Case 2:16-cv-01313-JRG Document 13 Filed 01/10/17 Page 1 of 1 PagelD #: 147
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Eastern District of Texas, Marshall Division
`filed in the U.S. District Court
`on the following
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:16-cv-1313
`PLAINTIFF
`
`DATE FILED
`11/28/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, INC., and
`UNILOC LUXEMBOURG, S.A.
`
`HEYWIRE, INC.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 7,535,890
`
`2 8,199,747
`
`3 8, 724,622
`
`4 8,995,433
`
`5
`
`5/19/2009
`
`6/12/2012
`
`5/13/2014
`
`3/31/2015
`
`UNILOC LUXEMBOURG, S.A.
`
`UNILOC LUXEMBOURG, S.A.
`
`UNILOC LUXEMBOURG, S.A.
`
`UNILOC LUXEMBOURG, S.A.
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`PATENTOR
`TRADEMARK NO.
`
`INCLUDED BY
`
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`D Answer
`
`D Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`ORDERS that Plaintiff Uniloc's action
`against Defendant HeyWire, Inc. be and hereby is dismissed with prejudice
`
`CLERK
`
`r-&-~)~ A. O'"f~-
`
`(BY) DEPUTY CLERK
`ch
`
`DATE
`1/10/17
`
`Copy 1-Upon initiation of action, mail this copy to Director Copy 3-Upon termination of action, mail this copy to Director
`Copy 2-Upon filing document adding patent(s), mail this copy to Director Copy 4-Case file copy
`
`Page 1 of 784
`
`

`

`Case 2:16-cv-01313-JRG Document 13 Filed 01/10/17 Page 1 of 1 PagelD #: 147
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`Eastern District of Texas, Marshall Division
`filed in the U.S. District Court
`on the following
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:16-cv-1313
`PLAINTIFF
`
`DATE FILED
`11/28/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, INC., and
`UNILOC LUXEMBOURG, S.A.
`
`HEYWIRE, INC.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 7,535,890
`
`2 8,199,747
`
`3 8, 724,622
`
`4 8,995,433
`
`5
`
`5/19/2009
`
`6/12/2012
`
`5/13/2014
`
`3/31/2015
`
`UNILOC LUXEMBOURG, S.A.
`
`UNILOC LUXEMBOURG, S.A.
`
`UNILOC LUXEMBOURG, S.A.
`
`UNILOC LUXEMBOURG, S.A.
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`PATENTOR
`TRADEMARK NO.
`
`INCLUDED BY
`
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`D Answer
`
`D Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`ORDERS that Plaintiff Uniloc's action
`against Defendant HeyWire, Inc. be and hereby is dismissed with prejudice
`
`CLERK
`
`r-&-~)~ A. O'"f~-
`
`(BY) DEPUTY CLERK
`ch
`
`DATE
`1/10/17
`
`Copy 1-Upon initiation of action, mail this copy to Director Copy 3-Upon termination of action, mail this copy to Director
`Copy 2-Upon filing document adding patent(s), mail this copy to Director Copy 4-Case file copy
`
`Page 1 of 784
`
`

`

`Trials@uspto.gov
`Tel: 571-272-7822
`, ,
`
`.... .
`
`~
`
`,.
`
`..
`
`Paper32
`Entered: January 31, 2019
`
`UNITED ST ATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PAT ENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Cases IPR2017-0l 797 and IPR2017-01798
`·Patent 8,724,622 B2
`
`Before JENNIFER S. BISK, M.IRIAM L. QUINN, and
`CHARLES J. BOUDREAU,AdministrativePatentJudges.
`
`BOUDREAU, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`'
`
`Page 2 of 784
`
`

