UNITED STATES PATENT AND TRADEMARK
`
`OFFICE BEFORE THE PATENT TRIAL AND
`
`APPEAL BOARD
`
`FACEBOOK, INC and WHATSAPP INC.,
`Petitioners
`v.
`UNILOC LUXEMBOURG S. A.
`Patent Owner
`
`Case IPR2018-00747
`U.S. Patent 7,535,890
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.107(a)
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`

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`Table of Contents
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`2.
`
`3.
`
`
`INTRODUCTION ...................................................................................... 1
`I.
`PERSON OF ORDINARY SKILL IN THE ART .................................... 2
`II.
`III. THE ʼ890 PATENT .................................................................................... 2
`A.
`Effective Filing Date of the ʼ890 Patent .......................................... 2
`B.
`Overview of the ʼ890 Patent ............................................................ 4
`IV. PROCEDUAL BACKGROUND ............................................................... 6
`V.
`PETITIONER FAILS TO PROVE ANY OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE .................................... 6
`A.
`Claim Construction .......................................................................... 7
`1.
`The Board Should Construe “Transmitting the
`Selected Recipients and the Instant Voice Message”
`as “Transmitting the Selected Recipients (in Response
`to the Selecting) and Separately Transmitting the
`Instant Voice Message” .......................................................... 8
`The Board Should Construe “Receiving the
`Selected Recipients and the Instant Voice Message”
`as“Receiving the Selected Recipients and Separately
`Receiving the Instant Voice Message.” ................................ 11
`The Board Should Construe “Delivering the Instant
`Voice Message to the Selected Recipients” as
`“Delivering the Instant Voice Message (from the
`Server) to (a Subset of) the Selected Recipients that
`areDetermined by the Server to be Available.”................... 13
`The Board Should Construe “Storing the Instant
`Voice Message if a Selected Recipient is Unavailable”
`as “Storing the Instant Voice Message for a
`Selected Recipient Determined by the Server to be
`Unavailable.” ......................................................................... 14
`The Board Should Construe “Temporarily
`Storing . . . and Delivering the Stored Instant Voice
`Message” as “Temporarily Storing . . . until
`Delivering the Stored Instant Voice Message.” ................... 15
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`4.
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`5.
`
`ii
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`

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`B.
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`C.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Ground 1 Fails Because Petitioner Fails to Provide
`Prima Facie Evidence that Griffin plus Zydney Renders
`Obvious Claims 1, 3–6, 9, and 40–43. .............................................17
`1.
`The Board Already Rejected Petitioner’s
`Argument Concerning Zydney Alleged Disclosure
`of the Claim Feature . ........................................................... 17
`Combining Zydney with Griffin Frustrates the
`Purpose of Griffin of a Server-Based Messaging
`Paradigm. .............................................................................. 19
`The Combination of Griffin and Zydney is also
`Inoperable for Text-only Buddies. ....................................... 24
`The Combination of Griffin and Zydney Is Also
`Inoperable Because it would Result in Messages
`Being Lost. ............................................................................. 26
`The Combination of Griffin and Zydney Would
`Require Changing the Principle of Operation of
`One or the Other. .................................................................. 27
`Griffin plus Zydney Does Not Disclose or Render
`Obvious a Client “Transmitting the Selected
`Recipients and the Instant Voice Message” or a
`Server “Receiving the Selected Recipients and the
`Instant Voice Message.” ....................................................... 29
`Griffin plus Zydney Does Not Disclose or Render
`Obvious a Server “Delivering the Instant Voice
`Message to the Selected Recipients Over the Network”
`and “Storing the Instant Voice Message if a Selected
`Recipient is Unavailable.” .................................................... 33
`Independent Claims 1 and 40 are not Obvious
`Over Griffin plus Zydney ...................................................... 35
`Dependent Claims 3–6, 9, and 41–43 are Not
`Obvious Over Griffin plus Zydney. ....................................... 36
`Ground 2 Fails Because Petitioner Fails to Provide
`Prima Facie Evidence that Griffin plus Zydney and
`Malik Renders Obvious Claims 2, 14, 15, 17–20,
`23, 51–54, and 57. ............................................................................37
`1. Malik is Cumulative with a Continuation
`Application Thereof Previously Considered
`by the Examiner During Prosecution. ................................. 37
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`7.
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`8.
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`9.
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`iii
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`

