Trials@uspto.gov
`Tel: 571-272-7822
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`
`
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`
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` Paper # 8
`
`
` Entered: March 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01558
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper # 8
`
`
` Entered: March 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01558
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2019-01558
`Patent 8,724,622 B2
`
`
`INTRODUCTION
`I.
`Microsoft Corporation (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1, 2, 9, 36, and 37 of U.S. Patent No. 8,724,622 B2
`(Ex. 1001, “the ’622 patent”). Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We review the Petition under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that
`follow, we determine Petitioner has not established a reasonable likelihood
`that it would prevail in showing the unpatentability of any challenged claim.
`Therefore, we deny the Petition for an inter partes review.
`
`II. BACKGROUND
`
`A. Related Matters
`Petitioner indicates that the ’622 patent is asserted in Uniloc 2017
`LLC v. Microsoft Corp., No. 8:19-cv-00780 (C.D. Cal.), as well as in
`thirty-four district court actions filed in the Eastern District of Texas.
`Pet. viii–xi; see also Prelim. Resp. 10–11; Paper 5, 2 (“PO Mand. Notice”)
`(identifying a subset of those actions).
`Concurrently with the filing of the instant Petition, Petitioner
`additionally filed a petition requesting inter partes review of claim 5 of the
`’622 patent. IPR2019-01559, Paper 1.
`The ’622 patent also has been the subject of thirteen previous petitions
`for inter partes review filed by other petitioners, four of which petitions
`resulted in final written decisions in which certain claims of the ’622 patent
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`were held to be unpatentable. See IPR2017-01667, Paper 37 (PTAB Jan. 16,
`2019) (“1667/1668 Final Dec.”; also filed as Paper 35 in IPR2017-01668)
`(concluding that claims 3, 6–8, 10–35, 38, and 39 of the ’622 patent are
`unpatentable, but that claims 4 and 5 had not been shown to be
`unpatentable); IPR2017-01797, Paper 32 (PTAB Jan. 31, 2019) (“1797/1798
`Final Dec.”; also filed as Paper 32 in IPR2017-01798) (concluding that
`claims 3, 4, 6–8, 10–19, 21–35, 38, and 39 of the ’622 patent are
`unpatentable). Those decisions were appealed to the United States Court of
`Appeals for the Federal Circuit. See IPR2017-01667, Paper 40; IPR2017-
`01668, Papers 39, 41; IPR2017-01797, Paper 35; IPR2017-01798, Paper 35.
`The appeal from IPR2017-01667 and IPR2017-01668 remains pending,
`whereas the decision in IPR2017-01797 and IPR2017-01798 has been
`vacated by the Federal Circuit and remanded to the Board for proceedings
`consistent with the court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019). Uniloc 2017 LLC v. Samsung Elecs. Am.,
`Inc., No. 2019-2165, Document 29 (Fed. Cir. Feb. 27, 2020).
`
`B. The ’622 Patent
`The ’622 patent, titled “System and Method for Instant VoIP
`Messaging,” relates to Internet telephony, and more particularly, to instant
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`Ex. 1001, code (54), 1:18–22. The ’622 patent acknowledges that “[v]oice
`messaging” and “instant text messaging” in both the VoIP and public
`switched telephone network environments were previously known. Id.
`at 2:22–46. In prior art instant text messaging systems, according to the
`’622 patent, a server would present a user of a client terminal with a “list of
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`persons who are currently ‘online’ and ready to receive text messages,” the
`user would “select one or more” recipients and type the message, and the
`server would immediately send the message to the respective client
`terminals. Id. at 2:34–46. According to the ’622 patent, however, “there is
`still a need in the art for . . . a system and method for providing instant VoIP
`messaging over an IP network,” such as the Internet. Id. at 1:18–22, 2:47–
`59, 6:47–49.
`In one embodiment, the ’622 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1001,
`6:22–24.
`
`
`As illustrated in Figure 2, local packet-switched IP network 204,
`which may be a local area network (“LAN”), “interconnects” IVM
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`clients 206, 208 and legacy telephone 110 to local IVM server 202.
`Ex. 1001, 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202
`enables instant voice messaging functionality over network 204. Id. at 7:61–
`65.
