PTAB

IPR2017-01427

Facebook, Inc. v. Uniloc Luxembourg S.A.

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1. Case Identification

2. Patent Overview

  • Title: System and Method For Instant VoIP Messaging
  • Brief Description: The ’433 patent describes a system for delivering instant voice messages (IVM) over a packet-switched network. The system comprises a client device (e.g., VoIP phone or PC) that displays a list of potential recipients, records a voice message, and transmits it to a server, which then delivers the message to the selected recipient(s).

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Zydney (PCT Application # PCT/US00/21555) and Clark (Patent 6,725,228).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Zydney, a PCT application describing a voice communication system, discloses most limitations of the challenged claims. Zydney teaches a system using client software agents and a central server to send instant voice messages, which it calls "voice containers," over the Internet. This includes selecting recipients from a list, recording a voice message on a client device, and transmitting it for immediate or later delivery. Petitioner argued that while Zydney teaches storing messages locally on the client, the combination with Clark was necessary to disclose the claimed "message database" and "file manager system" for more robustly organizing and managing these messages. Clark teaches a system for cataloging and retrieving electronic messages, including instant and voice messages, in a structured message store (database) on a client computer.
    • Motivation to Combine: A POSITA would combine Clark with Zydney to improve the storage and organization of Zydney’s voice messages. Clark was said to expressly address the need for better systems to organize stored electronic messages, including instant and voice messages, and teaches that its database can be advantageously integrated with messaging client software. Therefore, a POSITA would have been motivated to incorporate Clark's organized database structure and file management capabilities into Zydney’s system to provide users with efficient storage, organization, and retrieval of both sent and received voice messages, a known area for improvement in the art.
    • Expectation of Success: Petitioner contended that a POSITA would have a reasonable expectation of success. Both references describe client-server messaging systems in the same field. Clark was designed to be agnostic to specific message formats and protocols, meaning it could be readily adapted to handle Zydney's "voice containers" without technical difficulty, leading to the predictable result of an improved voice messaging system.

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

  • Prior Art Relied Upon: Zydney (PCT Application # PCT/US00/21555), Clark (Patent 6,725,228), and Appelman (Patent 6,750,881).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Zydney and Clark from Ground 1 to further address dependent claim 7. Claim 7 requires the application to display an "indicia" for each potential recipient indicating their current availability. Petitioner argued that while Zydney discloses tracking user status (online/offline), Appelman explicitly teaches the now-common "Buddy List" feature. Appelman discloses a user interface that presents a list of contacts alongside a clear visual indicia (e.g., "IN" or "OUT") to show whether each contact is currently logged into the network and available to communicate.
    • Motivation to Combine: A POSITA would combine Appelman's teachings with the Zydney/Clark system to provide a more user-friendly and feature-rich interface. Appelman expressly teaches that knowledge of other users' presence is an important aspect of online communication systems. Incorporating Appelman's "Buddy List" UI was a natural and logical improvement to Zydney's system, as it would provide a convenient and straightforward way for users to see recipient availability at a glance. This feature was ubiquitous in popular IM systems of the era (like AOL Instant Messenger, with which Appelman is associated), creating strong market-driven motivation for its inclusion.
    • Expectation of Success: Petitioner asserted a high expectation of success, as combining a presence-indicator feature with an instant messaging system was a well-established and common practice. The integration was a predictable UI enhancement that leveraged well-known concepts and would not have presented any significant technical hurdles.

4. Key Claim Construction Positions

  • "instant voice messaging application": Petitioner argued for the broad construction of "hardware and/or software used for instant voice messaging." This construction was asserted to be consistent with the ’433 patent’s specification, which describes the functions of the "application" being performed by a combination of components within a general-purpose computer (IVM client 208) and a display device, not merely by a single, self-contained software program. This broad interpretation is critical to Petitioner's ability to map prior art systems, which consist of various hardware and software components, to this claim limitation.
  • "client platform system": Following the same logic, Petitioner proposed construing this term as "hardware and/or software on a client for generating an instant voice message." The ’433 patent describes the "client platform" as a functional block within the IVM client computer that itself contains other components. Petitioner argued this term should not be limited to software alone but should encompass the combination of hardware and software elements that collectively perform the function of generating a voice message.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review of claims 1-8 of the ’433 patent and a final determination that those claims are unpatentable.