PTAB

IPR2017-01667

Facebook Inc v. Uniloc Luxembourg SA

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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 ’622 patent discloses a client-server system for instant voice messaging. The system allows users on client devices to send voice messages over a packet-switched network, where a central server manages user connection status and facilitates store-and-forward delivery if a recipient is offline.

3. Grounds for Unpatentability

Ground 1: Claims 3, 6-8, 10, 11, 13, 18-21, 23, 27, 32-35, and 38 are obvious over Zydney in view of Shinder.

  • Prior Art Relied Upon: Zydney (WO 01/11824) and Shinder ("Computer Networking Essentials," a 2002 textbook).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zydney, a PCT application, discloses a complete client-server instant voice messaging system. It teaches client software agents communicating with a central server over the Internet to send "voice containers." The server tracks user status to enable either instantaneous delivery or storage for later delivery if the recipient is offline, meeting most limitations of the independent claims. However, Zydney does not explicitly describe the specific hardware for network connectivity. Shinder, a networking textbook, is cited to supply the teaching of a "network interface," such as a Network Interface Controller (NIC), a fundamental component required for any computer to connect to a network.
    • Motivation to Combine: Petitioner contended that a POSITA would combine Shinder with Zydney because Zydney’s system is inherently a networked application that requires a connection to the Internet to function. Shinder merely supplies the well-known, off-the-shelf, and essential hardware component necessary to enable the described functionality of Zydney. Shinder states that "some sort of network interface is always required to communicate over a network," providing an explicit motivation to include it in Zydney's system.
    • Expectation of Success: A POSITA would have had a high expectation of success, as adding a standard network interface to a computer server is a routine and predictable task.

Ground 2: Claims 14-17 and 28-31 are obvious over Zydney and Shinder, in further view of Clark.

  • Prior Art Relied Upon: Zydney (WO 01/11824), Shinder (a 2002 textbook), and Clark (Patent 6,725,228).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses dependent claims requiring a "message database" on the client device for storing messages, where each message is represented by a record with a unique identifier. While Zydney discloses local message storage, Petitioner argued it lacks the detailed database structure. Clark teaches a system for managing and organizing stored electronic messages—including instant messages and voice messages—in a client-side message database. Clark explicitly discloses storing both sent and received messages, and its message store server assigns a "unique StoreMessageId" to each message, which is stored in a database record.
    • Motivation to Combine: A POSITA would combine Clark's database system with the Zydney/Shinder system to provide improved message organization, storage, and retrieval on the client device. Clark expressly teaches that its invention can be "advantageously be integrated with messaging client software" to solve the known problem of inefficiently managed message stores. This directly addresses a functional need in Zydney’s client software.
    • Expectation of Success: The combination would have been predictable, as integrating a database for message storage into a client application was a well-understood software design choice.

Ground 3: Claims 22 and 39 are obvious over Zydney and Shinder, in further view of Appelman.

  • Prior Art Relied Upon: Zydney (WO 01/11824), Shinder (a 2002 textbook), and Appelman (Patent 6,750,881).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenges claims requiring the display of a visual "indicia" indicating whether a potential recipient is currently available. Petitioner asserted that while Zydney’s server tracks and provides user status information (e.g., "online or offline") to the client, it does not explicitly disclose visually displaying this status. Appelman, which relates to the AOL "Buddy List," directly teaches a user interface that displays a list of co-users and a visual indicia of their connectivity status (e.g., "IN" for online, "OUT" for offline) to indicate their availability for instant messaging.
    • Motivation to Combine: A POSITA would be motivated to incorporate Appelman’s user-friendly visual status display into Zydney's system to provide a convenient and intuitive interface. Both references address the same problem of managing user availability in an instant messaging context. Implementing a "Buddy List" feature was a ubiquitous and expected feature in messaging systems of the time, driven by market demand for user-friendly interfaces.
    • Expectation of Success: Integrating a graphical user interface element to display data already present in the system (Zydney's status information) would have been a straightforward task with a high expectation of success.

4. Key Claim Construction Positions

  • "instant voice messaging application": Petitioner argued this term should be construed as "hardware and/or software used for instant voice messaging." The petition contended that because the patent specification does not limit the term to software and describes the functions as being performed by a "general-purpose programmable computer" (the IVM client 208), the construction must encompass both hardware and software.
  • "client platform system": Petitioner proposed the construction "hardware and/or software on a client for generating an instant voice message." This follows the logic for "application," as this system is a component of the overall application and is described functionally without being limited to a specific hardware or software implementation.
  • "communication platform system": Petitioner proposed the construction "a system of the server which relays communications and/or tracks client connection information." This construction is based on the specification's description of this system as part of the IVM server (202) that manages connection status.

5. Relief Requested

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