROUND 1] – Claims 1-6, 9-10, 12, 14, 16-20, 23-24, 26, 40-43, 46-
`47, 49, 51-54, 57-58, and 60 are anticipated by Zydney under 35 U.S.C.
`§ 102(b) ................................................................................................... 10
`VI. CONCLUSION .............................................................................................. 58
`
`
`
`V.
`
`
`
`i
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`
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`
`
`
`EXHIBITS
`
`GOOGLE1001 U.S. Patent No. 7,535,890 to Rojas (“the ’890 patent”)
`
`GOOGLE1002
`
`Prosecution History of the ’890 patent (“the Prosecution
`History”)
`
`GOOGLE1003 Declaration of Dr. Paul S. Min, Ph.D. with CV attached
`
`GOOGLE1004
`
`International Publication No. WO2001/011824 (“Zydney”)
`
`GOOGLE1005 Gralla, HOW THE INTERNET WORKS (6th Ed. 2001)
`
`GOOGLE1006
`
`Reserved
`
`GOOGLE1007
`
`Reserved
`
`GOOGLE1008
`
`Reserved
`
`GOOGLE1009
`
`THE NETWORK ENCYCLOPEDIA,
`http://www.thenetworkencyclopedia.com/entry/packet-
`switching/
`
`GOOGLE1010 Nwana, SOFTWARE AGENTS: AN OVERVIEW (1996),
`http://agents.umbc.edu/introduction/ao/
`
`GOOGLE1011
`
`Shuler, HOW DOES THE INTERNET WORK? (2002),
`http://www.theshulers.com/whitepapers/internet_whitepaper/
`
`GOOGLE1012
`
`Library of Congress Online Catalog Record re HOW THE
`INTERNET WORKS (Gralla)
`
`GOOGLE1013
`
`Public Copyright Catalog Record re HOW THE INTERNET WORKS
`(Gralla)
`
`ii
`
`
`
`GOOGLE1014
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`International Standard Book Number Listing re HOW THE
`INTERNET WORKS (Gralla)
`
`GOOGLE1015 Que Corporation, Product Record re HOW THE INTERNET
`WORKS (Gralla), http://www.quepublishing.com/store/how-the-
`internet-works-9780789725820
`
`GOOGLE1016 Declaration of Michael Cohen re HOW THE INTERNET
`WORKS (Gralla)
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-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 ’890 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 ’890 patent (the complaint was also served
`
`on September 13, 2016). On October 6, 2016, Patent Owner filed an amended
`
`complaint, which eliminated Huawei Technologies USA, Inc. as a defendant and
`
`added Huawei Device Co., LTD. as a defendant.
`
`Patent Owner filed subsequent complaints in 2017 in the Eastern District of
`
`Texas (Case Nos. 2:17-cv-465, 2:17-cv-466, 2:17-cv-467, 2:17-cv-231, 2:17-cv-
`
`1
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`224, 2:17-cv-214) alleging that Google infringed the ’890 patent.1
`
`Patent Owner also filed complaints in the Eastern District of Texas alleging
`
`infringement of the ’890 patent by other parties: Avaya Inc. (2:16-cv-777);
`
`Shoretel, Inc. (2:16-cv-779); Sony Interactive Entertainment LLC (2:16-cv-732);
`
`Tangome, Inc. (2:16-cv-733); Green Tomato Limited (2:16-cv-731); Facebook,
`
`Inc. (2:16-cv-728); Voxernet LLC (2:16-cv-644); Viber Media S.A.R.L. (2:16-cv-
`
`643); Samsung Electronics America, Inc. (2:16-cv-777, 2:16-cv-642); Apple Inc.
`
`(2:16-cv-638); AOL Inc. (2:16-cv-722); Beetalk Private Ltd. (2:16-cv-725);
`
`Vonage Holdings Corp. and Vonage Americas, Inc. (2:16-cv-893); Telegram
`
`Messenger, LLP (2:16-cv-892); Whatsapp, Inc. (2:16-cv-645); Line Euro-Americas
`
`Corp. and Line Corporation (2:16-cv-641); Blackberry Corporation and Blackberry
`
`Limited (2:16-cv-639); HTC America, Inc. (2:16-cv-989); Kyocera America, Inc.
`
`and Kyocera Communications, Inc. (2:16-cv-990); LG Electronics U.S.A., Inc.
