Petition for Inter Partes Review of U.S. Patent No. … for Inter Partes Review of U.S. Patent No....

Petition for Inter Partes Review of U.S. Patent No. 8,995,433

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FACEBOOK, INC., WHATSAPP INC., Petitioners

v.

UNILOC USA, INC., UNILOC LUXEMBOURG, S.A., Patent Owners

U.S. Patent No. 8,995,433

TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,995,433

(PETITION 2 OF 2 – CLAIMS 9-12, 14-17, 25, 26)

Table of Contents

Page

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I. Mandatory Notices Under 37 C.F.R. § 42.8(A)(1) ........................................ 1

A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1

B. Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1

C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 3

D. Service Information .............................................................................. 4

E. Power of Attorney ................................................................................ 4

II. Fee Payment - 37 C.F.R. § 42.103 ................................................................. 4

III. Requirements for Inter Partes Review under 37 C.F.R. §§ 42.104 and 42.108 ............................................................................................................. 5

A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 5

B. Identification of Challenge under 37 C.F.R. § 42.104(b) and Statement of Precise Relief Requested ................................................ 5

IV. Technology Background Relevant to a Person of Ordinary Skill in the Art ................................................................................................................... 6

V. The ’433 Patent ............................................................................................... 7

VI. Claim Construction Under 37 C.F.R. § 42.104(B)(3) .................................... 9

A. “instant voice messaging application” ................................................. 9

B. “client platform system” ..................................................................... 13

VII. Claims 9-12, 14-17, 25, and 26 Are Unpatentable ....................................... 15

A. Brief Summary and Date Qualification of the Prior Art .................... 15

Overview of Zydney (Ex. 1103) .............................................. 15

Overview of Greenlaw (Ex. 1110) ........................................... 20

Overview of Newton (Ex. 1106) .............................................. 22

B. Ground 1: Claims 9, 12, 14, 17, 25-26 Are Obvious Over Zydney ................................................................................................ 23

Claim 9 (Independent) ............................................................. 23

(a) “A system, comprising:” (Preamble, Claim 9) .............. 23

Table of Contents (continued)

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(b) “an instant voice messaging application comprising:” (Claim 9[a]) ............................................. 23

(i) “a client platform system for generating an instant voice message;” (Claim 9[a1])” .............. 25

(ii) “a messaging system for transmitting the voice instant message over a packet-switched network; and” (Claim 9[a2]) ................ 28

(c) “wherein the instant voice message application attaches one or more files to the instant voice message.” (Claim 9[b]) .................................................. 32

Claim 12 (Dependent): “The system according to claim 9, wherein the instant voice messaging application encrypts the instant voice message.” ....................................... 36

Claim 14 (Dependent): “The system according to claim 9, wherein the instant voice messaging application invokes a document handler to create a link between the instant voice message and the one or more files.” ................... 38

Claim 17 (Dependent): “The system according to claim 9, further comprising an instant voice messaging server receiving the instant voice message and an indication of one or more intended recipients of the instant voice message.” ................................................................................. 43

(a) “an instant voice messaging server receiving the instant voice message…” ............................................... 43

(b) “an instant voice messaging server receiving … an indication of one or more intended recipients of the instant voice message.” .................................................. 45

Claim 25 (Dependent): “The system of claim 17 wherein the instant voice messaging server determines availability of the one or more intended recipients for receipt of the instant voice message.” ............................................................ 46


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Claim 26 (Dependent): “The system of claim 25, wherein the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available; stores the instant voice message for the one or more intended recipients who are not currently available; and delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.” ................................................................... 47

(a) “the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available;” ...................................................................... 48

(b) “the instant voice messaging server… stores the instant voice message for the one or more intended recipients who are not currently available;” .................. 48

(c) “the instant voice messaging server… delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.” ........................................ 49

C. Ground 2: Claims 11, 15, 16 Are Obvious Over Zydney + Greenlaw ............................................................................................ 50

Claim 11 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for audibly playing the instant voice message.” ............................................................ 50

Claim 15 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays the attachment.” ......................................................... 57


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Claim 16 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for performing at least one of reviewing, re-recording or deleting the instant voice message.” ................................................................................. 58

D. Ground 3: Claim 10 Is Obvious Over Zydney + Newton .................. 59

Claim 10 (Dependent): “The system according to claim 9, wherein the packet-switched network comprises a WiFi network.” ......................................................................... 59

VIII. Conclusion .................................................................................................... 63


List of Exhibits

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Ex. No. Description of Document

1101 U.S. Patent No. 8,995,433 to Michael J. Rojas

1102 Declaration of Tal Lavian, Ph.D.

1103 PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al. (filed August 7, 2000, published February 15, 2001 as WO 01/11824 A2) (“Zydney”) (with added line numbers)

1104 U.S. Patent No. 6,750,881 to Barry Appelman (filed February 24, 1997, issued June 15, 2004)

1105 Excerpts from Margaret Levine Young, Internet: The Complete Reference (2d ed. 2002)

1106 Excerpts from Harry Newton, Newton’s Telecom Dictionary (2002) (“Newton”) (dated library copy)

1107 U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (filed October 16, 2000, issued June 29, 2004)

1108 U.S. Patent No. 6,725,228 to David Morley Clark et al. (filed Oct. 31, 2000, issued April 20, 2004)

1109 Excerpts from Microsoft Computer Dictionary (3d ed. 1997)

1110 Excerpts from Raymond Greenlaw et al., Introduction to the Internet for Engineers (1999) (“Greenlaw”)

1111 Excerpts of Joint Claim Construction and Prehearing Statement filed on March 10, 2017 in Case No. 16-cv-00642 (E.D. Tex.), including Exhibit A

1112 PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al. (filed August 7, 2000, published February 15, 2001 as WO 01/11824 A2) (as-published version without added line numbers)

1113 Library and date-stamped copy of excerpts from Raymond Greenlaw et al., Introduction to the Internet for Engineers (1999)


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This is a petition for Inter Partes Review of claims 9-12, 14-17, 25, and 26 of

U.S. Patent No. 8,995,433 (Ex. 1101) (“’433 patent”).

I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)

A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)

Facebook, Inc. and WhatsApp Inc. (“Petitioners”) are the real parties-in-

interest to this inter partes review petition.

B. Related Matters under 37 C.F.R. § 42.8(b)(2)

The ’433 patent is the subject of a pending request for inter partes review

(IPR2017-00225) filed by Apple Inc., on November 14, 2016. The Petitioners herein

are not parties to IPR2017-00225 and were not involved in the preparation of that

petition. An institution decision is expected for IPR2017-00225 by June 5, 2017.

Concurrent with the filing of this Petition, the Petitioners are filing a second

petition for inter partes review, to address claims not covered by the present Petition.

More specifically, the present Petition addresses claims 9-12, 14-17, 25, and 26, and

the other concurrently-filed petition addresses claims 1-8. The Petitioners filed their

challenges against these claims in two separate petitions to allow each petition to

provide a more complete and thorough treatment of each claim.

The ’433 patent is also the subject of two pending litigations involving the

Petitioners: Uniloc USA, Inc. et al. v. Facebook, Inc., Case No. 2:16-cv-00728-JRG

(E.D. Tex. Filed July 5, 2016) and Uniloc USA, Inc. et al. v. WhatsApp, Inc., Case


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No. 2:16-cv-00645-JRG (E.D. Tex. Filed June 14, 2016), which have been

consolidated for pretrial purposes with Uniloc USA, Inc. et al. v. Samsung

Electronics America, Inc., Case No. 2:16-cv-00642-JRG (E.D. Tex.).

The Petitioners are also aware of the following additional pending litigations

involving the ’433 patent: Uniloc USA, Inc. et al. v. Tencent America LLC et al.,

Case No. 2:16-cv-00694-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Apple Inc., Case

No. 2:16-cv-00638-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Blackberry

Corporation et al., Case No. 2:16-cv-00639-JRG (E.D. Tex.); Uniloc USA, Inc. et

al. v. Snap Inc., Case No. 2:16-cv-00696-JRG (E.D. Tex.); Uniloc USA, Inc. et al.

v. AOL Inc., Case No. 2:16-cv-00722-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v.

BeeTalk Private Ltd., Case No. 2:16-cv-00725-JRG (E.D. Tex.); Uniloc USA, Inc.

et al. v. Green Tomato Limited, Case No. 2:16-cv-00731-JRG (E.D. Tex.); Uniloc

USA, Inc. et al. v. Sony Interactive Entertainment LLC., Case No. 2:16-cv-00732-

JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Avaya Inc., Case No. 2:16-cv-00777-

JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Telegram Messenger, LLP, Case No.

