PTAB

IPR2017-01428

Facebook Inc v. Uniloc USA Inc

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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 describes a system for delivering instant voice messages over a packet-switched network. The system involves a client device that generates a voice message, attaches files, and transmits it to a server, which then manages delivery to recipients based on their availability status.

3. Grounds for Unpatentability

Ground 1: Obviousness over Zydney - Claims 9, 12, 14, 17, 25, and 26 are obvious over Zydney.

  • Prior Art Relied Upon: Zydney (WO 01/11824 A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zydney, a PCT application describing a voice communication system, discloses all limitations of the challenged claims. Independent claim 9 requires an "instant voice messaging application" comprising a "client platform system" for generating a message and a "messaging system" for transmitting it over a packet-switched network, wherein the application attaches files. Petitioner contended that Zydney's "software agent" running on a personal computer is the claimed application. The agent's functions for recording and packaging voice into a "voice container" constitute the "client platform system," and its "transport processes" for sending the container over the Internet meet the "messaging system" limitation. Zydney explicitly taught that its system operates over the Internet (a packet-switched network) and allows for attaching multimedia files to the voice containers.
    • Prior Art Mapping (Dependent Claims): Petitioner asserted Zydney also renders the dependent claims obvious. Zydney’s software agent included "encryption protocols" (claim 12). Its process of "associating" a multimedia file with a voice container was argued to be equivalent to invoking a "document handler to create a link" (claim 14). Zydney’s central server received the voice message and recipient information (claim 17), determined recipient availability ("online or offline") (claim 25), and managed delivery by either sending instantaneously to available users or storing for later delivery to unavailable users (claim 26).

Ground 2: Obviousness over Zydney and Greenlaw - Claims 11, 15, and 16 are obvious over Zydney in view of Greenlaw.

  • Prior Art Relied Upon: Zydney (WO 01/11824 A2) and Greenlaw (a 1999 textbook titled Introduction to the Internet for Engineers).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zydney's receiving software agent disclosed the features of dependent claims 11, 15, and 16, which relate to displaying controls for playing the message, displaying attachments, and reviewing/deleting the message. However, Petitioner noted these claims could be narrowly construed to require these features on the sender's application. Greenlaw was introduced to address this narrow construction.
    • Motivation to Combine: Petitioner contended that Greenlaw taught the basic, well-known email concept of a sender including their own address in the "Cc" or "Bcc" field to receive a copy of the message, primarily for record-keeping. A POSITA would be motivated to apply this simple, conventional messaging feature to Zydney’s system to allow a sender to review, play, and manage sent messages. This would predictably result in the sender's software agent receiving the sent voice container and utilizing the exact same playback and management tools already available on the recipient's agent in Zydney.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining the concept of self-copying a message with Zydney’s system involved no technical challenges and merely applied a known technique for a known purpose.

Ground 3: Obviousness over Zydney and Newton - Claim 10 is obvious over Zydney in view of Newton.

  • Prior Art Relied Upon: Zydney (WO 01/11824 A2) and Newton (a 2002 publication titled Newton's Telecom Dictionary).
  • Core Argument for this Ground:
    • Prior Art Mapping: Dependent claim 10 adds the limitation that the packet-switched network comprises a "WiFi network." Zydney disclosed its system could be implemented on wireless devices (e.g., PDAs) connected to the Internet but did not explicitly name WiFi.
    • Motivation to Combine: Newton was cited to establish that, by 2002, WiFi (IEEE 802.11b) was the "most common" and well-known wireless networking technology for connecting devices like laptops and PDAs to the Internet. Petitioner argued that a POSITA seeking to implement Zydney's system on a wireless device would have been motivated to use the most ubiquitous, standardized, and commercially available wireless technology for Internet connectivity, which was WiFi. The motivation was to achieve the known benefits of wireless mobility, a feature contemplated by Zydney's disclosure of use on wireless handheld computers.
    • Expectation of Success: A POSITA would have expected success because WiFi was a standardized, "plug and play" protocol widely available in consumer devices, and connecting to the Internet via WiFi was a common and straightforward task.

4. Key Claim Construction Positions

  • "instant voice messaging application": Petitioner proposed the construction "hardware and/or software used for instant voice messaging." This broad construction was argued to be necessary because the patent specification does not use the term "application" in a relevant context and describes the claimed functions as being performed by a combination of hardware (e.g., a "general-purpose programmable computer" and display) and software components.
  • "client platform system": Following the same logic, Petitioner proposed the construction "hardware and/or software on a client for generating an instant voice message." This construction encompasses both the software agent functions and the underlying hardware (e.g., microphone, processor) that Zydney described for creating a voice message. Petitioner asserted this was the broadest reasonable interpretation, in contrast to a narrower construction proposed by the Patent Owner in co-pending litigation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 9-12, 14-17, 25, and 26 of the ’433 patent as unpatentable.