IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re Patent of: Michael J. Rojas
`U.S. Patent No.:
`8,199,747 Attorney Docket No.: 19473-0373IP1
`Issue Date:
`June 12, 2012
`
`Appl. Serial No.: 12/398,076
`
`Filing Date:
`March 4, 2009
`
`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. 8,199,747 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`TABLE OF CONTENTS
`
`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 
`IV.  SUMMARY OF THE ’747 PATENT ............................................................. 8 
`A.  Brief Description ....................................................................................... 8 
`B.  Summary of the Prosecution ................................................................... 10 
`C.  Claim Construction ................................................................................. 11 
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘747 PATENT IS UNPATENTABLE ............................. 12 
`A.  [GROUND 1] – Claims 1-6, 8, 12-13 are anticipated by Zydney under
`35 U.S.C. § 102(b) .................................................................................. 12 
`B.  [GROUND 2] – Claims 2-6, 8, 12-13 are obvious over Zydney in view
`of Gralla under 35 U.S.C. § 103(a) ......................................................... 37 
`C.  [GROUND 3] – Claims 7, 9-11, 14-15 are obvious over Zydney in view
`of Gralla and Okano under 35 U.S.C. § 103(a) ...................................... 54 
`D.  [GROUND 4] – Claims 7, 10 are obvious over Zydney in view of Gralla
`and Erekson under 35 U.S.C. § 103(a) ................................................... 66 
`VI.  CONCLUSION .............................................................................................. 71 
`
`
`
`V. 
`
`
`
`i
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`
`
`
`EXHIBITS
`
`GOOGLE1001 U.S. Patent No. 8,199,747 to Rojas (“the ’747 patent”)
`
`GOOGLE1002
`
`Prosecution History of the ‘747 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. 2002)
`
`GOOGLE1006 U.S. Patent No. 6,031,915 (“Okano”)
`
`GOOGLE1007
`
`International Publication No. WO01/65786 (“Erekson”)
`
`GOOGLE1008
`
`Library of Congress Online Catalog Record re HOW THE
`INTERNET WORKS (Gralla)
`
`GOOGLE1009
`
`Public Copyright Catalog Record re HOW THE INTERNET WORKS
`(Gralla)
`
`GOOGLE1010
`
`International Standard Book Number Listing re HOW THE
`INTERNET WORKS (Gralla)
`
`GOOGLE1011 Que Corporation, Product Record re HOW THE INTERNET
`WORKS (Gralla), http://www.quepublishing.com/store/how-the-
`internet-works-9780789725820
`
`GOOGLE1012 Declaration of Michael Cohen re HOW THE INTERNET
`WORKS (Gralla)
`
`GOOGLE1013
`
`Excerpts of Joint Claim Construction and Prehearing Statement
`filed on March 10, 2017 in Case No. 16-cv-00642 (E.D. Tex.),
`including Exhibit A.
`
`ii
`
`

`

`GOOGLE1014
`
`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`THE NETWORK ENCYCLOPEDIA,
`http://www.thenetworkencyclopedia.com/entry/packet-
`switching/
`
`GOOGLE1015 N. Borenstein et al., REQUEST FOR COMMENTS (RFC) 1521:
`MIME (MULTIPURPOSE INTERNET MAIL EXTENSIONS) PART
`ONE: MECHANISMS FOR SPECIFYING AND DESCRIBING THE
`FORMAT OF INTERNET MESSAGE BODIES (1993)
`
`GOOGLE1016 Oxford (Online) Dictionaries, Definition of “Default” (cached
`2000), https://en.oxforddictionaries.com/definition/default
`
`GOOGLE1017
`
`BUFFERING IN VOIP (2000),
`http://www.comtest.com/tutorials/VoIP.html
`
`
`
`iii
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`Google Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) of
`
`claims 1-15 of U.S. Patent No. 8,199,747 (“the ’747 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 ’747 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 ’747 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 the Eastern District of Texas
`
`(Case Nos. 2:17-cv-231 and 2:17-cv-214) alleging that Google infringed the ’747
`
`patent.
`
`1
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`The Patent Owner also filed complaints in the Eastern District of Texas
`
`alleging infringement of the ’747 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).
`
`Petitioner is 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. 7,535,890 (“the ’890 patent”); and U.S. Patent No.
`
`2
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`8,995,433 (“the ’433 patent”). The ’747, ’622, ’890 and ’433 patents are all in the
`
`same family. Other petitioners have filed IPR proceedings challenging certain
`
`claims of the ’747, ’622, ’890 and ’433 patents, as well as U.S. Patent No.
