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 IPR2018-00748
`U.S. Patent 8,199,747
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
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`
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`

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`
`INTRODUCTION ........................................................................................ 1
`I.
`RELATED MATTERS ................................................................................. 1
`II.
`III. THE ’747 PATENT ...................................................................................... 2
`Effective Filing Date of the ’747 Patent .............................................. 2
`
`A.
`
`B. Overview of the ’747 Patent ............................................................... 2
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 4
`V.
`PROCEDUAL BACKGROUND .................................................................. 5
`VI. CLAIM CONSTRUCTION .......................................................................... 6
`VII. THE PETITIONER SHOULD BE ESTOPPED
`FROM TAKING CONTRARY POSITIONS ............................................... 9
`VIII. THE PETITION FAILS TO PROVE CLAIM 2 IS OBVIOUS ................... 10
`A. Griffin admittedly fails to disclose “receiving a list of
`nodes within the packet-switched network, the list of
`nodes including a connectivity status of each node, said
`connectivity status being available and unavailable” ......................... 10
`Zydney does not cure Griffin’s admitted deficiencies
`concerning “receiving a list of nodes within the
`packet-switched network, the list of nodes including a
`connectivity status of each node, said connectivity status
`being available and unavailable …” .................................................. 15
`IX. DEPENDENT CLAIM 12 IS NOT OBVIOUS ........................................... 19
`X.
`THE BOARD PREVIOUSLY FOUND THE PETITION FAILS TO
`SUFFICIENTLY ESTABLISH THAT CLAIMS 1is OBVIOUS ................ 20
`XI. CONCLUSION .......................................................................................... 24
`
`
`
`B.
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`Table of Contents
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`IPR2018-00748
`U.S. Patent 8,199,747
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`List of Exhibits
`
`
`Description
`Declaration of William C. Easttom II
`U.S. Pat. App. Pub. No. 2004/0128356 (“Bernstein”)
`Excerpts from The American Heritage Dictionary (Houghton
`Mifflin Co. 3rd Ed. 1992)
`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
`
`Exhibit No.
`2001
`2002
`2003
`
`2004
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`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. §42.107, Uniloc Luxembourg S.A. (the “Patent Owner”)
`submits this Patent Owner’s Preliminary Response to the Joinder Petition for Inter
`Partes Review (“Pet.” or “Petition”) of United States Patent No. 8,199,747 B2 (“the
`‘747 patent” or “EX1001”) filed by Facebook, Inc. and WhatsApp Inc. (“Joinder
`Petitioners”) in IPR2018-00748.
`The Petition challenges claims 2 and 12of the ’747 patent under 35 U.S.C. § 103
`over Griffin (EX1005) in view of Zydney (EX1006). In view of the reasons presented
`herein, the Petition should be denied in its entirety as failing to prove obviousness. In
`this matter and in related matters, the Board has already considered arguments presented
`in the Petition and found them insufficient to prove unpatentability. Moreover,
`Petitioner should be estopped from arguing the opposite of what it argued in earlier
`proceedings.
`
`II. RELATED MATTERS
`In related matter IPR2017-01800, the Board noted in its original Institution
`Decision the importance of “maintain[ing] consistency across proceedings” and further
`noted “we are guided here by our analysis in the concurrently filed Decision on
`Institution concerning Case IPR2017-01799, concerning U.S. Patent No. 8,199,747,
`which is related to the ’723 patent and includes” challenged claims that recite certain
`limitations analogous to those at issue here. IPR2017-01800, Paper 8 at 22. As will be
`shown, the Board’s findings in related matters IPR2017-01257 and IPR2017-02085 are
`also particularly instructive here.1
`
`1 The Petition appears to provide a comprehensive list of inter partes review
`proceedings concerning this family of patents.
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`III. THE ’747 PATENT
`A.
`Effective Filing Date of the ’747 Patent
`The ’747 patent is titled “System and Method for Instant VoIP Messaging.” The
`’747 patent issued June 12, 2012 from United States Patent Application No. 12/398,076,
`which is a Continuation of Application No. 10/740,030, filed on Dec. 18, 2003, now
`Pat. No. 7,535,890.
`The ’747 patent is in a family of patents including United States Patent Nos.
`7,535,890 (“the ‘890 Patent”); 8,243,723 (“the ‘723 Patent”); 8,724,622 (“the ‘622
`Patent”); and 8,995,433 (“the ‘433 Patent”). The diagram below shows how this family
`of patents is interrelated.