2:16-cv-00892-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. HTC America, Inc., Case

No. 2:16-cv-00989-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Kyocera America,

Inc. et al., Case No. 2:16-cv-00990-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. LG

Electronics U.S.A., Inc., Case No. 2:16-cv-00991-JRG (E.D. Tex.); Uniloc USA, Inc.

et al. v. Motorola Mobility LLC, Case No. 2:16-cv-00992-JRG (E.D. Tex.); Uniloc


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USA, Inc. et al. v. ZTE (USA), Inc. et al., Case No. 2:16-cv-00993-JRG (E.D. Tex.);

Uniloc USA, Inc. et al. v. Huawei Device USA, Inc. et al., Case No. 2:16-cv-00994-

JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Google, Inc., Case No. 2:17-cv-00214-



JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. KIK Interactive, Inc., Case No. 2:17-cv-

00347-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Hike Ltd., Case No. 2:17-cv-

00349-JRG (E.D. Tex.); and Uniloc USA, Inc. et al. v. Tencent America LLC et al.,

Case No. 2:16-cv-00577-JRG (E.D. Tex.). Although the Petitioners are not parties

to these other litigations, because they involve allegations of infringement of the

’433 patent, they may be impacted by a decision by the Board in this IPR proceeding.

C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)

Petitioners provide the following designation of counsel.

LEAD COUNSEL BACK-UP COUNSEL

Heidi L. Keefe (Reg. No. 40,673) [email protected] [email protected]

COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington, DC 20004 Tel: (650) 843-5001 Fax: (650) 849-7400

Phillip E. Morton (Reg. No. 57,835) [email protected] [email protected]

COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington D.C. 20004 Tel: (703) 456-8668 Fax: (703) 456-8100


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LEAD COUNSEL BACK-UP COUNSEL

Mark R. Weinstein (Admission pro hac vice pending) [email protected] Tel: (650) 843-5007 Fax: (650) 849-7400

D. Service Information

This Petition is being served to the current correspondence address for the

’433 patent, UNILOC USA INC., Legacy Town Center, 7160 Dallas Parkway, Suite

380, Plano TX 75024. The Petitioners consent to electronic service at the addresses

provided above for lead and back-up counsel.

E. Power of Attorney

Filed concurrently in accordance with 37 C.F.R. § 42.10(b).

II. FEE PAYMENT - 37 C.F.R. § 42.103

This Petition requests review of ten (10) claims. A payment of $23,000 is

submitted herewith, based on a $9,000 request fee (for up to 20 claims), and a post-

institution fee of $14,000 (for up to 15 claims). This Petition meets the fee

requirements of 35 U.S.C. § 312(a)(1).


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III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 AND 42.108

A. Grounds for Standing under 37 C.F.R. § 42.104(a)

The Petitioners certify that the ’433 patent is available for inter partes review

and that the Petitioners are not barred or otherwise estopped from requesting inter

partes review on the grounds identified herein.

B. Identification of Challenge under 37 C.F.R. § 42.104(b) and Statement of Precise Relief Requested

The Petitioners respectfully request that the Board initiate inter partes review

of claims 9-12, 14-17, 25, and 26 on the following grounds:

Ground Claims Basis for Challenge

1 9, 12, 14, 17, 25, 26

Unpatentable over Zydney (Ex. 1103), under § 103(a)

2 11, 15, 16 Unpatentable over Zydney (Ex. 1103) in view of Greenlaw (Ex. 1010), under § 103(a)

3 10 Unpatentable over Zydney (Ex. 1103) in view of Newton (Ex. 1106), under § 103(a)

Part VII below explains why the challenged claims are unpatentable based

on the grounds identified above. These references were not cited during the original

prosecution of the ’433 patent, and were not cited in the separate IPR petition filed

by Apple Inc. (IPR2017-00225). Submitted with the Petition is the Declaration of

Tal Lavian, Ph.D. (Exhibit 1102) (“Lavian”), a technical expert with decades of

relevant technical experience. (Lavian, ¶¶ 1-10, Ex. A.)


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IV. TECHNOLOGY BACKGROUND RELEVANT TO A PERSON OF ORDINARY SKILL IN THE ART

As explained by Dr. Lavian, a person of ordinary skill in the art for purposes

of the ’433 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 development and programming relating to network communication

systems (or equivalent degree or experience). (Lavian, ¶¶ 13-15.)

As discussed in more detail below, the ’433 patent relates generally to instant

messaging systems. The term “instant messaging” or “IM” generally refers to a

technology that allows two or more people to exchange information with other users,

including text, voice data, and/or files. (Id., ¶ 30.)

Instant messaging technologies date back to at least the 1960s with the MIT

“Interconsole Messages” system, which allowed users to exchange textual messages

over a network. (Id., ¶ 32.) Through the 1980s and 1990s, companies such as

CompuServe, Commodore, and America Online (AOL), among others, released

instant messaging solutions to the public, some of which became immensely

popular. (Id., ¶¶ 33-36.) For example, by 2002, AOL Instant Messenger (AIM), the

instant messaging service offered by AOL, had more than 100 million registered

users. (Id., ¶ 37.)

The ’433 patent also acknowledges that instant messaging solutions were

known in the art. The Background section of the patent explains that known instant


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messaging (“IM”) systems generally included client devices, IM software installed

on those client devices, and IM servers. (’433, 2:35-39.) IM systems communicated

over a packet-switched network, such as the Internet. (Id., 1:38-39, 2:35-39.) The

IM server maintained a list of users that were currently “online” and able to receive

messages and presented this list to the users via the instant messaging software. (Id.,

2:39-42; Lavian, ¶ 40.) A user could select one or more recipients and send them a

message. (’433, 2:43-45; Lavian, ¶¶ 30, 41, 42.) The IM server would transmit the

message to the recipients and the message would be displayed to the recipients by

the IM software. (’433, 2:45-47.)

Instant messaging services typically required that the user have software (an

IM client) that provides a user interface allowing a user to send messages to one or

more recipients. The messages would typically be communicated to a server, which

would either deliver the message to the recipients or store them at the server if the

recipient was not currently available. (Lavian, ¶¶ 30, 41, 42.) IM clients typically

varied in terms of what types of information they could transmit, how they indicate

availability of other users, whether and how they secure the communications, and

other details. (Id., ¶ 31.)

V. THE ’433 PATENT

The ’433 patent purports to describe a system and method for delivering

instant voice messages over a packet-switched network. (’433, Abstract.) The


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disclosed system includes a client such as a VoIP telephone or PC computer

“enabled for IP telephony” that is connected to a server and instant voice message

(“IVM”) recipients through a network(s). (Id., 1:44-51, 2:61-3:5, 7:8-26.)

In one embodiment, when a user chooses to send an IVM, the IVM client

displays a “list of one or more IVM recipients.” (Id., 8:2-5.) This recipient list is

provided and stored by an IVM server. (Id.) Once recipients are selected, the user

records a message, such as by using a microphone to record a digitized audio file.

(Id., 8:11-15.) The patent states that one or more files may be attached to the instant

voice message, such as by using a conventional “drag-and-drop” technique. (Id.,

12:28-43, 13:35-40.)

Once the voice message is generated, the client transmits the voice message

to the server for delivery to one or more recipients. (Id., 8:22-30.) After receiving

the IVM, the server transmits the voice message to the one or more recipients. (Id.,

8:30-33.) If the recipient is “available” (currently connected to the IVM server), it

will receive the instant voice message. (Id., 8:36-38.) If a recipient is unavailable

(offline), the server temporarily saves the voice message and transmits it once the

recipient becomes available. (Id., 8:38-43.) The recipient is notified of the new

voice message and can play the audio file. (Id., 8:33-36.) If the message had

attachments, the recipient can also access the attached files. (Id., 13:5-12.)


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This Petition addresses claims 9-12, 14-17, 25, and 26. Claim 9 is the sole

challenged independent claim. Claims 11, 12, and 14-17 depend from claim 9.

Claim 25 depends from claim 17, and claim 26 depends from claim 25.

VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)

The constructions below provide the broadest reasonable interpretation in

light of the specification to a person of ordinary skill in the art.

A. “instant voice messaging application”

The broadest reasonable interpretation of an “instant voice messaging

application” in the context of the claims of the ’433 patent is “hardware and/or

software used for instant voice messaging.” (Lavian, ¶¶ 48-56.)1

The written description of the ’433 patent does not use the word “application”

in any way relevant to the alleged invention. In fact, all instances of the word

“application” in the written description involve irrelevant (for purposes of this

Petition) cross-references to related patent applications. (’433, 1:4-14.)

1 The Petitioners do not contend that “instant voice messaging application,” under

its broadest reasonable construction, is a “means-plus-function” claim limitation

subject to 35 U.S.C. § 112, ¶ 6 (pre-AIA). The Petitioners reserve their right to argue

that this term is indefinite under the narrower claim construction standards

applicable in litigation.


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Nevertheless, the term “application” to a person of ordinary skill in the art

typically refers to computer software for performing a particular function. (Lavian,

¶ 52 (citing Ex. 1109, Microsoft Computer Dictionary (3d ed. 1997), at 27 (defining

“application” as “[a] program designed to assist in the performance of a specific task,

such as word processing, accounting, or inventory management.”)).) The written

description of the ’433 patent, however, indicates that the term “instant voice

messaging application” should not be limited to just software under its broadest

reasonable construction.

The written description does not identify any particular software program

capable of performing all of the functions associated with the “instant voice

messaging application” recited in the claims. (Lavian, ¶ 53.) To the contrary, it

describes these functions as being performed by an instant voice messaging client,

IVM client 208, which is a “general-purpose programmable computer.” (’433,

12:13-15.) The IVM client 208 contains various boxes labeled with functions

including client platform 302, which contains boxes labeled client engine 304,

document handler 306, file manager 308, audio file creation 312, signal processing

314, encryption/decryption 316, and compression/decompression 316. (Id., 12:19-

23.) The IVM client 208 also contains a box labeled messaging system 320. (Id.,

12:8-13.) Figure 3, an excerpt of which is reproduced below, shows these various

boxes inside IVM client 208.