`
`(2:16-cv-991); ZTE (USA), Inc. and ZTE (TX), Inc. (2:16-cv-993); Kakao
`
`Corporation (2:16-cv-640); Snapchat, Inc. (2:16-cv-696); Tencent America LLC
`
`and Tencent Holdings Limited (2:16-cv-694, 2:16-cv-577); Heywire, Inc. (2:16-cv-
`
`1313); Hike Ltd. (2:17-cv-349); Kik interactive, Inc. (2:17-cv-347, 2:17-cv-481);
`
`
`1 Patent Owner amended its complaints in Case Nos. 2:17-cv-214, 2:17-cv-224 and
`
`2:17-cv-231 to remove any allegations that Google infringed the ’890 patent.
`
`2
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`Attorney Docket No. 19473-0372IP1
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`and Hike Ltd. (2:17-cv-475, 2:17-cv-349).
`
`Concurrent with the filing of this Petition are two additional petitions to
`
`address a different subset of the ’890 patent’s claims. Petitioner is also
`
`concurrently petitioning for Inter Partes Review of three other patents at issue in
`
`the above-noted litigations: U.S. Patent No. 8,724,622 (“the ’622 patent”); U.S.
`
`Patent No. 8,199,747 (“the ’747 patent”); and U.S. Patent No. 8,995,433 (“the ’433
`
`patent”). The ’890, ’622, ’747, and ’433 patents are all in the same family. Other
`
`petitioners have filed IPR proceedings challenging certain claims of the ’890, ’622,
`
`’747, and ’433 patents, as well as U.S. Patent No. 8,243,723, which is also in the
`
`same patent family as the ’890 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;
`
`3
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01523;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01524;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01635;
`
`Snap Inc. v. Uniloc USA, Inc. et al., IPR2017-01611;
`
`Snap Inc. v. Uniloc USA, Inc. et al., IPR2017-01612;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01634;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01636;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01667;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01668;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01797;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01798;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01799;
`
`Samsung Elec. America, Inc. v. Uniloc Luxembourg, S.A., IPR2017-01800;
`
`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.
`
`
`
`4
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`
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Jeffrey A. Miller, Reg. No. 35,287
`3000 El Camino Real
`Five Palo Alto Square, Suite 500
`Palo Alto, CA 94306
`Tel. 650-319-4538 / Fax 650-319-4938
`
`
`BACK-UP COUNSEL
`Michael T. Hawkins, Reg. No. 57,867
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 612-337-2569 / Fax 612-288-9696
`Kenneth Darby, Reg. No. 65,068
`Tel: 512-226-8126
`Kim Leung, Reg. No. 64,399
`Tel: 858-678-4713
`Patrick J. Bisenius, Reg. No. 63,893
`Tel: 612-766-2048
`Nicholas Stephens, Reg. No. 74,320
`Tel: 612-766-2018
`
`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-
`
`0372IP1@fr.com (referencing No. 19473-0372IP1 and cc’ing
`
`JMillerPTAB@apks.com; PTABInbound@fr.com, hawkins@fr.com,
`
`kdarby@fr.com, bisenius@fr.com, leung@fr.com, and nstephens@fr.com).
`
`II.
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`The Patent and Trademark Office is authorized to charge Deposit Account
`
`5
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`
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any
`
`additional fees.
`
`III. GROUNDS FOR STANDING AND CHALLENGE UNDER 37
`C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’890 patent is available for IPR and 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 1-6, 9-10, 12, 14, 16-20, 23-24, 26, 40-43,
`
`46-47, 49, 51-54, 57-58, and 60 on the grounds listed below. A declaration from
`
`Dr. Paul S. Min, Ph.D. is also included in support of this Petition.
`
`Ground
`
`Claims
`
`Ground 1
`
`1-6, 9-10, 12, 14, 16-20, 23-24, 26,
`40-43, 46-47, 49, 51-54, 57-58, 60
`
`Basis for Rejection
`
`Anticipated by Zydney
`
`Zydney (GOOGLE1004) qualifies as prior art under 35 U.S.C. §102(b)
`
`because it was published February 15, 2001, over a year before the effective filing
`
`date (December 18, 2003) of the ’890 patent. None of these references were cited
`
`during the prosecution of the ’890 patent.
`
`This Petition is not duplicative or substantially similar to other IPR petitions
`
`challenging the ’890 patent. First, while Zydney is also asserted as a primary
`
`6
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`
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`reference in four other IPR Petitions against the ’890 patent, two of which are
`
`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 ’890 patent
`
`and was more recently named in a complaint filed by Patent Owner alleging
`
`infringement of the ’890 patent. Supra, Section I. Google’s interests in having due
`
`process and a fair opportunity to be heard on the merits in this forum weigh heavily
`
`against any exercise of discretion to deny institution. See 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).
