UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.,
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2017-02087
`PATENT 8,995,433
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.,
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2017-02087
`PATENT 8,995,433
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-2087
`U.S. Patent 8,995,433
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`Table of Contents
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`I.
`II.
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`INTRODUCTION
`PETITIONER DOES NOT SATISFY THE MANDATORY
`NOTICE REQUIREMENTS
`Petitioner Fails to Identify All Related Matters
`Petitioner Fails to Identify Each Real Party-In-Interest
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`III. THE ’433 PATENT
`Effective Filing Date of the ’433 Patent
`Overview of the ’433 Patent
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`IV. THERE IS NO REASONABLE LIKELIHOOD THAT EVEN ONE
`OF THE CHALLENGED CLAIMS 1-8 IS UNPATENTABLE
`Petitioner Relies on Incorrect Claim Constructions
`1.
`Petitioner’s Proposed Construction for “instant voice
`messaging application” Is Incorrect and Unnecessary
`Petitioner’s Proposed Construction for “client platform
`system” Is Incorrect and Unnecessary.
`No Prima Facie Obviousness
`1.
`Claim 1 is not rendered obvious because Clark does not
`disclose or suggest “wherein the instant voice message
`is represented by a database record including a unique
`identifier”
`Claims 1-8 are not rendered obvious because
`Petitioner’s proposed combination of Zydney with
`Clark results in messages being deleted once they are
`sent to the server
`No prima facie obviousness for “an instant voice
`messaging application” and a “client platform system”
`No prima facie obviousness for “wherein the instant
`voice message messaging application includes a file
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`2.
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`2.
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`3.
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`4.
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`ii
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`1
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`2
`4
`7
`9
`9
`9
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`11
`11
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`12
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`15
`17
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`17
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`22
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`24
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`V.
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`IPR2017-2087
`U.S. Patent 8,995,433
`manager system performing at least one of storing,
`deleting and retrieving instant voice messages from the
`message database in response to a user request”
`Claims 2-5 and 7-8 are not rendered obvious by virtue
`of their dependence from Claim 1
`CONCLUSION
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`5.
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`25
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`30
`37
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`Exhibit No.
`2001
`2002
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`2003
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`2004
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`List of Exhibits
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`Description
`Declaration of Dr. Val DiEuliis
`Invalidity Contentions Submitted on March 28, 2017 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America’s, Inc., Case No. 2:16-cv-642
`Invalidity Contentions Submitted on December 16, 2016 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America’s, Inc., Case No. 2:16-cv-642
`“‘App’ voted 2010 word of the year by the American Dialect
`Society (UPDATED)", American Dialect Society (Jan. 8,
`2011), available at http ://www.americandialect.org/app-voted-
`2010-word-of-the-year-by-the-american-dialect-society-
`updated (printed Aug. 23, 20 17).
`
`iii
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`IPR2017-2087
`U.S. Patent 8,995,433
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc USA, Inc. and
`Uniloc Luxembourg S.A. (the “Patent Owner”) submit this Owner’s Preliminary
`Response to the Petition for Inter Partes Review (“Pet.” or “Petition”) of U.S. Patent
`No. 8,995,433 (“the ’433 Patent” or “EX1001”) filed by LG Electronics, Inc.
`(“Petitioner” or “LGE”). Petitioner moves to join the proceeding in IPR2017-1427.
`Joinder is not warranted, however, because the instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`Under 35 U.S.C. § 312(a)(4), “[a] petition filed under section 311 may be
`considered only if … the petition provides such other information as the Director
`may require by regulation.” The instant Petition fails to satisfy the mandatory notice
`provisions set forth in Rule 42.8. At a minimum, Petitioner fails to provide notice of
`all related administrative matters. In addition, there is also sufficient evidence to
`conclude, based on public filings, and even at this preliminary stage, that Petitioner
`failed to identify all real parties-in-interest.
`Even if the Board were to overlook the numerous procedural defects of the
`Petition and reach its substantive merits, the Petition should be denied in its entirety
`because it fails to meet the threshold burden of proving that there is a reasonable
`likelihood that even one challenged claim is unpatentable. Patent Owner has seized
`the opportunity, as is its right, to expand and further explain the positions originally
`set forth in its preliminary Response to the petition in IPR2017-1427, a related
`matter. Denial is warranted for the multiple and independent procedural and
`substantive defects of the Petition identified herein.