`
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Ex. 1001, 7:57–59, 7:65–8:4. IVM
`client 208 then transmits the selections to IVM server 202 and “records the
`user’s speech into . . . digitized audio file 210 (i.e., an instant voice
`message).” Id. at 8:4–11.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Ex. 1001, 8:15−29. “[O]nly the
`available IVM recipients, currently connected to . . . IVM server 202, will
`receive the instant voice message.” Id. at 8:33−34. IVM server 202
`“temporarily saves the instant voice message” for any IVM client that is “not
`currently connected to . . . local IVM server 202 (i.e., is unavailable)” and
`“delivers it . . . when the IVM client connects to . . . local IVM server 202
`(i.e., is available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the
`instant voice message, the recipients can audibly play the message. Id.
`at 8:29–32.
`The ’622 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:32−35. The specification states that the ‘“intercom
`mode’ represents real-time instant voice messaging.” Id. at 11:35−36. In
`this mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
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`Id. at 11:36−39. Successive portions of the instant voice message are
`written to the one or more buffers. Id. at 11:41−49. The content of each
`such buffer is, as it fills, automatically transmitted to the IVM server for
`transmission to the one or more IVM recipients. Id. Buffering is repeated
`until the entire instant voice message has been transmitted to the IVM
`server. Id. at 11:54−58.
`
`C. Illustrative Claims
`Of the challenged claims, only claim 1 is independent. Challenged
`claim 2 depends from claim 1; claim 9 depends from independent claim 3;
`and claims 36 and 37 depend from independent claim 27. Claims 1, 9, and
`36 are illustrative of the challenged claims and are reproduced below along
`with independent claims 3 and 27, in italics, for context.
`1. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface;
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems; and
`a user database storing user records identifying users of the
`plurality of instant voice message client systems, wherein
`each of the user records includes a user name, a password
`and a list of other users selected by a user.
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
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`
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`9. The system according to claim 3, wherein the communication
`platform system assigns an IP address to each of the instant voice
`message client systems when the communication platform receives
`a connection request from each of the instant voice message client
`systems.
`27. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`wherein the instant voice messaging application includes a
`document handler system for attaching one or more files to
`the instant voice message.
`36. The system according to claim 27, wherein the instant voice
`message application communicates in an intercom mode when a
`recipient of the instant voice message is currently available to
`receive the instant voice message and communicates in a record
`mode when the recipient of the instant voice message is currently
`unavailable to receive the instant voice message.
`Ex. 1001, 23:62-24:9, 24:12–27, 24:53-57, 26:17–30, 27:1-7.
`
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`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts three grounds of unpatentability (Pet. 1):
`
`Challenged Claim(s) 35 U.S.C. §
`
`References
`
`9, 36, 37
`
`1
`
`2
`
`103(a)
`
`103(a)
`
`103(a)
`
`Zydney,1 Shinder2
`
`Zydney, Shinder, Kirkwood3
`Zydney, Shinder, Kirkwood,
`Boneh4
`
`Petitioner also relies on a Declaration of Tal Lavian, Ph.D., filed as
`Exhibit 1003.
`
`III. DISCUSSION
`A. Claim Construction
`For inter partes reviews filed on or after November 13, 2018, we
`apply the same claim construction standard used by Article III federal courts
`and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny. 83 Fed. Reg. 51340 (Oct. 11,
`2018). Because the instant Petition was filed on September 13, 2019, we
`apply that standard here. Accordingly, we construe each challenged claim of
`
`
`1 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (filed with line
`numbers added by Petitioner as Exhibit 1004).
`2 Excerpts from Debra Littlejohn Shinder, Computer Networking Essentials
`(2002) (Ex. 1005).
`3 Kirkwood, GB 2 365 664 A, published Feb. 20, 2002 (Ex. 1006).
`4 Boneh et al., US 2002/0112167 A1, published Aug. 15, 2002 (Ex. 1007).
`
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`the ’622 patent generally to have “the ordinary and customary meaning of
`such claim as understood by one of ordinary skill in the art and the
`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019).