`
`IV. SUMMARY OF THE ’890 PATENT
`A. Brief Description
`The ’890 patent is directed toward “a system and method for enabling local
`
`and global instant VoIP messaging over an IP network, such as the Internet, with
`
`PSTN support.” GOOGLE1001, 1:7-30; see also id., 2:46-48, 6:37-39. The ’890
`
`patent concedes that “[v]oice messaging in both the VoIP and PSTN is known.”
`
`7
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`GOOGLE1001, 2:11. The ’890 patent also admits that “[i]nstant text messaging is
`
`likewise known.” Id., 2:23. A user can send an instant text message by
`
`“select[ing] one or more persons to whom the message will be sent and typ[ing] in
`
`a text message. The text message is sent immediately via the text-messaging
`
`server to the selected one or more persons.” Id., 2:23-35.
`
`Despite the fact that VoIP/PSTN voice messaging and instant text messaging
`
`were well-known technologies, the ’890 patent alleged that “there is still a need in
`
`the art for providing a system and method for providing instant VoIP messaging
`
`over an IP network.” GOOGLE1001, 2:26-42. In fact, the “innovation” sought to
`
`be protected by the inventors was apparently nothing more than “combining the
`
`best features of instant messaging with Voice over IP technology.” GOOGLE1002,
`
`140 (submitted in connection with inventor’s affidavit). As evidenced below,
`
`however, this concept of implementing instant voice messaging over the Internet
`
`was not new or innovative by 2003.
`
`B.
`Summary of the Prosecution
`During prosecution, the applicant responded to a rejection by attempting to
`
`swear behind the cited references without defending any claim features on the
`
`merits. GOOGLE1002, 119-170. The Examiner subsequently rejected the claims
`
`on different grounds based on different references. In response, patentee argued
`
`that the prior art “fails to teach (i) any consideration of availability/unavailability;
`
`8
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`Attorney Docket No. 19473-0372IP1
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`(ii) temporarily storing the instant voice message; and (iii) delivering the stored
`
`instant voice message to the selected recipient once the selected recipient becomes
`
`available.” Id., 94 (original emphasis). This is the same feature initially deemed
`
`allowable by the examiner, and the same feature mentioned in the Notice of
`
`Allowability. Id., 80.
`
`This feature was known in the prior art—namely, in Zydney, a prior art
`
`reference that anticipates the combination of elements set forth in the challenged
`
`claims.
`
`C. Claim Construction
`For the purposes of IPR only, the terms of the ’890 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 ’890 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—especially in light of the
`
`overwhelming similarity between Zydney and the preferred embodiment of the
`
`’890 patent. Under these conditions, no express constructions are necessary
`
`because “claim terms need only be construed to the extent necessary to resolve the
`
`controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`
`9
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`Attorney Docket No. 19473-0372IP1
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`2011).
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’890 PATENT IS UNPATENTABLE
`A.
`[GROUND 1] – Claims 1-6, 9-10, 12, 14, 16-20, 23-24, 26,
`40-43, 46-47, 49, 51-54, 57-58, and 60 are anticipated by
`Zydney under 35 U.S.C. § 102(b)
`Zydney “relates to the field of packet communications, and more particularly
`
`to voice packet communication systems.” GOOGLE1004, 1:4-5. Zydney sought
`
`to improve upon well-known text-based communication systems such as email and
`
`instant messaging. Id., 1:6-17. According to Zydney, 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., 1:14-17. 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. Zydney’s feature of temporarily storing
`
`instant voice messages for “later delivery” when “the recipient is not available” is
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`10
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`the exact same feature erroneously alleged to be absent from the prior art during
`
`prosecution of the ’890 patent. GOOGLE1002, 80.
`
`Zydney’s system architecture is illustrated by the functional block diagram
`
`of Figures 1 and 1A (reproduced below). GOOGLE1004, 10:19-11:23. As shown
`
`below, the basic paradigm of Zydney’s technique involves a sender software agent
`
`(22, yellow) interfacing with a central server (24, pink) to send a voice container
`
`(26) to a recipient software agent (28, blue):
`
`Id., FIG. 1A (color coded). Communications between the software agents (22, 28)
`
`and the central server (24) are conducted over one or more packet-switched
`
`
`
`11
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`Attorney Docket No. 19473-0372IP1
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`networks, such as the Internet (purple), intranets, and/or extranets, with traditional
`
`PSTN network (orange) support. Id., 5:3-18.
