Trials@uspto.gov
`Tel: 571-272-7822
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`
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` Paper 8
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`
` 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 IPR2019-01559
`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 IPR2019-01559
`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
`
`
`
`
`
`
`
`IPR2019-01559
`Patent 8,724,622 B2
`
`
`INTRODUCTION
`I.
`Microsoft Corporation (“Petitioner”) filed a Petition requesting inter
`partes review of claim 5 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 the 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. ix–xii; see also Prelim. Resp. 9–10; 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 claims 1, 2, 9,
`36, and 37 of the ’622 patent. IPR2019-01558, 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
`Challenged claim 5 depends from claim 4, which in turn depends from
`independent claim 3. Claim 5 is reproduced below along with independent
`claim 3 and intermediate claim 4, in italics, for context.
`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
`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.
`4. The system according to claim 3, wherein the instant voice
`message includes an action field identifying one of a predetermined
`set of permitted actions requested by the user.
`
`5. The system according to claim 4, wherein the predetermined set
`of permitted actions includes at least one of a connection request, a
`disconnection request, a subscription request, an unsubscription
`request, a message transmission request, and a set status request.
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`
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`Ex. 1001, 24:12–35.
`
`D. Asserted Ground of Unpatentability
`Petitioner asserts a single ground of unpatentability (Pet. 1):
`
`Challenged Claim
`
`35 U.S.C. §
`
`References
`
`5
`
`103(a)
`
`Zydney1 Griffin,2
`
`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
`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).
`
`
`1 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (filed with line
`numbers added by Petitioner as Exhibit 1004).
`2 Griffin et al., US 8,150,922 B2, issued April 3, 2012 (Ex. 1008).
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`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” and “instant voice message client system,” as recited in claim 3.
`Pet. 11−16. Patent Owner points out alleged deficiencies in Petitioner’s
`proposed construction of the first of those terms and proposes an alternative
`construction. Prelim. Resp. 22−23. 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 Ground 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
`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;
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`(3) the level of skill in the art;3 and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.4 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.
`
`2. Obviousness over Zydney and Griffin
`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
`
`
`3 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. 10-11. For purposes of this Decision and to the
`extent necessary, we adopt Petitioner’s assessment.
`4 Patent Owner does not contend in its Preliminary Response that any such
`secondary considerations are present.
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`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.
`
`
`Figure 1, above, illustrates a high-level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Ex. 1004,
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`10
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`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.
`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
`
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`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
`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.
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`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
`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.
`
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`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
`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.
`
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`
`b. Overview of Griffin
`Griffin, titled “Voice and Text Group Chat Display Management
`Techniques for Wireless Mobile Terminals,” relates to a technique of
`managing the display of “real-time speech and text conversations (e.g., chat
`threads) on limited display areas.” Ex. 1008, code (54), 1:9−11. Griffin
`discloses a wireless mobile terminal as shown in Figure 1, reproduced
`below.
`
`
`Figure 1, above, depicts mobile terminal 100 comprising speaker 103,
`which renders signals such as received speech audible; display 102 for
`rendering text and graphical elements visible; navigation rocker 105, which
`allows a user to navigate a list or menu displayed on the screen;
`microphone 107, for capturing the user’s speech; and push-to-talk
`button 101, which allows the user to initiate recording and transmission of
`audio. Ex. 1008, 3:14−30. Griffin also describes, in connection with
`Figure 2, reproduced below, the overall system architecture of a wireless
`communication system where the mobile terminals communicate with a chat
`server complex. Id. at 3:49−54.
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`Figure 2, above, illustrates wireless carrier infrastructures 202, which
`support wireless communications with mobile terminals 100, such that the
`mobile terminals wirelessly transmit data to a corresponding
`infrastructure 202 for sending the data packets to communication
`network 203, which forwards the packets to chat server complex 204.
`Ex. 1008, 3:49−61. Communication network 203 is described as a “packet-
`based network, [which] may comprise a public network such as the Internet
`or World Wide Web, a private network such as a corporate intranet, or some
`combination of public and private network elements.” Id. at 3:61−65.
`Griffin’s chat server complex 204 receives encoded data comprising
`text, speech, and/or graphical messages (or some combination thereof),
`when a plurality of users chat together (i.e., send chat messages from one
`terminal 100 to another). Ex. 1008, 4:11−15; 4:62−65. An outbound chat
`message, for example, is decomposed to locate the list of recipients, and the
`recipient’s current status is determined. Id. at 5:9−15. Griffin describes
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`presence status 702 as “an indicator of whether the recipient is ready to
`receive the particular type of message, speech and/or text messages only,
`etc.).” Id. “When presence status 702 changes, the presence manager 302
`[of server complex 204] sends a buddy list update message 600 to all the
`subscribers listed in the subscriber identifier field 706 of the corresponding
`presence record 700.” Id. at 5:27−30.
