PTAB

IPR2017-00222

Apple Inc v. Uniloc USA Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Instant Voice Messaging Over a Packet-Switched Network
  • Brief Description: The ’723 patent discloses systems and methods for instant voice messaging over a packet-switched network. The system includes a server with a "client manager" that provides contact presence information, schedules messages, and delivers them to recipients, including temporarily storing messages for unavailable recipients and delivering them once they become available.

3. Grounds for Unpatentability

Ground 1: Obviousness over Vuori and Malik - Claims 2-7 are obvious over Vuori in view of Malik.

  • Prior Art Relied Upon: Vuori (Application # 2002/0146097) and Malik (Application # 2003/0219104).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Vuori, which discloses a short voice message (SVM) service, teaches the core limitations of independent claim 1. Vuori’s system operates on a packet-based infrastructure (GPRS/UMTS), monitors user connectivity via a presence service with "available" and "unavailable" states, stores this status, associates users via a "buddy list," and delivers messages based on availability, including a store-and-forward function. Malik, which relates to sending voice instant messages (VIMs), was argued to supply the additional features recited in dependent claims 2-7. Specifically, Malik taught including a "descriptive caption" with a voice recording (fulfilling claim 2's "attached file" limitation) and provided distinct methods for real-time messaging versus recorded messaging based on recipient availability (fulfilling claims 3-6 regarding "intercom" and "record" modes). Petitioner asserted Vuori itself disclosed the recording steps of claim 7.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Vuori and Malik, as both are directed to the same field of endeavor—instant voice messaging—and address the common problem of improving user connectivity. A POSITA would have been motivated to enhance Vuori’s basic system with Malik's more advanced features, such as adding descriptive text to voice messages and intelligently selecting between real-time and recorded modes, to create a more functional and user-friendly product.
    • Expectation of Success: The combination involved applying known methods from one system to a similar system to achieve predictable results.

Ground 2: Obviousness over Stubbs and Abburi - Claims 1-7 are obvious over Stubbs in view of Abburi.

  • Prior Art Relied Upon: Stubbs (WO 99/63773) and Abburi (Application # 2003/0147512).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented this as an alternative ground where Stubbs, which discloses transferring voice and data packets in a GSM-type mobile system using GPRS, provides the primary framework. Stubbs’s packet handler determined user status by querying network nodes (HLR/GGSN) and used a "packet store" for unavailable recipients, thus teaching the core elements of claim 1. Abburi, which discloses sending audio messages via telephone or computer, was argued to supply the remaining limitations. Abburi taught transmitting "buddy" or contact presence information to a user's device, fulfilling the limitation of transmitting a list of recorded connectivity statuses. For the dependent claims, Abburi was argued to teach attaching files (sending a prerecorded sender name file with the message), selecting a communication method based on availability, and providing distinct "streaming" (intercom) and prerecorded (record) modes.
    • Motivation to Combine: A POSITA would combine Stubbs and Abburi to enhance the functionality of the GPRS-based system in Stubbs with the more user-centric presence and messaging features of Abburi. This would improve the user experience by providing clear buddy-list status and more flexible messaging options (real-time vs. recorded), which were known objectives in the field of mobile communications.
    • Expectation of Success: The combination would predictably yield an improved voice messaging system, as it integrated well-understood features into a known network architecture.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 1 is obvious over Vuori alone; claim 8 is obvious over Vuori, Malik, and Lerner (Patent 6,192,395); and claim 8 is obvious over Stubbs, Abburi, and Lerner. These grounds relied on adding Lerner's teachings on buffering and transmitting successive voice packets to implement the real-time "intercom mode" recited in claim 8.

4. Key Claim Construction Positions

  • "intercom mode" (Claims 4, 6, 8): Petitioner proposed that this term should be construed to mean "a mode for transmitting an instant voice message in realtime." This construction was based on the patent's specification and was central to arguments that prior art references teaching real-time voice transmission or streaming met this limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of the ’723 patent as unpatentable under 35 U.S.C. §103.