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(Id., Fig. 3.)

The Petitioners note that independent claims 1, 6, and 9 recite that the “instant

voice message application” includes a “client platform system” and a “messaging

system.” But Figure 3 above shows both client platform 302 and messaging system

320 sitting within IVM client 208, and the written description does not identify a

specific software program that contains those two components. Accordingly, the

term “instant voice messaging application” under its broadest reasonable


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construction should not be limited to a software program, but should be interpreted

more broadly to encompass a combination of multiple different software programs

and/or hardware components. (Lavian, ¶ 54.)

This conclusion is buttressed by the fact that independent claims 1 and 6recite

that the claimed instant voice messaging application “displays a list of one or more

potential recipients for the instant voice message.” The written description indicates

that displaying is carried out by a hardware device – display device 216 connected

to IVM client 208. (Id., Fig. 2; 8:2-3 (“The IVM client 208 displays a list of one or

more IVM recipients on its display 216… .”).)2 The written description does not

state that any of the boxes inside IVM client 208, or any software, provide the

claimed display capability.

Therefore, a person of ordinary skill in the art would have understood that,

under its broadest reasonable construction, “instant voice messaging application” is

not limited to software and could include hardware such as a general purpose

computer and display device 216. (Lavian, ¶ 56.) Accordingly, a person of ordinary

skill in the art would have understood that the broadest reasonable interpretation of

“instant voice messaging application” in the context of the claims of the ’433

patent is “hardware and/or software used for instant voice messaging.”

2 All emphasis in quoted text in this Petition has been added, unless otherwise noted.


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B. “client platform system”

One of the components of the claimed “instant voice messaging application”

is a “client platform system.” In particular, claims 1 and 9 state that the “instant

voice messaging application” includes “a client platform system for generating an

instant voice message.” As shown below, the broadest reasonable construction of

“client platform system” is “hardware and/or software on a client for

generating an instant voice message.”3

The written description does not use the term “client platform system” but

does describe a “client platform 302” whose purpose is “generating an instant voice

message” (’433, 12:9-10). The written description further states that the client

platform 302 “comprises a client engine 304, which controls other components” such

as the document handler, file manager, and encryption/decryption. (Id., 12:19-23.)

The written description does not identify what “client engine 304” actually is, e.g.,

whether it is hardware and/or software. The written description instead provides a

functional description of client engine 304 as performing at least two functions: (1)

3 The Petitioners do not contend that “client platform system,” under its broadest

reasonable construction, is a “means-plus-function” claim limitation subject to 35

U.S.C. § 112, ¶ 6 (pre-AIA). The Petitioners reserve their right to argue that this

term is indefinite under the claim construction standards applicable in litigation.


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communicating with the server, and (2) performing operations required to generate

an instant voice message. (Id., 12:26-27, 13:17-30.) Figure 3 similarly shows client

engine 304 as a nondescript box within client platform 302. (Id., Fig. 3.)

Nevertheless, as explained above, the claimed “instant voice messaging

application” is composed of hardware and/or software under its broadest reasonable

construction. Because the claimed “client platform system” is part of the “instant

messaging application” in the challenged claims, the “client platform system” under

its broadest reasonable construction should similarly be defined as hardware and/or

software. Accordingly, the term “client platform system” should be defined under

its broadest reasonable construction as “hardware and/or software on a client for

generating an instant voice message.”

In the co-pending litigation involving the Petitioners, the Patent Owner has

proposed to construe “a client platform system” to mean “the system of the client

engine which controls other components used to generate an instant voice message.”

(Ex. 1111, Ex. A, pp.16-17 (Term 24).) This definition has various flaws and is

inconsistent with the broadest reasonable interpretation. (Lavian, ¶ 61.) To begin

with, this definition incorrectly reverses the relationship between the “client engine”

and the “client platform” by reciting that the “client platform system” is a part of the

“client engine.” But the written description makes clear that the opposite is true –

client engine 304 is part of the client platform 302, not the other way around. (’433,


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Fig. 3, 12:19-20 (“The client platform 302 comprises a client engine 304, which

controls other components…”).) Second, the claims themselves do not recite a

“client engine,” and the recitation of a “client engine” does not appear to add

anything meaningful to the Patent Owner’s proposed construction. (Lavian, ¶ 61.)

Nevertheless, as explained in the analysis below, the prior art discloses the claimed

“client platform system” even under the Patent Owner’s proposed construction.

VII. CLAIMS 9-12, 14-17, 25, AND 26 ARE UNPATENTABLE

The challenged claims are unpatentable based on the following grounds:

Ground Claims Basis for Challenge

1 9, 12, 14, 17, 25, 26

Unpatentable over Zydney (Ex. 1103), under § 103(a)

2 11, 15, 16 Unpatentable over Zydney (Ex. 1103) in view of Greenlaw (Ex. 1110), under § 103(a)

3 10 Unpatentable over Zydney (Ex. 1103) in view of Newton (Ex. 1106), under § 103(a)

This Petition will first provide an overview of each prior art reference.

A. Brief Summary and Date Qualification of the Prior Art

Overview of Zydney (Ex. 1103)

Zydney is a published PCT application that describes a system for voice

communication that enables a user to send instant voice messages, which Zydney

calls “voice containers.” (Zydney, Ex. 1103, 2:2-3.) The system transmits the voice

containers “instantaneously or stored for later delivery,” depending on whether or


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not the recipient is currently online. (Id., 1:19-22, 15:8-21.) Zydney qualifies as

prior art vis-à-vis the ’433 patent under 35 U.S.C. § 102(b) (pre-AIA) because

Zydney was published on February 15, 2001, more than one year before the earliest

patent application filing date for the ’433 patent.

The Petitioners also note that the Zydney reference contains page numbers but

does not contain line numbers. Accordingly, for convenience of the Board and ease

of reference, Exhibit 1103 to this Petition contains a copy of Zydney in which line

numbers have been added to the left of each page (beginning on page 1) to facilitate

precise citation to the passages of the reference cited in this Petition. Any citations

to line numbers of Zydney in this Petition and in the Lavian Declaration, therefore,

refer to these added line numbers as shown in Exhibit 1103. A copy of the original

Zydney reference without line numbers is submitted as Exhibit 1112.

The system of Zydney is generally shown in Figure 1A, reproduced below.


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(Zydney, Fig. 1A.)4

Three key components of the system include the “SENDER PC SOFTWARE

AGENT” shown on the left (22), the “RECIPIENT PC SOFTWARE AGENT”

shown on the right (28), and the “CENTRAL SERVER” shown in the middle (24)

of Figure 1A. (Id., 10:19-11:1.) Zydney explains that the sender and recipient

4 All highlighting in reproduced figures has been added, unless otherwise noted.


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software agents may work on any suitable client device such as “a personal

computer, wireless handheld computer such a personal data assistant (PDA), digital

telephone, or beeper.” (Id., 11:14-20.) Central server (24) facilitates instant voice

messaging between the sender and the recipient. (Id., 10:20-11:1.) The sender,

recipient, and central server communicate with each other using a communications

network, as shown with the bottom cloud labeled “INTERNET” in Figure 1A. (Id.,

Fig. 1A; see also id., 5:4-5, 5:15-18, 10:11-14, 14:2-5.)5

Sending a voice instant message from a sender to a recipient in Zydney is

straightforward. A message sender (originator) “selects one or more intended

recipients from a list of names that have been previously entered into the software

agent.” (Id., 14:17-19.) The sender also “digitally records messages for one or more

recipients using a microphone-equipped device and the software agent. 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., 16:1-4; see also id., 20:11-14,

21:11-16 (describing “the recording of one or more voice packet messages on a

5 Figure 1A also depicts an alternative embodiment in which a sender and recipient

can communicate using phones (32, 34) connected over the Public Switched

Telephone Network (PSTN). This Petition will focus on the Internet-connected

embodiment described in the text.


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personal computer” as “voice files [that] can be played and recorded using voice

container enabled devices.”).) The voice message is placed into a “voice

container,” which can be transmitted to the destination. (Id., 10:20-11:3.)

Zydney describes at least two modes in which voice messages can be

transmitted: a “pack and send” mode and an “intercom” mode. This Petition will

focus primarily on the “pack and send” mode as it is more pertinent to the challenged

claims of the ’433 patent.

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., 11:1-3; see also id., Fig. 4.) The

software agent compresses and stores the voice message file, which Zydney refers

to as a “voice container,” on the client device. (Id., 16:3-4, 12:1-8, 10:20-11:3.) The

sender can also include “multimedia attachments” with the voice message, such as

graphics. (Id., 19:2-8, 22:17-20, Fig. 6.) The software agent then transmits the voice

container (and any attachments) to either the central server for delivery or,

alternatively, directly to the recipient. (Id., 12:1, 12:20-23, 16:7-10.)