`

`IPR2017-01797 andIPR2017-01798
`Patent 8,724,622 B2
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. ("Petitioner") filed a Petition in
`
`each of the captioned proceedings on July 20, 2017, collectively requesting
`
`interpartesreviewofclaims 3,4, 6-8, 10-19,21-35,38,and39of
`
`U.S. Patent No. 8,724,622 B2 ("the '622 patent"). IPR2017-0l 797, Paper 1
`
`(" 1797 Petition" or" 1797 Pet."); IP R2017-01798 (" 1798 Petition" or
`
`"1798 Pet."). Each proceeding challenges a different set of claims, as
`
`follows:
`
`Proceeding
`
`Challenged Claim Set of the '622 Patent
`
`IPR2017-01797 3,4,6-8, 10-13, 18,21-23,27,32,34,
`35, 38, and 39
`
`IPR2017-01798
`
`14-17, 19,24-26,28-31,and33
`
`See 1797 Pet. 1; 1798 Pet. 1. Patent Owner 1 filed a Preliminary Response to
`
`each Petition. IPR2017-01797, Paper6; IPR2017-01798, Paper 6. We
`
`instituted.inter partes review pursuant to 35 U.S.C. § 314 as to all
`
`challenged claims. IPR2017-0l 797, Paper8 ("1797 Dec. on Inst.");
`
`IPR2017-01798, Paper8 (" 1798 Dec. on Inst.").
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response in each case. JPR2017-01797, Paper 12 ("1797 PO Resp.");
`
`IPR2017-01798, Paper 12 ("1798 PO Resp."). Petitioner then filed Replies.
`
`IPR2017-01797, Paper 17 ("1797 Reply"); IPR2017-01798, Paper 17
`
`1 Uniloc Luxembourg S.A. was initially identified as the owner of the
`'622 patent. See, e.g., IPR2017-01797, Paper 3, 1. In Updated Mandatory
`Notices filed August 27, 2018, Uniloc 2017 LLC is identified as the owner
`of the '622 patent. IPR2017-0l 797,Paper 19; IPR2017-01798, Paper 19.
`
`2
`
`Page 3 of 784
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`(" 1798 Reply"). Patent Owner also filed a Motion to Exclude as Paper 21 in
`
`each case ("Mot. Exel."), and Petitioner filed an opposition as Paper24
`
`("Opp'n"). A transcript of the consolidated oral hearing held on October 30,
`
`2018, has been entered into the record as Paper 31 in each case ("Tr.").
`
`We have jurisdiction under35 U.S.C. § 6(c). This Final Written
`
`Decision is enteredpursuantto35 U.S.C. § 318(a)and37 C.F.R. §42.73.
`
`For the reasons discussed below, Petitioner has shown by a preponderance
`
`of the evidence that claims 3, 4, 6-8, 10-19, 21-35, 38, and39 of the
`
`'622 patent are unpatentable.
`
`II.
`
`CONSOLIDATION OF PROCEEDINGS
`
`The two captioned proceedings (IPR2017-01797 and IPR2017-0l 798)
`
`involve the '622 patent. Althc;mgh each proceeding challenges the
`
`patentability of a different set of claims, there are disputed claim terms
`
`across the challenged claims and the primary prior art is identical. For
`
`instance, all the claims recite the term "instant voice message," which we
`
`construe below, and the "Griffin" and "Zydney" references (identified with
`
`particularity below) are asserted as prior art in both proceedings.
`
`Consolidation is appropriate where, as here, the Board can more efficiently
`
`handle the common issues and evidence and also remain consistent across
`
`proceedings. Under 35 U.S.C. § 315(d)the Director may determine the
`
`manner in which these pending proceedings may proceed, including
`
`"providing for stay, transfer, consolidation, or termination of any such
`matter or proceeding." See also 37 C.F.R. § 42.4(a) ("The Board institutes
`
`the trial on behalf of the Director."). There is no specific Board Rule that
`
`governs consolidation of cases. But 37 C.F.R. § 42.S(a) allows the Board to
`
`3
`
`Page 4 of 784
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`determine a proper course of conduct in a proceeding for any situation not
`
`specifically covered by the rules and to enter non-final orders to administer
`
`the proceeding. Therefore, on behalf of the Director under§ 315( d), and for
`
`a more efficient administration of these proceedings, we consolidate
`
`IPR2017-01797 andIPR2017-01798 for purposes of rendering this Final
`
`Written Decision in which we construe the term "instant voice message" and
`
`determine whether the asserted prior art teaches the properly construed
`
`"instant voice message."
`
`III. BACKGROUND
`
`A. Related Matters
`
`The parties indicate that the '622 patent is involved in multiple district
`
`court cases, including Uniloc USA, Inc. v. Samsung Electronics America,
`
`Inc., Case No. 2:16-cv-00641-JRG (E.D. Tex.). See, e.g., 1797 Pet. 1-3;
`
`IPR2017-01797, Paper 19, 2.
`
`The '622 patent also has been the subject of petitions for inter part es
`
`review in Cases IPR2017-00223, IPR2017-00224, IPR2017-01804, and
`
`IPR2017-01805 (filed by Apple Inc.), all of which were denied; Cases
`
`IPR2017-01667 andIPR2017-01668 (filed by Facebook, Inc. and
`
`WhatsApp Inc.), in which we instituted inter part es review on January 19,
`
`2018; Cases IPR2017-02080 and IPR2017-02081 (filed by Google, Inc.),
`
`which we denied; Case IPR2017-02090 (filed by HuaweiDevice Co., Ltd.
`
`and LG Electronics, Inc.), in which we granted a motion for the petitioners'
`
`joinder with Case IPR2017-01667; and Cases IPR2018-00579 and
`
`IPR2018-00580 (filed by Apple Inc.), in which we granted motions for the
`
`petitioner's joinder with Cases IPR2017-01667 andIPR2017-01668,
`
`4
`
`Page 5 of 784
`
`