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`1
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`IPR2017-2087
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`US. Patent 8,995,433
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`II.
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`PETITIONER DOES NOT SATISFY TI-IE MANDATORY NOTICE
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`REQUIREMENTS
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`The ’433 patent is in a family of patents including United States Patent Nos.
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`7,535,890 (“the ’890 patent”); 8,243,723 (“the ’723 patent”); 8,199,747 (“the ’747
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`patent”); and 8,724,723 (“the ’622 patent”), as shown in the diagram below.
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`App. No.: 10,-‘740030
`Filed: 12-18-2003
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`Pat. NO: 7.535.890
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`App. No.: 125398063
`Filed: 03-04-2009
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`App. No.: 12.:‘398.076
`Filed: 03-04-2009
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`Pat. No: 8243523
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`Pat. No: 8.199.747
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`App. No.: 13.35-16.68
`Filed: 07-11-2012
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`Pat. No: 8.724.622
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`App. No.: 14.:‘224.125
`Filed: 03-25 2014
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`Pat. No: 8.995.433
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`Petitioner has filed three of the thirty-six IPRs filed against this related family
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`of patents, as highlighted below. As shown in the table below, most of the IPR
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`petitions filed against these related patents predate the present Petition-
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`Apple
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`1m “—
`IPR2017-0220
`14-Nov-16
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`
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`IPR2017-2087
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`US. Patent 8,995,433
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`Apple
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`Apple
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`p-pv—ppN
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`pp—pv—ppN
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`Apple
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`pp—pv-ppN
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`Apple
`IPR2017-0224
`14-Nov-16
`’622
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`Apple
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`IPR2017-0225
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`14-Nov-16
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`Facebook / wpppApp
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`Facebook / WhatsApp
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`11-May-17
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`Facebook / WhatsApp
`IPR2017-1428
`11-May-17
`’433
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`Facebook / WhatsApp
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`2-Jun-17
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`Facebook / wpppApp
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`Snap
`IPR2017-1612
`16-Jun-17
`’890
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`Facebook / WhatsApp
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`16-]un_17
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`Facebook , wpppApp
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`Samsung Elec
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`20-Jul-1 7
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`Samsung Elec
`IPR2017-1798
`20-Jul-17
`’622
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`Samsung Elec
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`Samsung Elec
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`20-Jul-17
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`20-Jul-17
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`Samsung Elec
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`IPR2017—1801
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`20—Jul—17
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`Samsung Elec
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`IPR2017-1802
`20-Jul-17
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`Apple
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`IPR2017-1804
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`20-Jul-17
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`’622
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`Apple
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`IPR2017-1805
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`20-Jul-17
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`’622
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`US. Patent 8,995,433
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`IPR2017-2087
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`Petitioner
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`Date
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`Patent
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola—__
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
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`IPR2017—2083
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`11-Sep-17
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`’890
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
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`A.
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`Petitioner Fails to Identify All Related Matters
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`Under 35 U-S.C. § 312(a)(4), “[a] petition filed under section 311 may be
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`considered 0_nILi[ . .. the petition provides such other information as the Director
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`may require by regulation.” Under this statutory authority, the Director issued 37
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`CPR. § 42.8(b)(2), which mandates that a petition for inter partes review must
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`identify all other judicial and administrative matters that would affect, or be affected
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`by, a decision in an IPR proceeding. “Administrative matters include every
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`application and patent claiming, or which may claim, the benefit of the priority of
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`the filing date of the party’s involved patent or application as well as any ex parte
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`and inter partes reexaminations for an involved patent.” Trial Practice Guide, 77
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`Fed. Reg. 157, at 48760 (Aug. 14, 2012). This instruction is a more specific way of
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`saying a petition must identify all administrative matters concerning all patents
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`within a patent family which claim the benefit of the same effective filing date.
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`Notably, 35 U.S.C- § 312(a)(4) does not have the discretionary language of
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`§ 325(d). The Board need not and should not consider the substantive merits of a
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`petition that incurably fails to satisfy the mandatory notice provisions (Rule 42.8)
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`IPR2017-2087
`U.S. Patent 8,995,433
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`promulgated under the authority of § 312(a)(4). This is true regardless whether a
`Patent Owner brings such a procedural defect to the Board’s attention in a response.
`Nevertheless, Patent Owner identifies herein gross omissions in the instant Petition
`with respect to the mandatory notice provisions.
