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.: 19473-0372IP2
`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.: 19473-0372IP2
`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. 19473-0372IP2
`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) ..................... 4
`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 14-20, 23-24, 26, 28-34, 37, 51-54, 57-58, 60,
`62-65, and 68 are obvious over Zydney in view of Aggarwal under 35
`U.S.C. § 103(a) ....................................................................................... 10
`B. [GROUND 2] – Claims 39 and 70 are obvious over Zydney in view of
`Aggarwal and Oppenheimer under 35 U.S.C. § 103(a) .......................... 67
`VI. CONCLUSION .............................................................................................. 72
`
`
`
`V.
`
`
`
`i
`
`
`
`Attorney Docket No. 19473-0372IP2
`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 U.S. Patent No. 6,415,318 (“Aggarwal”)
`
`GOOGLE1007
`
`International Publication No. WO01/71992 (“Oppenheimer”)
`
`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
`
`Reserved
`
`GOOGLE1012
`
`Levitt, INTRANETS: INTERNET TECHNOLOGIES DEPLOYED
`BEHIND THE FIREWALL FOR CORPORATE PRODUCTIVITY (2002),
`https://www.isoc.org/inet96/proceedings/b2/b2_3.htm (retrieved
`via https://web.archive.org/web/20021221131244/)
`
`GOOGLE1013 Wijuntunga, LOCAL AREA NETWORKS (LANS) AND THEIR
`APPLICATION IN LIBRARIES (1992),
`
`ii
`
`
`
`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`http://web.simmons.edu/~chen/nit/NIT'92/349-wij.htm
`(retrieved via https://web.archive.org/web/20020430165401/)
`
`GOOGLE1014
`
`LAN VS WAN – THE BENEFITS OF EACH NETWORK TYPE,
`http://packetworks.net/lan-vs-wan-the-benefits-of-each-
`network-type/
`
`GOOGLE1015
`
`Shinder, UNDERSTANDING SERVER LOAD BALANCING (2001),
`http://www.techrepublic.com/article/understanding-server-load-
`balancing/
`
`GOOGLE1016
`
`Cisco, IOS SERVER LOAD BALANCING, RELEASE 12.2 S (2002),
`https://www.cisco.com/c/en/us/td/docs/ios/12_2s/feature/guide/f
`sslb.html
`
`GOOGLE1017 Webopedia, Definition of “CAN” (2003),
`http://www.webopedia.com/TERM/C/CAN.html (retrieved via
`http://web.archive.org/web/20030201193119/)
`
`GOOGLE1018
`
`Library of Congress Online Catalog Record re HOW THE
`INTERNET WORKS (Gralla)
`
`GOOGLE1019
`
`Public Copyright Catalog Record re HOW THE INTERNET WORKS
`(Gralla)
`
`GOOGLE1020
`
`International Standard Book Number Listing re HOW THE
`INTERNET WORKS (Gralla)
`
`GOOGLE1021 Que Corporation, Product Record re HOW THE INTERNET
`WORKS (Gralla), http://www.quepublishing.com/store/how-the-
`internet-works-9780789725820
`
`GOOGLE1022 Declaration of Michael Cohen re HOW THE INTERNET
`WORKS (Gralla)
`
`
`
`iii
`
`
`
`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`Google Inc. (“Petitioner”) requests Inter Partes Review (“IPR”) of claims
`
`14-20, 23-24, 26, 28-34, 37, 39, 51-54, 57-58, 60, 62-65, 68, and 70 (“the
`
`Challenged Claims”) of U.S. Patent No. 7,535,890 (“the ’890 patent”).
`
`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
`
`
`
`Attorney Docket No. 19473-0372IP2
`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);
`
`and Hike Ltd. (2:17-cv-475, 2:17-cv-349).
`
`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
`
`
`
`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`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;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01523;
`
`3
`
`
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`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.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`4
`
`
`
`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
`
`
`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`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
`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and any
`
`additional fees.
`
`5
`
`
`
`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`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 14-20, 23-24, 26, 28-34, 37, 39, 51-54, 57-
`
`58, 60, 62-65, 68, and 70 on the grounds listed below. A declaration from Dr. Paul
`
`S. Min, Ph.D. is also included in support of this Petition.