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`2.
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`3.
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`Independent Claims 14 and 51 are not Obvious
`Over Griffin plus Zydney and Malik. .................................... 39
`Dependent Claims 2, 15, 17–20, 23, 52–54,
`and 57 are not Obvious Over Griffin plus Zydney
`and Malik. .............................................................................. 40
`VI. CONCLUSION ......................................................................................... 41
`
`
`iv
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`List of Exhibits
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`Exhibit No.
`
`Description
`
`Declaration of William C. Easttom II
`
`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
`U.S. Pat. App. Pub. No 2004/0128356 (Bernstein)
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`U.S. Pat. App. Pub. No. 2007/0112925 (Malik II)
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`2001
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`2002
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`2003
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`2004
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`
`
`v
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`

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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (“Patent Owner”) pursuant to 35 U.S.C. § 313 and 37
`
`C.F.R. § 42.107(a), submits this Response to the Joinder Petition for Inter Partes
`
`Review (“the Petition” or “Pet. at __”) of United States Pat. No. 7,535,890 (EX1001;
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`“the ʼ890 Patent”) filed by Facebook, Inc. and WhatsApp Inc. (“Joinder Petitioners”).
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`The Petition fails to “specify where each element of the claim is found in the prior
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`art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Rather,
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`Petitioner uses the claim language as a blue-print to speculate (outside the four corners
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`of the cited references) various ways in which the duplicative (i.e., cumulative)
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`references could possibly be modified and combined to atone for missing limitations.
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`Petitioner further impermissibly attempts to fill in the missing limitations, at least in
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`part, by offering interpretations that conflict with contents of the duplicative references,
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`with express language in the claims, and with unambiguous constructions in the
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`prosecution history. The Petition’s approach invites reversible error and should be
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`rejected outright.
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`1
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`II.
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`PERSON OF ORDINARY SKILL IN THE ART
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`Petitioner alleges through its declarant, Zygmunt J. Haas, that a “person of
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`ordinary skill in the art at the time of the alleged invention of the ’890 Patent (‘POSA’)
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`would have had at least a bachelor’s degree in computer science, computer engineering,
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`electrical engineering, or the equivalent and at least two years of experience in the
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`relevant field, e.g., network communication systems. More education can substitute for
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`practical experience and vice versa.” Pet. at 8 (citing Ex. 1002, ¶¶1-58.)
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`Uniloc’s declarant, Chuck Easttom, testified that a person of ordinary skill in the
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`art is “someone with a baccalaureate degree related to computer technology and 2 years
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`of experience with network communications technology, or 4 years of experience
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`without a baccalaureate degree.” EX2001 ¶ 16.
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`As shown by his declaration and attached curriculum vitae, Mr. Easttom’s
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`qualifications and experience exceed those of the hypothetical person having ordinary
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`skill in the art defined above. Nevertheless, his analysis and opinions regarding the ‘890
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`Patent have been based on the perspective of a person of ordinary skill in the art as of
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`December 2003. Id.
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`III. THE ʼ890 PATENT
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`A. Effective Filing Date of the ʼ890 Patent
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`The ʼ890 Patent is in a family of patents including United States Patent Nos.
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`8,243,723 (the ’723 Patent); 8,724,622 (the ’622 Patent); 8,199,747 (the ’747 Patent);
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`2
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`

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`and 8,995,433 (the ’433 Patent).1 The diagram below charts how this family of patents
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`is interrelated.
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`The ʼ890 Patent is titled “System and Method for Instant VoIP Messaging.” The
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`ʼ890 Patent issued from U.S. Pat. App. No. 10/740,030, filed December 18, 2003. The
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`ʼ890 Patent issued May 19, 2009.
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`
`
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`1 All five related patents derive from United States Patent Application No. 10/740,030.
`Also referred to collectively as the ’890 Patent family.
`3
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`