`The Petition should be denied as failing to identify all related administrative
`matters pursuant to 37 C.F.R. § 42.8(b)(2). See Pet. 1-2. On its face, the ’433 patent
`claims the benefit of the priority of the filing dates of the ’622, ’723, and ’890
`patents. Each of those interrelated patents ultimately claim the same effective filing
`date as that of the parent ’890 patent (Dec. 18, 2003). The interrelated nature of this
`patent family is further evident by the fact that the thirty-six IPR petitions filed
`against this patent family often attempt to map the same art using the same
`arguments to the same (or similar) claim language recited across multiple patents.
`Accordingly, Rule 42.8(b)(2) requires that the Petition itself expressly provide
`notice of all related administrative matters involving at least those interrelated
`patents. The Petition is deficient, therefore, for failing to provide the requisite notice
`regarding at least the following twenty-one related administrative matters: IPR2017-
`0220; IPR2017-0221; IPR2017-0222; IPR2017-0223; IPR2017-0224; IPR2017-
`1257; IPR2017-1365; IPR2017-1523; IPR2017-1524; IPR2017-1667; IPR2017-
`1612; IPR2017-1635; IPR2017-1636; IPR2017-1797; IPR2017-1798; IPR2017-
`1799; IPR2017-1800; IPR2017-1802; IPR2017-1804; IPR2017-1805; and IPR2017-
`2090. The failure to provide notice regarding IPR2017-2090 is especially glaring
`given that LGE itself filed that petition concurrently with the instant Petition.
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`5
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`IPR2017-2087
`U.S. Patent 8,995,433
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`In addition, the Petition makes no mention of the petition concurrently filed
`in IPR2017-2067 by Huawei, with whom Petitioner admittedly coordinated in filing
`other IPR petitions at that same time. See IPR2017-2090 and IPR2017-2088. The
`related administrative matter in IPR2017-2067 challenges the same ’433 patent at
`issue in the instant Petition. Petitioner LGE no doubt was aware of its co-petitioner’s
`intent to concurrently file a related and redundant petition, which adopts many of the
`same arguments.
`Each instance of this procedural defect (multiplied twenty-two times here) is
`ground for denial of the instant Petition. 35 U.S.C. § 312(a)(4); 37 C.F.R. §
`42.8(b)(2); Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00355, Paper 9 at
`8 (June 26, 2015) (denying petition on other grounds, but noting that “[t]he Petition’s
`failure to comply with 37 C.F.R. § 42.8(b)(2), and thus also 35 U.S.C. § 312(a)(4),
`could be ground for denial of the Petition.”) (citing Reflectix, Inc. v. Promethian
`Insulation Tech. LLC, IPR2015-00039, Paper 18 at 9 (PTAB Apr. 24, 2015)
`(denying institution because petition did not comply with parallel requirement, under
`35 U.S.C. § 312(a)(2), to identify all real parties-in-interest).).
`Any attempt by Petitioner to cure this deficiency would be futile at least
`because the Original Petition suffers from the same procedural defect (and therefore
`cannot properly be considered for analogous reasons). At a minimum, the Original
`Petitioners (Facebook and WhatsApp) in IPR2017-01427 failed to provide the
`mandatory notice of at least the following earlier-filed and related administrative
`matters: IPR2017-0220, IPR2017-0221, IPR2017-0222, IPR2017-0223, IPR2017-
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`6
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`IPR2017-2087
`U.S. Patent 8,995,433
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`0224, IPR2017-0225, IPR2017-1257, and IPR2017-1365.1 These multiple
`omissions are especially glaring given that the Original Petitioners themselves
`previously filed the petitions in IPR2017-1257 and IPR2017-1365. Thus, both the
`Original Petition (IPR2017-1428) and the instant Joinder Petition (IPR2017-2087)
`should be dismissed for indisputably failing, on their faces, to satisfy the mandatory
`notice requirements.
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`Petitioner Fails to Identify Each Real Party-In-Interest
`Parties filing a petition for inter partes review must identify all the real
`parties-in-interest. 37 C.F.R. § 42.8(b)(1). Among other purposes, this requirement
`assists “members of the Board in identifying potential conflicts” and assures “proper
`application of the statutory estoppel provisions.” Trial Practice Guide, 77 F.R.
`48759 (Aug. 14, 2012). The latter reason “seeks to protect patent owners from
`harassment via successive petitions by the same or related parties, to prevent parties
`from having a ‘second bite at the apple,’ and to protect the integrity of both the
`USPTO and Federal Courts by assuring that all issues are promptly raised and
`vetted.” Id.