`

`IPR2017-0l 797 andIPR2017-01798
`Patent 8,724,622 B2
`
`respectively. We issued a consolidated Final Written Decision in Cases
`.
`IPR2017-01667 and IPR2017-01668 on January 16, 2019, fmding
`
`(
`
`unpatentable claims 3, 6-8, 10-35, 38, and 39-but not claims 4 and 5-of
`
`the '622 patent. IPR2017-01667, Paper 37; IPR2017-01668, Paper 35
`
`("1667/1668 FD").
`
`)
`
`B. Overview of 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, [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
`
`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.
`
`5
`
`Page 6 of 784
`
`

`

`IPR2017-01797 andIPR2017-01798
`Patent 8,724,622 B2
`
`200
`
`I
`
`LOCAL
`lVM
`SERVER
`
`Js~
`
`JVMCUBNT
`(VoJP
`PHONB)
`
`FIG. 2
`As illustrated in Figure 2, local packet-switched IP network 204,
`
`which may be a local area network ("LAN"), "interconnects" IVM
`
`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
`at 6:50-7:2; see id. at 7:23-24, 7:61-65. LocalIVM server202 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.
`
`6
`
`Page 7 of 784
`
`

`

`IPR2017-01797 andIPR2017-01798
`Patent 8,724,622 B2
`
`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]nlythe
`
`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.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 3, 24, 27, and 38 are independent.
`
`Claims 3, 24, and 27 are illustrative of the challenged claims and are
`
`reproduced below.
`
`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.
`
`7
`
`Page 8 of 784
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`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`24. 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 connection object
`messages from the plurality of instant voice message client
`systems, wherein each of the connection object messages
`includes data representing a state of a logical connection
`with a given one of the plurality of instant voice message
`client systems.
`
`2 7. 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.
`
`Ex. 1001, 24:12-27, 25:59-26:8, 26:17-30.
`
`D. Evidence of Record
`
`The Petitions rely on the following asserted prior art references:
`
`a) Griffin:U.S. PatentNo. 8,150,922B2, issued Apr. 3, 2012(filed in
`both IPR2017-01797 and IPR2017-01798 as Ex. 1005);
`
`8
`
`Page 9 of 784
`
`

