PTAB

IPR2017-00221

Apple Inc v. Uniloc USA Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Instant Voice Messaging System
  • Brief Description: The ’890 patent discloses an instant voice messaging system for delivering messages over a packet-switched network. The system's server provides presence information and temporarily stores a voice message if a recipient is unavailable, delivering it once the recipient becomes available.

3. Grounds for Unpatentability

Ground 1: Obviousness over Malik and Väänänen

  • Claims Challenged: 1-3, 5, 14, 15, 17, 19, 28, 29, 31, 33, 40, 42, 51, 53, 62, and 64 are obvious over Malik in view of Väänänen.
  • Prior Art Relied Upon: Malik (Patent 7,123,695) and Väänänen (WO 02/17658).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Malik, a system for sending voice instant messages (VIMs), taught most limitations of the independent claims, including a client, server, and the core feature of storing a VIM in a queue if the recipient is offline for later delivery. However, Petitioner contended that Malik only disclosed that a user "receives a request or prompt" to send a message, not explicit recipient selection by the client. Väänänen, a server-centric instant voice messaging system, was cited to supply this element, as it expressly taught a user "chooses a recipient" from a contacts file.
    • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would combine Väänänen's well-known recipient selection method with Malik’s system to improve usability. Furthermore, because Malik did not explicitly disclose the client transmitting recipient information to the server, a POSITA would have been motivated to incorporate Väänänen’s teaching of sending recipient contact information to the server to enable proper message routing.
    • Expectation of Success: The combination was asserted to be predictable and straightforward because both references operated in the same field of server-centric instant voice messaging and addressed the same problem of recipient unavailability, ensuring a high expectation of success.

Ground 2: Obviousness over Malik, Väänänen, and Deshpande

  • Claims Challenged: 4, 18, 32, 41, 52, and 63 are obvious over Malik and Väänänen in view of Deshpande.
  • Prior Art Relied Upon: Malik (Patent 7,123,695), Väänänen (WO 02/17658), and Deshpande (Application # 2003/0046273).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring a client to request a list of recipients from a server, which then transmits the list back to the client for selection. Petitioner argued the base Malik-Väänänen combination did not explicitly teach how a client’s contact file was created or populated. Deshpande was introduced to teach an instant messaging server that stores a "buddy list" and provides its contents to a client upon request, which the client then uses for recipient selection.
    • Motivation to Combine: A POSITA would combine Deshpande's server-side buddy list functionality with the Malik-Väänänen system to improve flexibility, mobility, and reliability. This modification would allow a user to maintain a consistent address book across multiple or new devices by downloading it from a central server, which Petitioner described as a known solution to a common problem.

Ground 3: Obviousness over Malik, Väänänen, and Abburi

  • Claims Challenged: 6, 20, 34, 43, 54, and 65 are obvious over Malik and Väänänen in view of Abburi.

  • Prior Art Relied Upon: Malik (Patent 7,123,695), Väänänen (WO 02/17658), and Abburi (Application # 2003/0147512).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targeted dependent claims reciting that the voice message is recorded, transmitted, and delivered as an "audio file." Petitioner argued that while Malik taught generating a "voice recording," a POSITA would have inherently understood this to be an audio file. To the extent this was not explicit, Abburi was cited for its clear teaching that a client device records an audio message locally "into an audio file" (e.g., a WAV file) and then transmits the prerecorded message.
    • Motivation to Combine: A POSITA would find it obvious to implement the voice message in the Malik-Väänänen system as a distinct audio file, as taught by Abburi. Petitioner characterized this as applying a known technique (using audio files for voice messages) to the known Malik-Väänänen system to achieve the predictable result of a more robust and portable message format.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 68 based on the combination of Malik, Väänänen, and Abburi, further in view of Daniell (Application # 2004/0068545) for its teachings on attaching files to instant messages.

4. Key Claim Construction Positions

  • "external network": Petitioner proposed that this term, recited in independent claims 14, 28, 51, and 62, should be construed to mean "a network that is outside another network." This construction was based on the plain meaning of "external" and the claim context, which distinguished it from a "local network." Petitioner argued this construction supported finding the limitation met by references teaching communication over the Internet in combination with a LAN.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 14, 15, 17-20, 28, 29, 31-34, 40-43, 51-54, 62-65, and 68 of the ’890 patent as unpatentable.