`Even at this preliminary stage, there is sufficient evidence to conclude
`Petitioner failed to name each “real parties-in-interest” or “privy.” Petitioner joined
`with its co-defendants in the submission of invalidity contentions filed on March 28,
`2017. Those contentions are largely duplicative of the invalidity contentions filed on
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`1 The Original Petitioners Facebook and WhatsApp were both served with Patent
`Owner’s complaints in the underlying litigation in July, 2016, well over one year
`ago. The Original Petitioners are therefore both outside the statutory time window
`to refile with the appropriate notices.
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`7
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`IPR2017-2087
`U.S. Patent 8,995,433
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`December 16, 2016 by other members of the same joint-defense group. See EX2002
`and EX2003. In addition to the coordination evident on the face of those joint
`invalidity contentions, members of this same joint defense group admittedly
`coordinated in various IPR filings. See table, supra. These filings have been based
`on references and arguments set forth in the joint invalidity contentions and known
`before the original IPR was filed.
`Using the joint invalidity contentions as a playbook, LGE admittedly
`coordinated at least with Huawei in filing IPR petitions challenging the ’433 and
`’622 patents. See IPR2017-2088 and IPR2017-2090, respectively. The first
`approximately thirty-one pages of the two related and concurrently-filed petitions in
`IPR2017-2087 and 2088 are substantially the same (with the sole exception of less
`than three pages which describe certain secondary references). Notably, the claim
`construction arguments are virtually identical. Given that LGE admittedly
`coordinated with at least Huawei in filing the related petition in IPR2017-2088
`(which has many overlapping arguments), at a minimum, Huawei should also have
`been identified as a real party-in-interest in the instant Petition.
`Huawei, in turn, admittedly coordinated with at least Google and Motorola in
`challenging the same ’433 and ’622 patents based on the same or substantially
`similar application of overlapping art (also applied in a similar manner in the joint
`invalidity contentions). See IPR2017-2067, IPR2017-2080, and IPR2017-2081. The
`significant, substantive overlap in those petitions, and the parallel arguments in the
`jointly-filed invalidity contentions, confirm that each petition should have named
`the same group of colluding co-defendants.
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`IPR2017-2087
`U.S. Patent 8,995,433
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`The failure to name all real parties-in-interest provides independent grounds
`for denial. 37 C.F.R. § 42.8(b)(1) (requiring petitioners to identify each real party-
`in interest); Reflectix, Inc. v. Promethian Insulation Tech. LLC, IPR2015-00039,
`Paper 18 at 9 (PTAB Apr. 24, 2015) (denying institution because petition did not
`identify all real parties-in-interest).
`III. THE ’433 PATENT
` Effective Filing Date of the ’433 Patent
`The ’433 Patent is titled “System and Method for Instant VoIP Messaging.”
`The ’433 Patent issued March 31, 2015 from United States Patent Application
`No. 14/224,125, which is a Continuation of Application No. 13/546,673, filed on
`Jul. 11, 2012, now Pat. No. 8,724,622, which is a Continuation of Application No.
`12/398,063, filed on Mar. 4, 2009, now Pat. No. 8,243,723, which is a Continuation
`of Application No. 10/740,030, filed on Dec. 18, 2003, now Pat. No. 7,535,890.
` Overview of the ’433 Patent
`The ʼ433 Patent notes that conventional circuit-switched communications
`enabled traditional telephony yet had a variety of technical disadvantages that
`limited developing other forms of communication over such networks. According to
`the ʼ433 Patent, “[c]ircuit switching provides a communication path (i.e., dedicated
`circuit) for a telephone call from the telephone terminal to another device 20 over
`the [public switched telephone network or] PSTN, including another telephone
`terminal. During the telephone call, voice communication takes place over that
`communication path.” EX1001, 1:30-35.
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`9
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`IPR2017-2087
`U.S. Patent 8,995,433
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`The ʼ433 Patent expressly distinguishes circuit-switched networks from
`packet-switched networks (e.g., the Internet). For example, only the latter routes
`packetized digital information, such as “Voice over Internet Protocol (i.e., ‘VoIP’),
`also known as IP telephony or Internet telephony.” Id. at 1:36-38. Because legacy
`circuit-switched devices were unable to communicate directly over packet-switched
`networks, media gateways were designed to receive circuit-switched signals and
`packetize them for transmittal over packet-switched networks, and vice versa. Id. at
`2:9-22. The conversion effected by media gateways highlights the fact that
`packetized data carried over packet-switched networks is different from and is
`incompatible with an audio signal carried over a dedicated packet-switched circuit.