`

`IPR2017-0l 797 andIPR2017-01798
`Patent 8,724,622 B2
`
`b) Zydney: PCT App. Pub. No. WOO 1/11824 A2, published Feb. 15,
`2001 (filed in bothIPR2017-01797andIPR2017-01798as
`Ex. 1006);
`c) Aravamudan: U.S. Patent No. 6,301,609Bl, issued Oct. 9, 2001
`(filed in IPR2017-01797 as Ex. 1009);
`d) Vuori: U.S. Patent App. Pub. No. 2002/0146097 Al, published
`Oct. 10, 2002 (filed in IPR2017-01797 as Ex. 1015);
`e) Ciark: U.S. Patent No. 6,725,228 Bl, issued Apr. 20, 2004
`(filed in IPR2017-0l 798 as Ex. 1007);
`f) Vddndnen: PCT App. Pub. No. WO 02/17650 Al, published
`Feb. 28, 2002 (filed in both IPR2017-0l 797 andlPR2017-01798
`as Ex. 1008); and
`·
`g) Low: U.S. PatentApp. Pub. No. 2003/0018726Al,published
`J3:n. 23, 2003 (filed in IPR2017-01798 as Ex. 1010).
`
`Petitioner supports its contentions with the Declaration of
`Dr. Zygmunt J. Haas, filed as Exhibit 1002 in both proceedings ("Haas
`
`Deel."), and Patent Owner cites Declarations of William C. Easttom II, each
`
`filed as Exhibit 2001 in the respective proceedings (" 1 797 Easttom Deel."
`
`and "1798 Easttom Deel.," respectively). Mr. Easttom also has been the
`
`subject of cross-examination, and a transcript of his deposition addressing
`
`the '622 patent is filed in the record of each proceeding as Exhibit 1040.
`
`E. Asserted Grounds of Unpatentability
`
`We instituted inter partes review on the following grounds of
`
`unpatentability under 35 U.S.C. § 103. 2 1797 Dec. on Inst. 34-35; 1798
`
`Dec. on Inst. 42.
`
`2 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112:...29,
`125 Stat. 284, 287-88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent application resulting in the '622 patent was filed
`
`9
`
`Page 10 of 784
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`Challenged Claim(s)
`3,4,6-8,10,11, 13,18,21-23,
`27, 32, 34, 35, 38, and 39
`
`References
`
`Griffin and Zydney
`
`11'
`
`12
`
`Griffm, Zydney, and Vuori
`
`Griffm, Zydney, andAravamudan
`
`14-17and28-31
`
`Griffm, Zydney, and Clark
`
`19and33
`
`Griffm, Zydney, and Vaananen
`
`24-26
`
`Griffm, Zydney, and Low
`
`'
`
`IV. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which 'they appear. 37 C.F.R. § 42. l00(b) (2017); 3 Cuozzo Speed
`Techs., LLCv. Lee, 136 S. Ct. 2131, 2144-46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard as the claim interpretation
`
`before the effective date of the relevant section of the ~ we refer to the
`pre-AIA version of§ 103 throughout this decision.
`3 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the PatentTrialand Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(to be codified at 37 C.F.R. pt. 42).
`
`10
`
`Page 11 of 784
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`standard to be applied in an inter partes review proceeding). Under the
`
`~roadest reasonable interpretation standard, claim terms generally are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. See In re
`
`Translogic Tech.,Jnc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that
`
`only those claim terms that are in controversy need to< be construed, and only
`
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`
`ZhongshanBroad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`
`Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795,803 (Fed. Cir.
`
`1999).
`
`In the Petitions, Petitioner argued that the Board need not construe the
`
`challenged claims for resolution of the controversy in these proceedings and
`
`that the challenged claims should be given their plain and ordinary meaning
`
`under the broadest reasonable interpretation standard. ,.1 797 P~t. 8-9; 1798
`
`Pet. 13. Neither party proposed a construction for any claim term in its
`
`pre-institution briefing, and we agreed with Petitioner that no terms required
`
`express construction for purposes of institution. 1797 Dec. on Inst. 7;
`
`1798-Dec. on Inst. 8. In its Reply briefs, Petitioner contends that Patent
`
`Owner offers implied constructions of the terms "instant voice message" and
`
`"network interface." 1797Reply 1-8; 1798Reply 1-7. Weaddresseachof
`
`these terms in tum.
`
`1. Instant Voice Message
`
`Independent challenged claims 3, 27, and 38 recite the term "instant
`
`voice message." In particular, claim 3 recites a messaging system that
`
`\
`
`"receives an instant voice message" from one of a plurality of instant voice
`
`message client systems, "wherein the instant voice message includes an
`
`11
`
`Page 12 of 784
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`object field including a digitized audio file." Claims 27 and 38 recite a
`
`client platform system for "generating an instant voice message and a
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`messaging system for transmitting the instant voice message." Claim 27
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`further requires an "instant voice messaging application" that "includes a
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`document handler system for attaching one or more files to the instant voice
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`message." Certain of the challenged dependent claims recite additional
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`limitations concerning, for example, additional fields included in the instant
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`voice message ( claims 4, 6-8), storage, deletion, or.retrieval of instant voice