`Only terms that are in controversy need to be construed, and then only to the
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(applying Vivid Techs. in the context of an inter partes review).
`Petitioner proposes constructions for the terms “instant voice
`message,” as recited in claims 3 and 27; “attaching one or more files to the
`instant voice message,” as recited in claim 27; “instant voice messaging
`application,” as recited in claim 27; “client platform system,” as recited in
`claim 27; and “instant voice message client system,” as recited in claims 1
`and 3. Pet. 11−22. Patent Owner points out alleged deficiencies in
`Petitioner’s proposed constructions of the first three of those terms and
`proposes alternative constructions for each. Prelim. Resp. 23−25. Because
`our determination not to institute review in this case does not turn on the
`construction of any of the terms for which the parties offer a construction,
`we do not construe expressly any term.
`
`B. Analysis of Asserted Grounds of Unpatentability
`1. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art;5 and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.6 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving
`obviousness, a petitioner cannot employ mere conclusory statements. The
`petitioner must instead articulate specific reasoning, based on evidence of
`record, to support the legal conclusion of obviousness.” In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the
`asserted grounds with the principles stated above in mind.
`
`
`5 Citing the testimony of Dr. Lavian, Petitioner asserts that a person of
`ordinary skill in the art for purposes of the ’622 patent “would have
`possessed at least a bachelor’s degree in computer science, computer
`engineering, or electrical engineering” with “at least two years of experience
`in the development and operation of network communication systems (or
`equivalent degree or experience).” Pet. 9 (citing Ex. 1003 ¶ 18). Patent
`Owner argues that “Petitioner’s proposed level of ordinary skill in the art is
`improper because it lacks an upper bound in both the factor of educational
`achievement and the factor of work experience,” but notwithstanding those
`defects, “Patent Owner does not provide its own definition because, even
`applying the definitions proposed in the Petition, Petitioner has not met its
`burden.” Prelim. Resp. 11-12. For purposes of this Decision and to the
`extent necessary, we adopt Petitioner’s assessment.
`6 Patent Owner does not contend in its Preliminary Response that any such
`secondary considerations are present.
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`
`2. Obviousness over Zydney and Shinder (Claims 9, 36, and
`37)
`a. Overview of Zydney
`Zydney, titled “Method and System for Voice Exchange and Voice
`Distribution,” relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
`Ex. 1004, codes (54), (57), 1:4–5. While acknowledging that e-mail and
`instant messaging systems were well-known text-based communication
`systems utilized by users of online services and that it was possible to attach
`files for the transfer of non-text formats via those systems, Zydney states
`that the latter technique “lack[ed] a method for convenient recording,
`storing, exchanging, responding and listening to voices between one or more
`parties, independent of whether or not they are logged in to their network.”
`Id. at 1:7–17. Zydney thus describes a method in which “voice
`containers”—i.e., “container object[s] that . . . contain[] voice data or voice
`data and voice data properties”—can be “stored, transcoded and routed to
`the appropriate recipients instantaneously or stored for later delivery.” Id.
`at 1:19–22; 12:6–8. Figure 1 of Zydney is reproduced below.
`
`11
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`Figure 1, above, illustrates a high-level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Ex. 1004,
`10:19–20. Referring to Figure 1, system 20 allows software agent 22, with a
`user interface, in conjunction with central server 24 to send messages using
`voice containers illustrated by transmission line 26 to another software
`agent 28, as well as to receive and store such messages, in a “pack and send”
`mode of operation. Id. at 10:20–11:1. Zydney explains that a pack and send
`mode of operation “is one in which the message is first acquired,
`compressed and then stored in a voice container 26 which is then sent to its
`destination(s).” Id. at 11:1–3. The system has the ability to store messages
`both locally and centrally at server 24 whenever the recipient is not available
`for a prescribed period of time. Id. at 11:3–6.
`
`12
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`
`In the use of Zydney’s system and method, the message originator
`selects one or more intended recipients from a list of names that have been
`previously entered into the software agent. Ex. 1004, 14:17–19. The agent
`permits distinct modes of communication based on the status of the
`recipient, including the “core states” of whether the recipient is online or
`offline and “related status information” such as whether the recipient does
`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
`software agent offers the originator alternative ways to communicate with
`the recipient, the choice of which can be either dictated by the originator or
`automatically selected by the software agent, according to stored rules. Id.