`
`8,243,723, which is also in the same patent family as the ’747 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;
`
`Facebook, Inc. et al. v. Uniloc USA, Inc. et al., IPR2017-01634;
`
`3
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`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. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`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
`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
`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-
`
`0373IP1@fr.com (referencing No. 19473-0373IP1 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. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`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 ’747 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 1-15 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 1-6, 8, 12-13 Anticipated by Zydney
`
`Ground 2 2-6, 8, 12-13 Obvious over Zydney in view of Gralla
`
`Ground 3 7, 9-11, 14-15 Obvious over Zydney in view of Gralla and Okano
`
`Ground 4 7, 10
`
`Obvious over Zydney in view of Gralla and
`
`Erekson
`
`
`Zydney (GOOGLE1004), Okano (GOOGLE1006), and Erekson
`
`(GOOGLE1007) each qualify as prior art under 35 U.S.C. §102(b) because they
`
`were published over a year before the alleged priority date (December 18, 2003) of
`
`the ’747 Patent. Gralla (GOOGLE1005) provides a first printing date of
`
`“September 2001” from the book publisher. GOOGLE1005, 7; Ford Motor Co. v.
`
`6
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`Cruise Control Techs. LLC, IPR2014-00291, Paper 44 at 8 (PTAB June 29, 2015);
`
`Microsoft Corp. v. Corel Software, IPR2016-01086, Paper 14 at 9 (PTAB Dec. 1,
`
`2016) (“a book publisher is generally in business to publish books and to make
`
`them widely accessible to the public for purchase”). Gralla’s pre-2003 publication
`
`is corroborated by: the library record (GOOGLE1008) associated with Gralla’s
`
`Library of Congress Catalog Card Number, which identifies a publication date of
`
`2002, Gralla’s Copyright registration date of 2002 (GOOGLE1009), Gralla’s ISBN
`
`listing (GOOGLE1010), which identifies a publication date of 2001, and the
`
`product record maintained on the publisher’s website (GOOGLE1011), which
`
`claims publication occurred in 2001. Also, testimonial evidence in this record
`
`further corroborates that Gralla was publicly available at least as early as February
`
`of 2002. GOOGLE1012. Thus, Gralla undoubtedly qualifies as prior art under 35
`
`U.S.C §§102(a) and 102(b).
`
`None of the above-identified references were cited during the prosecution of
`
`the ’747 patent.
`
`This Petition is not duplicative or substantially similar to earlier IPR
`
`petitions challenging the ’747 patent. First, while other IPR petitions rely on
`
`Zydney to challenge a certain subset of the ’747 patent’s claims, the present
`
`Petition challenges all claims of the ’747 patent. Thus, Petitioner respectfully
`
`submits that any Patent Owner argument suggesting that the Board exercise its
`
`7
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`discretion to deny institution because other IPR Petitions challenge the ’747 patent
`
`using Zydney would unfairly allow Patent Owner to use those challenges “as a
`
`shield to considering whether additional claims are also [unpatentable].” 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); see also Ford Motor Company, v. Paice LLC et al.,
`
`IPR2015-00792, Paper 13 at (PTAB Oct. 26, 2015). Second, Google is not a party
`
`to any of the earlier IPR proceedings against the ’747 patent and was only recently
`
`named in a complaint filed by Patent Owner alleging infringement of the ’747
`
`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 frequently
`
`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).
`
`IV. SUMMARY OF THE ’747 PATENT
`A. Brief Description
`The ’747 patent is directed to “an instant voice messaging system for
`
`delivering instant messages over a packet-switched network.” GOOGLE1001,
`
`8
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`2:57-58. The system includes an instant voice message (IVM) server and IVM
`
`clients. Id., 6:46-7:18, Figure 2. The ’747 patent describes two modes of
`
`operation. In a “record mode,” the user of an IVM client selects one or more IVM
`
`recipients from a list and records an instant voice message, which the IVM client
`
`delivers to the selected recipients via the IVM server and an IP network (e.g., the
`
`Internet). Id., 7:49-8:35. In the “intercom mode,” the IVM client enables real-time
`
`instant voice messaging using one or more buffers to store and transmit successive
`
`portions of an instant voice message until the entire instant voice message has been
`
`transmitted to the IVM server. Id., 11:26-64.