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`B. Overview of the ʼ890 Patent
`The ʼ890 Patent recognizes that conventional circuit-switched communications
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`enabled traditional telephony yet had a variety of technical disadvantages that limited
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`development of other forms of communication over such networks. According to the
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`ʼ890 Patent, “[c]ircuit switching provides a communication path (i.e., dedicated circuit)
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`for a telephone call from the telephone terminal to another device 20 over the [public
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`switched telephone network or] PSTN, including another telephone terminal. During
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`the telephone call, voice communication takes place over that communication path.”
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`EX1001, 1:18–23.
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`The ʼ890 Patent expressly distinguishes circuit-switched networks from packet-
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`switched networks (e.g., the Internet) at least in that the latter routes packetized digital
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`information, such as “Voice over Internet Protocol (i.e., “VoIP”), also known as IP
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`telephony or Internet telephony.” Id. at 1:24–26. Because legacy circuit-switched
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`devices were unable to communicate directly over packet-switched networks, media
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`gateways (114) were designed to receive circuit-switched signals and packetize them
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`for transmittal over packet-switched networks, and vice versa. Id. at 1:54–2:10. The
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`conversion effected by media gateways (e.g., 114 and 118) highlights the fact that
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`packetized data carried over packet-switched networks (e.g., IP network 102) are
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`different from and are incompatible with an audio signal carried over a dedicated
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`packet-switched circuit. Id. at 1:18–23.
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`4
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`The ʼ890 Patent further recognizes that, notwithstanding the advent of instant text
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`messages, at the time of the claimed invention there was no similarly convenient analog
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`to leaving an instant voice message (IVM) over a packet-switched network. Id. at 2:11–
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`43. Rather, “conventionally, leaving a voice message involves dialing the recipient’s
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`telephone number (often without knowing whether the recipient will answer), waiting
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`for the connection to be established, speaking to an operator or navigating through a
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`menu of options, listening to a greeting message, and recording the message for later
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`pickup by the recipient. In that message, the user must typically identify himself or
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`herself in order for the recipient to return the call.” Id. at 2:15–22.
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`In certain disclosed aspects, the ʼ890 Patent describes a user-accessible client 208
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`that is specially configured for IVM communication and for direct communication over
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`a packet-switched network (e.g., through an Ethernet card). Id. at 12:4–5. More
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`specifically, the ʼ890 Patent teaches that certain clients (208) are specially configured
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`to “listen[] to the input audio device 212,” “record[] the user’s speech into a digitized
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`audio file 210 (i.e., [IVM]) stored on the IVM client 208,” and “transmit[] the digitized
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`audio file 210” as packetized data (e.g., using TCP/IP) over a packet-switched network
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`(e.g., network 204) “to the local IVM server 202.” Id. at 7:65–8:1.
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`5
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`IV. PROCEDUAL BACKGROUND
`The present joinder Petition challenges claims 9, 23, and 57 of the ’890 Patent,
`which respectively depend on Claims 1, 14, and 51. Petitioner previously filed multiple
`challenges, asserting the same prior art – namely the Zydney and Malik references.
`On June 2, 2017, Joinder Petitioners filed two petitions that together challenged
`claims 1-6, 9, 14-15, 17-20, 23, 28-29, 31-34, 37, 40-43, 46, 51-54, 57, 62-65, and 68
`of the ’890 Patent. (IPR2017-01523, -01524.) Both the 1523 and 1524 petitions relied
`on the Zydney reference whereas the 1524 Petition relied on Malik reference. Both the
`1523 and 1524 petitions were denied. The present joinder petition again relies on Zydney
`and Malik, but also introduces the Griffin reference.
`On June 16, 2017, Joinder Petitioners filed a petition and motion for joinder in
`IPR2017-01636. The 1636 petition requested joinder with IPR2017-00221, filed by
`Apple Inc., with respect to claims 1-6, 14- 15, 17-20, 28-29, 31-34, 40-43, 51-54, 62-
`65, and 68 of the ’890 Patent. The 1636 petition asserts the Malik reference, also asserted
`here.
`
`V.
`
`
`PETITIONER FAILS TO PROVE ANY OF THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`The Petition presents the following grounds, which are all based on obviousness
`
`theories. As Ground 1, Petitioner alleges obviousness of Claims 1, 3–6, 9, and 40–43
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`under 35 U.S.C. § 103 over U.S. Pat. No. 8,150,922 to Chris Michael Griffin et al.
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`(EX1005; “Griffin”) in view of International Pat. App. Pub. No. WO 01/11824 to
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`Herbert Zydney et al. (EX1006; “Zydney”). As Ground 2, the Petition alleges
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`6
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`