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`messages (claims 10, 14, 17, 28, 31), the generation of the instant v·oice
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`messages ( claims 13, 18, 32), encryption/decryption of instant voice
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`messages (claims 19, 3 3 ), compression/ decompression of instant voice
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`messages (claim 34), effects indicating receipt of instant voice messages
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`(claim 23, 35), and display of instant voice messages (claim 30).
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`As mentioned above, our Decision on Institution did not provide a
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`construction for "instant voice message." Since our institution
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`determination, however, we had occasion to revisit the claim term "instant
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`voice message" in the present proceedings, as well as in related proceedings,
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`such as IPR2017-01667 and IPR2017-01668, which, as noted above, also
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`concern claims of the '622 patent. In the Pa tent Owner Responses in the
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`present proceedings, Patent Owner raises two implied disputes concerning
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`the term "instant voice message." First, Pa tent Owner appears to argue that
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`the "instant voice message" must itself be an audio file. In particular,
`
`relying on testimony ufMr. Easttom that "the 'instant voice message' is
`recorded in [an] audio file" ( 1 797 Easttom Deel. 1 51 ), Pa tent Owner argues
`that disclosure in the asserted prior art of "[i]ncluding attachments (in
`
`addition to a voice message) in a voice container ... does not disclose or
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`Patent 8,724,622 B2
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`suggest 'attaching one or more files to the instant voice message' itself."
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`1797 PO Resp. 21 ( citing 1797 Easttom Deel. ,150-58). Second, Patent
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`Owner contends that "[i]nstant ( or real-time) communication requires both
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`instant ( or real-time) transmission and instant ( or real-time) receipt." Id.
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`at 25. Patent Owner challenges Petitioner's assertion that a voice message is
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`"instant" because it is a voice message transmitted in real time to an
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`available recipient. Id. at 24-25 (citing 1797 Pet. 20-21).
`
`Regarding Patent Owner's first argument, Petitioner responds that
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`"the only reasonable reading of the disclosure of the '622 patent is that the
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`term [instant voice message] refers to both the message object itself and the
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`digitized speech (i.e., audio file) contained within the message object." 1797
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`Reply 2. Petitioner points out that the challenged claims themselves recite
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`various data fields included within the claimed instant voice message,
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`including "an object field including a digitized audio file" in claim 3
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`(Ex. 1001, 24:26-27), an "action field" in claim 4, a "source field" in claim
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`7, and a "destination field" in claim 8. Id. Additionally, Petit~oner argues,
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`claim 18 requires "creating an audio file for the instant voice message." Id.
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`Based on this claim language, Petitioner contends, "[Patent Owner's]
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`interpretation that the audio file is the claimed [instant voice message]
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`makes no sense." Id. Instead, Petitioner asserts, the claimed instant voice
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`message is a message containing audio and other data, corresponding to the
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`description in the specification of "a 'message object' ... as a message that
`( comprises an action field, an ID field, a source field, a destination field, and
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`an object field."' Id. (quoting Ex. 1001, 14:6-7) (citing Ex. 1001, 14:7-10,
`14:19-21, 14:36-40). Petitionerpoints out that the object field itself is
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`described in the specification as "a block of data being carried by the