`
`Within the context of Zydney’s architecture, the sender software agent (22)
`
`executes “a number of distinct modes of communication[.]” GOOGLE1004,
`
`14:19-20. Zydney describes two modes, a “pack and send mode of operation”
`
`(also referred to in Zydney as a “voice mail conversation” and a “voice instant
`
`messaging session”) where “the [entire] message is first acquired, compressed and
`
`then stored in a voice container (26)” (id., 10:19-11:23, 15:8-16:4) and a “real-time
`
`‘intercom’ [mode] which simulates a telephone call[.]” (id., 15:8-14, 16:4-15).
`
`GOOGLE1003, ¶¶48; 71. In either mode, transmission of the instant voice
`
`message may be conducted directly between software agents (22, 28) (so-called
`
`“peer-to-peer communications”) or through the central server (24).
`
`GOOGLE1003, ¶50; GOOGLE1004, 1:19-22, 10:19-11:22, 12:1-23, 16:1-21,
`
`24:15-25:9, 27:12-16, 30:1-18, Figures 1, 1A, 8, 11, 14-15, 17. One featured
`
`characteristic of Zydney’s pack and send mode is “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., 11:1-6.
`
`As described in the element-by-element analysis below, Zydney is
`
`overwhelmingly similar to the preferred embodiment of the ’890 patent, and
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`12
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`Zydney discloses all elements of claims 1-6, 9-10, 12, 14, 16-20, 23-24, 26, 40-43,
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`46-47, 49, 51-54, 57-58, and 60.
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`Claim 1:
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`[1.0]: “An instant voice messaging system for delivering instant
`messages over a packet-switched network, the system comprising”
`Even if this preamble were treated as a limitation (which it is not under the
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`BRI standard), Zydney discloses the recited system. GOOGLE1003, ¶¶39-43.
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`Like the ’890 patent, Zydney’s disclosure broadly relates to “the field of packet
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`communications, and more particularly to voice packet communication systems.”
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`GOOGLE1004, 1:4-5. Within this field, Zydney discloses “a system and method
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`for voice exchange and voice distribution utilizing a voice container.” Id., 1:19-20;
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`see also id., 1:20-2:10. Zydney further explains that this system and method
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`provides “the ability to communicate spontaneously, in the user’s own voice,
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`without the limitations of written communications for natural expression.” Id.,
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`10:11-14. This results in a “system with instant messaging, distributed over the
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`Internet.” Id., 10:14-16; see also id., 1:20-22 (“[V]oice containers can be stored,
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`transcoded and routed to the appropriate recipients instantaneously[.]”). Before
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`2003, a POSITA would have known that the Internet is a packet-switched network.
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`GOOGLE1003, ¶43 (citing GOOGLE1009, 1 (“The Internet is the prime example
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`of a packet-switched network[.]”); GOOGLE1005, 336 (“The Internet is a packet
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`switched network.”)); see also GOOGLE1012-1016 (evidence of public
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`13
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`availability of GOOGLE1005). Indeed, the ’890 patent itself admits that the
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`Internet is a packet-switched network. GOOGLE1001, 1:6-11 (“In the IP
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`telephony, a VoIP terminal device is connected to a packet-switched network (e.g.,
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`Internet).”)).
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`[1.1.a]: “a client connected to the network”
`Zydney discloses Element [1.1.a]. GOOGLE1003, ¶¶44-46. Zydney
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`discloses a “client” in the form of “a software agent with a user interface
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`[operating] in conjunction with a central server to send, receive and store messages
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`using voice containers.” GOOGLE1004, 1:19-2:10; see also id., 10:11-11:22. The
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`software agent described by Zydney is connected to the Internet—i.e., the packet-
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`switched network. Id., 14:2-5 (describing a software agent as an “Internet
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`compatible appliance”); Figure 1A; GOOGLE1003, ¶¶44-45.
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`Zydney broadly defines its “software agent” as “a component of software
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`and/or hardware which is capable of acting exactingly in order to accomplish tasks
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`on behalf of its user.” GOOGLE1003, ¶¶45-46 (quoting GOOGLE1010, 2
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`(incorporated in Zydney by reference; see GOOGLE1004, 10:3-9)). Zydney’s
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`disclosure that the agent can be a “wireless handheld computer” or “digital
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`telephone” is similar to the ’890 patent’s client, which can be “a VoIP softphone.”