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`obviousness of Claims 2, 14, 15, 17–20, 23, 51–54, and 57 under 35 U.S.C. § 103 over
`
`Griffin in view of Zydney and U.S. Pat. No. 7,016,978 to Dale Malik et al. (EX1011;
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`“Malik”).
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`“In an inter partes review ..., the petitioner shall have the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e).
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`Because the Petition only presents theories of obviousness, Petitioner must demonstrate
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`a that at least one of the challenged patent claims would have been obvious in view of
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`the art cited in the Petition. Petitioner “must specify where each element of the claim is
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`found in the prior art patents or printed publications relied upon.” 37 C.F.R. §
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`42.104(b)(4). The Board should reject Grounds 1–2 because Petitioner fails to meet this
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`burden.
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`A. Claim Construction
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`Petitioner does not contend that any term from the ʼ890 patent requires an explicit
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`construction and requests that the Board adopt the broadest reasonable construction
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`consistent with the “plain and ordinary meaning” of the challenged claims. Pet. at 9.
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`Patent Owner requests that the Board adopt the broadest reasonable construction
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`consistent with the ordinary and customary meaning of the challenged claims and with
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`the specification as a whole.
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`Under the broadest reasonable interpretation standard used by the Board, claim
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`terms carry their ordinary and customary meaning, as would be understood by one of
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`ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech.,
`7
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`

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`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2144–46 (2016) (upholding the use in IPRs of the broadest reasonable
`
`interpretation).
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`1.
`
`The Board Should Construe “Transmitting the Selected
`Recipients and the Instant Voice Message” as “Transmitting the
`Selected Recipients (in Response to the Selecting) and
`Separately Transmitting the Instant Voice Message”
`Independent Claim 1 recites “a client connected to the network, the client
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`selecting one or more recipients, generating an [IVM] therefor, and transmitting the
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`selected recipients and the [IVM] therefor over the network.” EX1001, 23:58–61
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`(emphasis added). The appropriate construction for this “transmitting” limitation
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`reflects that the transmitting of the selected recipients and the IVM are done separately.2
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`In order to appropriately construe the “transmitting” limitation, the Board must
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`consider the specification as a whole. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303,
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`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,
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`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).
`
`
`2 The other independent claims recite similar limitations. ʼ890 Patent, 25:21-39
`(independent Claim 14), 28:21-40 (independent Claim 40), 30:8-30 (independent Claim
`51).
`
`8
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`