`at 15:3–6. If the recipient is online, the originator can either begin a
`real-time “intercom” call, which simulates a telephone call, or a voice instant
`messaging session, which allows for an interruptible conversation. Id.
`at 15:8–10. If the recipient is offline, the originator can either begin a voice
`mail conversation that will be delivered the next time the recipient logs in or
`can be delivered to the recipient’s e-mail as a digitally encoded
`Multipurpose Internet Mail Extension (“MIME”) attachment. Id. at 15:15–
`17. Zydney explains that the choice of the online modes “depends on the
`activities of both parties, the intended length of conversation and the quality
`of the communications path between the two individuals, which is generally
`not controlled by either party,” and that the choice of the offline delivery
`options “is based on the interests of both parties and whether the recipient is
`sufficiently mobile that access to the registered computer is not always
`available.” Id. at 15:10–14, 15:17–19.
`Once the delivery mode has been selected, the originator digitally
`records messages for one or more recipients using a microphone-equipped
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`device and the software agent. Ex. 1004, 16:1–3. The software agent
`compresses the voice and stores the file temporarily on the PC if the voice
`will be delivered as an entire message. Id. at 16:3–4. If the real-time
`“intercom” mode has been invoked, a small portion of the digitized voice is
`stored to account for the requirements of the Internet protocols for
`retransmission and then transmitted before the entire conversation has been
`completed. Id. at 16:4–7. Based on status information received from the
`central server, the agent then decides whether to transport the voice
`container to a central file system and/or to send it directly to another
`software agent using the IP address previously stored in the software agent.
`Id. at 16:7–10. If the intended recipient has a compatible active software
`agent online after log on, the central server downloads the voice recording
`almost immediately to the recipient. Id. at 16:10–12. The voice is
`uncompressed and the recipient can hear the recording through the speakers
`or headset attached to its computer. Id. at 16:12–14. The recipient can reply
`in a complementary way, allowing for near real-time communications. Id.
`at 16:14–15. If the recipient’s software agent is not online, the voice
`recording is stored in the central server until the recipient’s software agent is
`active. Id. at 16:15–17. “In both cases, the user is automatically notified of
`available messages once the voice recordings have been downloaded to
`storage on their computer.” Id. at 16:17–19. The central server coordinates
`with software agents on all computers continuously, updating addresses,
`uploading and downloading files, and selectively retaining voice recordings
`in central storage. Id. at 16:19–21.
`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Ex. 1004, 19:6–7. Formatting the container
`
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`using MIME format, for example, “allows non-textual messages and
`multipart message bodies attachments [sic] to be specified in the message
`headers.” Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
`
`
`Figure 3, above, illustrates an exemplary embodiment of Zydney’s
`voice container structure, including voice data and voice data properties
`components. Ex. 1004, 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
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`
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
`
`b. Overview of Shinder
`Shinder provides an overview of the “fundamentals of computer
`networking concepts and implementation.” Ex. 1005, xxii.7 According to
`Shinder, it is “becom[ing] vital to business interests that a LAN be able to
`communicate with the outside” and, thus, to connect to a wide area network
`(“WAN”), such as the Internet. Id. at 182.
`
`c. Arguments and Analysis
`(1) Claim 9
`Claim 9 depends from independent claim 3 and further recites
`“wherein the communication platform system assigns an IP address to each
`of the instant voice message client systems when the communication
`platform receives a connection request from each of the instant voice
`message client systems.” Ex. 1001, 24:53–57.
`As mentioned in Section II.A. above, the Board previously held
`claim 3 to be unpatentable, over the combination of Zydney and Shinder in
`IPR2017-01667, as well as over the combination of U.S. Patent
`No. 8,150,922 B2 (“Griffin”) and Zydney in IPR2017-01797. See
`1667/1668 Final Dec. 39–55; 1797/1798 Final Dec. 37–53. In arguing that
`
`
`7 Cited page numbers of Exhibit 1005 refer to the original page numbers of
`Shinder, printed at the top of each page.