`
`
`
`B. Overview of the ’747 Patent
`The ’747 patent notes that conventional circuit-switched communications
`enabled traditional telephony yet had a variety of technical disadvantages that limited
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`developing other forms of communication over such networks. According to the ’747
`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.”
`Ex. 1001, 1:25–30.
`The ʼ747 patent expressly distinguishes circuit-switched networks from packet-
`switched networks (e.g., the Internet) at least in that 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 1:31–33. 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 1:62–2:17. The
`conversion effected by media gateways highlights the fact that packetized data carried
`over packet-switched networks are different from and are incompatible with an audio
`signal carried over a dedicated circuit-switched circuit. Id. at 1:25–30.
`The ʼ747 patent further notes that, notwithstanding the advent of instant text
`messages, at the time of the claimed inventions there was no similarly convenient analog
`to leaving an instant voice message over a packet-switched network. Id. at 2:18–49.
`Rather, “conventionally, 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
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`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 2:22–29.
`In certain aspects, the ʼ747 patent discloses that a user-accessible client is
`configured for instant voice messaging using a direct communication over a packet-
`switched network (e.g., through an Ethernet card). EX1001, 12:5–8. 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 8:4–18, FIG. 2.
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner alleges through its declarant, Zygmunt Haas, that “a person of ordinary
`skill in the art at the time of the alleged invention, which I was asked to assume was late
`2003, would have had at least a Bachelor’s degree in computer science, computer
`engineering, electrical engineering, or the equivalent and at least two years of work
`experience in the relevant field, e.g., network communication systems. More education
`could have substituted for practical experience and vice versa.” Pet. 7 (citing EX1002
`¶15).
`
`Uniloc’s declarant, Chuck Easttom, testified that a person of ordinary skill in the
`art is “someone with a baccalaureate degree related to computer technology and 2 years
`of experience with network communications technology, or 4 years of experience
`without a baccalaureate degree.” EX2001 ¶ 16.
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`As should be apparent from his declaration and attached curriculum vitae,
`Mr. Easttom’s qualifications and experience exceed those of the hypothetical person
`having ordinary skill in the art defined above. Nevertheless, his analysis and opinions
`regarding the ’747 patent have been based on the perspective of a person of ordinary
`skill in the art as of December 2003. Id.
`
`V.
`
`PROCEDUAL BACKGROUND
`The present joinder Petition challenges claims 2 and 12of the ’747 patent under
`35 U.S.C. § 103 over Griffin (EX1005) in view of Zydney (EX1006). The Petitioner
`acknowledges that it previously challenged the same claims using the same Zydney
`reference, but applied U.S. Patent No. U.S. Patent No. 6,750,881 to Barry Appelman
`(“Appelman”) instead of Griffin. See Paper No. 3 at 3.
`Claim2 is the the only independent claims challenged in the joinder Petition. In
`the Institution Decision for IPR2017-1799 (to which this Petition joins) (Paper 9), the
`Board granted institution only on claims 2 and 12. The Board denied institution of the
`challenges against claims 1, 3, and 13, finding that “Petitioner has not established
`sufficiently that the combination of Griffin and Zydney teaches or suggests” those
`claims. Paper 9 at 22. In response to SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10
`(U.S. Apr. 24, 2018), the Board modified its Institution Decision “to institute on all of
`the challenged claims on the ground presented in the Petition.” Paper 16 at 2.
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`VI. CLAIM CONSTRUCTION
`Although the Petition includes a section with the header “Claim Construction,”
`that section does not identify any term as allegedly requiring construction and it
`provides no specific claim construction arguments or allegedly supportive evidence.
`Pet. 16. Elsewhere in the Petition, in a footnote, Petitioner asks the Board to construe
`“node” as “potential recipient.” Pet. at 45–46, n.11. In doing so, Petitioner does not
`clearly articulate whether it considered “potential recipient” to refer exclusively to
`device or, instead, to either a device or a person. Indeed, Petitioner makes no attempt to
`defend or explain its construction.2 Nevertheless, in applying its claim construction
`position, Petitioner first points to “mobile terminal 100 in Griffin’s system/process.” Id.
`That mapping breaks down when Petitioner later attributes to Griffin’s mobile terminal
`100 a description that, instead, applies to a person who Griffin refers to as the
`“recipient.”
`Petitioner’s inconsistent mapping highlights a fatal deficiency in the Petition:
`Petitioner relies on an interpretation that requires unreasonably broadening “node” to
`encompass a person. Petitioner has the burden of proof, yet it fails to defend such an
`unreasonably expansive interpretation. Petitioner’s application of the art injects a claim
`construction dispute that warrants resolution by the Board.