If the recipient is online, it receives the voice container immediately. (Id.,

1:21-22 (“routed to the appropriate recipients instantaneously.”).) If the recipient is

offline, the server stores the voice container until the recipient is available, as shown

in Figure 4. (Id., 13:12-15, 14:9-11, Fig. 4 (“if recipient is not online, client sends


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voice container to server file”).) The central server can later forward the stored voice

container to the recipient once it logs in. (Id., claim 1, 14:14-16, Fig. 4 (“recipient

logs on to internet or intranet,” “server recognizes recipient, downloads voice

container”), 16:10-12 (“If the intended recipient has a compatible active software

agent on line after log on, the central server downloads the voice recording almost

immediately to the recipient.”).)

Once the recipient’s software agent receives the voice container, it unpacks

the voice container and any attachments, and presents them to the recipient. (Id.,

Fig. 18, 35:20-22.) The software agent can then audibly play the voice message to

the recipient through the speakers or headset attached to the device. (Id., 13:19-22,

14:14-16, 16:10-14.)

Overview of Greenlaw (Ex. 1110)

Greenlaw, entitled “Introduction to the Internet for Engineers” (1999), is a

textbook that provides introductory information about various Internet technologies,

including email. Greenlaw qualifies as prior art to the ’433 patent under at least 35

U.S.C. § 102(b) (pre-AIA) because it was published more than one year before the

earliest patent application filing date for the ’433 patent. (Ex. 1113)

This Petition cites Greenlaw in connection with dependent claims 11, 15, and

16, which depend from claim 9. These claims recite additional features of the instant

voice messaging application of claim 9, including “display[ing] one or more controls


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for audibly playing the instant voice message” (claim 11), “display[ing] the

attachment” (claim 15), and “display[ing] one or more controls for performing at

least one of reviewing, re-recording or deleting the instant voice message” (claim

16). These are the types of features that one might expect to be associated with the

system receiving the instant voice message, and as explained in Ground 2 below, the

receiving software agent in Zydney discloses them.

But as fully explained in the discussion of Ground 2 below, these claims could

be read as requiring the sending system to provide those features. The claims

expressly recite that the claimed features are provided by “the instant voice

messaging application,” a reference to the instant voice messaging application of

claim 9 that is used to send the instant voice message. This Petition accordingly

cites Greenlaw in the event claims 11, 15, and 16 are narrowly construed to require

performance of their functions on the sending system.

Greenlaw addresses this issue in a straightforward way by confirming what

users of messaging systems have long known – that a sending user, when selecting

recipients for the message, can also “copy” itself (for example by filling in the “cc:”

or “bcc:” addresses) on the message, and thereby receive a copy. (Greenlaw at 19,

§1.5.19 (“You will be given the option of sending copies of the message to others

when the mailer prompts you with Cc and perhaps with Bcc. Simply enter the other

e-mail addresses or aliases, as desired. For important correspondence that you want


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to maintain a record of, it is a good idea either to Cc or Bcc yourself, unless your

mailer automatically keeps sent messages.”); id. at 21, §1.5.3 (“After composing

your message using the text editor and signing it, you are ready to send. Again, for

important correspondence or correspondence you would like to keep a record of, it

is a good idea to Cc yourself on the message.”).)

By allowing the sender to copy itself, as taught in Greenlaw, the sending

software agent in Zydney becomes another recipient of the instant voice message.

Greenlaw thus bridges any potential gap between Zydney and the narrower

construction of claims 11, 15, and 16 by making the recipient facing features in

Zydney (which satisfy claims 11, 15, and 16) accessible to the sender.

Overview of Newton (Ex. 1106)

Newton, entitled “Newton’s Telecom Dictionary” (2002) is a reference

describing various telecommunications, networking, and Internet technologies. This

Petition cites Newton in connection with dependent claim 10, which recites that the

“packet-switched network [of claim 9] comprises a WiFi network.” WiFi refers

to a wildly popular wireless networking technology that was described in the 1990s

by the Institute of Electrical and Electronics Engineers (IEEE). (Lavian, ¶ 177.)

This Petition cites Newton for the proposition that the addition of a “WiFi

network” as recited in claim 10 does not present any non-obvious distinction over

Zydney. Newton explains that WiFi was “the most common” wireless local network


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and describes the growing prevalence of WiFi-enabled computers, including for

Internet connectivity through WiFi. (Newton at 18.)

B. Ground 1: Claims 9, 12, 14, 17, 25-26 Are Obvious Over Zydney

Claim 9 (Independent)

(a) “A system, comprising:” (Preamble, Claim 9)

The preamble of claim 9 merely recites “a system,” and thus, appears to be

non-limiting. Nevertheless, as explained in great detail below, Zydney discloses a

voice instant message system with the features recited in the claim limitations below.

(b) “an instant voice messaging application comprising:” (Claim 9[a])

As explained in Part VI.A above, the broadest reasonable construction of

“instant voice messaging application” is “hardware and/or software used for instant

voice messaging.” The “instant voice messaging application” in Zydney takes the

form of software (including a software agent) that runs on a computing device or

hardware (such as a personal computer) of the sender (originator) of an instant voice

message. This is reflected in Step 1.1.1 in Figure 7, which discloses a first step in

which the sender (originator) launches a software agent on a personal computer:


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(Zydney, Fig. 7 (partial figure shown).) Zydney further explains that the software

agent can run on different kinds of hardware beyond a personal computer:

[T]he present invention is designed to adapt to the voice and data

compression capabilities of the user’s existing hardware and software

platform. More specifically, the agent of the present invention may be

adapted to work on a personal computer, wireless handheld computer

such a personal data assistant (PDA), digital telephone, or beeper. In

each case different voice and compression applications and data

formats may be available as dictated by the hardware platform and

software residing thereon.

(Id., 11:14-20.) Zydney therefore discloses an instant voice messaging application

that includes software (including the software agent) that operates on hardware (e.g.

personal computer or other device).

The instant voice messaging application in Zydney, moreover, is “used for

instant voice messaging,” as required by the broadest reasonable construction

proposed herein. Zydney explains that the software agent on the client device can

generate and transmit instant voice messages in the form of “voice containers.” (Id.,


-25-

2:1-3, 10:20-11:3.) These voice containers “can be stored, transcoded and routed to

the appropriate recipients instantaneously or stored for later delivery.” (Id., 1:21-

22.) A recipient of the voice message “can reply in a complementary way, allowing

for near real-time communication.” (Id., 16:14-15.) Zydney describes this exchange

of voice containers as “a voice instant messaging session,” as an alternative to the

“intercom” mode noted previously in the summary of Zydney. (Id., 15:8-13, 10:19-

11:3, 16:1-12.) The instant voice messaging application in Zydney is therefore used

“for instant voice messaging.”

Having addressed the “instant voice messaging application” of claim 9, this

Petition will next turn to the two additional elements the application must comprise:

(i) a “client platform system” and (ii) a “messaging system.”

(i) “a client platform system for generating an instant voice message;” (Claim 9[a1])”

As noted, the claims and the written description make clear that the “client

platform system” is part of the claimed “instant voice messaging application,” and

as noted in Part VI.B above, the broadest reasonable construction of “client platform

system” is “hardware and/or software on a client for generating an instant voice

message.” The client platform system in Zydney is disclosed by the portions of the

software agent on the client of the sending (originating) user responsible for creating

the instant voice message, a process described below. As noted previously, the

“instant voice message” in Zydney takes the form of a voice container.


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Zydney confirms that the software agent on the client system generates the

instant voice message: “To create a message, the software agent will address, pack

and send the message in a voice container.” (Zydney, 14:2-5.) The voice container

is an object that contains voice data and may also contain properties of the voice

data: “The term ‘voice containers’ as used throughout this application refers to a

container object that contains no methods, but contains voice data or voice data and

voice data properties.” (Id., 12:6-8.)

More specifically, in order to generate a voice container, the software agent

records the voice of the sender (originator) and packages it into a file:

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. 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., 16:1-4; see also id., 20:11-14, 25:10-13, 33:4-6, claims 1, 8.) Additionally:

A Software Agent utilized by the sender of the voice container provides

the following functionality: log on to a central server 46; authenticate

to the central server 48; address the recipient(s) and pack message into

a voice container or multiple voice containers 50; and, enable transport

52 of the voice container to the recipient or the central server.

(Id., 13:1-6.)


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The figures in Zydney further show that the software agent generates an

instant voice message. Figure 2 of Zydney shows the Software Agent with its

various components, including the compression data encryption/protocols and

transcoding process components (items 50). (Id., Fig. 2.) Figures 4, 6, and 16 depict

the client as building the voice container. (Id., Fig. 4 (“client builds voice container

with message”) (third box under), Fig. 6 (“client builds voice container with voice

message”), Fig. 16, Step 5.1.2 (“recording a voice in voice container”).)

Accordingly, the “client platform system” of claim 9 is disclosed by the

portions of the software agent in Zydney responsible for capturing the recorded voice

and processing it into a voice container file, which can include compression and/or

encryption as noted. (Id., Fig. 2 (item 50), 13:1-6 (“A Software Agent utilized by

the sender of the voice container provides the following functionality… pack

message into a voice container or multiple voice containers 50….”).) The software

agent’s functionality is also supported by hardware including the client device (e.g.,

personal computer) and the microphone (which is used to record the sending

(originating) user’s voice). (Id., 16:1-4, Figs. 4, 6, 7.)