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`the subject matter of claim 9 is unpatentable over Zydney and Shinder,
`Petitioner relies for the limitations of base claim 3 on essentially the same
`arguments that were presented for that claim in IPR2017-01667. Pet. 26–42.
`Petitioner relies on disclosures of both Zydney and Shinder as teaching the
`additional limitation recited in claim 9. Pet. 42–45. In particular, Petitioner
`alleges that Zydney discloses that voice containers are “sent using standard
`TCP/IP transport,” that software agents are associated with IP addresses that
`are used to transport voice containers, and that the registration server assigns
`the software agent a “unique address” upon connection, while Shinder
`discloses that “[t]o communicate using TCP/IP, a computer or other network
`device must have a unique IP address” and that IP addresses can be
`automatically assigned using a Dynamic Host Configuration Protocol
`(“DHCP”) server. Pet. 42–44 (citing Ex. 1004, 15:1–2, 15:13–14, 16:7–10,
`23:11–12, 23:18–21; Ex. 1005, 78, 86–88, Fig. 8-3). Based on these
`disclosures, according to Petitioner, a person of ordinary skill in the art
`“would have been motivated to modify the registration server of Zydney to
`assign IP addresses stored in the software agents” and “would have
`understood that Zydney in view of Shinder teaches a communication
`platform system that assigns an IP address to each of the instant voice
`message client systems when the communication platform receives a
`connection request from each of the instant voice message client systems.”
`Pet. 45 (citing Ex. 1003 ¶ 253).
`Patent Owner responds, inter alia, that Petitioner’s arguments
`regarding claim 9 are in conflict with the teachings of Zydney. Prelim.
`Resp. 29–30. In particular, Patent Owner contends, Zydney “makes
`clear . . . that the ‘unique address’ assigned to the software agent by the
`
`17
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`IPR2019-01558
`Patent 8,724,622 B2
`
`registration server (Ex. 1004: 23:18–21) is distinct from the ‘Internet
`address’ that the software agent is ‘currently using for the session’
`(Ex. 1004; 24:21–23).” Id. Patent Owner argues that the former is not “an
`IP address assigned in response to a connection request,” as Petitioner
`contends, but is instead a permanent address that is “used for all
`communications from the software agent to the server, it [sic] components
`and between other software agents.” Id. at 30 (citing Ex. 1004, 23).
`Further, Patent Owner argues, notwithstanding Petitioner’s contention
`that Zydney discloses that software agents are associated with IP addresses
`that are used to transport voice containers, Zydney is clear that such IP
`addresses are not those of the software agents but are instead IP addresses of
`recipient devices. Id. at 30–31 (citing Ex. 1004, 15:1–2, 16:7–10). Thus,
`whereas Zydney discloses that a software agent may store an IP address
`associated with a recipient device “to enable direct, peer-to-peer
`communications,” Zydney does not disclose that software agents are
`themselves assigned IP addresses from a server. Id. at 31–32 (quoting
`Ex. 1004, 15:13–14) (citing Ex. 1004, 16:7–10). Indeed, Patent Owner
`points out, Zydney further discloses that the “software agent will notify the
`server with the Internet address that they are currently using for the session”
`and similarly that, during the log on process, the software agent “send[s] a
`copy of the currently logged on Internet address to the notification server,”
`rather than the server assigning the Internet address as claim 9 requires. Id.
`at 32 (quoting Ex. 1004, 24:21–22, 31:13–15).
`Having considered the parties’ respective arguments and the cited
`evidence, we agree with Patent Owner that Petitioner’s arguments are
`inconsistent with Zydney’s teachings and conclude that Petitioner has not
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`IPR2019-01558
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`shown a reasonable likelihood of prevailing on its allegations regarding
`claim 9.
`In mapping the combination of Zydney and Shinder to base claim 3,
`Petitioner contends that the claimed “plurality of instant voice message
`client systems” are devices running “software agents” 22 and 28, as shown
`in Figure 1 of Zydney, and that “[t]he claimed ‘communication platform
`system’ in Zydney is [a] system within the central server that tracks and
`maintains th[e] status” of the software agents. Pet. 35 (citing Ex. 1004,
`Fig. 1A), 37 (citing Ex. 1003 ¶¶ 236, 237; Ex. 1004, 13:12–14, 14:6–9).
