PTAB

IPR2017-00225

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 ’433 patent relates to a system and method for delivering instant voice messages over a packet-switched network. The technology purports to combine concepts from Voice over Internet Protocol (VoIP) and instant text messaging to enable voice-based instant messaging with features for storing and managing the voice messages in a database.

3. Grounds for Unpatentability

Ground 1: Obviousness over Abburi and Holtzberg - Claims 1, 2, 4, and 8 are obvious over Abburi in view of Holtzberg.

  • Prior Art Relied Upon: Abburi (Application # 2003/0147512) and Holtzberg (Patent 6,625,261).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Abburi taught the core elements of an instant voice messaging system as recited in claim 1. Abburi disclosed a system where users could send and receive audio messages over a packet-switched network (the Internet) using client devices. Petitioner contended that Abburi's client device, which could record and transmit a voice message, constituted the claimed "client platform system" and "messaging system." To address the claim limitation requiring a "message database storing the instant voice message... represented by a database record including a unique identifier," Petitioner relied on Holtzberg. Holtzberg explicitly taught a voicemail system that stored messages in a database, where each message record was associated with a unique message ID for efficient retrieval.
    • Motivation to Combine: A POSITA would combine Holtzberg’s well-known database storage techniques with Abburi’s audio messaging system to improve the organization, management, and retrieval of audio messages on a user's device. This was argued to be a predictable application of a known technique (database storage) to a known system (audio messaging) to achieve expected benefits.
    • Expectation of Success: The petition asserted a high expectation of success, as combining a standard database with a messaging system involved applying well-understood software principles with no technical barriers.

Ground 2: Obviousness over Väänänen and Holtzberg - Claims 1, 2, 4-6, and 8 are obvious over Väänänen in view of Holtzberg.

  • Prior Art Relied Upon: Väänänen (Patent 7,218,919) and Holtzberg (Patent 6,625,261).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented Väänänen as an alternative primary reference that disclosed an "instantaneous packet switched voicemail" system. Väänänen’s "subscriber terminal" was alleged to meet the limitations of a client platform system that could record a voice message (e.g., as an MP3 file), display a list of potential recipients, and transmit the message over a packet-switched network. Väänänen further taught compressing the voice message data file. For the limitations related to a database with unique identifiers, the Petitioner again relied on Holtzberg’s disclosure of a voicemail database with unique message IDs, as in Ground 1.
    • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA would look to Holtzberg to implement a more robust and specific storage scheme for the voice message files created in Väänänen's system. This would improve storage efficiency and message management on the subscriber terminal.
    • Expectation of Success: Success was expected because the combination merely applied Holtzberg's conventional database organization to the audio files generated by Väänänen's messaging system.

Ground 3: Obviousness over Abburi, Holtzberg, and Vuori - Claim 3 is obvious over Abburi and Holtzberg in view of Vuori.

  • Prior Art Relied Upon: Abburi (Application # 2003/0147512), Holtzberg (Patent 6,625,261), and Vuori (Application # 2002/0146097).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Abburi and Holtzberg to specifically address dependent claim 3, which required the application to "display[] at least one of the plurality of instant voice messages stored in the message database." To the extent the primary combination was found not to teach this feature explicitly, Petitioner introduced Vuori. Vuori taught a short voice messaging service that could convert a spoken message into text and then display the converted text message on the recipient's device.
    • Motivation to Combine: A POSITA would combine Vuori’s audio-to-text display capability with the messaging system of Abburi/Holtzberg to enhance user convenience. This would provide users with the option to review messages visually (as text) without needing to play them back audibly, a predictable improvement for a messaging application.
    • Expectation of Success: The technologies for voice-to-text conversion and displaying text on a screen were well-known, presenting no significant technical hurdles to a successful integration.
  • Additional Grounds: Petitioner asserted that claims 5 and 6 are obvious over Abburi, Holtzberg, and Logan (Patent 5,732,216), citing Logan for its teachings on encryption/decryption and compression/decompression of audio files. A similar ground was asserted against claim 3 using Väänänen, Holtzberg, and Vuori.

4. Key Claim Construction Positions

  • Petitioner argued that the term "display[ing] at least one of the plurality of instant voice messages" (claim 3) should be construed broadly as "displaying the content or identifying information of at least one of the plurality of instance voice messages.” This construction was central to its argument, allowing a mere hyperlink or message identifier (taught by Abburi) or a text conversion of the voice message (taught by Vuori) to satisfy the claim limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 and 8 of the ’433 patent as unpatentable.