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`The ʼ890 Patent describes systems and methods in which a user selects one or
`
`more intended recipients of a message from a list provided by a server. “The IVM client
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`displays a list of one or more IVM recipients on its display, provided and stored by the
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`local IVM server . . . . The user operates the IVM client by using the input device to
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`indicate a selection of one or more IVM recipients from the list.” EX1001, 7:55–61
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`(internal citations omitted). Once this selection is made, the “user selection is
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`transmitted to the IVM server.” Id. at 7:61. Thus, the selected recipients are transmitted
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`to the server in response to the user selecting the recipients. The selected recipients are
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`also transmitted to the server separately from (i.e., prior to) recordation and transmission
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`of the IVM to the server, as outlined below.
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`The user's selection of the recipients triggers the process by which the user may
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`record the IVM. Id. at 7:62–8:4. “Once the recording of the user’s speech is finalized,
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`IVM client 208 generates a send signal indicating that the digitized audio file 210
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`([IVM]) is ready to be sent to the selected recipients.” Id. at 8:5–8. The client then sends
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`the IVM to an IVM server. Id. at 8:11–12.
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`Thus, the client transmits the selected recipients and the IVM separately. Indeed,
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`throughout the ʼ890 Patent, in over 10 separate instances, the client communicates the
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`selected recipients to the server before recording and transmitting the IVM. For
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`instance, the ʼ890 Patent mentions the client transmitting the IVM without regard to
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`9
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`communication of the selected recipients.3 In each of these instances, the transmission
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`of the IVM takes place after, and separate from, the transmission of the selected
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`recipients. See Id.
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`Further, other claims of the ʼ890 Patent provide additional context that supports
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`a construction of the IVM and the selected recipients being transmitted, received, and
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`generally processed separately. For example, Claims 8 and 45 recite buffering
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`operations that are performed with respect to the IVM or portions thereof (and not
`
`performed with respect to the selected recipients). EX1001, 25:28–35 and 29:1–10. It is
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`notable that the above referenced dependent claims do not recite that any buffering
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`operations are performed with respect to the selected recipients. The specification
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`makes it clear that such buffering operations are not performed with respect to the
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`selected recipients. This is because by the time buffering operations on the IVM (or
`
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`3E.g., EX1001, 8:11-12 (“The IVM client 208 transmits the digitized audio file 210 and
`the send signal to the local IVM server 202”); 9:56-58 (“The IVM client thereafter
`transmits the recorded audio file 210 ([IVM]) to IVM server 202 for delivery to the
`selected one or more IVM recipients”); 10:37-40 (“Returning the handset to its cradle
`also generates a send signal to the IVM server to transmit the recorded audio file
`([IVM]) to the selected one or more IVM recipients”); 11:32-35 (“Once a first buffer is
`full, i.e., input audio of the predetermined size is written to the buffer, the content of the
`first buffer is automatically transmitted to the IVM server 202 for transmission to the
`one or more IVM recipients”); 16: 17-21 (“The user generates the send signal when the
`user operates the IVM client 208 via the input device 218. The IVM client 208 transmits
`the digitized audio file 210 and the send signal to the global IVM server system”).
`10
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`portions thereof) are even possible, the selected recipients have already been
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`communicated from the client to the server. That is, the selected recipients are
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`communicated from the client to the server first, and only thereafter is the IVM buffered
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`and communicated from the client to the server.4
`
`For at least these reasons, the Board should properly construe “transmitting the
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`selected recipients and the [IVM]” in the independent claims as “transmitting the
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`selected recipients and separately transmitting the [IVM]” (i.e., first transmitting the
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`selected recipients and then later transmitting the IVM).
`
`2.
`
`The Board Should Construe “Receiving the Selected Recipients
`and the Instant Voice Message” as “Receiving the Selected
`
`
`4 For example, the specification states “[i]n the ‘intercom mode,’ instead of creating an
`audio file 210, one or more buffers (not shown) of a predetermined size are generated
`in the IVM client 206, 208 or local IVM server 202. The one or more buffers are used
`to automatically write successive portions of the [IVM].” EX1001, 11:27-32. This
`passage makes it clear that the buffering operations are the intercom mode’s alternative
`to the record mode’s creation of the audio file. However, creation of the audio file does
`not happen until a start signal is generated, and the start signal is not generated until
`after the selected recipients are transmitted from the client to the server: “The user
`operates the IVM client 208 by using the input device 218 to indicate a selection of one
`or more IVM recipients from the list. The user selection is transmitted to the IVM server
`202. The user selection also generates a start signal to the IVM client 208 that the user
`is ready to begin instant voice messaging according to the present invention. In response
`to the start signal, the IVM client (softphone) 208 listens to the input audio device 212
`and records the user's speech into a digitized audio file 210 (i.e., [IVM]) stored on the
`IVM client 208.” Id. at 7:58-8:1 (emphases added). The buffering operations recited in
`the above-referenced dependent claims, though not challenged in the Petition, provide
`additional context that demonstrates the appropriate construction of transmitting the
`IVM and separately transmitting the selected recipients.
`11
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`