As noted in the claim construction section in Part VI.B above, the Patent

Owner in the co-pending litigation has argued that “client platform system” means

the “system of the client engine which controls other components used to generate

an instant voice message.” Although this construction lacks merit for the reasons


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provided in Part VI.B above, Zydney discloses the claimed “client platform system”

even under that definition. This is because, as explained above, the software agent

in Zydney generates a voice container by controlling various other components. A

person of ordinary skill in the art would have understood that these components

include, for example, a microphone (for capturing the sender’s voice), processor

(used to pack the recorded voice into a file), and various software components

including the compression/encryption protocols 50 (Fig. 2) that are used in creation

of the voice container. (Lavian, ¶¶ 95, 96; Zydney, Fig. 2 (item 50), 13:1-6 (“A

Software Agent utilized by the sender of the voice container provides the following

functionality… pack message into a voice container or multiple voice containers

50….”), 16:1-4, Figs. 4, 6, 7, 16.) The instant voice messaging application in

Zydney thus includes a “client platform system for generating an instant voice

message.”

(ii) “a messaging system for transmitting the voice instant message over a packet-switched network; and” (Claim 9[a2])

The second component of the claimed “instant voice messaging application”

of claim 9 is the “messaging system.” The “messaging system” in Zydney takes the

form of the portions of the software agent on the client of the sending (originating)

user responsible for transmitting the voice container. These portions are shown as

“transport processes” 52 in Figure 2. (Zydney, Fig. 2 (“Transport Processes” 52).)


-29-

As explained in Zydney: “A Software Agent utilized by the sender of the voice

container provides the following functionality: log on to a central server 46;

authenticate to the central server 48; address the recipient(s) and pack message into

a voice container or multiple voice containers 50; and, enable transport 52 of the

voice container to the recipient or the central server.” (Id., 13:1-6.) The

functionality on the client system for transmitting the voice container, and

particularly the transport processes component of the software agent, discloses the

claimed messaging system for transmitting the instant voice message. (Id., 12:1-

8, 10:20-11:3.)

Zydney also discloses that the instant voice message is transmitted “over a

packet-switched network,” as claimed. Zydney discloses instant voice messaging

over a packet-based network such as the Internet. (Id., 5:3-4 (the system “is

particularly well suited for use in connecting Internet users and shall be so

described”), 10:14-16, (the system is “distributed over the Internet”), 1:4-5 (the

system “relates to the field of packet communications, and more particularly to voice

packet communication systems.”), 2:6-10 (the system enables “forwarding the

message to another Internet or voice container enabled device”).) More specifically,

the voice containers (instant voice messages) are transmitted over the Internet in data

packets using the well-known TCP/IP protocol. (Id., Fig. 1A (showing sender

software agent 22 communicating voice container 26 to recipient software agent 28


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through the “INTERNET”), 23:11-12 (“[t]he voice container will be sent using

standard TCP/IP transport”), Fig. 2 (identifying “Transport Processes (TCP/IP,

UDP, PSTN, Others)”).)

The term “packet-switched network,” as recited in the claim, generally

refers to a type of communications network in which information is transferred

through a series of data units called “packets.” (Lavian, ¶ 100.) Zydney does not

explicitly use the term “packed-switched network,” but such a network is either

disclosed by or obvious in view of Zydney. (Id., ¶¶ 100-02.)

For example, a person of ordinary skill in the art would have known that

communication using packets over the Internet, as described in Zydney, necessarily

discloses communication “over a packet-switched network,” as recited in the

claim. (Id., ¶ 101.) The written description of the ’433 patent itself expressly

confirms that the “Internet” is a packet-switched network. (’433, 1:38-44 (“a VoIP

terminal device is connected to a packet-switched network (e.g., Internet)”), 1:52-

53 (“FIG. 1 is an illustrative example of a prior art IP telephony system 100 [which]

comprises a packet-switched IP network 102, such as the Internet”).)

It would also have been obvious to a person of ordinary skill in the art that the

Internet as disclosed in Zydney would have been a packet-switched network, as

claimed. (Lavian, ¶ 102.) The Internet was the most well-known and most widely

used packet-switched network as of December 2003, the earliest possible priority


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date of the ’433 patent. (Id.) Zydney itself explains that its system “relates to the

field of packet communications, and more particularly to voice packet

communication systems.” (Zydney, 1:4-5.) As Zydney explains, “Transaction

Control Protocol/Internet Protocol (TCP/IP) is the communications standard

between hosts on the Internet. TCP/IP defines the basic format of the digital data

packets on the Internet allowing programs to exchange information with other hosts

on the Internet.” (Id., 5:15-18.)

TCP/IP would have been familiar to a person of ordinary skill in the art as a

reliable end-to-end transport protocol for packet-switched networks that use the

Internet protocol suite, including the Internet. (Lavian, ¶ 102.) Accordingly,

deploying the system of Zydney using the Internet would have predictably resulted

in a method for instant voice messaging over a packet-switched network, as recited

in claim 9. (Id.)

Accordingly, Zydney discloses or renders obvious a “messaging system for

transmitting the voice instant message over a packet-switched network,” as recited.

Having addressed both of the components of the claimed “instant voice messaging

application” (i.e., the “client platform system” and the “messaging system”), this

Petition will now address the final limitation in claim 9.


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(c) “wherein the instant voice message application attaches one or more files to the instant voice message.” (Claim 9[b])

Finally, the instant voice messaging application in Zydney attaches one or

more files to the voice container (the “instant voice message”), such as a “digitized

greeting card” or “other data types” to each instant voice message (voice container)

to be “transported to the recipient”:

Example: Multimedia Attachments

Another important application of the present invention system and

method for voice exchange and voice distribution is attaching other

media to the voice containers to provide a richer communications

environment. For example, voice containers may have digitized

greeting cards appended to them to present a personalized greeting.

The voice container has the ability to have other data types attached to

it and thus be transported to the recipient.

(Zydney, 19:1-7.) Controls may also be implemented to specify “the number and

type of attachments that can accompany a voice container message.” (Id., 22:19-

20.)

Figure 6, reproduced below, depicts a process for generating an instant voice

message that includes attaching a multimedia “file” to the voice container audio file.

The user clicks “talk” to record a voice message in a voice container and then can

specify a “file” to attach to the voice container.


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(Id., Fig. 6.)

Figures 16-18 similarly provide a three-part description of the generation and

transmission of a “voice container with multimedia attachments.” (Id., 35:15-17,

Figs. 16-18.) As shown in Figure 16, reproduced below, the “originator” can obtain

a “multimedia file,” record a voice container, and “associate” (attach) the

multimedia file to the voice container.


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(Id., Fig. 16.) Figure 17 continues the description from Figure 16 (“5.1 Originator”),

showing “5.2 Central Server” including a step of “receiving the voice container and

associated media file.” (Id., Fig. 17.) These figures therefore confirm that the

multimedia file is attached to the voice container on the originator’s client system

before the voice container and attachment are transmitted to the central server.

Zydney also describes attaching files to voice containers using the industry-

standard Multipurpose Internet Mail Extension (MIME) format, which allows

attachments including “binary, audio, and video” files to be specified in message

headers. (Id., 19:6-12.) MIME refers to a well-known standard originally developed

in the context of sending email messages containing file attachments. (Lavian, ¶

107.) MIME specifies a technique for encoding a message into multiple parts, with

each part capable of containing different types of data. (Id.)


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Zydney does not appear to explicitly identify which portion of the software

on the client system attaches files to voice containers, but this is a trivial omission.

(Id., ¶ 108.) The client system operated by the user operates to generate and transmit

the voice container (which discloses the claimed “instant voice messaging

application”) performs the attachment, as explained previously. (Zydney, 19:1-7,

22:19-20, Figs. 16-17.) A person of ordinary skill in the art would have understood

that the software agent that generates and transmits the voice container would likely

also be responsible for the attachment of files to the voice container, given that the

software agent performs the various other functions for generating and transmitting

voice containers as shown in Figure 2. (Lavian, ¶ 108.) Zydney does not identify

any other software on the client that performs this function.

In any event, it would have been obvious to implement the system of Zydney

in which the software agent on the client performs the function of attaching files to

the voice container prior to transmission. (Id., ¶ 109.) As explained in Zydney, “[t]o

create a message, the software agent will address, pack and send the message in a

voice container.” (Id., 14:4-5; see also id., 13:2-5 (“A Software Agent utilized by

the sender of the voice container provides the following functionality… pack

message into a voice container or multiple voice containers 50…”).) A person of

ordinary skill in the art would have found it plainly obvious that attaching files to a

voice container could have been included as part of the overall process of


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“pack[ing]” the message into a voice container, a process that Zydney confirms is

performed by the software agent on the sending client device. (Lavian, ¶ 109.)

Zydney therefore discloses that “the instant voice message application

attaches one or more files to the instant voice message.” Claim 9 is obvious.

Claim 12 (Dependent): “The system according to claim 9, wherein the instant voice messaging application encrypts the instant voice message.”

Figure 2 in Zydney depicts a set of “encryption protocols” in the software

agent (which is part of the claimed instant voice messaging application) that encrypt

the instant voice message.


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(Zydney, Fig. 2.)

