Samsung Electronics America, Inc. v. Uniloc Luxembourg S.A.

1. Case Identification

• Patent #: 8,724,622
• Filed: July 20, 2017
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Uniloc Luxembourg, S.A.
• Challenged Claims: 3-4, 6-8, 10-13, 18, 21-23, 27, 32, 34-35, 38-39

2. Patent Overview

• Title: Instant Voice Messaging System
• Brief Description: The ’622 patent describes a system for instant voice messaging over a packet-switched network. The system architecture involves client devices communicating with each other via a central server that manages message routing and user presence information.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Griffin (Patent 8,150,922) and Zydney (International Publication No. WO 01/11824A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Griffin disclosed the foundational system of the challenged claims: a real-time voice chat system with mobile terminals (client systems) communicating over a packet-switched network via a server complex. Griffin’s server included a "message broadcaster" (the claimed "messaging system") and a "presence manager" (the claimed "communication platform system"). However, Petitioner argued Griffin did not explicitly detail certain features that Zydney supplied. For example, where Griffin disclosed general "availability" status, Zydney taught a more specific system for maintaining and conveying an agent's "connectivity status" (e.g., online/offline). Similarly, while Griffin taught encoding speech with a codec, Zydney explicitly disclosed creating and transmitting a "digitized audio file" (e.g., MP3), which Petitioner argued was an obvious implementation. For claims requiring store-and-forward functionality (e.g., claim 11), Petitioner contended that Griffin’s message queuing combined with Zydney’s explicit disclosure of storing messages at a central server for unavailable recipients rendered the feature obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Griffin's core voice chat architecture with the specific implementations taught by Zydney to enhance system functionality and reliability. Zydney addressed common problems in messaging systems, such as handling offline users and managing different media types. A POSA would have recognized Zydney's teachings—like using explicit connectivity status and standardized digital audio files—as known, compatible solutions that would predictably improve the user experience and robustness of the Griffin system.
  • Expectation of Success: The proposed modifications involved the combination of known, compatible technologies from the same technical field. A POSA would have reasonably expected success in integrating Zydney's specific features into Griffin's general framework, as it was a simple substitution of known techniques to achieve predictable results.

Ground 2: Obviousness over Griffin, Zydney, and Aravamudan - Claim 12 is obvious over Griffin in view of Zydney and 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 built upon the combination of Griffin and Zydney from Ground 1 to address the specific limitations of claim 12, which required updating connection information by "periodically transmitting a connection status request." Petitioner argued that while the Griffin/Zydney combination taught maintaining connection status, it did not explicitly disclose a periodic polling mechanism. Aravamudan was introduced to supply this teaching. Aravamudan described an instant messaging platform where an IM server periodically polled client devices to determine if they were online and updated a database accordingly.
  • Motivation to Combine: A POSA seeking to implement the presence system of the combined Griffin/Zydney invention would need a method to keep the connection information current. Polling, as taught by Aravamudan, was a well-known and common technique for this purpose. A POSA would have been motivated to use polling because it was a simple, resource-efficient method for mobile devices to maintain up-to-date presence status, thus improving the reliability of the overall messaging system.
  • Expectation of Success: Implementing a known polling technique, as taught by Aravamudan, into the messaging system of Griffin/Zydney would have been a straightforward modification for a POSA. The result—maintaining and updating connection information via polling—was a predictable outcome of combining these known elements.

Ground 3: Obviousness over Griffin, Zydney, and Vuori - Claim 11 is obvious over Griffin in view of Zydney and 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 was presented as an alternative argument for the unpatentability of claim 11, which required a store-and-forward capability (i.e., storing a message if a recipient has no connection and delivering it upon reconnection). Petitioner asserted this ground in the event the Board found Zydney’s disclosure on this point insufficient. Vuori was introduced for its explicit teaching of a system for sending "short voice messages" (SVMs) where a central service center determines recipient availability. If a recipient was unavailable, the Vuori service center would "temporarily store and deliver the SVM when the recipients become available."
  • Motivation to Combine: A POSA would have been motivated to incorporate the clear store-and-forward functionality of Vuori into the Griffin/Zydney system to solve the common and critical problem of messaging unavailable users. This would enhance the reliability and convenience of the system by ensuring messages were not lost if a recipient was temporarily offline. All three references operated in the same technical field and addressed compatible problems.
  • Expectation of Success: Combining the explicit store-and-forward mechanism from Vuori with the instant messaging architecture of Griffin/Zydney was a predictable combination of known features to achieve the known benefit of reliable asynchronous messaging.

4. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 3-4, 6-8, 10-13, 18, 21-23, 27, 32, 34-35, and 38-39 of Patent 8,724,622 as unpatentable.