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`Recipients and Separately Receiving
`Message.”
`Independent Claim 1 recites “a server connected to the network, the server
`
`the Instant Voice
`
`receiving the selected recipients and the [IVM] therefor and delivering the [IVM] to the
`
`selected recipients over the network.” EX1001, 23:62–65 (emphasis added).5 It is noted
`
`that this limitation is the server-side “receiving” analogue of the client-side
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`“transmitting” limitation discussed above. As explained above, the appropriate
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`construction for the “transmitting” limitation requires that the transmission of the
`
`selected recipients and the IVM are performed separately. For analogous reasons, the
`
`appropriate construction for the “receiving” limitation requires that the receiving of the
`
`selected recipients and the IVM are performed separately.
`
`Independent Claim 1 further recites “the server . . . delivering the [IVM] to the
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`selected recipients over the network . . . and the server temporarily storing the [IVM] if
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`a selected recipient is unavailable.” EX1001, 23:62–24:1. Since the claim recites that
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`the server delivers the IVM to available recipients and saves the IVM for unavailable
`
`recipients, it is only logical that the server must receive the IVM for both the available
`
`and unavailable recipients. Hence, the server receives all of the selected recipients (e.g.,
`
`not just the recipients that are unavailable) and the independent claims should be
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`construed accordingly to require that the server receives all of the selected recipients
`
`
`5The other independent claims recite similar limitations. ʼ890 Patent, 25:21-39
`(independent Claim 14), 28:21-40 (independent Claim 40), 30:8-30 (independent Claim
`51).
`
`12
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`including the selected recipients that are available and the selected recipients that are
`
`unavailable.
`
`3.
`
`The Board Should Construe “Delivering the Instant Voice
`Message to the Selected Recipients” as “Delivering the Instant
`Voice Message (from the Server) to (a Subset of) the Selected
`Recipients that are Determined by the Server to be Available.”
`As described above, the server receives from the client all of the selected
`
`recipients, including both the available recipients selected by the client and the
`
`unavailable recipients selected by the client. For analogous reasons to those described
`
`above, the appropriate construction for the “delivering the [IVM] to the selected
`
`recipients” limitation clearly requires that the server perform the delivering.
`
`Further, as noted above, Claim 1 recites “the server . . . delivering the [IVM] to
`
`the selected recipients . . . and temporarily storing the [IVM] if a selected recipient is
`
`unavailable.” EX1001, 23:62–24:1. Clearly, the server delivers the IVM to the available
`
`selected recipients rather than the client.
`
`In order for the server to deliver the IVM to available selected recipients and store
`
`the IVM for unavailable selected recipients, the server must determine which of the
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`selected recipients are available and which of the selected recipients are unavailable. In
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`other words, for the server to deliver the IVM to only a subset of the received selected
`
`recipients, the server must determine which of the selected recipients are available.
`
`Petitioner appears to agree that “the server . . . delivering the [IVM] to the selected
`
`recipients . . . and temporarily storing . . . [if] unavailable” in the claims requires a
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`13
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`determination by the server of the availability/unavailability of each selected recipient.
`
`For example, Petitioner's expert addresses the claim limitations by stating “Griffin does
`
`not explicitly disclose temporarily storing a message if a recipient is unavailable, as
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`determined based on status 702 [at the server] and delivering the stored message to the
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`recipient once the recipient becomes available, as determined based on 702 [at the
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`server].” EX1002, p. 69 (emphasis added); see also Pet.at 25 (“Griffin does not,
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`however . . . would have been obvious . . . to modify Griffin’s . . . status 702”).
`
`Accordingly, the independent claims should be construed to require that the
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`server, not the client, delivers the IVM to those selected recipients that are determined,
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`by the server, to be available.
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`4.
`
`The Board Should Construe “Storing the Instant Voice Message
`if a Selected Recipient is Unavailable” as “Storing the Instant
`Voice Message for a Selected Recipient Determined by the
`Server to be Unavailable.”
`For analogous reasons, the appropriate construction for the “the server . . . storing
`
`the [IVM] if a selected recipient is unavailable” as “the server . . . storing the [IVM] for
`
`a selected recipient determined by the server to be unavailable.” According to Claim 1,
`
`for “the server . . . [to deliver] the [IVM] to the selected recipients. . . and temporarily
`
`stor[e] the [IVM] if a selected recipient is unavailable,” (EX1001, 23:62–24:1), the
`
`server must determine which of the selected recipients are available and which of the
`
`selected recipients are unavailable.
`
`14
`
`