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`Compare GOOGLE1004, 11:14-22; with GOOGLE1001, 6:61-7:12;
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`GOOGLE1003, ¶46 (explaining that a “digital telephone” is another name for a
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`14
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
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`“VoIP phone”).
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`[1.1.b] “the client selecting one or more recipients, generating an
`instant voice message therefor, and transmitting the selected
`recipients and the instant voice message therefor over the network”
`Zydney discloses Element [1.1.b]. GOOGLE1003, ¶¶47-52. The client or
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`“software agent” of Zydney “SELECTS ONE OR MORE RECIPIENTS” for an
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`instant voice message. GOOGLE1004, Figures 4, 6. For example, with reference
`
`to Figure 2, Zydney explains that the software agent has functionality to “address
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`the recipient(s).” Id., 13:1-6. More specifically, Zydney teaches that an
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`“originator”—i.e., a user—“selects one or more intended recipients from a list of
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`names[.]” Id., 14:17-19.
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`Regarding “generating an instant voice message,” Zydney’s system allows
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`instant voice message originators (i.e., users) to “digitally record[] messages for
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`one or more recipients using a microphone-equipped device and the software
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`agent.” GOOGLE1004, 16:1-4. Zydney further describes a “pack and send mode
`
`of operation” of the software agent “in which the message is first acquired,
`
`compressed and then stored in a voice container[.]” Id., 10:19-11:3; see also id.,
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`12:1-13:6 (identifying addressing and packing of the message into one or more
`
`voice containers as a function of the software agent), 14:2-5 (“To create a
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`message, the software agent will address, pack and send the message in a voice
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`container.”); GOOGLE1003, ¶48.
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`15
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`“The term ‘voice containers’ as used throughout [Zydney] refers to a
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`container object that contains no methods, but contains voice data or voice data
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`and voice data properties.” GOOGLE1004, 12:1-17. A POSITA would have
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`recognized that a “container object” containing voice data is a “voice message.”
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`GOOGLE1003, ¶48. Moreover, as discussed (supra, analysis of Element [1.0]),
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`Zydney is directed to distributing voice containers “instantaneously.”
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`GOOGLE1004, 1:20-22, 10:11-18. Thus, Zydney’s “voice containers” are the
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`claimed “instant voice messages.” GOOGLE1003, ¶48.
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`The software agent of Zydney also transmits the selected recipients and the
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`instant voice message therefor over the network, as claimed. GOOGLE1003,
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`¶¶49-50. For example, Zydney explains that the software agent can “send, receive
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`and store messages using voice containers[.]” . GOOGLE1004, 10:19-11:1. More
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`specifically, Zydney states: “Voice data is transmitted to the server in a format
`
`provided by the agent,” and “[t]he voice data is transmitted in a voice container.”
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`Id., 12:1-6. Thus, Zydney discloses “transmitting . . . the instant voice message.”
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`GOOGLE1003, ¶¶49-50.
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`Zydney also discloses “transmitting the selected recipients” as recited in
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`claim 1. GOOGLE1003, ¶¶51-52. In fact, the evidence here shows that Zydney’s
`
`teaching is nearly identical to the preferred embodiment of the ’890 patent. Id.
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`Specifically, The ’890 patent describes an IVM server including a database that
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`“stores users (e.g., IVM clients as well as legacy telephone clients) that are known
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`to the IVM server,” where “[t]he users are represented in the database as
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`records[.]” GOOGLE1001, 13:32-65; see also id., 15:13-21 (describing “the
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`allocation of IP addresses to IVM clients” by the server). Thus, when “[t]he user
`
`selection [of one or more IVM recipients] is transmitted to the IVM server,” the
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`server is able to “deliver the transmitted instant voice message to the selected one
`
`or more recipients[.]” GOOGLE1001, 7:58-61, 8:16-19; GOOGLE1003, ¶¶51.
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`Zydney’s disclosure provides an exceedingly similar paradigm.
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`GOOGLE1003, ¶¶51-52. Zydney describes “[a] registration server [that] assigns
`
`the software agent a unique address,” which is “maintained in a data store” and
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`“used for all communications from the software agent to the server, it components
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`[sic] and between other software agents.” GOOGLE1004, 23:18-24:2. Zydney
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`then elaborates further concerning the contents of the “voice container,” stating
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`that it includes “one or more recipient’s codes [sic].” Id., 23:1-12, Figure 3. The
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`recipients’ codes uniquely identify the selected recipients, so that the voice
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`container can be appropriately forwarded by the central server to the recipients.