`Id. at 30-35.
`The ʼ433 Patent further notes that, notwithstanding the advent of instant text
`messages, at the time of the claimed invention there was no similarly convenient
`analog to leaving an instant voice message over a packet-switched network. Id. at
`2:35-48. Rather, “[c]onventionally, leaving a voice message involves dialing the
`recipient’s telephone number (often without knowing whether the recipient will
`answer), waiting for the connection to be established, speaking to an operator or
`navigating through a menu of options, listening to a greeting message, and recording
`the message for later pickup by the recipient. In that message, the user must typically
`identify himself or herself in order for the recipient to return the call.” Id. at 2:27-
`34.
`
`In certain disclosed aspects, the ʼ433 Patent discloses that a user-accessible
`client is configured for instant voice message (“IVM”) and for direct communication
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`10
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`IPR2017-2087
`U.S. Patent 8,995,433
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`over a packet-switched network (e.g., through an Ethernet card). Id. at 12:13-16.
`Certain clients are specially configured to “listen[] to the input audio device 212,”
`“record[] the user’s speech into a digitized audio file 210 (i.e., instant voice message)
`stored on the IVM client 208,” and “transmit[] the digitized audio file 210” as
`packetized data (e.g., using TCP/IP) over a packet-switched network (e.g., network
`204) “to the local IVM server 202.” Id. at 8:12-26, FIG. 2.
`
`IV. THERE IS NO REASONABLE LIKELIHOOD THAT EVEN ONE OF
`THE CHALLENGED CLAIMS 1-8 IS UNPATENTABLE
`Petitioner has the burden of proof to establish it is entitled to their requested
`relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories of
`obviousness, Petitioner must demonstrate a reasonable likelihood that at least one of
`the challenged patent claims would have been obvious in view of the art cited in the
`Petition. Petitioner fails to meet this burden and the Petition should, therefore, be
`denied.2
`
`
`Petitioner Relies on Incorrect Claim Constructions
`Petitioner relies on incorrect claim construction proposals to argue that Claims
`1-8 would have been obvious. Petitioner’s proposed claim constructions for “instant
`voice messaging application” and “client platform system” of independent Claims 1
`and 6 are incorrect—Petitioner proposes that they both may exclusively cover
`hardware. However, neither term requires hardware and neither term requires any
`contrived construction because a person having ordinary skill in the art would
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`2 While certain deficiencies in the Petition are addressed here, Patent Owner reserves
`the right to address other deficiencies of the Petition in a full Response if an inter
`partes review is instituted
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`11
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`IPR2017-2087
`U.S. Patent 8,995,433
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`understand both terms and would agree that both terms should carry their customary
`and ordinary meaning.3 Declaration of Dr. Val DiEuliis (“EX2001), ¶¶ 44-57.
`Under the proper construction, Zydney does not teach or suggest either an “instant
`voice messaging application” or a “client platform system.”
`In the absence of “persuasive evidence” that a term or word has “a specially
`defined meaning in the field of art” encompassed by the patent, “the ordinary and
`customary meaning attributed to this term by those of ordinary skill in this art at the
`time of invention ‘involves little more than the application of the widely accepted
`meaning of commonly understood words.’” Cat Tech LLC v. TubeMaster, Inc., 528
`F.3d 871, 884 (Fed. Cir. 2008) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314
`(Fed. Cir. 2005)).4
`1.
`Petitioner’s Proposed Construction for “instant voice messaging
`application” Is Incorrect and Unnecessary
`
`Petitioner’s obviousness theory relies on an unreasonable expansion of the
`term “application” (as recited in “instant voice messaging application”) to
`
`
`3 The concern that “plain and ordinary meaning” can be at times unhelpful to juries
`has no applicability to this forum. Uniloc expressly reserves its right to dispute
`Petitioner’s proposed constructions if the Board institutes trial. Patent Owner does
`not concede that Petitioner’s offered construction is correct.
`4 Under the broadest reasonable interpretation standard used by the Board, claim
`terms carry their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016) (upholding the use in IPRs of the
`broadest reasonable interpretation).