`
`
`2 Petitioner should not be allowed to lie behind the log and save its allegedly supportive
`claim construction arguments (to the extent it has any) for its reply brief only. Such
`gamesmanship circumvents the word-count limitation of a Petition. It also severely
`prejudices Patent Owner by forcing it to only guess as to the (waived) arguments
`Petitioner may untimely attempt to raise in its reply in defending an unsupported and
`unexplained claim construction applied in the Petition.
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`In the context of computer communications networks, “node” is a term of art with
`a well-known plain and ordinary meaning. EX2001 ¶¶ 23–26. Persons having ordinary
`skill in the art would have understood that, in the context of network communications,
`the term “node” refers to a device (e.g., a computer, a computer system, or another
`device) within a network. Id. That plain and ordinary meaning is consistent with the use
`of “node” in independent claim 2. Id.
`Among other definitive limitations, the term “node” (in both singular and plural
`form) appears in the following context in claim 1: “receiving a list of nodes within the
`packet-switched network, the list of nodes including a connectivity status of each node,
`said connectivity status being available and unavailable, wherein a node within the list
`is adapted to be selected as a recipient of an instant voice message” and “displaying said
`list of nodes.” EX1001 at 24:1–8 (emphasis added).
`Thus, the term “node” is recited in the context of being “within the packet-
`switched network,” as having a “connectivity status” itself, and as being selectable for
`receiving delivery of the instant voice message. This explicit context confirms the
`claimed “node” is a device within a packet-switched network, consistent with the plain
`and ordinary meaning. EX2001 ¶¶ 23–26.3
`Consistent with the claim language, the remainder of the ʼ747 patent specification
`refers to a “recipient of the instant voice message” (i.e., the selected node) as a receiving
`device operating within a network. See, e.g., EX1001, 2:66–67 (“the selected recipients
`
`3 To be clear, a “software agent” may be a part of a network device, but it is not a “node”
`as claimed. A software agent cannot be a “node” at least because device hardware is
`required to connect to the network (be it hardwired or wireless). Hardware is also
`required to process the electronic signals that a “node” receives before any software
`agent can process the message. EX2001 ¶ 25.
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`being enabled to audibly play the instant voice message.”); 3:53–54 (“one or more
`external recipients connected to an external network outside the local network”); 7:61–
`65 (“the IVM client 208 displays a list of one or more IVM recipients on its display 216
`. . . . The user operates the IVM client 208”); 8:25–28 (“The one or more recipients are
`enabled to display an indication that the instant voice message has been received and
`audibly play the instant voice message to an associated user.”); 8:30–32 (“It is noted
`that if a recipient IVM client is not currently connected to the local IVM server 202 (i.e.,
`is unavailable) . . . .”).
`In addition to this intrinsic evidence, the 1992 edition of the American Heritage
`Dictionary of the English Language defines “node” in the computer network context as
`“[a] terminal in a computer network.” EX2001 ¶ 26 (citing EX2003 at 3). This
`dictionary definition is consistent with Mr. Easttom’s opinion that “‘node’ as a known
`term of art and refer[s] to a device rather than a person or purely software.” Id.
`As will be shown, Petitioner’s application of the cited art requires unreasonably
`expanding the scope of “node” to encompass a person. Such an erroneous claim
`interpretation provides an independent basis to deny the Petition. See Mentor Graphics
`Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11
`(P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669
`Fed. Appx. 569 (Fed. Cir. 2016) (denying Petition as tainted by reliance on an incorrect
`claim interpretation).
`
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`U.S. Patent 8,199,747
`VII. THE PETIONER SHOULD BE ESTOPPED FROM TAKING
`CONTRARY POSITIONS
`As introduced above in the procedural section, this is not the first proceeding
`where Petitioner has advanced the Zydney reference. In IPR2017-01257, with reference
`to Claim 2, Petitioner acknowledged that the Zydney reference did not disclose the claim
`features of “receiving a list of nodes within the packet-switched network, the list of
`nodes including a connectivity status of each node, said connectivity status being
`available and unavailable …”
`In particualr, in its decision denying institution, the Board observed that
`Petitioners and their declarant acknowledge, at a minimum, “that Zydney does not
`indicate whether the list of names and their respective connectivity statuses are brought
`together in a single unitary ‘list of nodes.’” IPR2017-01257, Paper 8 at 27; see also id.
