PTAB

IPR2017-01802

Samsung Electronics America Inc v. Uniloc Luxembourg SA

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Instant Voice Messaging System
  • Brief Description: The ’890 patent discloses an instant voice messaging system for delivering messages over a packet-switched network. The system comprises clients that connect to a server, which manages message delivery and stores messages for unavailable recipients.

3. Grounds for Unpatentability

Ground 1: Obviousness over Griffin and Zydney

Claims 1, 3-6, 9, and 40-43 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 the core elements of independent claim 1: an instant voice messaging system with clients ("mobile terminals"), a server, and a packet-switched network for delivering real-time voice chat messages. Griffin’s system allowed a user to select recipients from a "buddy list," generate a voice message, and transmit it to the server for delivery. However, Petitioner contended Griffin did not explicitly disclose temporarily storing messages for recipients who are unavailable (e.g., offline) and delivering them once they become available. Petitioner asserted that Zydney remedied this deficiency. Zydney described an instant voice messaging system where, if a recipient is offline, the voice message is sent to a "server file" for temporary storage and is delivered once the recipient reconnects and "becomes available." Petitioner also argued that Zydney taught directly connecting client devices to the network, an obvious modification to Griffin's system which showed an indirect connection via a wireless carrier.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Griffin and Zydney to enhance the capabilities and convenience of Griffin’s system. Adding Zydney's store-and-forward functionality for offline recipients was a common-sense solution to the known problem of users being temporarily disconnected, preventing missed messages and improving user experience. This combination involved applying a known technique (store-and-forward) to a similar system (Griffin's) to yield predictable results.
    • Expectation of Success: A POSITA would have had a high expectation of success because both references operated in the same technical field of network communication and addressed common messaging problems. Implementing a store-and-forward message queue based on a user's network connectivity status, as taught by Zydney, was a straightforward and well-understood task in software development at the time.

Ground 2: Obviousness over Griffin, Zydney, and Malik

Claims 2, 14, 15, 17-20, 23, 51-54, and 57 are obvious over Griffin and Zydney in view of Malik.

  • Prior Art Relied Upon: Griffin (Patent 8,150,922), Zydney (WO 01/11824A2), and Malik (Patent 7,123,695).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Griffin and Zydney from Ground 1 and added Malik to address claim limitations requiring a "local network" and an "external network." Petitioner asserted that while the Griffin/Zydney combination taught a messaging system on a packet-switched network (which could be a private corporate intranet), it did not explicitly describe a distributed architecture with distinct local and external networks. Malik, which described a voice messaging system based on the Jabber architecture, was alleged to disclose this feature. Malik taught a system of interconnected "local Jabber servers," each forming a "local network" with its clients. These local networks communicated with each other over an "external network" like the Internet, enabling users to send messages to recipients both within their own local network and on external networks.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Malik's teachings into the Griffin/Zydney system to create a more versatile messaging platform suitable for enterprise environments. Using a local area network (LAN) was a well-known solution for creating a private, company-wide messaging system, offering benefits like increased speed and security. Connecting this local network to an external network (the Internet) as taught by Malik was a natural extension to allow communication with outside parties. This addressed a known market need for integrated internal and external communication tools.
    • Expectation of Success: The proposed modification was a predictable integration of known network architectures. Configuring the Griffin/Zydney system to operate across a local network and connect to an external network using the distributed server model from Malik was a common networking concept. A POSITA would have reasonably expected that such a configuration would successfully enable messaging between local and external recipients without altering the fundamental operation of the underlying voice messaging functions.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 9, 14, 15, 17-20, 23, 40-43, 51-54, and 57 of the ’890 patent as unpatentable.