`
`The ’747 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. GOOGLE1001, 2:18-29. The ’747
`
`patent further admits that sending instant text messages to recipients who are
`
`currently online was in the prior art. Id., 2:30-42. The ’747 patent asserts (albeit
`
`incorrectly) that voice messaging had not previously been combined with instant
`
`messaging. Id., 2:42-49 (“However, notwithstanding the foregoing advances in the
`
`VoIP/PSTN voice communication and voice/text messaging, there is still a need in
`
`the art for providing a system and method for providing instant VoIP messaging
`
`over an IP network.”). The ’747 patent, however, was wrong. As shown in detail
`
`below with respect to claims 1-15, long before the effective filing date of the ’747
`
`9
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`patent, prior art instant voice messaging systems existed that already implemented
`
`or otherwise plainly suggested this solution. GOOGLE1003, ¶¶30; 39-43.
`
`B.
`Summary of the Prosecution
`The application leading to the ’747 patent was filed on March 4, 2009 with a
`
`claim of priority to a prior application filed on December 18, 2003. Claims 1-15
`
`(“the Challenged Claims”) were allowed on February 16, 2012 after a seemingly
`
`cursory examination involving a single office action addressing references not at
`
`issue in this proceeding. GOOGLE1002, 91-95; 111-117; 127. Indeed, the
`
`applicant was able to achieve allowance of the Challenged Claims by simply
`
`submitting a terminal disclaimer and amending certain of the favorably considered
`
`dependent claims to place them in independent form. Id. The examiner provided
`
`the following comments in the Reasons for Allowance:
`
`“The prior art fails to disclose applicant’s method step of instant voice
`messaging whereby the message is generated based on the
`connectivity status of the recipient; neither does the prior art teach
`attaching one or more files to the instant voice message; nor does the
`prior art teach receiving a connectivity status of a list of nodes as
`either being available or unavailable. No obvious combination of
`references found would have taught one of ordinary skill in the art to
`make and use applicant's method as claimed.”
`
`10
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`Id., 127. As described below, other prior art patents and publications taught all
`
`elements of the Challenged Claims, including those elements identified in the
`
`examiner’s Reasons for Allowance.
`
`C. Claim Construction
`For the purposes of IPR only, Petitioner submits that the terms of the ’747
`
`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 ’747 patent’s specification. 37 C.F.R.
`
`§42.100(b); GOOGLE1003, ¶¶24-25 (level of ordinary skill). For purposes of this
`
`IPR only, Petitioner submits that all claim terms should be given their plain
`
`meaning under the BRI standard, except that Petitioner provides the following
`
`specific construction where the BRI may not be entirely clear:
`
`“list of nodes” and “node” (claim 2) — The terms “list of nodes” and
`
`“node” do not appear in the specification of the ’747 patent, nor were these terms
`
`substantively discussed during prosecution of the ’747 patent. To the extent the
`
`surrounding claim language informs, it suggests that a “node” is simply a
`
`“recipient.” GOOGLE1003, ¶36. For example, claim 2 states: “wherein a node
`
`within the list is adapted to be selected as a recipient of an instant voice message.”
`
`This is consistent with the position Patent Owner has taken in certain district court
`
`proceedings, asserting that the term “node” means “potential recipient.”
`
`11
`
`

`

`Attorney Docket No. 19473-0373IP1
`IPR of U.S. Patent No. 8,199,747
`GOOGLE1013, 14. For purposes of this proceeding only, Petitioner asks that
`
`Patent Owner’s construction be adopted here because the broadest reasonable
`
`interpretation “must construe the claim language in a way that at least encompasses
`
`the broadest interpretation of the claim language for purposes of infringement.” Ex
`
`parte Schulhauser, Appeal No. 2013-007847, at *9 (PTAB Precedential, April 28,
`
`2016).
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ‘747 PATENT IS UNPATENTABLE
`A.
`[GROUND 1] – Claims 1-6, 8, 12-13 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 text messaging. Id., 1:6-17. 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. 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
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`appropriate recipients instantaneously or stored for later delivery.” Id., 1:19-22.
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`More specifically, Zydney’s technique “provides the ability to store messages both
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`locally and centrally at the server whenever the recipient is not available for a
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`prescribed period of time.” Id., 2:3-5.
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`Zydney’s system architecture is illustrated by the functional block diagram
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`of Figures 1 and 1A. See generally GOOGLE1004, 10:19-11:23. As shown
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`below, the basic paradigm of Zydney’s technique involves a sender software agent
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`(22, yellow) interfacing with a central server (24, pink) to send a voice container
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`(26) to a recipient software agent (28, blue):
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`Id., FIG. 1A (color coded). Communications between the software agents (22, 28)
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`and the central server (24) are conducted over packet-switched networks, such as
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`the Internet (purple), intranets, and/or extranets, via TCP/IP (Transaction Control
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`Protocol/Internet Protocol) with traditional PSTN network (orange) support. Id.,
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`5:15-18.
