PTAB

IPR2017-01667

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

Title: System and Method For Instant VoIP Messaging
Brief Description: The ’622 patent describes a client-server system for transmitting instant voice messages over a packet-switched network. The system is designed to determine a recipient's connection status and, if the recipient is offline, store the voice message for later delivery when the recipient reconnects.

Prior Art Relied Upon: Zydney (WO 01/11824) and Shinder (a 2002 textbook titled "Computer Networking Essentials").
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Zydney discloses all major elements of the challenged independent claims (3, 27, 38), including a client-server architecture for sending instant voice messages ("voice containers"), checking recipient online status, and storing messages for offline users. However, Zydney does not explicitly detail the "network interface" hardware. Shinder, a networking textbook, was cited to teach that a network interface (e.g., a Network Interface Card or NIC) is a fundamental, well-known, and essential component for any computer to connect to a network like the Internet.
- Motivation to Combine: A POSITA would combine Shinder's teaching of a network interface with Zydney's system because Zydney's system inherently requires network connectivity to function. Shinder taught that some form of network interface is "always required to communicate over a network," providing a clear motivation to include this essential component in Zydney's client and server devices to enable their disclosed network communications.
- Expectation of Success: A POSITA would have had a high expectation of success, as adding a standard, off-the-shelf network interface to a computer system was a routine and predictable task with well-understood results.

Prior Art Relied Upon: Zydney (WO 01/11824), Shinder (2002 textbook), and Clark (Patent 6,725,228).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds on the Zydney/Shinder combination to address dependent claims requiring a "message database" on the client device for storing voice messages, with each message represented by a record with a "unique identifier." Petitioner asserted that while Zydney teaches local storage of messages, it lacks the specifics of a structured database. Clark was introduced as disclosing a detailed system for a client-side message database to store, organize, and retrieve various electronic messages (including instant messages), where each message is assigned a unique "StoreMessageId."
- Motivation to Combine: Clark expressly taught that its database system could be "advantageously be integrated with messaging client software" to improve the organization of electronic messages. A POSITA would have been motivated to incorporate Clark's database into Zydney's client application to provide a more robust and organized way to manage both sent and received voice messages, a predictable improvement over Zydney's simpler storage concept.
- Expectation of Success: Success would be expected, as integrating a database for message storage into a client application was a common and well-understood design choice for improving message management and retrieval.

Prior Art Relied Upon: Zydney (WO 01/11824), Shinder (2002 textbook), and Appelman (Patent 6,750,881).
Core Argument for this Ground:
- Prior Art Mapping: This ground addresses dependent claims requiring the client application to display a visual "indicia" of a potential recipient's availability to receive a message. Petitioner contended that Zydney's server tracks and communicates this status information to the client, but does not explicitly disclose the client displaying it. Appelman was cited for its disclosure of the AOL "Buddy List," a well-known feature that displays a list of users with visual indicia (e.g., "IN" or "OUT") to show their online/offline status.
- Motivation to Combine: Appelman was directed at solving the exact problem of knowing user availability in an online communication system. A POSITA would be motivated to combine Appelman's user-friendly "Buddy List" display with Zydney's system to provide users with a convenient and straightforward interface to see which recipients are available. This feature was ubiquitous in IM systems at the time, and market expectations would compel its inclusion.
- Expectation of Success: The combination would have been predictable and successful, as displaying presence information was a standard, non-complex feature of instant messaging clients.

"instant voice messaging application": Petitioner argued for a broad construction of "hardware and/or software used for instant voice messaging." This construction was asserted to be consistent with the ’622 patent's description of the client as a "general-purpose programmable computer" and prevents the term from being limited to just software, which is critical for mapping prior art systems.
"client platform system": Consistent with the above, Petitioner proposed this term means "hardware and/or software on a client for generating an instant voice message." This broad construction supports the argument that the functionality described in the prior art, whether implemented in hardware or software, meets the claim limitation.
"communication platform system": Petitioner proposed this term means a "system of the server which relays communications and/or tracks client connection information." This construction anchors the term to the server-side functions described in the patent, allowing Zydney's central server to be mapped to this element.

Petitioner requested institution of an inter partes review and cancellation of claims 3, 6-8, 10, 11, 13, 14-23, 27-35, 38, and 39 of the ’622 patent as unpatentable.