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`message object, which may be, for example, a digitized instant voice
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`message," establishing that the instant voice message is not the audio file or
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`contained within the audio file but is instead a message object that includes
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`an audio file containing the digitized instant voice message, among other
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`data. Id. at 2-3 (quoting Ex. 1001, 14:7-10). Thus, Petitioner proposes,
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`"instant voice message" should be construed as "a message containing
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`digitized speech (that is capable of being transmitted in real time to a
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`recipient device).~' Id. at 3.
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`Having considered the parties' respective arguments, we conclude that
`"instant voice message" is properly construed as "data content including a
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`representation of an audio message," which is the construction that we
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`previously adopted in our consolidated Final Written Decision in
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`IPR2017-01667 and IPR2017-01668. 1667 /1668 FD 19. In those cases, we
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`explained that we were persuaded that the sp.ecification of the '622 patent
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`describes the "instant voice message" as content in three different
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`embodiments, specifically:
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`First, in the "record mode" embodiment, by describing the
`"instant voice message" as an audio file (Ex 1001, 8 :7-11, 8 :26-
`27, 9:64-65, 10:38-39, 10:45-46, 12:40-41, 16:22, 17:23-24,
`18:6-7, 18:58, 18:64-65, 19:46-47, 19:53), the '622 patent
`specification focuses on the digitized audio file itself being the
`"instant voice message." ... The digitized audio file is the user's
`speech that the client records. See [id. at] 8:8-11. Second, in
`the "intercom mode," the specification describes buffering
`"successive portions of the instant voice message," referring
`thusly to portions of the user's speech that are written to a butler.
`Id. at 11 :35-44. Again, the "instant voice message" includes the
`digitized audio.
`In a third embodiment, the specification
`describes a "message object" with an object field in this manner:
`"The content of the object field is a block of data being carried
`by the message object, which may be, for example, a digitized
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`instant voice message." Id. at 14:37-40. These embodiments,
`thus, paint a picture of the "instant voice message" as first and
`foremost being the content of the message, or the user's speech,
`in some digitized form. Although the manner in which the data
`content is partitioned, stored, and delivered may vary from
`embodiment to embodiment ( such as from audio file to digitized
`audio in a buffer), what is important is that the "instant voice
`message" always refers to the digitized audio message ....
`
`From the description of the three embodiments identified
`above, we conclude that the "instant voice message" is data
`content, and more specifically, is data content that includes a
`In all embodiments, the
`representation of an audio message.
`"instant voice message" refers, at a minimum, to the digitized
`speech, regardless of whether it is contained in an audio file,
`successive portions stored in a buffer, or a block of data in an
`object field.
`
`1667 / 1668 FD 15-17. We further explained, however, that the "instant
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`voice message" is not merely an audio file (i.e., not only content), because
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`the specification also describes non-audio-file uses of the term. For
`
`instance, the specification describes the "intercom mode" of instant voice
`
`messaging distinctly from the "record mode" (audio file embodiment).
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`Ex. 1001, 7 :57-61. "In the 'intercom mode,' instead of creating an audio
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`file 210, one or more buffers (not shown) of a predetermined size are
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`generated in the IVM client 206, 208 or local IVM server 202." Id.
`
`at 11 :36-39 ( emphasis added). This alternative to creating an audio file is
`
`further described as buffering successive portions of the instant voice
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`message. Id. at 11 :39-41. Therefore, although the specification consistently
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`relates "instant voice message" to content, is does not limit that content to
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`any particular form or structure (audio file or portions of digitized speech).