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`Within the context of Zydney’s architecture, the sender software agent (22)
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`is configured to execute “a number of distinct modes of communication[.]”
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`GOOGLE1004, 14:19-20. Zydney describes two particular modes in detail, a
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`“pack and send mode of operation” (also referred to in Zydney as a “voice mail
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`conversation” and a “voice instant messaging session”) where “the [entire]
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`message is first acquired, compressed and then stored in a voice container (26)”
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`(id., 10:19-11:23, 15:8-16:4) and a “real-time ‘intercom’ [mode] which simulates a
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`telephone call[.]” (id., 15:8-14, 16:4-15). GOOGLE1003, ¶¶43; 79-81. In one
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`aspect of Zydney’s disclosure, the choice of communication modes can be “based
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`on the status of the recipient.” GOOGLE1004, 14:19-20. When an intended
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`recipient (28) is online, the sender software agent (22) can operate in either the
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`intercom mode or the pack and send mode of operation. Id., 15:8-14 (“If online,
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`the originator can either begin a real-time ‘intercom’ call which simulates a
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`telephone call or a voice instant messaging session, which allows for an
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`interruptible conversation.”). When an intended recipient (28) is offline, the pack
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`and send mode is executed. GOOGLE1004, 10:19-11:13, 15:15-21. In either
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`mode, transmission of the instant voice message may be conducted directly
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`between software agents (22, 28) (so-called “peer-to-peer communications”) or
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`through the central server (24). GOOGLE1003, ¶43 (citing GOOGLE1004, 1:19-
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`22, 10:19-11:22, 12:1-23, 16:1-21, 24:15-25:9, 27:12-16, 30:1-18, Figures 1, 1A,
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`8, 11, 14-15, 17). One featured characteristic of Zydney’s pack and send mode is
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`“the ability to store messages both locally and centrally at the server whenever the
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`recipient is not available for a prescribed period of time.” Id., 11:1-6.
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`Claim 1:
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`
`[1.0]: “A method for instant voice messaging over a packet-switched
`network”
`Even if the preamble were treated as a limitation (which it is not under the
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`BRI standard), Zydney discloses Element [1.0]. GOOGLE1003, ¶45. Like the
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`’747 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, 1:2-3. Within this field, Zydney teaches “a system and method for
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`voice exchange and voice distribution utilizing a voice container.” Id., 1:19-20;
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`see also 1:20-2:10. Zydney further explains that this system and method provides
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`“the ability to communicate spontaneously, in the user’s own voice, without the
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`limitations of written communications for natural expression.” Id., 10:11-14. This
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`results in a “voice intercom system with instant messaging, distributed over the
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`Internet.” Id., 10:14-18; see also 1:20-22 (“[V]oice containers can be stored,
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`transcoded and routed to the appropriate recipients instantaneously[.]”). In 2003,
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`a POSITA would have known that the Internet is a packet-switched network.
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`GOOGLE1003, ¶45 (citing GOOGLE1014, 1 (“The Internet is the prime example
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`of a packet-switched network[.]”); GOOGLE1005, 336). The ’747 patent itself
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`admits that the Internet is a packet-switched network. GOOGLE1001, 1:33-34
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`(“In the IP telephony, a VoIP terminal device is connected to a packet-switched
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`network (e.g., Internet).”).
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`[1.1]: “generating an instant voice message, wherein generating
`includes recording the instant voice message in an audio file and
`attaching one or more files to the audio file”
`Zydney discloses Element [1.1]. GOOGLE1003, ¶¶46-50. Zydney’s system
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`allows instant voice message originators (i.e., users) to “digitally record[]
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`messages for one or more recipients using a microphone-equipped device and the
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`software agent.” GOOGLE1004, 16:1-4; GOOGLE1003, ¶46. The recorded
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`messages are placed into transmittable “voice containers,” which Zydney teaches
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`are “a container object that contains no methods, but contains voice data or voice
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`data and voice data properties.” GOOGLE1004, 12:6-8; see also generally id., 11-
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`14. A POSITA would have recognized that a “container object” containing “voice
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`data” is a “voice message.” GOOGLE1003, ¶47. Moreover, as discussed (supra,
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`Element [1.0]), Zydney is directed to distributing voice containers
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`“instantaneously.” GOOGLE1004, 1:20-22, 10:14-18. Thus, Zydney’s “voice
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`containers” are the claimed “instant voice messages.” GOOGLE1003, ¶47.
