PTAB

IPR2017-01668

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 Voice over IP (VoIP) system where a central server manages communications for multiple client devices. The server includes a "communication platform system" that tracks the connection status (e.g., online/offline) of each client and facilitates the exchange of instant voice messages.

3. Grounds for Unpatentability

Ground 1: Obviousness over Zydney, Shinder, and Hethmon - Claims 4, 5, and 24-26 are obvious over Zydney in view of Shinder and Hethmon.

  • Prior Art Relied Upon: Zydney (PCT Application # WO 01/11824), Shinder (a 2002 textbook, Computer Networking Essentials), and Hethmon (a 1997 book, Illustrated Guide to HTTP).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of references teaches all limitations of the challenged claims. Zydney disclosed the foundational instant voice messaging system with a central server that tracks client status and client systems that send "voice containers." Shinder, a networking textbook, was cited to show that implementing Zydney's server with a "network interface" connected to a packet-switched network (the Internet) was a fundamental and obvious requirement for any such system.
    • Hethmon, which details the HTTP/1.1 protocol, was used to render obvious the remaining limitations. For dependent claims 4 and 5, Hethmon’s description of HTTP "request messages" using a "Method" field (e.g., POST) was argued to directly teach an "action field identifying one of a predetermined set of permitted actions," with the POST method itself constituting a "message transmission request."
    • For independent claim 24 and its dependents, Petitioner argued that Zydney's client status notifications, when implemented using the obvious choice of HTTP as taught by Hethmon, would constitute the claimed "connection object messages." A standard HTTP POST message sent from a client to the server would contain data representing the connection state (the client’s online status) and code for maintaining the connection (the POST method itself and connection headers), thereby meeting the claim limitations.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references for predictability and efficiency. Zydney itself encouraged the use of standard protocols like TCP/IP and HTTP. A POSITA would have been motivated to use the well-documented HTTP/1.1 protocol described in Hethmon to implement Zydney's messaging system to simplify development, ensure interoperability with existing infrastructure, and easily traverse common network firewalls, which typically allow HTTP traffic.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining a conceptual messaging system (Zydney) with fundamental networking hardware (Shinder) and a ubiquitous, standardized communication protocol (Hethmon) was a straightforward application of well-known technologies.

Ground 2: Obviousness over Zydney, Shinder, Microsoft, and Moghe - Claim 12 is obvious over Zydney in view of Shinder, Microsoft (1991), and Moghe.

  • Prior Art Relied Upon: Zydney (PCT Application # WO 01/11824), Shinder (a 2002 textbook, Computer Networking Essentials), Microsoft (1991) (the Microsoft Press Computer Dictionary), and Moghe (Patent 6,173,323).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the base system of Zydney and Shinder. It specifically addressed the limitation of dependent claim 12, which required the communication platform to update connection information by "periodically transmitting a connection status request." While Zydney’s server tracked client status, it did not specify how it would detect unexpected status changes (e.g., a client crashing). Petitioner argued that Microsoft (1991) and Moghe taught "polling"—the process of a server periodically sending status requests to clients—as a universally known technique for this exact purpose.
    • Motivation to Combine: A POSITA would have recognized polling as one of two primary, predictable solutions (along with event-driven notifications) for maintaining accurate client status information in Zydney’s system. Polling, as described in Microsoft and Moghe, would have been an obvious design choice because it is simple to implement and robustly handles cases where a client disconnects unexpectedly without being able to send a notification. Moghe further motivated the combination by teaching that efficient polling was increasingly important for bandwidth-intensive applications like voice messaging.
    • Expectation of Success: The concept of polling was elementary knowledge for a POSITA. Applying this fundamental technique to solve the clear need for robust status tracking in Zydney's system would have been a routine and predictable implementation choice with a high expectation of success.

4. Key Claim Construction Positions

  • "connection object messages" (claim 24): Petitioner proposed this term be construed as "messages containing data representing the state of the connection and code (one or more methods) for establishing and maintaining the logical connections between an instant voice messaging server and instant voice messaging clients." This construction was asserted to be consistent with the patent specification and a stipulation in concurrent litigation.
  • "communication platform system" (claims 3 and 24): Petitioner argued for a construction of a "system of the server which relays communications and/or tracks client connection information." This was based on the functional description provided in the ’622 patent’s specification.

5. Arguments Regarding Discretionary Denial

  • Petitioner noted that two prior IPR petitions on the ’622 patent, filed by Apple Inc., had been denied. However, Petitioner argued that denial would be inappropriate here because the current Petitioners were not party to those earlier proceedings and, critically, because the prior art references and arguments presented in this petition were not cited during the original prosecution or in the prior denied IPRs.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 4, 5, 12, and 24-26 of the ’622 patent as unpatentable.