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`Id., Figure 7 (Step 1.1.5: “COMPRESSING AND STORING [THE] RECORDING
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`IN A VOICE ‘CONTAINER’ . . . WITH THE DESTINATION ADDRESS OR
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`ADDRESSES IN THE FILE STRUCTURE OF THE CONTAINER”);
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`GOOGLE1003, ¶52. Thus, Zydney teaches that its software agents transmit the
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`17
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`“selected recipients,” as claimed, because its voice containers contain “recipient
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`codes” for addressing recipients. GOOGLE1003, ¶52.
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`As for transmissions from the software agent, Zydney states that “[t]he voice
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`container will be sent using standard TCP/IP transport.” GOOGLE1004, 23:11-12;
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`see also id., 10:11-18, 11:1-6, 12:1-23, 13:1-6, 14:2-7. As Zydney notes,
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`“Transaction Control Protocol/Internet Protocol (TCP/IP) is the communications
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`standard between hosts on the Internet.” Id., 5:15-18. Thus, Zydney discloses
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`“transmitting . . . over the network.” See GOOGLE1003, ¶52.
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`[1.2.a]: “a server connected to the network”
`Zydney discloses Element [1.2.a]. GOOGLE1003, ¶¶53-54. For example,
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`Zydney describes a “central server” that “in conjunction with the software agent
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`controls, stores and switches the voice containers to the appropriate recipients.”
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`GOOGLE1004, 14:6-13. Zydney’s central server is connected to the Internet—
`
`i.e., the packet-switched network. Id., 24:21-23 (“The software agent will notify
`
`the server with the Internet address that they are currently using for the session to
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`identify where the messages should be sent.”), 28:10-18 (discussing the server’s
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`ports used for access to the “Word Wide Web”); Figure 1A.
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`[1.2.b]: “the server receiving the selected recipients and the instant
`voice message therefor, and delivering the instant voice message to
`the selected recipients over the network”
`Zydney discloses Element [1.2.b]. GOOGLE1003, ¶¶55-57. As discussed
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`18
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`(supra, analysis of Element [1.1.b]), Zydney’s “[v]oice data is transmitted to the
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`server . . . by the agent . . . in a voice container.” GOOGLE1004, 12:1-17. As
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`was also discussed (supra, analysis of Element [1.1.b]), the “voice container”
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`includes a digitally recorded voice message and recipient codes for addressing
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`recipients. Id., 23:1-12, Figures 3, 7. Indeed, the server’s functionality to receive
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`voice containers and selected recipients is stated expressly in the flowchart of
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`Figure 8. GOOGLE1003, ¶55. At Step 1.2.2, the central server “COMMENCE[S]
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`POLLING OF THE USER’S COMPUTER” in search of “VOICE CONTAINERS
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`IN THE RESERVED TEMPORARY STORAGE,” and then, at Step 1.2.3,
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`“UPLOAD[S] THE VOICE CONTAINER(S) TO A CENTRAL FILE SERVER”
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`before facilitating delivery to the recipients at Steps 1.2.5 and 1.2.6.
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`GOOGLE1004, Figure 8. When the server is “uploading the voice container(s),”
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`the server is “receiving the . . . the instant voice message” contained in the voice
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`container, just as claimed. Id., 12:1-17 (Zydney stating: “[v]oice data is
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`transmitted to the server . . . by the agent”); GOOGLE1003, ¶55. Zydney’s server
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`“receiv[es] the selected recipients” in the same way because the uploaded voice
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`containers contain “recipient codes” for addressing recipients. Supra, analysis of
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`Element [1.1.b]; GOOGLE1004, 23:1-12, 23:18-24:2, Figures 3, 7.
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`GOOGLE1003, ¶55.
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`Zydney further describes a “transcoding server” having “the ability to
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`Attorney Docket No. 19473-0372IP1
`IPR of U.S. Patent No. 7,535,890
`transcode the [received] voice container that has been recorded [by the software
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`agent] with the default codec.” GOOGLE1004, 28:1-8, see also id., 27:1-6
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`(discussing the standard codec used by each software agent), 12:13-23 (describing
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`how the server can be used to receive, translate, and forward voice containers when
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`the originator and recipient software agents are utilizing different file formats);
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`GOOGLE1003, ¶68. Zydney’s “central server” further includes a “message
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`server,” which provides a “repository for messages sent to software agents that are
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`not logged onto the system.” GOOGLE1004, 25:1-9. Thus, Zydney discloses “the
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`server receiving the selected recipients and the instant voice message therefor.”
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`After receiving the instant voice message, the central server can deliver the
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`instant voice message
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