PTAB

IPR2017-01611

Snap Inc. v. Uniloc Luxembourg S.A.

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1. Case Identification

  • Patent #: 8,995,433
  • Filed: June 15, 2017
  • Petitioner(s): Snap Inc.
  • Patent Owner(s): UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
  • Challenged Claims: 1-3, 5, 6, and 8

2. Patent Overview

  • Title: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
  • Brief Description: The ’433 patent describes a system for providing instant voice messaging over a packet-switched network, such as the Internet. The technology purports to combine known concepts of Voice over Internet Protocol (VoIP), Public Switched Telephone Network (PSTN) voice messaging, and instant text messaging to create a system where users can generate, transmit, and store instant voice messages.

3. Grounds for Unpatentability

Ground 1: Obviousness over Abburi and Holtzberg - Claims 1, 2, 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 all elements of independent claim 1 except for storing a voice message in a database represented by a record with a unique identifier. Abburi disclosed a system for sending and receiving audio messages using computer or telephone devices over a packet-switched network, including a client platform for message generation, a messaging system for transmission, displaying a list of recipients from a contact list, and a file manager for storing and retrieving messages. To supply the missing element, Petitioner asserted that Holtzberg taught a voicemail system with a database structure where each voice message is stored as a record associated with a unique message ID for efficient retrieval. Dependent claims 2 (receiving multiple messages) and 8 (audible/visual receipt notification) were also argued to be taught by Abburi.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Holtzberg’s database storage techniques with Abburi’s audio messaging system. Both references are in the same field of endeavor (audio message storage and manipulation). A POSITA would be motivated to use Holtzberg's specific storage schema to improve the performance of Abburi's system by enhancing organization, improving query times, and reducing data redundancy.
    • Expectation of Success: The combination involved applying a known database technique to a known messaging system to achieve the predictable result of more efficient message storage and management.

Ground 2: Obviousness over Abburi, Holtzberg, and Vuori - Claim 3 is obvious over Abburi and Holtzberg in view of Vuori.

  • Prior Art Relied Upon: Abburi (’512 application), Holtzberg (’261 patent), and Vuori (Application # 2002/0146097).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 3, which depends from claim 1, adds the limitation that the application "displays at least one of the plurality of instant voice messages stored in the message database." Petitioner argued that while the combination of Abburi and Holtzberg taught displaying identifying information for a message (e.g., a hyperlink), it did not explicitly teach displaying the content of the voice message. Vuori was introduced to teach this missing element. Vuori described a short voice message (SVM) service that could convert spoken messages to text and then display the converted text on the user's equipment.
    • Motivation to Combine: A POSITA would be motivated to incorporate Vuori's voice-to-text display functionality into the system of Abburi and Holtzberg. This would predictably allow users to view the content of audio messages without requiring audio playback, an established method for improving user convenience in messaging systems.

Ground 3: Obviousness over Väänänen and Holtzberg - Claims 1, 2, 5, 6, and 8 are obvious over Väänänen in view of Holtzberg.

  • Prior Art Relied Upon: Väänänen (Patent 7,218,919) and Holtzberg (’261 patent).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented Väänänen as an alternative primary reference that taught most limitations of the challenged claims. Väänänen disclosed a system for creating, storing, and transmitting "instantaneous packet switched voicemail" between various devices over the Internet. It taught recording a voice message, writing it to a data file (e.g., MP3), displaying potential recipients, and transmitting the file. It also disclosed storing messages on the subscriber terminal and included teachings on compression and cryptography. As in Ground 1, Petitioner relied on Holtzberg to provide the specific teaching of a database structure using unique identifiers for stored messages to render claim 1 obvious. Petitioner further argued Väänänen taught the limitations of dependent claims 2, 5 (encryption/decryption), 6 (which largely mirrors claim 1), and 8 (visual receipt notification).
    • Motivation to Combine: The motivation was identical to Ground 1: a POSITA would find it obvious to enhance the general storage system of Väänänen with the specific, efficient database structure taught by Holtzberg to gain predictable benefits in message organization and retrieval.
    • Expectation of Success: Implementing Holtzberg's well-understood database structure into Väänänen's messaging system would have been a straightforward application of a known technique to improve a known system, with a high expectation of success.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 5 and 6 based on Abburi, Holtzberg, and Logan (Patent 5,732,216), where Logan was used to teach encryption and compression/decompression systems. A final ground alleged claim 3 was obvious over Väänänen, Holtzberg, and Vuori, mirroring the logic of Ground 2.

4. Key Claim Construction Positions

  • The petition proposed a construction for the term "display[ing] at least one of the plurality of instant voice messages" (claim 3).
  • Petitioner argued that the broadest reasonable interpretation should be "displaying the content or identifying information of at least one of the plurality of instance voice messages." This construction was asserted to be critical, as it would allow prior art that discloses displaying an icon, hyperlink, or other identifier for a voice message—not just the full transcribed text—to satisfy the claim limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 5, 6, and 8 of Patent 8,995,433 as unpatentable under 35 U.S.C. §103.