PTAB

IPR2017-01427

Facebook Inc v. Uniloc Luxembourg SA

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method For Instant VoIP Messaging
  • Brief Description: The ’433 patent discloses a system for delivering instant voice messages over a packet-switched network. The system includes a client device that records a voice message, selects recipients from a list, and transmits the message to a server, which then delivers it to the recipients or stores it for later delivery if a recipient is offline.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 8 are obvious over Zydney in view of Clark.

  • Prior Art Relied Upon: Zydney (International Publication No. WO 01/11824) and Clark (Patent 6,725,228).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zydney, which discloses a system for sending instant voice messages called “voice containers” over the Internet, teaches nearly all limitations of the independent claims. Zydney’s system includes client software agents that generate, send, and receive voice messages; a central server that routes messages or stores them if a recipient is offline; and a user interface for selecting recipients from a list. Petitioner contended that Clark, which describes a system for managing and organizing various electronic messages (including instant and voice messages), supplies the express teachings for a “message database” and a “file manager system” as recited in the claims. Clark discloses a client-side message store (database) for both sent and received messages, where each message is assigned a unique identifier, and a file manager system (comprising a message client and message store server) for storing, deleting, and retrieving messages in response to user requests.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Clark’s database management system with Zydney’s voice messaging system to improve functionality. Clark expressly motivated its use with instant messaging systems to overcome prior art deficiencies in storing, organizing, and searching messages. Integrating Clark’s organized database structure into Zydney’s system to manage sent and received voice messages was presented as a predictable improvement that would meet user expectations for robust message management.
    • Expectation of Success: Success was expected because Clark’s system was designed to be adaptable to various message formats and protocols. Applying a known database structure to store and manage voice message files in Zydney’s system would have been a straightforward implementation with predictable results.

Ground 2: Claim 7 is obvious over Zydney in view of Clark and Appelman.

  • Prior Art Relied Upon: Zydney (WO 01/11824), Clark (Patent 6,725,228), and Appelman (Patent 6,750,881).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Zydney and Clark combination from Ground 1 to address dependent claim 7, which requires displaying an “indicia” indicating a recipient's availability. Petitioner argued that while Zydney’s system tracks the online/offline status of users, it does not explicitly disclose displaying a visual indicia for each recipient in a list. Appelman, which discloses the well-known “Buddy List” feature from America Online’s instant messaging service, was cited to teach this limitation. Appelman explicitly describes and depicts a user interface that displays a list of users alongside a status indicator (e.g., “IN” or “OUT”) to show whether each user is currently logged in and available for communication.
    • Motivation to Combine: A POSITA would have been highly motivated to incorporate Appelman’s availability indicia feature into the Zydney/Clark system. Appelman taught that knowledge of user presence is an important aspect of online communication systems. By the early 2000s, this feature was ubiquitous and a standard user expectation for any instant messaging platform. Adding this intuitive and valuable feature to Zydney’s voice messaging system would have been a natural and obvious improvement to enhance the user experience by allowing a sender to see a recipient’s availability before sending a voice message.
    • Expectation of Success: The combination was argued to be predictable. Implementing a visual status indicator based on already-tracked presence information (as taught by Zydney) was a common and well-understood user interface design principle at the time, with no technical barriers to implementation.

4. Key Claim Construction Positions

  • "instant voice messaging application": Petitioner argued for the construction “hardware and/or software used for instant voice messaging.” This position was based on the ’433 patent’s specification, which describes the claimed functions being performed by a combination of components, including a general-purpose computer (IVM client 208) and hardware elements like a display, rather than a single, self-contained software program.
  • "client platform system": Consistent with the above, Petitioner proposed the construction “hardware and/or software on a client for generating an instant voice message.” Petitioner argued that because the “client platform system” is a component of the broader “application,” its construction should similarly encompass both hardware and software elements described in the patent as performing the required functions.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of Patent 8,995,433 as unpatentable.