PTAB

IPR2017-01797

Samsung Electronics America Inc v. Uniloc Luxembourg SA

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Instant Voice Messaging Over a Packet-Switched Network
  • Brief Description: The ’622 patent is directed to a system for instant voice messaging over a packet-switched network that interconnects client devices via a server. The system includes features for determining recipient connection status and managing message delivery based on that status.

3. Grounds for Unpatentability

Ground 1: Claims 3, 4, 6-8, 10-11, 13, 18, 21-23, 27, 32, 34, 35, 38, and 39 are obvious over Griffin in view of Zydney.

  • Prior Art Relied Upon: Griffin (Patent 8,150,922) and Zydney (WO 01/11824A2).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Griffin disclosed a server-based architecture for real-time voice and text chat between mobile terminals over a packet-switched network. Griffin’s system included a "presence manager" to maintain user status (e.g., "Available" or "Off"). However, Petitioner asserted Griffin lacked specific teachings for key limitations, which were supplied by Zydney. Zydney was argued to teach an instant voice messaging system that explicitly maintains and conveys precise connectivity status (e.g., "online," "offline," "Not logged on") and creates voice messages as "digitized audio files" (e.g., MP3s) packaged in a "voice container." The combination of Griffin's architecture with Zydney's specific teachings on connection status, digitized audio files, and message fields (such as action fields for user-permitted actions) allegedly rendered the claims obvious. For example, claim 3’s "communication platform system maintaining connection information" was met by combining Griffin’s presence manager with Zydney's more detailed teaching of tracking explicit online/offline status.
    • Motivation to Combine: A POSITA would combine Griffin and Zydney because they operated in the same technical field of network communication systems and addressed common problems with compatible technologies. The motivation was to improve the functionality of Griffin’s system by incorporating Zydney's more precise connection status tracking—a common and expected feature in messaging systems—and by using standard digitized audio files, which offered well-known benefits for storage, transmission efficiency, and cross-platform compatibility.
    • Expectation of Success: Petitioner contended the combination was a simple substitution of known technologies for their predictable functions. Implementing a more granular connection status or using a standard digital audio file format within Griffin's established framework were presented as straightforward modifications with a high expectation of success.

Ground 2: Claim 12 is obvious over Griffin and Zydney in view of Aravamudan.

  • Prior Art Relied Upon: Griffin (Patent 8,150,922), Zydney (WO 01/11824A2), and Aravamudan (Patent 6,301,609).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted claim 12, which required the system to update connection information by periodically transmitting a connection status request (i.e., polling) to the client systems. While the primary Griffin/Zydney combination established a system for maintaining connection status, Petitioner argued it did not explicitly disclose a polling mechanism. Aravamudan was introduced to supply this teaching, as it described an instant messaging platform where a server periodically polls each client device to determine its online/offline status and updates a central database accordingly.
    • Motivation to Combine: A POSITA would be motivated to add Aravamudan's polling technique to the Griffin/Zydney system to ensure that the centrally stored connection information remained accurate and up-to-date, which is critical for a reliable messaging service. Polling was a well-known, resource-efficient method for managing status updates, particularly advantageous for mobile terminals with limited resources like those described in Griffin.

Ground 3: Claim 11 is obvious over Griffin and Zydney in view of Vuori.

  • Prior Art Relied Upon: Griffin (Patent 8,150,922), Zydney (WO 01/11824A2), and Vuori (Application # 2002/0146097).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative basis for the unpatentability of claim 11, which recited a store-and-forward function: storing a message if a recipient has no connection and delivering it when a connection is re-established. Petitioner asserted this ground in the event that Zydney's disclosure on this point was deemed insufficient. Vuori was argued to explicitly describe a service center for "short voice messages" that determines recipient availability (on-line), sends messages immediately to available recipients, and "temporarily store[s] and deliver[s]" messages to unavailable recipients when they become available.
    • Motivation to Combine: A POSITA would be motivated to integrate Vuori's clear store-and-forward mechanism into the Griffin/Zydney system for the same reasons as with Zydney alone: to create a more robust and user-friendly system that could reliably handle message delivery to offline users. This was a common and necessary feature in mobile messaging, and Vuori provided a direct and detailed solution to this known problem, reinforcing the obviousness of the claimed functionality.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 3, 4, 6-8, 10-13, 18, 21-23, 27, 32, 34, 35, 38, and 39 of the ’622 patent as unpatentable.