Samsung Electronics America Inc v. Uniloc Luxembourg SA

1. Case Identification

• Case #: IPR2017-01799
• Patent #: 8,199,747
• Filed: July 20, 2017
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Uniloc Luxembourg, S.A.
• Challenged Claims: 1-3, 12-13

2. Patent Overview

• Title: Instant Voice Messaging System
• Brief Description: The ’747 patent describes a system for providing instant voice messaging (IVM) over packet-switched networks like VoIP, with support for Public Switched Telephone Network (PSTN) integration. The system comprises IVM clients and an IVM server to facilitate the recording and real-time delivery of voice messages based on recipient availability.

3. Grounds for Unpatentability

Ground 1: Obviousness over Griffin and Zydney - Claims 1-3 and 12-13 are obvious over Griffin in view of Zydney.

• Prior Art Relied Upon: Griffin (Patent 8,150,922), Zydney (WO 01/11824A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Griffin, discloses a real-time voice and text chat system over a packet-based network that meets most limitations of the challenged claims. Griffin teaches a system with mobile terminals (clients) and a server complex that manages communication, including sending messages to multiple recipients from a "buddy list" and indicating recipient availability status. Petitioner asserted that the teachings of Zydney would have made it obvious for a Person of Ordinary Skill in the Art (POSITA) to modify Griffin’s system to arrive at the claimed invention.
    • For independent claim 1, Petitioner argued that while Griffin discloses recording speech, Zydney teaches the obvious next step of storing that speech in a standard digitized audio file (e.g., MP3). Similarly, Griffin teaches attaching files to messages, and Zydney teaches attaching multimedia files to voice containers using the MIME standard; Petitioner contended the combination renders it obvious to attach files to a voice message that is itself an audio file.
    • Regarding recipient availability, Petitioner argued that Griffin’s basic status indicator ("Available" or "Off") would have been obviously enhanced by incorporating Zydney's more specific teaching of determining availability based on a user's network connectivity status (i.e., online/offline).
    • For the store-and-forward functionality for unavailable recipients, Petitioner asserted that Zydney’s explicit method of storing a message on a server when a recipient is offline for later delivery upon login would have been an obvious and natural extension of Griffin's more limited message-queuing feature. This modification would address the common problem of preventing missed messages for disconnected users.
    • For dependent claims, Petitioner argued that Griffin's "buddy list" with status indicators maps to the "list of nodes" with "connectivity status" in claim 2, especially when modified by Zydney's teachings on connectivity. Zydney's disclosure of selecting a messaging mode ("intercom" vs. "pack and send") based on recipient connectivity status was argued to render claim 3 obvious. The limitations of claims 12 (displaying an indicator/playing the message) and 13 (separating the audio file from attachments) were argued to be disclosed by Griffin’s user interface and rendered obvious by the inherent properties of using the MIME attachment standard taught by Zydney.
  • Motivation to Combine: Petitioner asserted that a POSITA would combine Griffin and Zydney because both references reside in the same technical field of instant voice messaging over packet-switched networks and address common problems. A POSITA would have been motivated to integrate Zydney's teachings to enhance Griffin's system with well-known and compatible features, such as using standard audio files for efficiency, providing more precise connectivity-based presence information, and implementing a robust store-and-forward system to improve user experience. The combination was characterized as a simple substitution of known elements to achieve predictable results.
  • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in combining the references. The proposed modifications involved applying conventional techniques to well-understood technologies, which would predictably improve the functionality and convenience of Griffin's voice messaging system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that institution would be proper because the asserted ground is distinct from that in a concurrent inter partes review (IPR) proceeding (IPR2017-01257) challenging the same patent.
• Petitioner stated that this petition’s ground relies on Griffin as the primary reference, which was not at issue in the other IPR. This distinction was presented as a reason to avoid discretionary denial under 35 U.S.C. §325(d) for presenting the same or substantially the same prior art or arguments.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3 and 12-13 of the ’747 patent as unpatentable.