`at 26 (“Petitioner contends that Zydney teaches or suggests all limitations of
`independent claim 2, with the exception of “receiving a list of nodes within the packet-
`switched network, the list of nodes including a connectivity status of each node, said
`connectivity status being available and unavailable, wherein a node within the list is
`adapted to be selected as a recipient of an instant voice message[.]”).
`Rather, in the earlier proceeding, the Petitioner instead argued that Appleman
`allegedly cured the conceded deficiencies of Zydney. In rejecting the proposed
`combination as failing to present even a prima facie case of obviousness, the Board held
`“we do not understand Zydney or Appleman to disclose that the list of names or buddy
`list, respectively, is received with a connectivity status of each potential recipient.”
`IPR2017-01257, Paper 8 at 30.
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` Now, contrary to the Board’s prior findings and admitting concessions,
`Petitioners propose joining a petition that states the opposite – that Zydney does disclose
`this feature. In particular, the joinder petition concedes that the primary Griffin reference
`does not disclose this claim feature, but looks to Zydney to fill the gaps.
`Petitioner should be estopped from taking such contrary positions.
`
`
`VIII. THE PETITION FAILS TO PROVE CLAIM 2 IS OBVIOUS
`
`A.
`
`To prevail on its sole theory of obviousness, Petitioner “must specify where
`each element of the claim is found in the prior art patents or printed
`publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Petition fails to
`meet this burden. Griffin admittedly fails to disclose “receiving a list of
`nodes within the packet-switched network, the list of nodes including
`a connectivity status of each node, said connectivity status being
`available and unavailable”
`Independent claim 2 recites, among other patentable limitations, “receiving a list
`of nodes within the packet-switched network, the list of nodes including a connectivity
`status of each node, said connectivity status being available and unavailable, wherein a
`node within the list is adapted to be selected as a recipient of an instant voice message.”
`Among other deficiencies, Griffin’s so-called “buddy list” fails to disclose or suggest a
`list of nodes that includes a connectivity status of each node. These deficiencies are
`conceded in the Petition (and they are the purported basis for Petitioner’s reliance on
`Zydney as a secondary reference).
`Griffin describes a buddy list update message 600 that is sent from a server
`complex 204 to a mobile terminal 100. EX1005, 7:42–8:7. The Board stated in its
`original Institution Decision in IPR2017-1799 that “Patent Owner appears to be correct
`that Griffin’s buddy list update message 600 ‘includes a list of names of buddies (i.e.,
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`people)—specifically, full names 503, nicknames 504, and short names 505 for each
`buddy whose status is being updated.’” Paper 9 at 26 n.6 (citing Prelim. Resp. 38 and
`EX2001 ¶ 53). Nevertheless, the Board preliminary held that “on the record before us
`we do not understand [Griffin’s] buddy list update message 600 to identify the status of
`the buddies (i.e., people) identified by those names, but rather the status of mobile
`terminals 100 associated with those buddies.” Id. This latter preliminary finding cannot
`be squared with the disclosure in Griffin and multiple admissions by Petitioner and its
`declarant, as a more fully-developed record will readily show.
`Griffin’s buddy list update message 600 provides the “status” of only the
`identified buddies (i.e., people). For example, Griffin explicitly refers to the “presence
`information of the user” in the following description:
`
`The message broadcaster 303 decomposes the incoming message
`400, and locates the list of recipient identifiers 402. It then queries a
`presence manager 302 to establish the recipients' current status 702
`(i.e., an indicator of whether the recipient is ready to receive the
`particular type of message, speech and/or text messages only, etc.)
`and the terminal's address 703. FIG. 7 illustrates a table with the
`plurality of presence data records 700 contained within the presence
`manager 303. Each presence record 700, comprises the user's
`identifier 701, the current status 702, the current terminal address
`703 (if known), a public display identifier, such as a public nickname
`704 and a public short name 705, and a plurality of other user
`identifiers 706 that subscribe to the presence information of the user
`corresponding to that record.
`EX1005 5:9–22 (emphasis added). The block quotation above unambiguously ties the
`presence information to the user—i.e., to a person.