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`12
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`IPR2017-2087
`U.S. Patent 8,995,433
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`encompass hardware alone. Pet. at 10-13. Petitioner does not support that proposed
`construction.5 EX2001 ¶¶ 45-53.
`It is clear from the claim language itself that the instant voice messaging
`application of claims 1-8 does not encompass (let alone require) hardware. Id. ¶¶
`50-51. As explained below, the “displaying” cited by Petitioner is encompassed by
`software instructions that control data sent to a monitor, it does not require a light-
`emitting display. Petitioner selectively plucked snippets from the ’433 Patent
`specification to argue its unreasonable proposed constructions. Id. ¶¶ 52-53.
`Petitioner’s approach is impermissible. The Board must consider the specification
`as a whole. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc) (claims must be construed as a whole consistent with the entire
`specification); Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 906
`(Fed. Cir. 2005) (“[C]laims must be construed so as to be consistent with the
`specification, of which they are a part”) (citation omitted).
`Petitioner admits that “the term ‘application’ to a person of ordinary skill in
`the art typically refers to computer software for performing a particular function.”
`Pet. at 10 (citing EX1009, Microsoft Computer Dictionary (3d ed. 1997), at p. 27
`(defining “application” as “[a] program designed to assist in the performance of a
`specific task, such as word processing, accounting, or inventory management.”));
`
`
`5 Petitioners’ argument that the ’433 Patent supposedly “does not identify any
`particular software program” (Pet. 11) goes only to written description and is
`therefore irrelevant here. Indeed, Petitioners in effect ask the Board not to look at
`the disclosure of the ’433 Patent for its description of “instant voice messaging
`application.” Pet. 10 n.1.
`
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`see also EX2001, ¶ 15; EX2004 (noting “App” voted 2010 word of the year by the
`American Dialect Society). The customary and ordinary definition is software, as
`Petitioner admits.
`Nonetheless, Petition argues that “instant voice messaging application” must
`include “hardware such as a general purpose computer and display device 216”
`because Claims 1 and 6 each recite:
`
`wherein the instant voice messaging application displays a list of one
`or more potential recipients for the instant voice message
`Pet. 13. Petitioner’s argument is meritless.
`The ’433 Patent makes it clear that when the instant voice messaging
`application displays a list of one or more potential recipients for the instant voice
`message, that function is controlled by software that is executable by a processor to
`instruct a display device to do the displaying. The ’433 Patent describes that the
`displaying function (albeit under the command of software) is merely carried out by
`a hardware device—i.e., display device 216 connected to IVM client 208. “The IVM
`client 206 displays a list of the one or more IVM recipients on its associated
`display.” EX1001, 17:1-3. The fact that software controls a printer, for example,
`does not convert the software into hardware. EX2001 ¶¶ 50-53.
`The Board should reject Petitioner’s proposed construction, and therefore
`should reject Petitioner’s dependent corollary argument that the claimed “instant
`voice messaging application” is somehow made obvious by hardware in the Zydney
`or Clark references.
`
`14
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`2.
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`Petitioner’s Proposed Construction for “client platform system”
`Is Incorrect and Unnecessary.
`Petitioner’s equally-contorted argument that the term “client platform
`system” encompasses hardware should likewise be rejected as unsupported and
`contrary to the customary and ordinary meaning of “client platform.” Cf. Pet. at 33
`(“hardware including the client device (e.g., personal computer) and the
`microphone….”). Petitioner relies explicitly upon its incorrect construction to argue
`that the claimed client platform system is disclosed by Zydney. Pet. at 31-34;
`EX2001 ¶¶ 55-57.
`Petitioner’s claim construction should be rejected as inconsistent with at least
`the following description of the “client platform system” in the specification of the
`’433 Patent:
`
`the instant voice message client 208 comprises a client platform 302 for
`generating an instant voice message. . .. The client platform 302
`comprises a client engine 304, which controls other components,
`namely the document handler 306, file manager 308, audio file creation
`312, signal processing 314, encryption/decryption 316, and
`compression/decompression 318.
`EX1001 at 12:8-23 (underlining added). Fig. 3 of the ’433 Patent illustrates:
`
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`EX1001, Fig. 3 (red box added). Thus, Fig. 3 illustrates that the instant voice
`messaging client 208 includes a client platform 302 for generating an instant voice
`message. The client platform 302 includes a client engine 304 that controls other
`components that include the document handler 306 and the file manager 308 and
`components that handle audio file creation 312, signal processing 314, encryption
`and decryption 316, and compression and decompression 318. Further, the claimed
`client platform system is included in the claimed instant voice message application,
`which does not encompass hardware, as explained above. Thus, the claimed client
`platform system refers to software (as opposed to hardware). EX2001 ¶¶ 55-57.