`

`Petitioner appears to agree that “the server . . . delivering the [IVM] to the
`
`selected recipients . . . and temporarily storing . . . [if] unavailable” in the claims requires
`
`a determination by the server of the availability/unavailability of each selected recipient.
`
`The statement by Petitioner's expert referenced in the preceding section that “Griffin
`
`does not explicitly disclose temporarily storing a message if a recipient is unavailable,
`
`as determined based on status 702 [at the server] and delivering the stored message to
`
`the recipient once the recipient becomes available, as determined based on 702 [at the
`
`server]” likewise applies here. EX1002, p. 69 (emphasis added); see also Pet. at 25
`
`(“Griffin does not, however . . . would have been obvious . . . to modify Griffin’s . . .
`
`status 702”).
`
`Hence, the independent claims should be construed accordingly to require that
`
`the server, not the client, stores the IVM for the selected recipients that are determined
`
`by the server to be unavailable.
`
`5.
`
`The Board Should Construe “Temporarily Storing . . . and Delivering
`the Stored Instant Voice Message” as “Temporarily Storing . . . until
`Delivering the Stored Instant Voice Message.”
`Independent Claim 1 recites “the server . . . temporarily storing the [IVM] if a
`
`selected recipient is unavailable and delivering the [IVM] to the selected recipient once
`
`the selected recipient becomes available.” EX1001, 23:62–65.6 In other words, the
`
`
`6The other independent claims recite similar limitations. ʼ890 Patent, 25:21-39
`(independent Claim 14), 28:21-40 (independent Claim 40), 30:8-30 (independent Claim
`51).
`
`15
`
`

`

`server relatively briefly (temporarily) stores the IVM and then later delivers it. That is,
`
`the ʼ890 Patent does not describe the server delivering a copy of the IVM but rather
`
`describes, after temporarily storing the IVM, delivering the stored IVM at a later time.
`
`Noting that nothing is forever, as is known or commonly stated, “temporarily” in Claim
`
`1 carries no meaning if construed as “anything less than forever.” In order to ascribe
`
`temporal meaning to the “temporarily storing” term at the end of Claim 1 (i.e., to
`
`interpret “temporarily”), it is appropriate to consider the temporal language directly
`
`adjacent to “temporarily” in Claim 1. Here, the sensible meaning for “temporarily” in
`
`Claim 1, based on language in the claim adjacent and following “temporarily,” is that
`
`the IVM is temporarily stored until the IVM is later delivered to the selected recipient.
`
`16
`
`

`

`B. Ground 1 Fails Because Petitioner Fails to Provide Prima Facie
`Evidence that Griffin plus Zydney Renders Obvious Claims 1, 3–6, 9,
`and 40–43.
`The Petitioner and the Petitioner’s expert admit that:
`
`Griffin does not explicitly disclose temporarily storing a message if a
`recipient is unavailable, as determined based on status 702 [at the server
`complex 204] and delivering the stored message to the recipient once
`the recipient becomes available, as determined based on 702 [at the
`server complex 204].
`
`EX1002, p. 69; see also Pet. p. 25 (“Griffin does not, however . . . would have been
`
`obvious . . . to modify Griffin’s . . . status 702”).
`
`To cure the deficiencies of Griffin, Petitioner relies on Zydney which, for such
`
`purposes, is cumulative to the art cited in the application from which the ʼ890 Patent
`
`was granted.
`
`1.
`
`The Board Already Rejected Petitioner’s Argument
`Concerning Zydney Alleged Disclosure of the Claim Feature .
`The Board already considered and rejected Petitioner’s argument concerning
`
`Zydney’s disclosure of the referenced claim feature where Zydney’s voice containers
`
`were determined not to disclose the claimed storing. In particular, in the 1523 Petition
`
`denial, the Board stated the following:
`
`[F]or challenged independent claims 1 and 40—and also, therefore, all
`challenged dependent claims— Petitioner explicitly relies on Zydney’s
`voice container storing not only the underlying voice data or message
`but also “one or more recipient’s code 304,” i.e., a voice data properties
`17
`
`

`

`component that identifies the selected recipients. Pet. 35–36, 41
`(quoting Ex. 1003, 2:19, 12:6–8, 23:2–10, 34:4–8, Fig. 3); Ex. 1003,
`23:1–4, Fig. 3; see Pet. 49–51; Ex. 1002 ¶¶ 111, 124, 182. In particular,
`Petitioner alleges
`that Zydney
`teaches
`the “transmitting” and
`“receiving” limitations of claims 1 and 40, which require the client
`“transmitting” and the server “receiving” “the selected recipients and
`the instant voice message therefor,” by arguing that Zydney’s “voice
`container – which includes,” or “stores,” “both” “the identity of the
`selected recipients and the instant voice message –” is “transmitted by
`the client” to the central server. Pet. 35–36, 41, 49–51; Ex. 1001, 23:58–
`64, 28:27–31. Accordingly,
`in
`the context of Petitioner’s
`obviousness assert