PTAB

IPR2017-01428

Facebook Inc. v. Uniloc USA, Inc.

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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 that generates and attaches files to an IVM and an IVM server that manages delivery based on recipient availability, including store-and-forward functionality.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Zydney (PCT Application # PCT/US00/21555).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zydney, which describes a system for sending instant voice messages called "voice containers," discloses all limitations of the challenged claims. Independent claim 9 requires an "instant voice messaging application" with a "client platform system" for generating a message and a "messaging system" for transmitting it. Petitioner asserted that Zydney's "software agent" running on a client device (e.g., a personal computer) is the claimed application. This agent performs the functions of the client platform system by recording audio and creating a voice container, and it performs the functions of the messaging system by transmitting the container over the Internet, a packet-switched network. The final limitation of claim 9, attaching files, was allegedly disclosed by Zydney's teaching of attaching "multimedia attachments" like digitized greeting cards to the voice containers.
    • Prior Art Mapping (Dependent Claims): Petitioner contended Zydney also rendered the dependent claims obvious. Claim 12’s encryption was taught by Zydney’s software agent including "encryption protocols." Claim 14’s "document handler" to create a "link" was disclosed by Zydney’s process of "associating" a multimedia file with a voice container. Claims 17, 25, and 26, which relate to a server that receives the message and recipient data, determines recipient availability ("online" or "offline"), and performs store-and-forward delivery, were allegedly all disclosed by Zydney's central server, which tracks agent status and routes messages for immediate delivery or stores them for later delivery when a recipient logs on.

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

  • Prior Art Relied Upon: Zydney (PCT Application # PCT/US00/21555) and Greenlaw (Introduction to the Internet for Engineers (1999)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims 11, 15, and 16, which add functions to the messaging application: displaying controls for playing the message, displaying the attachment, and controls for reviewing/deleting the message. Petitioner first argued that Zydney's recipient-side software agent disclosed these features. However, should the claims be construed to require these controls on the sender's application, Petitioner argued the combination with Greenlaw rendered them obvious. Greenlaw, a textbook, taught the well-known email practice of a sender CC'ing or BCC'ing themselves on a message to keep a record.
    • Motivation to Combine: A POSITA would combine Zydney's voice messaging with Greenlaw's basic teaching of self-copying for the simple and predictable purpose of allowing a sender to keep a record of sent messages. By making the sender a recipient of their own message, the sender's software agent would naturally gain access to the same recipient-side playback and review controls already disclosed in Zydney. This was a common and desirable feature in messaging systems.
    • Expectation of Success: A POSITA would have a high expectation of success, as the modification only required adding the sender’s address to the recipient list—a trivial change in software logic—to enable a known and desired function.

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

  • Prior Art Relied Upon: Zydney (PCT Application # PCT/US00/21555) and Newton (Newton's Telecom Dictionary (2002)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted claim 10, which specifies the "packet-switched network" of claim 9 comprises a WiFi network. Petitioner asserted that Zydney taught implementing its system on wireless devices (like PDAs) connected to the Internet. Newton, a technical dictionary from 2002, confirmed that WiFi (IEEE 802.11b) was "the most common wireless local area network" at the time, was "commonly installed in offices, airports, coffee shops, etc.," and that many laptops included built-in WiFi.
    • Motivation to Combine: A POSITA seeking to implement the wireless functionality described in Zydney would have been motivated to use the most common, standardized, and widely available technology for wireless internet access. Newton identified this technology as WiFi. Using WiFi would provide the well-known advantages of wireless connectivity without being tethered to a physical line.
    • Expectation of Success: Success would be expected, as WiFi was a standardized "plug and play" technology widely available in commercial off-the-shelf equipment. Integrating it into Zydney’s system would have been a routine and predictable design choice.

4. Key Claim Construction Positions

  • "instant voice messaging application": Petitioner argued the broadest reasonable interpretation is "hardware and/or software used for instant voice messaging." The petition contended that while the term "application" often implies software, the patent's specification describes functions (like displaying a recipient list) being performed by hardware (a display device) connected to the client computer. Thus, the term should not be limited to software alone but must encompass the combination of hardware and software components that perform the claimed functions.
  • "client platform system": Petitioner argued this term should be construed as "hardware and/or software on a client for generating an instant voice message." This construction mirrors the logic for "instant voice messaging application," asserting that the system described in the patent comprises both hardware and software elements working together to generate the voice message. Petitioner noted this contradicts the Patent Owner’s litigation proposal, which improperly defines the "client platform system" as a part of a "client engine," reversing the relationship described in the specification.

5. Relief Requested

  • Petitioner requests institution of inter partes review of claims 9-12, 14-17, 25, and 26, and a finding that they are unpatentable.