Zydney explains that the software agent includes a “standard codec” used for

carrying out the encryption process: “Each software agent that has been loaded and

registered with the system will in addition to the standard codec used for the

encryption and decryption of the voice containers detail the other codecs that the

software agent may have access to on the system.” (Id., 27:1-6.) Zydney thus


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discloses that the “instant voice messaging application encrypts the instant voice

message,” rendering claim 12 obvious.

Claim 14 (Dependent): “The system according to claim 9, wherein the instant voice messaging application invokes a document handler to create a link between the instant voice message and the one or more files.”

As explained previously with respect to claim 9[b], Zydney discloses that

client system can attach files and also has functionality for “unpacking and

presenting” the graphical and sound components of a received voice container with

an attached file. (Zydney, 19:1-12, 22:19-20, 35:15-22, Figs. 6, 16-18.) Zydney

further explains that the attachment of files creates an association between a voice

container (the instant voice message) and the attached file, which discloses creating

a link between the instant voice message and the file. For example, in Figure 6,

reproduced below, Zydney discloses that the “user is asked what multimedia file to

associate [with] this voice container” and subsequently “enters [the] name of

individual or code of file or web page to associate.” (Id., Fig. 6.) The created

“association” discloses the claimed “link.”


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(Id., Fig. 6.) Similarly, Figure 16 reproduced below shows that the sender

(“originator”) can use the client system to obtain a “multimedia file,” record a voice

container, and “associat[e]” (attach) the multimedia file to the voice container.


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(Id., Fig. 16.) Figures 17-18 depict this message with its associated multimedia files

being sent to a central server and then to the recipient software agent, which

“unpack[s] and present[s]” the “associated” (attached) multimedia file (i.e., the

“graphical” component of the message). (Id., Figs. 17-18.)

(Id., Fig. 17.)


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(Id., Fig. 18.) Accordingly, the software agent in Zydney “invokes a document

handler to create a link between the instant voice message and the one or more

files,” as recited in claim 14.

The Petitioners note that the ’433 patent specification does not provide a

definition for “document handler.” The written description instead refers to

document handler 306 contained within the general-purpose programmable

computer IVM client 208. (’433, 12:13-23.) The patent states that to attach files to

an instant voice message, the system “invokes the document handler 306 to make

the appropriate linkages to the one or more files.” (Id., 13:35-40.) The specification

also states that “[t]he document handler 306 oversees the retrieving, sending,

receiving and storing of one or more documents (or files) attached to instant voice

messages from/to the one or more selected IVM recipients that may be

communicating with the IVM client 208.” (Id., 12:28-32.)

Under the broadest reasonable interpretation, therefore, a person of ordinary

skill in the art would have understood “document handler” to simply refer to a

software component that handles documents. (Lavian, ¶ 118.) That software

component in Zydney is the portion of the software on the originating device,

described above, that facilitates attachments to voice containers and creates an

“association” between the message and the attachments. (Id., ¶ 120.)


-42-

The Patent Owner has proposed to construe “document handler” to mean a

“component of the client platform that oversees the retrieving, sending, receiving

and storing of one or more documents (or files) attached to instant voice messages

from/to the one or more selected IVM recipients that may be communicating with

the IVM client.” This construction is not the broadest reasonable interpretation of

this term. (Id., ¶ 119.) The proposed construction attempts to import a number of

limitations such as “retrieving, sending, receiving and storing” file attachments,

which are not recited in the claim. The written description of the preferred

embodiment does not appear to strictly limit the claimed “document handler” to

those specific functions. (Id.)

Even under the Patent Owner’s proposed construction, the software agent

would disclose the claimed “document handler.” Zydney describes that the client

system contains functionality for retrieving, sending, receiving and storing sent and

received instant voice messages (voice containers) including any attached files.

(Zydney, 1:21-2:5, 10:19-11:6, 11:14-22, 13:1-6, 13:19-22, 16:1-14, 19:2-12, Figs.

4, 6, 16-18.) The software agent in Zydney is responsible for sending and receiving

the voice containers and otherwise communicating with the central server, as

illustrated in Figure 2. It would have been understood and obvious that the software

agent is a component of the client platform that oversees the retrieving, sending,

receiving and storing of one or more documents (or files) attached to instant voice


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messages from/to the one or more selected IVM recipients that may be

communicating with the IVM client. (Lavian, ¶ 123.) Zydney does not identify

another software program or module on the client system that could perform this

“overseeing” function, and therefore it would have been understood and obvious that

the software agent would perform it. (Id.)

Accordingly, Zydney discloses “wherein the instant voice messaging

application invokes a document handler to create a link between the instant voice

message and the one or more files,” rendering claim 14 obvious.

Claim 17 (Dependent): “The system according to claim 9, further comprising an instant voice messaging server receiving the instant voice message and an indication of one or more intended recipients of the instant voice message.”

For ease of reading, this Petition will divide claim 17 into two parts.

(a) “an instant voice messaging server receiving the instant voice message…”

The central server in Zydney discloses the claimed “instant voice messaging

server.” The central server receives, translates, transmits, and stores instant voice

messages (voice containers). (Zydney, 13:12-18, 14:6-13.) The server is depicted

in Figure 1A, reproduced below.


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(Id., Fig. 1A.)

Zydney discloses several ways in which the central server in Zydney can

receive the voice container from the sending software agent. For example, if the

recipient is not currently online, the sending software agent can send the voice

container to the central server for temporary storage. (Zydney, 14:9-11, 16:7-12

(“Based on status information received from the central server, the agent then

decides on whether to transport the voice containers to a central file system and/or


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sends it directly to another software agent using the IP address previously stored in

the software agent. If the intended recipient has a compatible active software agent

on line after log on, the central server downloads the voice recording almost

immediately to the recipient.”); see also id., Fig. 4 (“if recipient is not online, client

sends voice container to server file”), Fig. 8, Step 1.2.3 (“uploading the voice

container(s) to a central file server…”), 15:19-21 (“[T]he voice containers are

delivered to the central server to manage the ultimate delivery to the recipient.”).)

Zydney also teaches that instant voice messages are routed from the sender

through the central server for data format translation (transcoding) at the central

server. (Id., 12:18-23 (describing routing through translator 42 in central server),

13:7-10 (discussing transcoding server (translator) 70), Fig. 1A (translator 42), Fig.

2 (translator 70).) See also Fig. 16 (“Originator” transmits voice container and

attachment), Fig. 17 (“Central Server” receives the voice container and attachment

and uploads file to the recipient).)

This discloses the central server “receiving the instant voice message,” as

claimed.

(b) “an instant voice messaging server receiving … an indication of one or more intended recipients of the instant voice message.”

Zydney also teaches that the selected recipients are identified as part of the

instant voice message sent to the server: “Each message will have a unique identifier


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that will encode the sending software agents identifier, [and] the destination software

agents and non-registered users.” (Zydney, 34:4-8.) The recipient information is

encoded in the instant voice message as part of the voice container. (Id., 23:2-10

(“Voice container components include … one or more recipients code 304”), Fig. 3

(showing “one or more recipient’s code” 304).) Because the recipient’s code is part

of the voice container, when the server in Zydney receives an instant voice message,

it also receives the indication of the intended recipients. Claim 17 is therefore

obvious over Zydney.

Claim 25 (Dependent): “The system of claim 17 wherein the instant voice messaging server determines availability of the one or more intended recipients for receipt of the instant voice message.”

Zydney discloses that the central server “track[s],” i.e., determines, “the

status of all software agents.” (Zydney, 14:6-9, 13:12-14.) The statuses tracked by

the central server include “the core states of whether the recipient is online or offline,

but also offers related status information, for example whether the recipient does not

want to be disturbed.” (Id., 14:17-15:1.) Zydney further describes this connectivity

status as follows:

Software agents may also be in other states that will be communicated

to the other logged on software agents. These states would be the

following: Available – available for messages or live talking; Do Not

disturb – available for messages but not live talking; Not Available –

system is logged on but not accepting messages or live talk; Will


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return – Stepped out of the office and is accepting messages; Out to

Lunch – Stepped out to lunch and is accepting messages; Not logged

on – Message will be sent to the message server.

(Id., 32:18-33:2.)

Zydney further teaches that when an instant voice message is being

transmitted, the central server determines the recipient’s status. After “the originator

digitally records messages for one or more recipients,” then “[b]ased on status

information received from the central server, the agent then decides on whether to

transport the voice containers to a central file system and/or sends it directly to

another software agent.” (Id., 16:1-10.) In particular, “[i]f the intended recipient

has a compatible active software agent on line after log on, the central server

downloads the voice recording almost immediately to the recipient.” (Id., 16:10-

12.) Therefore, Zydney renders obvious claim 25.

Claim 26 (Dependent): “The system of claim 25, wherein the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available; stores the instant voice message for the one or more intended recipients who are not currently available; and delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.”

In light of the length of this claim, this Petition will address it in three parts.


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(a) “the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available;”

Zydney specifically describes “forwarding the message to the recipient if the

recipient is available.” (Zydney, Abstract; claims 1, 8.) Zydney teaches that “the

central server downloads the voice recording almost immediately to the recipient” if

the “intended recipient has a compatible active software agent on line after log on.”