`Figure 4 of Griffin is reproduced below.
`
`
`
`Figure 4, above, is a schematic illustration of an outbound text
`message 400 sent by terminal 100 in accordance with Griffin’s invention.
`Ex. 1008, 2:51–52, 6:38–39. As shown in Figure 4, outbound chat
`message 400 includes, among other fields, fields for message type 401 and
`message content 406. Id. at 6:39–44.
`Griffin provides a buddy list display illustrated in Figure 9,
`reproduced below. Ex. 1008, 8:15−16.
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`Figure 9, above, depicts title bar 901, where inbound chat message
`indicator 905 is an icon accompanied by an audible sound when the icon is
`first displayed, indicating to the user that there is at least one unheard or
`unread inbound chat message that has arrived at terminal 100. Ex. 1008,
`8:17−18, 8:28−32. Left softkey 910 labeled “Select” permits selection of a
`particular buddy for chatting, selection of which is indicated with selection
`indicator 906. Id. at 8:45−52, 8:60−67, 9:1−5. “If the user pushes-to-talk,
`the display switches to the chat history, and the user is able to record and
`transmit a speech message and consequently start a new thread with the
`selected buddies.” Id. at 9:27−31.
`
`c. Arguments and Analysis
`Claim 5 depends from claim 4, which in turn depends from
`independent claim 3. As mentioned in Section II.A. above, the Board
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`previously held claims 3 and 4 to be unpatentable over the combination of
`Griffin and Zydney in IPR2017-01797. See 1797/1798 Final Dec. 37–53,
`60–63. In arguing that the subject matter of claim 5 is unpatentable over
`Zydney and Griffin, Petitioner relies for the limitations of base claims 3 and
`4 on essentially the same arguments that were presented in IPR2017-01797.
`Pet. 20–48.
`Petitioner relies on Zydney as teaching the additional limitation
`recited in claim 5, “wherein the predetermined set of permitted actions
`[identified by an action field included in the instant voice message, per
`claim 4] includes at least one of a connection request, a disconnection
`request, a subscription request, a message transmission request, and a set
`status request.” Pet. 48–51. In particular, Petitioner alleges, “Zydney
`discloses or renders obvious an instant voice message action field containing
`data identifying one of a predetermined set of permitted actions requested by
`the user,” where “at least one of the permitted actions is a message
`transmission request.” Pet. 48 (emphasis omitted) (citing Ex. 1003 ¶ 210).
`With reference to Figure 3 of Zydney, Petitioner contends that the voice
`container in Zydney includes fields that contain data identifying permitted
`actions including repeating information fields 330. Id. (citing Ex. 1004,
`Fig. 3, 23:1–12; Ex. 1003 ¶ 211). Petitioner further contends that Zydney
`discloses that “the permitted action fields include recipient codes that
`identify one or more recipients to whom the voice message should be
`transmitted,” that “the software agent can set various ‘privacy features’
`related to forwarding messages from one agent to another,” and that “the
`fields of the voice container ‘may be tailored to the use desired by the
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`user.[’]” Pet. 49–50 (citing Ex. 1004, Fig. 3, 12:8–9, 23:1–12; Ex. 1003
`¶ 212.)). Still further, Petitioner contends,
`Zydney discloses an embodiment in which users are allowed to
`send and receive voice messages via conventional analog
`phones. (Ex. 1004, 11:6–13.) In this embodiment, a “user’s agent
`36 is located remote to the user and preferably proximate to or
`integrated with the server.” (Id.) The remote agent “allows
`manual or pre-programmed control of
`the origination,
`distribution and listening to [the] messages, and also offers the
`options for ringing a pre-configured phone number at the
`recipient’s request for the delivery of the message or forwarding
`the message to another Internet or voice container enabled
`device.” (Id.; see also Ex. 1003, ¶213)
`Pet. 50. Thus, Petitioner asserts, “Zydney discloses that actions permitted by
`users include requests for delivery (i.e., transmission) of messages by the
`remote agent to conventional analog phones and/or other Internet or voice
`container enabled devices,” and “[a]ccordingly, Zydney teaches that a
`predetermined set of actions that includes a message transmission
`request.” Pet. 50 (citing Ex. 1003 ¶ 214).