`Further, the quotation above expressly differentiates the human “recipient” from
`his “terminal” by using the possessive form of “recipient” when referring to status 702
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`and referring, instead, to the possessive form of “terminal” when referring to address
`703: “[i]t then queries a presence manager 302 to establish the recipients' current status
`702 (i.e., an indicator of whether the recipient is ready to receive the particular type of
`message, speech and/or text messages only, etc.) and the terminal's address 703.” Id. at
`5:11–15 (emphasis added).4
`Consistent with the disclosure in Griffin emphasized above, Griffin’s description
`of Figure 6 states that “[w]hen a participant’s presence status 702 changes, the message
`broadcaster 303, [sic] sends a buddy list update message 600 to other users subscribed
`to the participant’s presence status 702.” Id. at 7:39–42. Griffin further describes the
`recipient status field 607 of Figure 6 as being part of the “plurality of user definitions”
`and indicating “the presence status 702” of that user. Id. at 7:47–49. Indeed, Petitioner
`and its declarant both recognize that the status 607 of Griffin is part of a “user definition”
`and thus pertains to a person: “[e]ach user definition includes the recipient’s name 503,
`nickname 504, short name 505, and status 607 (e.g., ‘Available’).” Pet. 48–49 (emphasis
`added); EX1001 ¶ 148. Accordingly, Griffin admittedly confirms in its description of
`Figure 6 that its status 702 identifies the presence of a user/participant—i.e., a person.
`As explained above, the “node” term recited in the claims unambiguously refers
`to a device and not a person. See §VI, supra. Accordingly, conveying presence
`information of a person, as disclosed in Griffin, is distinguishable from “receiving a list
`
`4 The table in FIG. 7 of Griffin includes respective terminal address 703 (if known) for
`each user device. However, the table of FIG. 7 is not sent to any individual user’s mobile
`terminal 100. EX2001 ¶ 53. Rather, the table of FIG. 7 is maintained by the server
`complex 204, and only the status 702 is extracted from the table and inserted into the
`buddy list update message 600 in the recipient status field 607. EX1005 5:15–30, 39–
`49; EX2001 ¶¶ 52–53. For at least this reason, terminal address 703 of FIG. 7 does not
`satisfy “receiving a list of nodes” as claimed. Id. The Petition does not argue otherwise.
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`of nodes within the packet-switched network, the list of nodes including a connectivity
`status of each node”—i.e., the connectivity status of each listed node within the packet-
`switched network.
`To further illustrate the distinction, Griffin does not expressly foreclose the
`possibility that a person may set her status to make certain she is not disturbed during
`certain hours, regardless whether the terminal she is using is connected to its network
`during that timeframe. Indeed, Petitioner’s declarant, Dr. Haas, concedes that Griffin
`does not specify, for example, “whether ‘Off’ indicates that terminal 100 is
`disconnected from server complex 204, that terminal 100 is connected to server complex
`204 but the user of terminal 100 is not accepting messages, or some other state.”
`EX1001 ¶ 163 (emphasis added).5 Petitioner has therefore admitted (including through
`testimony of its declarant) that Griffin fails to expressly or inherently disclose that its
`so-called “status” indicates anything about the connectivity status of the terminal 100
`itself, much less in terms of availability and unavailability.
`Notwithstanding these concessions, the Petition argues in conclusory fashion, and
`without citing to either Griffin or to Dr. Haas’ declaration, that Griffin’s “status 702
`indicates whether a corresponding terminal 100 is available to receive speech chat
`messages.” Pet. 55. Nowhere does Griffin state that its status 702 indicates the
`connectivity status of the terminal 100 itself. Petitioner concedes this point by admitting
`through its declarant that one cannot tell from the disclosure in Griffin whether an “Off”
`
`
`5 Elsewhere in his declaration, Dr. Haas further concedes that “it is not specified [in
`Griffin] whether ‘Available’ simply indicates that terminal 100 is connected to server
`complex 204, that terminal 100 is connected to server complex 204 and that the user of
`terminal is accepting messages, or some other state.” EX1001 ¶ 115.
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`status, for example, indicates that terminal 100 is connected or, instead, is not
`connected. EX1001 ¶ 163; see also n.4, supra (citing id. at ¶ 115).
`Petitioner further highlights the inconsistency of its mapping to the “node” term
`by improperly conflating Griffin’s use of the word “recipient” with Griffin’s explicitly
`distinct “terminal 100.” This is most evident in Petitioner’s repeated reference to a
`nonexistent “recipient terminal 100” element in Griffin. See, e.g., Pet. 12, 13, 49.