(Id., 16:7-12.) See also id., 12:18-23 (describing routing through central server for

transcoding), 1:21-22 (“voice containers can be stored, transcoded and routed to the

appropriate recipients instantaneously or stored for later delivery”), Fig. 17 (“Central

Server” receives the voice container and attachment and “upload[s] the file to the

recipient”).)

Zydney therefore discloses that the central server “delivers the instant voice

message to the one or more intended recipients who are determined to be currently

available.”

(b) “the instant voice messaging server… stores the instant voice message for the one or more intended recipients who are not currently available;”

Zydney specifically teaches “storing said message at said central server when

said recipient is not available.” (Id., claim 1; see also id., 13:12-15, 14:9-11, Fig. 4

(“if recipient is not online, client sends voice container to server file.”).)


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(c) “the instant voice messaging server… delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.”

As discussed previously with respect to claim 25, Zydney discloses that the

central server “track[s],” i.e., determines, “the status of all software agents.”

(Zydney, 14:8-9.) Zydney specifically teaches “storing said message at said central

server when said recipient is not available for forwarding when said recipient is

available.” (Id., claim 1, 14:14-16, 15:15-21, 16:10-12.) Additionally:

The message server will be the repository for messages sent to software

agents that are not logged onto the system. Once a software agent has

been authenticated all messages that have been stored on the message

server will be sent to the appropriate software agent.

(Id., 25:1-4; see also id., 33:7-10.) The message server is a component of the central

server in Zydney. (Id., 13:7-10.)

Figure 4, reproduced below, illustrates how the temporarily stored messages

are delivered once the recipient becomes available. (Id., 2:20-21, 34:13-15.)


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(Id., Fig. 4.) Zydney therefore discloses the final limitation of claim 26. Claim 26

is therefore obvious over Zydney.

C. Ground 2: Claims 11, 15, 16 Are Obvious Over Zydney + Greenlaw

Claim 11 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for audibly playing the instant voice message.”

Zydney discloses that the “Software Agent,” which is part of the instant voice


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messaging application as explained previously, can “unpack the voice container and

play the message.” (Zydney, 13:19-22; see also id., 14:14-16, Fig. 4.) The voice

message can be played “through the speakers or headset attached to the[]

[recipient’s] computer.” (Id., 16:10-14; see also id., 20:14-17.) This is shown in

Figure 9 of Zydney (shown below), which confirms that the recipient can audibly

play the instant voice message (“it may be heard through speakers,” Step 1.3.4) and

states that the software agent “provid[es] visual means for adjusting the quality and

speed of playback of each recording through the software agent” (Step 1.3.6):


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(Id., Fig. 9.) Zydney thus discloses that the software agent, which is part of the

instant voice messaging application, “displays one or more controls for audibly

playing the instant voice message,” as recited in claim 11.

The Petitioners note the “visual means for adjusting the quality and speed of

playback” in Zydney refers to the software agent on the recipient user’s device, not

the software agent on the sending (originating) user’s device. (Id., Fig. 9 (all steps


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disclosed in connection with “recipient”).) But claim 11 says that “the instant voice

messaging application displays one or more controls for audibly playing the instant

voice message,” referring back to the same “instant voice messaging application”

recited in claim 9. The claim thus could be interpreted as requiring that the instant

voice messaging application of the sender to be capable of “display[ing] one or

more controls for audibly playing the instant voice message.”

Assuming this is a requirement of the claim, it does not present any non-

obvious distinction over Zydney. It would have been obvious to a person of ordinary

skill in the art that the same controls for listening to a voice container could be made

available to the sender, as well as the recipient, of a voice container. (Lavian, ¶ 156.)

This would have merely involved allowing the sending (originating) user to review

a voice container that was sent, using the exact same tools of the software agent

available to the recipient as explained above. (Id.)

This could have been accomplished using a number of well-known

techniques, perhaps the simplest being disclosed by Greenlaw. Although entitled

“Introduction to the Internet for Engineers,” the information provided in Greenlaw

cited below would have been familiar to many casual Internet users. (Id., ¶ 157.)

Greenlaw describes the basics of how to use email to send messages, and confirms

that in selecting the recipients to whom a message will be delivered, a sender could

become a recipient of its own message by “copying” himself or herself on the


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message. (Id.) For example, in the context of sending an email message, Greenlaw

explains that “[f]or important correspondence that you want to maintain a record of,

it is a good idea to Cc or Bcc yourself, unless your mailer automatically keeps sent

messages.” (Greenlaw at 19, §1.5.1; id. at 21, §1.5.3 (“After composing your

message using the text editor and signing it, you are ready to send. Again, for

important correspondence or correspondence you would like to keep a record of, it

is a good idea to Cc yourself on the message.”).) The term “cc” refers to the well-

known “carbon copy” functionality used to specify other persons who will receive a

copy of the message. (Id. at 15, §1.4.) Similarly, “bcc” stands for “blind carbon

copy” and works the same as “cc,” except that blind carbon copied users do not know

about each other. (Id.) Users who are “carbon copied” or “blind carbon copied”

will receive a copy of the message. (Id.) If a sending user copies itself, therefore,

the sender will receive the transmitted message the same way as any other recipient

of the message. (Lavian, ¶ 157.)

Rationale and Motivation to Combine: It would have been obvious to

combine Zydney with Greenlaw, with no change in their respective functions. (Id.,

¶ 158.) This combination would have predictably resulted in the software agent of

Zydney in which the sending (originating) user, in selecting recipients for a voice

container, could choose to also copy itself on the message. This would have

predictably resulted in the sending user’s software agent receiving a copy of the


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voice container, which the sending software agent could process and manipulate

using the same tools available to the other recipients of the message. (Id.) This

would have made the feature described in Figure 9 of Zydney, i.e., that the recipient

software agent “provid[es] visual means for adjusting the quality and speed of

playback of each recording through the software agent” (Zydney, Fig. 9), available

to the sending (originating) software agent. Zydney and Greenlaw thus render this

claim obvious even if it is construed as limited to the “instant messaging application”

of the sender. (Lavian, ¶ 158.)

Greenlaw itself provides several motivations to make such a combination. For

example, Greenlaw twice states that “it is a good idea” for sending users to copy

themselves on important correspondence to “keep a record” of them. (Greenlaw at

19, §1.5.1; id. at 21, §1.5.3.) A person of ordinary skill in the art, and even casual

users of messaging systems, would have recognized the importance of being able to

keep records of sent messages. (Lavian, ¶ 159.)

In fact, it was well-known that popular messaging applications such as

Microsoft Outlook allowed senders to store copies of messages they had sent (for

example, in a “Sent Items” folder), allowing the sending users to later review those

messages. (Id., ¶ 160.) Greenlaw itself acknowledges this by stating that copying

oneself on an outgoing message is not necessary if “your mailer automatically keeps

sent messages.” (Greenlaw at 19, §1.5.1.) The ability to review and process sent


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messages, either through the sender “carbon copying” itself, or based on the

messaging software keeping copies of the message, was well-known to persons of

ordinary skill in the art. (Lavian, ¶ 160.)

Although Greenlaw describes the “carbon copy” technique in the context of

email and not “instant messaging,” the technological distinctions between these two

technologies would have been wholly irrelevant to a person of ordinary skill in the

art for purposes of this combination. (Id., ¶ 161.) This Petition cites Greenlaw

merely for the elementary proposition that, in a messaging system, a sending user

can choose to send a copy of an outgoing message to itself. That technique depends

only on the ability to specify addresses of those users who will receive the message

(which Zydney allows), and does not depend on the types of messaging system or

technical details of message delivery. (Id.)

Finally, both references are directed to similar techniques of addressing and

directing communications to recipient, and both describe similar means of

identifying the intended recipients. (Compare Zydney, 14:17-19 (the message

sender (originator) “selects one or more intended recipients from a list of names that

have been previously entered into the software agent.”) with Greenlaw at 19

(“Simply enter the other e-mail addresses or aliases, as desired.”).) Thus, a person

of ordinary skill in the art would naturally have found the teachings of Greenlaw

with respect to addressing sent messages applicable to Zydney. (Lavian, ¶ 161.)


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It would therefore have been obvious to a person of ordinary skill in the art

that a sending (originating) user could have entered itself as among the recipients

who will receive a message, a practice expressly encouraged by Greenlaw. Zydney

in view of Greenlaw therefore discloses “wherein the instant voice messaging

application displays one or more controls for audibly playing the instant voice

message.” Claim 11 is therefore obvious. (Id., ¶ 162.)

Claim 15 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays the attachment.”

Figures 16-18 of Zydney depict a process for attaching a file to an instant

voice message. (Zydney, Figs. 16-18.) Figure 18 explains that when the recipient

receives the message, the software agent “unpack[s] and present[s] the graphical and

sound components.” (Id., Fig. 18, 4:13-15, 35:20-22.)

(Id., Fig. 18.) A person of ordinary skill in the art would have understood that

“presenting the graphical and sound components” includes “display[ing] the

attachment,” which would be performed by the software on the client system that

discloses the instant voice messaging application. (Lavian, ¶ 165.)