`Applying this mapping to claim 9 would require that Zydney’s central server
`(i.e., the “communication platform system,” in the parlance of the claim)
`assigns an IP address to each of the devices running software agents (i.e., the
`claimed “instant voice message client systems”) when the server receives a
`connection request from the devices. See claim 9. But as Patent Owner
`points out, Zydney instead discloses that the software agent informs the
`server of the Internet address to be used for a session (Ex. 1004, 24:21–22),
`and also that the software agent sends a copy of the currently logged on
`Internet address to the notification server, in particular, during the
`authentication process. Prelim. Resp. 32; Ex. 1004, 24:21–22. Petitioner
`specifically identifies the “notification server” as part of the claimed
`“communication platform system.” See Pet. 37 (“More specifically, the
`‘communication platform system’ in Zydney includes (a) the ‘notification
`server’ of the central server . . . .”). Although, as cited by Petitioner, Zydney
`also discloses that “[t]he registration server assigns the software agent a
`unique address” that is “used for all communications from the software
`agent to the server, it[s] components and between other software agents”
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`(Ex. 1004, 23:18–20), we find no teaching or suggestion in the combination
`of Zydney and Shinder of the server assigning “an IP address” to the
`software agent (or to a device running the software agent). We also find no
`persuasive support for Petitioner’s contrary conclusions in Dr. Lavian’s
`testimony, which merely repeats the arguments in the Petition and cites the
`same portions of Zydney and Shinder. Compare Ex. 1003 ¶¶ 249–253
`(citing, e.g., Ex. 1004, 15:1–2, 15:13–14, 16:7–10, 23:11–12, 23:18–21;
`Ex. 1005, 78, 86–88, Fig. 8-3), with Pet. 42–45 (same).8
`Accordingly, we conclude that Petitioner has not shown a reasonable
`likelihood of prevailing with respect to claim 9.
`(2) Claims 36 and 37
`Claim 36 depends from independent claim 27 and further recites
`“wherein the instant voice message application communicates in an intercom
`mode when a recipient of the instant voice message is currently available to
`receive the instant voice message and communicates in a record mode when
`the recipient of the instant voice message is currently unavailable to receive
`the instant voice message.” Ex. 1001, 27:1–7. Claim 37 depends from
`claim 36 and further recites “wherein the instant voice message application
`
`
`8 Both Dr. Lavian and Petitioner also identically cite an excerpt from
`R. Droms, Request for Comments 2131, Standards Track, Dynamic Host
`Configuration Protocol, Internet Engineering Task Force Network Working
`Group (1997) (Ex. 1009, “RFC 2131”) “to demonstrate the state of the art”
`in support of the contention that “Shinder describes well-established
`practices for IP address assignment that would have been readily apparent”
`to a person of ordinary skill in the art. Ex. 1003 ¶ 252 & n.15 (citing
`Ex. 1009, 12–17); Pet. 45 & n.9 (same). Dr. Lavian does not testify, and
`Petitioner does not argue, that RFC 2131 would have taught or suggested
`further modification of the Zydney/Shinder combination.
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`utilizes the intercom mode as a default communication mode.” Id. at 27:8–
`10.
`
`As mentioned in Section II.A. above, the Board previously held
`claim 27 to be unpatentable, both over the combination of Zydney and
`Shinder in IPR2017-01667 and over the combination of Griffin and Zydney
`in IPR2017-01797. See 1667/1668 Final Dec. 55-64; 1797/1798 Final
`Dec. 53–58. In arguing that the subject matter of claim 36 is unpatentable
`over Zydney and Shinder, Petitioner relies for the limitations of base
`claim 27 on essentially the same arguments that were presented for similar
`limitations of claim 3 and on arguments that were presented for claim 27 in
`IPR2017-01667. Pet. 46-53. With respect specifically to claim 36,
`Petitioner cites disclosure that Zydney’s software agent (i.e., the recited
`“instant voice message application”) “permits a number of distinct modes of
`communication based on th
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