`
`Ground
`
`Claims
`
`Basis for Rejection
`
`Ground 1 14-20, 23-24, 26, 28-
`
`Obvious over Zydney in view of Aggarwal
`
`34, 37, 51-54, 57-58,
`
`60, 62-65, 68
`
`Ground 2 39, 70
`
`Obvious over Zydney in view of Aggarwal
`
`and Oppenheimer
`
`
`Zydney (GOOGLE1004), Aggarwal (GOOGLE1006), and Oppenheimer
`
`(GOOGLE1007) each qualify as prior art under 35 U.S.C. §102(b) because they
`
`were published 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
`
`6
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`
`
`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`
`’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
`
`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
`
`7
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`
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`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.”
`
`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
`
`8
`
`
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`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;
`
`(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 renders obvious the combination of features recited in the
`
`Challenged Claims with only slight supplementation by other prior art references.
`
`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, ¶¶ (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
`
`9
`
`
`
`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`’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.
`
`2011).
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’890 PATENT IS UNPATENTABLE
`A.
`[GROUND 1] – Claims 14-20, 23-24, 26, 28-34, 37, 51-54,
`57-58, 60, 62-65, and 68 are obvious over Zydney in view of
`Aggarwal under 35 U.S.C. § 103(a)
`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. 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
`
`10
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`
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`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
`
`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). See generally 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):
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`11
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`Id., FIG. 1A (color coded). Communications between the software agents (22, 28)
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`and the central server (24) are conducted over one or more packet-switched
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`networks, such as the Internet (purple), intranets, and/or extranets, with traditional
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`PSTN network (orange) support. Id., 5:15-18.
`
`Within the context of Zydney’s architecture, sender software agent (22)
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`executes “a number of distinct modes of communication[.]” GOOGLE1004,
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`14:19-20. Zydney describes two particular modes in detail, a “pack and send mode
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`of operation” (also referred to in Zydney as a “voice mail conversation” and a
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`“voice instant messaging session”) where “the [entire] message is first acquired,
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`compressed and then stored in a voice container (26)” (id., 10:19-11:23, 15:8-16:4)
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`and a “real-time ‘intercom’ [mode] which simulates a telephone call[.]” (id., 15:8-
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`14, 16:4-15). GOOGLE1003, ¶67. In either mode, transmission of the instant
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`voice message may be conducted directly between software agents (22, 28) (so-
`
`called “peer-to-peer communications”) or through the central server (24).
`
`GOOGLE1003, 69; GOOGLE1004, 1:19-22, 10:19-11:22, 12:1-23, 16:1-21,
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`24:15-25:9, 27:12-16, 30:1-18, Figures 1, 1A, 8, 11, 14-15, 17. One featured
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`characteristic of Zydney’s pack and send mode is “the ability to store messages
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`both locally and centrally at the server whenever the recipient is not available for a
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`prescribed period of time.” Id., 11:1-6.
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`12
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`Zydney plainly discloses a method and system for exchanging instant voice
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`messages via multiple packet-switched networks. GOOGLE1004, 1:4-5. Zydney
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`identifies the Internet and firewall-protected intranets as suitable networking
`
`environments for implementing the described instant-voice-messaging technique.
`
`Id., 5:3-14, 9:3-7. Regarding intranets, Zydney points out that these networks are
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`“similar to the Internet except [they] are used to disseminate information within a
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`company’s network and [are] protected from the general public through the use of
`
`a Firewall.” Id., 9:3-7. Accordingly, Zydney described an enterprise-intranet
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`solution (which a POSITA would have recognized as a “local network”) for instant
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`voice messaging. GOOGLE1003, ¶¶55-56.
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`But, even if the Board finds that Zydney does not disclose or suggest the
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`“local network” recited in the independent claims of the ’890 patent (or the other
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`characteristics of the “local network” recited in the dependent claims), such “local
`
`network” features were conventional options implemented in similar prior art
`
`systems, such as described those described by Aggarwal. Aggarwal’s disclosure
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`“relates to transmitting electronic messages between enterprises.” GOOGLE1006,
`
`1:14-15. Generally, Aggarwal describes “messaging systems that are compatible
`
`with firewalls, thereby permitting instant messages to be transmitted over the
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`Internet.” Id., 2:15-17. Figure 2 of Aggarwal (provided and annotated below)
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`13
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`“illustrates an exemplary network environment or messaging system in which the
`
`[technique] can be implemented.” Id., 6:39-41.