`Lastly, Petitioner alleges that a person of ordinary skill in the art
`“would have been motivated to combine Zydney’s remote agent and
`message transmission request with Griffin’s system since doing so would
`have enabled users to receive messages from Griffin’s mobile terminals
`using conventional analog telephones.” Pet. 50–51 (citing Ex. 1003 ¶ 215).
`Therefore, Petitioner asserts, “Griffin in view of Zydney teaches a
`predetermined set of actions that includes a message transmission request.”
`Pet. 51.
`In response, Patent Owner argues, inter alia, that Petitioner’s
`arguments regarding claim 5 are expressly contradicted by Zydney. Prelim.
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`Resp. 26–29. In particular, with respect to Petitioner’s argument that the
`ability for Zydney’s users employing conventional analog telephones to
`cause a remote agent to allow “manual or pre-programmed control of the
`origination, distribution and listening to messages, and . . . options for
`ringing a pre-configured phone number . . . or forwarding [a] message”
`constitutes a “connection request action” as recited in claim 5 (Pet. 50),
`Patent Owner contends that Petitioner’s interpretation represents a “blatantly
`inaccurate understanding” of Zydney. Prelim. Resp. 26–27.
`First, Patent Owner argues, it is clear, in context, that “the options of
`‘manual or pre-programmed control of the origination, distribution and
`listening to messages’ constitute control by a user having an analog phone of
`the software agent 36 of the user.” Id. at 27. Patent Owner points, for
`example, to Zydney’s disclosure, immediately before the sentence relied
`upon by Petitioner, that the remote agent is “the user’s agent located remote
`to the user and preferably proximate to or integrated with the server.” Id.
`(quoting Ex. 1004, 11:6–9). Patent Owner contends that “[o]ne of ordinary
`skill would understand that the agent of a user who employs a conventional
`phone cannot be located on the phone, as the conventional phone is not
`configured to install a software-implemented agent,” and “[t]hus, these
`functions of control are control by a user of a conventional phone of the
`software agent of the user, not control handed off to instructions in a voice
`message.” Id.
`Similarly, Patent Owner contends, “the options of ‘ringing a pre-
`configured phone number at the recipient’s request for the delivery of the
`message or forwarding the message to another Internet or voice container
`enabled device’ are specifically identified as ‘at the recipient’s request,’ and
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`thus are options set by the user at the remote software agent of the user.”
`Prelim. Resp. 27 (citing Ex. 1004, 11). “None of the foregoing options are
`disclosed or suggested as being included in one of Zydney’s voice
`messages,” but “[r]ather, these are options that may be selected by the user
`of a conventional phone to provide instructions for the remote agent of the
`user.” Id. Indeed, Patent Owner points out, Zydney explicitly states that
`these options are “at the recipient’s request.” Id. at 28 (quoting Ex. 1004,
`11:11). Thus, Patent Owner contends, the Petition’s proposed interpretation
`that these instructions are included in the message received by the remote
`agent is directly contrary to the disclosure of Zydney. Id. at 28.
`Lastly, Patent Owner contends that “the Petition’s proposed
`interpretation of Zydney is absurd,” insofar as “[t]he Petition would have the
`originator of a message incorporate in the message, in addition to the
`recipient, an instruction including an identification of a phone number to be
`rung for delivery of a message, or include an instruction to forward the
`message to another Internet enable device, or voice container enabled
`device.” Prelim. Resp. 28. “Such forwarding to a particular phone or to a
`particular device,” Patent Owner contends, “is of course a selection of a
`recipient of a message, not of an originator of a message,” and “[i]ndeed, if
`an originator knew of a voice container enabled device associated with the
`recipient, the originator would simply address the message to the voice
`container enabled device, not to a remote agent located at the server.” Id.
`Accordingly, Patent Owner argues, “Petitioner’s proposal is thus contrary to
`common sense, in addition to contradicting the explicit disclosure of
`Zydney.” Id.
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`Having considered the parties’ respective arguments and the cited
`evidence, we agree with Patent Owner that Petitioner has not shown a
`reasonable likelihood of prevailing on its allegations regarding claim 5. As
`an initial matter, we acknowledge that the Board previously found Zydney’s
`disclosure of voice container fields including “repeating information
`fields 330” rendered obvious an “action field identifying one of a
`predetermined set of permitted actions requested by the user” as recited in
`claim 4. See 1797/1798 Final Dec. 62–63 (finding that “‘repeat times’
`field 336 shown in Figure 3 of Zydney identifies
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