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`Regarding Patent Owner's second argument, Petitioner responds that
`
`the specification and claims of the '622 patent explain that a m~ssage can be
`an instant voice message even if it is not received by a recipient device in
`real time, because, for example, the specification and claims explain that, if
`
`a recipient device is not available, the instant voice message may be
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`temporarily stored at a server for later delivery when the recipient becomes
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`available. 1797 Reply 4 (citing Ex. 1001, 8:32-39, 9:17-21, 10:7-11,
`
`10:52-56, 16:35-40, 17:32-36, 18:19-24, 19:6-11, 19:65-20:2, 24:61-
`
`25:3). According to Petitioner, these portions of the patent establish that
`
`instant voice messages need not always be received in real time. Id.
`
`On this second issue, we agree with Patent Owner that merely
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`transmitting the "instant voice message" in real time is insufficient to define
`
`the "instant" feature of an "instant voice message." The Background of the
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`Invention purposely distinguishes a voice mail message from an "instant"
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`text message. Ex. 1001, 2:22-46. In the voice mail message example, the
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`specification describes the drawbacks of dialing a telephone number, and
`
`after a few more steps, finally "recording the message for later pickup by the
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`recipient." Id. at 2:26-32 ( emphasis added). In contrast, for an "instant"
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`text message, a server presents the user with "a list of persons who are
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`currently 'online' and ready to receive text messages on their own client
`
`terminals." Id. at2:38-41 (emphasis added). "The text message is sent
`
`immediately via the text messaging server to the selected one or more
`
`persons and is displayed on their respective client terminals." Id.
`
`at 2:44-46. That is, with a voice mail message, a person on the receiving
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`end, who admittedly was not ready to engage in a direct voice conversation,
`
`must take an active step to retrieve the recorded message, regardless of when
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`the message was recorded. In contrast, the "instant" text message is
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`immediately transmitted to the recipient, which is ready to receive it, thus
`
`ensuring a speedy arrival. Thus, the specification distinguishes a voice mail
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`message from the "instant" text message in that, although both messages are
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`recorded and transmitted, only the "instant" text message, as the word
`
`"instant" implies, confers immediacy to its receipt by a ready recipient. The
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`"instant" in the "instant voice message" imparts the same speedy receipt.
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`Our conclusion that an "instant" voice message must involve this
`
`immediate transmission and, likewise, speedy reception of the message is
`
`not diminished by embodiments that store the message at the server for later
`
`delivery. See id. at 8:35-39 ("[I]f a recipient IVM client is not currently
`
`connected to the local IVM server 202 (i.e., is unavailable), the IVM server
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`temporarily saves the instant voice message and delivers it to the IVM client
`
`when the IVM client connects to the local IVM server 202 (i.e., is
`
`available)."). Neither the sender nor the recipients can have any expectation
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`with regard to the timing of the message's receipt when the recipients are not
`
`online, and thus, not available to receive the message. Indeed, this same
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`embodiment carries out the "instant" capability by delivering the message
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`stored at the server to the client, when the client connects to the server, thus
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`becoming available to receive it. Consequently, we determine that an
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`"instant voice message" is one that is transmitted in real time and received
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`accordingly, when the recipient is available.
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`2. Networklnterface
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`Independent challenged claims 3 and 24 recite "a network interface
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`connected to a packet-switched network." Similarly, independent
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`challenged claims 27 and 38 recite "a network interface coupled to [a] client
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`device and