`Accordingly, the Board should reject Petitioners’ erroneous construction and
`also reject Petitioner’s dependent corollary arguments that the claimed “client
`
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`platform system” is somehow made obvious by hardware in the Zydney or Clark
`references. See, e.g., Pet. 33 (arguing that “the software agent in Zydney generates
`a voice container by controlling various other components” such as a microphone
`and processor).
`
` No Prima Facie Obviousness
`For each one of the following independent reasons, Petitioner fails to present
`a prima facie case of obviousness of claims 1-8 challenged under Ground 1 or
`Ground 2. Petitioner offers weak to non-existent rationales to modify Zydney with
`Clark or Appelman and fails to treat the claims as a whole, while impermissibly
`relying on hindsight analysis to purportedly arrive at the claimed inventions. See In
`re Fine, 837 F.2d at 1075 (“One cannot use hindsight reconstruction to pick and
`choose among isolated disclosures … to deprecate the claimed invention.”); W.L.
`Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To
`imbue one of ordinary skill in the art with knowledge of the invention in suit, when
`no … reference or references of record convey or suggest that knowledge, is to fall
`victim to the insidious effect of a hindsight syndrome wherein that which only the
`inventor taught is used against its teacher.”).
`
`1. Claim 1 is not rendered obvious because Clark does not disclose or
`suggest “wherein the instant voice message is represented by a
`database record including a unique identifier”
`a. Clark lacks a database record in a message database, where that
`database record includes both a unique identifier and an instant
`voice message
`Independent claim 1 unambiguously requires that the claimed “database
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`record” must be part of the claimed “message database,” and the claimed database
`record must itself include both an instant voice message and a unique identifier.6
`The ’433 Patent specifies:
`
`The file manager accesses a message database 310, in which both the
`received and recorded instant voice messages are represented as
`database records, each record comprising a message identifier and the
`instant voice message.
`EX1001 at 12:34-40 (underlining added for clarity). Petitioner admits that Zydney
`lacks this element. Pet. at 48-50. Clark also lacks this element.
`Petitioner primarily cites to Fig. 5A of Clark and its associated description as
`allegedly disclosing the claimed database record. Pet. at 48-49. In particular, the
`Petition asserts that the “message store” of Clark discloses the claimed message
`database and that “StoreMessageID,” which is included in a MessageSummary table
`52, discloses the claimed unique identifier. Id. There are several issues with this
`mapping. First, in FIG. 5A, Clark shows the “MessageSummary table 52” as being
`outside the “message store 23.” EX1008.
`Second, the MessageSummary table 52 does not include any message data at
`all. Clark describes the contents of MessageSummary table 52 as follows:
`
`
`6 The language of the claim itself is the best guide to the meaning of its terms.
`Phillips, 415 F.3d at 1312-13 (“the context in which a term is used in the asserted
`claim can be highly instructive.”); Alloc, Inc. v. Intern. Trade Comm’n, 342 F.3d
`1361, 1368 (Fed. Cir. 2003) (“‘Claim language generally carries the ordinary
`meaning of the words in their normal usage in the field of invention’ at the time of
`invention.”) (citation omitted).
`
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`The actual contents of the MessageSummary will vary depending upon
`the … implementation, but in a currently preferred embodiment …
`MessageSummary table 52 includes the following fields:
`
`EX1008 16:64-17:23.
`
`
`
`In Clark, the message data is included in a “Message table 54” that is separate
`from the MessageSummary table 52, as clearly shown in Fig. 5A. Petitioner has not
`shown that a single database record in Clark includes both a unique identifier and
`an instant voice message. Indeed, in Fig. 5A of Clark, the MessageSummary table
`and the Message table are in separate data stores (the catalog database 28 and the
`message store 23, respectively). A database record does not span multiple tables, let
`alone multiple tables from different data stores. The Petition notes that the catalog
`
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`database 28 and the message store 23 of Clark can be combined, as in Fig. 5B. Pet.
`49. However, none of the tables shown in Fig. 5B of Clark includes a
`“StoreMessageID,” which is the only item of Clark that the Petition has asserted as
`disclosing the claimed unique identifier. Pet. 48-49; EX20
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