`
`
`
`GOOGLE1006, Figure 2 (color coded).
`
`This figure identifies three separate yet interconnected networks—A first
`
`local network (60A) administered by organization A, a second local network (60B)
`
`administered by organization B, and the Internet (80, purple), which connects the
`
`local networks (60A,60B). Id., 6:41-45. Each of the networks is protected by a
`
`respective firewall (62A,62B, gray). See e.g., id., 6:49-7:2. Notably, Aggarwal
`
`states that “the principles disclosed herein can optionally be practiced in the
`
`absence of firewalls.” Id., 6:61-64. Thus, “[f]or instance, organization B might be
`
`an Internet service provider that is not protected by a firewall.” Id., 6:64-66.
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`14
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`According to Aggarwal, “[e]ach network 60 includes one or more clients 64
`
`that operate client software for generating, storing and displaying messages[.]”
`
`GOOGLE1006, 7:6-9. Each of the clients (64, yellow) “is assigned to one of any
`
`number of messaging servers 66 that reside in network 60 . . . [and] distribut[e]
`
`messages to clients 64.” Id., 7:28-31. The messaging servers (66, green) can
`
`“monitor the current online status of the associated clients 64, manage all
`
`communication to and from the clients, and store messages that are intended for
`
`the clients but cannot be immediately delivered (e.g., if a recipient client is not
`
`online when a message is sent).” Id., 7:39-44. “Each network 60 further includes
`
`one or more bridgehead servers 68.” Id., 7:53-61. The bridgehead servers (68,
`
`green) “are exposed through the corresponding firewall in the sense that entities
`
`outside the network and outside the firewall can address a message to the
`
`bridgehead server and cause the message to be received thereby.” Id.
`
`Thus, like Zydney, Aggarwal describes a technique for transmitting instant
`
`messages over the Internet and various intranets. GOOGLE1006, 6:8-21, 39-48,
`
`Figures 1 and 2. In fact, Aggarwal describes a traditional solution for “securely
`
`operat[ing] instant messaging systems through firewalls”—a solution that would
`
`have been readily recognized as being pertinent to Zydney’s enterprise-intranet
`
`solution for instant voice messaging Id., 2:1-10; GOOGLE1003, ¶¶42-48.
`
`Aggarwal’s disclosure specifically identifies a “local area network (LANs)” as a
`
`15
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`suitable networking environment for implementing such firewall-protected
`
`enterprise intranets. GOOGLE1006, 6:8-36 (“commonplace in office-wide or
`
`enterprise-wide computer networks”); GOOGLE1003, ¶42 (citing GOOGLE1012,
`
`1-2, 4, 10-11; GOOGLE1005, 23).
`
`In addition to the overlapping teachings regarding network architecture,
`
`multiple other reasons would also have motivated a POSITA to implement
`
`Zydney’s packet-based technique for instant voice messaging in connection with a
`
`“local network” (as suggested by Aggarwal’s description of a LAN-based intranet
`
`of an enterprise). First, a POSITA would have been motivated to implement
`
`Zydney in this manner because doing so would be merely the application of a
`
`known technique (Aggarwal’s suggestion for implementing an intranet within a
`
`LAN networking environment) to a known system (Zydney’s instant voice
`
`messaging system) ready for improvement to yield predicable results.
`
`GOOGLE1003, ¶45; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). As
`
`would have been appreciated by a POSITA, intranets had been highly desirable
`
`network topologies for business enterprises since the mid-1990s. GOOGLE1003,
`
`¶45 (citing GOOGLE1012, 1-5). Indeed, by 2003 “[t]housands of organizations
`
`[had] already found that internal intranets [could] help empower their employees
`
`through more timely and less costly information flow.” Id. (citing GOOGLE1012,
`
`1). Further, it was known in 2003 that intranets allow enterprises to leverage
`
`16
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`
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`powerful Internet-centric technologies such as hypertext links, which simplifies
`
`navigation to, and information retrieval from, private organizational resources. Id.
`
`(citing GOOGLE1012, 1). Skilled artisans in 2003 also appreciated that
`
`maintaining an intranet behind a firewall enables the enterprise to obtain the
`
`benefit of utilizing the vast resources of the Internet (e.g., access to the World Wide
`
`Web), while also protecting its computing devices and digital information “from
`
`snooping eyes and malicious attacks.” Id. ¶46 (citing/quoting GOOGLE1005, 267-
`
`269); see also GOOGLE1018-1022 (evidence of public availability of
`
`GOOGLE1005).