As explained in the discussion of claim 11 above, this claim also refers to “the


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instant voice messaging application,” referring back to the application of claim 9. In

the event it is determined that the instant voice messaging application of the sender

must be able to display the attachment in claim 15, this would have been obvious

over Greenlaw as explained above. (Id., ¶ 166.) This combination would have

predictably resulted in the sending (originating) software agent of Zydney in which

the voice container is sent (e.g. “copied”) to the sender, who can view the attachment

in the same way as the recipient. (Id.) The rationale and motivation to combine

Zydney and Greenlaw was described fully in the discussion of claim 11 above.

Accordingly, claim 15 is obvious.

Claim 16 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for performing at least one of reviewing, re-recording or deleting the instant voice message.”

Zydney discloses that the software in the instant voice messaging application

allows both senders and recipients to review the recorded messages. The originator

of the instant voice message (voice container) can use “visual means to control and

monitor the recording quality in the originator’s agent.” (Zydney, Fig. 7.) The visual

means for monitoring the recording quality of the voice container discloses the

claimed controls for reviewing the instant voice message under the broadest

reasonable interpretation, as the recording quality would be monitored based on a

review of the content of the voice recording.

Similarly, a recipient’s software agent “provid[es] visual means for adjusting


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the quality and speed of playback of each recording through the software agent.”

(Id., Fig. 9.) Each “visual means” discloses controls displayed by the software

comprising the instant voice messaging application. Zydney also describes that the

software agent provides “controls for saving, deleting, or resending recorded

containers from the recipient’s computer.” (Id., Fig. 9 (Step 1.3.7).) As explained

in the discussion of claims 11 and 15 above, the claim refers to “the instant voice

messaging application,” referring back to the application of claim 9. In the event it

is determined that the instant voice messaging application of the sender must provide

the claimed controls for “reviewing, re-recording or deleting the instant voice

message,” this would have been obvious over Greenlaw as explained above. This

combination would have predictably resulted in the sending (originating) software

agent of Zydney in which the voice container is sent (e.g. “copied”) to the sender,

who can review or delete the voice container in the same way as any other recipient.

(Lavian, ¶ 171.) The motivation to combine Zydney and Greenlaw was described

fully in the discussion of claim 11 above. Claim 16 is therefore obvious.

D. Ground 3: Claim 10 Is Obvious Over Zydney + Newton

Claim 10 (Dependent): “The system according to claim 9, wherein the packet-switched network comprises a WiFi network.”

As explained in connection with claim 9, Zydney discloses and renders

obvious transmission of an instant voice message over a “packet-switched


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network.” Zydney explains that its system for instant voice messaging can be

implemented on a personal computer or other suitable device, which could be a

“wireless handheld computer such as a personal data assistant (PDA).” (Zydney,

11:16-18.) Zydney also describes that its system can be used to communicate instant

voice messages over the Internet, with a TCP/IP connection and IP address

indicating its direct connection on the Internet, as discussed previously. (Id., 5:3-7,

23:11-12, 15:1-2 (“For online recipients, the software agent is also notified on [sic,

of] the recipient’s Internet Protocol (IP) address.”).)

Although Zydney does not expressly mention a “WiFi network,” it would

have been obvious in view of the disclosures of Newton [Ex. 1106]. Just about

anyone who has used a cellular phone or a laptop computer would be familiar with

IEEE 802.11 wireless networking, commercially referred to as “WiFi.” IEEE

802.11 refers to a series of international standards initially published in the late

1990s by the Institute of Electrical and Electronics Engineers (IEEE). Generally

speaking, IEEE 802.11 describes a series of technical standards for providing

wireless networking services. (Lavian, ¶ 177.) IEEE 802.11 is an enormously

popular technology that has spawned a number of variants, including IEEE 802.11a

and 802.11b, the early variants published in the late 1990s. (Id.) A person of

ordinary skill in the art would have been well-aware of the widespread and growing

prevalence of WiFi capability in consumer electronic devices to connect to the


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Internet. (Id., ¶ 178.)

Newton, a telecommunications dictionary from 2002, confirms the well-

known nature of WiFi. It states that “802.11b is now the most common wireless

local area network. 802.11b (also called WiFi) is now commonly installed in offices,

airports, coffee shops, etc. Many laptops now come with 802.11b built-in.”

(Newton at 18.) Newton further observes that all Apple computers included built-in

WiFi capability to connect to the Internet, and that laptop personal computers

routinely used built-in or add-on WiFi capability. (Id.) Newton thus discloses “a

WiFi network,” as claimed.

Rationale and Motivation to Combine. It would have been obvious to a

person of ordinary skill in the art to combine Zydney’s personal computer

embodiment with Newton’s WiFi teachings. (Lavian, ¶ 179.) This combination

would have predictably resulted in the personal computer in Zydney running the

software agent being connected to the Internet using a WiFi network, as taught by

Newton. (Id.) As a result, the claimed “packet-switched network” of claim 9

would also include a WiFi network for connecting the computer to the Internet. (Id.)

Zydney expressly describes that its instant voice messaging system may be

implemented with a wireless computer, as noted, confirming that its system is

intended to work over a wireless connection. Newton provides several express

motivations to use WiFi to implement the wireless functionality of Zydney. For


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example, Newton explains that WiFi was “the most common” wireless local network

as of 2002 that was “commonly installed in offices, airports, coffee shops, etc.”

(Newton at 18.) For example, Newton observes that Microsoft and Starbucks had

announced by 2002 that they would make 802.11b WiFi available in “most of

Starbucks’ coffee outlets over the next two years.” (Id.)

A person of ordinary skill would have recognized that the ability to engage in

instant voice messaging wirelessly (e.g., using a laptop personal computer) would

have provided well-known advantages of wireless connectivity, permitting the user

to exchange instant voice messages without being tethered to a physical wire line

connection. (Lavian, ¶ 180.) It also would have been plainly obvious in view of

Newton, furthermore, that one predictable and reliable design choice for the Zydney

personal computer client system would be an Apple computer, which could connect

with the Internet through WiFi as Newton describes, in view of Apple’s decades-

long track record of popular and easy-to-use personal computers. (Id.)

Furthermore, a person of ordinary skill in the art would have appreciated that

there were only a finite number of wireless networking technologies suitable for

consumer mobile computer usage, and as Newton confirms, WiFi was the most

prominent. (Id., ¶ 181.) No technical difficulties would have been expected, given

that WiFi was an IEEE standardized protocol with “plug and play” availability in

built-in equipment or plug-in cards as described by Newton. Likewise, using WiFi


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to connect with the Internet was common and straightforward with existing off-the-

shelf commercial equipment as confirmed by Newton. (Id.)

VIII. CONCLUSION

The Petitioners respectfully request institution of inter partes review of claims

9-12, 14-17, 25, and 26, and a finding that they are unpatentable.

Dated: May 11, 2017 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington, DC 20004 Tel: (650) 843-5001 Fax: (650) 849-7400

Respectfully submitted,

By: /Heidi L. Keefe/ Heidi L. Keefe Reg. No. 40,673 Counsel for Petitioners

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CERTIFICATE OF COMPLIANCE WITH WORD COUNT

Pursuant to 37 C.F.R. § 42.24(d), I certify that this petition complies with the type-volume limits of 37 C.F.R. § 42.24(a)(1)(i) because it contains 11,497 words, according to the word-processing system used to prepare this petition, excluding the parts of this petition that are exempted by 37 C.F.R. § 42.24(a) (including the table of contents, a table of authorities, mandatory notices, a certificate of service or this certificate word count, appendix of exhibits, and claim listings).

DATED: May 11, 2017

COOLEY LLP ATTN: Heidi L. Keefe Patent Docketing 1299 Pennsylvania Avenue NW Suite 700 Washington, D.C. 20004 Tel: (650) 843-5001 Fax: (650) 849-7400

/ Heidi L. Keefe / Heidi L. Keefe Reg. No. 40,673

CERTIFICATE OF SERVICE I hereby certify, pursuant to 37 C.F.R. Sections 42.6 and 42.105, that a complete copy of the attached PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,995,433, including all exhibits (Nos. 1101-1113) and related documents, are being served via Federal Express on the 11th day of May, 2017, the same day as the filing of the above-identified document in the United States Patent and Trademark Office/Patent Trial and Appeal Board, upon the Patent Owner by serving the correspondence address of record with the USPTO as follows: Uniloc USA Inc. Legacy Town Center 7160 Dallas Parkway, Suite 380 Plano, TX 75024 and upon counsel of record for the Patent Owner in the litigations pending before the U.S. District Court for the Eastern District of Texas entitled Uniloc USA, Inc., Uniloc Luxembourg, S.A. v. Facebook, Inc., Case No. 2:16-cv-00728-JRG, and Uniloc USA, Inc., Uniloc Luxembourg, S.A. v. WhatsApp, Inc., Case No. 2:16-cv-00645-JRG as follows: Paul J. Hayes Kevin Gannon James John Foster Prince Lobel Tye LLP One International Place, Suite 3700 Boston, MA 02210

Anthony Michael Vecchione Edward R Nelson, III Nelson Bumgardner PC 3131 West 7th Street, Suite 300 Ft Worth, TX 76107

DATED: May 11, 2017 / Heidi L. Keefe /

Heidi L. Keefe Reg. No. 40,673

COOLEY LLP ATTN: Patent Docketing 1299 Pennsylvania Ave. NW, Suite 700 Washington, D.C. 20004 Tel: (650) 843-5001 Fax: (650) 849-7400

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