`Griffin never uses Petitioner’s contrived couplet “recipient terminal 100.” On the
`contrary, Griffin explicitly equates recipients with users who are targeted for receipt of
`a message, while distinguishing those persons from the terminal devices: “users (i.e.,
`recipients) have a greater degree of control over how chat histories are displayed on
`their terminals.” EX1005, 6:31–33 (emphasis added); see also 5:24–25 (distinguishing
`“terminal 100” from the human “receiver” by stating “. . . sent to the terminal 100 unless
`the receiver (i.e., the receiving user) . . .”); 6:22–23 (distinguishing a human “recipient”
`from her “terminal” by stating “the targeted recipient’s mobile terminal display”); 6:30–
`31 (same); (“a single label 1203 indicating to the user that he or she is talking to the
`identified recipients”); 12:46–47 (“The user moves to the chat history and begins talking
`to the sender (unless the user is the sender) and all other recipients.”). As detailed above,
`Griffin also uses the word “recipient” when describing a person’s presence status. See,
`e.g., the discussion of EX1005, 5:9–22, 7:39–42, and 7:47–49, supra. Accordingly,
`Griffin’s disclosure of a person’s presence status 702 cannot be attributed to, and is
`distinguishable from, a connectivity status of “node” (i.e., a device) within a packet-
`switched network as claimed.
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`The Petition ultimately admits that its obviousness theory relies upon a proposed
`modification of “Griffin’s system/process based on the teachings of Zydney so that status
`702 includes connectivity status information indicating whether terminal 100 is
`‘available’ or ‘unavailable’ based on whether terminal 100 is currently connected to
`server complex 204.” Pet. 55. This concession that a modification of Griffin would be
`necessary to purportedly map onto the claim language at least confirms the disclosure
`within the four corners of Griffin is itself deficient.
`For at least the foregoing reasons, it is uncontested that Griffin itself fails to
`disclose or suggest “the list of nodes including a connectivity status of each node, said
`connectivity status being available and unavailable” as recited in independent claim 2.
`As will be shown, Zydney does not cure the conceded deficiencies of Griffin.
`
`B.
`
`Zydney does not cure Griffin’s admitted deficiencies concerning
`“receiving a list of nodes within the packet-switched network, the list
`of nodes including a connectivity status of each node, said connectivity
`status being available and unavailable …”
`Zydney does not remedy the admitted deficiencies of Griffin for “receiving a list
`of nodes within the packet-switched network, the list of nodes including a connectivity
`status of each node, said connectivity status being available and unavailable, wherein a
`node within the list is adapted to be selected as a recipient of an instant voice message,”
`as recited in independent claim 2.
`The Petition argues that “the relevant disclosure of Zydney” is that “connectivity
`status can be maintained and conveyed to others . . . .” Pet. 55; see also id. at 14 (arguing
`Zydney’s “[c]entral server 24 maintains and conveys the connectivity status of each
`[software] agent in the network. (Id., 13:12-14, 14:6-9, 14:19-22, 30:13-15.). A software
`agent’s connectivity status includes ‘the core states of whether the recipient is online or
`15
`
`

`

`IPR2018-00748
`U.S. Patent 8,199,747
`
`offline . . . .’”). Petitioner’s argument has been tried before and found to be unavailing
`in view of the same proffered evidence.
`The Board previously considered and flatly rejected this same erroneous
`application of Zydney in its decision denying institution in IPR2017-02085. There, the
`Board explained its decision, in part, as follows:
`
`[W]e find that the user’s software agent in Zydney supplies and maintains,
`rather than receives, any list of potential recipients. See Ex. 1004, 14:17–
`19 (“To use the present invention system and method . . . the originator
`selects one or more intended recipients from a list of names that have been
`previously entered into the software agent.”), Fig. 7 (disclosing
`“originator(s): . . . selecting one or more recipients from a list maintained
`by the originator and present visually by the agent”). [T]he portions of
`Zydney cited by Petitioner . . . do not disclose that the software agents
`receive a list used to populate the recipient status field 607 in the buddy
`list update message including both potential recipients and their
`connectivity status.
`IPR2017-02085, Paper 11 at 23-24 (emphasis in original). The Board further explained
`in an appended footnote:
`
`Although Petitioner does not argue that Zydney’s central server’s receipt
`of the list of potential recipients from the software agent might instead
`disclose this limitation, we note that such an argument would also be
`unavailing. To the extent the list of potential recipients is transmitted to—
`and thus received by—Zydney’s central server, Petitioner has not shown
`that Zydney discloses that such a list, as received by the central server,
`includes a connectivity status for each member of the list. Indeed, if the
`user/message originator already had the status of other software agents to
`provide to Zydney’s central server, there would be no apparent reason for
`the central server to “track and maintain the status of all software agents”
`and to convey to the message originator’s software agent “[t]he status of
`all recipients entered into the software agent.” See Ex.