`
`Second, a POSITA would have been motivated to implement Zydney’s
`
`system for instant voice messaging in connection with a “local network” (as
`
`suggested by Aggarwal) so that a user could advantageously cause Zydney’s
`
`instant voice message “to appear at a recipient client machine at another network
`
`administered by a second organization, even though either (or both) of the
`
`organizations may use a firewall to protect its network.” GOOGLE1006, 2:17-22,
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`7:24-26; GOOGLE1003, ¶46. Third, a POSITA would have been motivated to
`
`implement Zydney’s system in this manner so as to provide the known benefit of
`
`“enabling organizations to support real-time messaging over the Internet without
`
`compromising organizational or network security.” GOOGLE1006, 4:13-32;
`
`GOOGLE1003, ¶47. Fourth, a POSITA would have been motivated to implement
`
`17
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`
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`Zydney’s system in this manner because such LAN-based intranet networks were
`
`widely known to enable exceptionally high transmission data speeds and
`
`experience fewer transmission data errors. GOOGLE1003, ¶¶48 (citing
`
`GOOGLE1013, 1-2; GOOGLE1014, 1-3).
`
`Accordingly, based on the teachings of Zydney and Aggarwal, a POSITA
`
`would have recognized the conventional LAN-based intranet suggested by
`
`Aggarwal as a desirable and predictable option for Zydney’s instant-voice-
`
`messaging architecture. GOOGLE1003, ¶¶45-49. An exemplary arrangement is
`
`illustrated below:
`
`Id., ¶49 (citing to GOOGLE1004, FIG. 1A (annotated), GOOGLE1006, FIG. 2
`
`
`
`(annotated), and explaining how each client “64” would predictably serve as one of
`
`18
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`
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`Zydney’s software agents (22)). Various other predictable arrangements (infra,
`
`analysis of claim 28) leveraging conventional LAN-based intranets and the Internet
`
`to facilitate instant voice messaging would have been obvious to a POSITA in
`
`2003. GOOGLE1003, ¶¶49, 124-126.
`
`Claim 14
`
`
`[14.0]: “An instant voice messaging system for delivering instant
`messages over a plurality of packet-switched networks”
`Even if this preamble were treated as a limitation (which it is not under the
`
`BRI standard), Zydney discloses the recited system. GOOGLE1003, ¶¶51-60.
`
`Like the ’890 patent, Zydney’s disclosure broadly relates to “the field of packet
`
`communications, and more particularly to voice packet communication systems.”
`
`GOOGLE1004, 1:4-5. Within this field, Zydney discloses “a system and method
`
`for voice exchange and voice distribution utilizing a voice container.” Id., 1:19-20;
`
`see also id., 1:20-2:10. Zydney further explains that this system and method
`
`provides “the ability to communicate spontaneously, in the user’s own voice,
`
`without the limitations of written communications for natural expression.” Id.,
`
`10:11-14. This results in “a voice intercom system with instant messaging,
`
`distributed over the Internet.” Id., 10:14-18; see also id., 1:20-22 (“[V]oice
`
`containers can be stored, transcoded and routed to the appropriate recipients
`
`instantaneously[.]”).
`
`Before 2003, a POSITA would have known that the Internet is a packet-
`
`19
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`Attorney Docket No. 19473-0372IP2
`IPR of U.S. Patent No. 7,535,890
`switched network. GOOGLE1003, ¶52 (citing GOOGLE1009, 1 (“The Internet is
`
`the prime example of a packet-switched network[.]”); GOOGLE1005, 336.
`
`Indeed, the ’890 patent itself admits that the Internet is a packet-switched network.
`
`GOOGLE1001, 1:6-11 (“In the IP telephony, a VoIP terminal device is connected
`
`to a packet-switched network (e.g., Internet).”)). Zydney further identifies
`
`intranets as being suitable communications networks for executing the disclosed
`
`technique. GOOGLE1004, 5:3-9 (“The present [technique] is equally well suited
`
`for use in other network communications systems such as an Intranet[.]”). Zydney
`
`further explains that “[a]n Intranet is similar to the Internet except it is used to
`
`disseminate information within a company’s network and is protected fro
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