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`As for the “voice data” contained within the message, a digital recording of
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`a user’s voice is an “audio file.” GOOGLE1003, ¶48. Indeed, Zydney teaches that
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`such data can be encoded in an MP3 (MPEP Layer-3) format. GOOGLE1004,
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`11:14-12:23, 21:14-22:2, cl.19. MP3 is an audio file format. GOOGLE1003, ¶48
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`(citing GOOGLE1005, 49; 230-231 (explaining that MP3 files are a popular file
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`format for distributing music audio files)). Thus, Zydney teaches the feature of
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`“recording the instant voice message in an audio file,” as recited in Element [1.1].
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`Zydney also teaches attaching files to its voice containers1. GOOGLE1003,
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`¶¶49-50. As one example, Zydney teaches appending “multimedia attachments” to
`
`
`1 The ’747 patent does not explain exactly how one or more files are attached to an
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`audio file of the instant message. Rather, the ’747 patent merely states in
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`conclusory fashion that various files can be “attached to the instant message.” See,
`
`e.g., GOOGLE1001, 12:20-28. Thus, under the BRI, the “attaching” aspect of the
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`step set forth in Element [1.1] must at least encompass an operation that provides
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`the end result described by the ’747 patent of an instant voice message, which
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`comprises an audio file, and at least one other file attached to the instant voice
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`message. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
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`1996) (a construction that excludes the preferred embodiment “is rarely, if ever,
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`correct”).
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`its voice containers, explaining that “[a]nother important application of the present
`
`invention system and method for voice exchange and voice distribution is
`
`attaching other media to the voice containers to provide a richer communications
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`environment.” GOOGLE1004, 19:2-4; see also Figures 6, 16-18. Zydney
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`describes attaching “digitized greeting cards” to voice containers as one example
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`of such a multimedia attachment. Id., 19:4-5; see also 19:6-12 (explaining that
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`“other data types” can be attached to voice containers), Figures 16-18 (e.g., Step
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`5.2.1).
`
`In sum, Zydney teaches that its voice container can comprise an audio file
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`and some other file, e.g., a greeting card, attached to the voice container.
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`GOOGLE1003, ¶¶46-50. Thus, Zydney discloses the feature of “attaching one or
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`more files to the audio file” as recited in Element [1.1]. See, supra, n.2 (under
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`BRI, “attaching one or more files to an audio file” encompasses attaching at least
`
`one other file to an instant voice message). Moreover, should Patent Owner
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`(improperly) argue that “attaching one or more files” is limited to the ’747 patent’s
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`preferred embodiment of “attaching one or more documents” (GOOGLE1001,
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`12:20-24, 13:23-28), Zydney’s disclosure of attachments in the form of “digitized
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`greeting cards” meets this interpretation under BRI since a greeting card is an
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`example of a document. GOOGLE1003, ¶50.
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`[1.2]: “transmitting the instant voice message having one or more
`recipients”
`Zydney discloses Element [1.2]. GOOGLE1003, ¶¶51-55. Zydney’s
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`“software agent” (i.e., the “client”) has functionality to “address the recipient(s)”
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`of an instant voice message. GOOGLE1004, 13:1-6. More specifically, Zydney
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`teaches how an “originator”—i.e., a user—“selects one or more intended recipients
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`from a list of names[.]” Id., 14:17-19. Zydney’s software agent is further operable
`
`to transmit the voice container (i.e., the “instant voice message”) to the selected
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`recipients either directly to the recipients or to an intermediate central server.
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`GOOGLE1004, 10:19-11:1 (explaining that the software agent can “send, receive
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`and store messages using voice containers[.]”); see also 1:19-22, 10:19-11:22,
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`12:1-23, 16:1-21, 24:15-25:9, 27:12-16, 30:1-18, Figures 1, 1A, 8, 11, 14-15, 17.
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`Thus, when one of Zydney’s software agents transmits a voice container,
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`such voice container “ha[s] one or more recipients,” as recited in Element [1.2].
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`GOOGLE1003, ¶¶51-52. Moreover, should Patent Owner (improperly) argue the
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`above-recited claim language requires that the instant voice message itself contain
`
`the address(es) of the recipient(s), Zydney provides this teaching with respect to its
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`voice containers. GOOGLE1004, Figure 7 (“. . . THE DESTINATION ADDRESS
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`OR ADDRESS IN THE FILE STRUCTURE OF THE CONTAINER”); see also
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`23:1-12 (“Voice container components include . . . one or more recipient’s code
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`304 [sic]”), Figure 3; GOOGLE1003, ¶¶54-55.
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