Apple Inc. v. Uniloc Luxembourg S.A.

1. Case Identification

• Case #: IPR2017-01805
• Patent #: 8,724,622
• Filed: July 20, 2017
• Petitioner(s): Apple Inc.
• Patent Owner(s): Uniloc USA, Inc. and Uniloc Luxembourg S.A.
• Challenged Claims: 4, 5, 12, and 24-26

2. Patent Overview

• Title: Instant Voice Messaging System
• Brief Description: The ’622 patent describes a system for providing instant voice messaging (IVM) between multiple client systems over a packet-switched network. The system uses a central server with a communication platform to manage client connections, track online status, and route voice messages, which are encapsulated as objects containing digitized audio.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Zydney (International Publication No. 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 Zydney discloses the foundational elements of the challenged claims, including a client-server instant voice messaging system that transmits "voice containers" (instant voice messages) over the Internet and tracks client online status. However, Zydney does not explicitly detail the hardware interface or the specific communication protocol. Shinder, a networking textbook, was cited to show that implementing Zydney's system with a "network interface" (e.g., an Ethernet card) was a fundamental and obvious requirement for any networked computer. Hethmon was cited to show that using the standard Hypertext Transfer Protocol (HTTP) was an obvious choice for communication. Petitioner contended that the claimed "action field" (claim 4) corresponds to the "Method" field (e.g., POST) in a standard HTTP request, which specifies a permitted action. The claimed "connection object messages" (claims 24-26) were mapped to HTTP requests containing both data (client status) and code (the HTTP method itself) for maintaining a logical connection. Dependent claim 5's "message transmission request" was directly mapped to the function of an HTTP POST request. Dependent claim 25's "size of data" was mapped to the standard "Content-Length" field in an HTTP header.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references because Zydney itself expressly suggests using HTTP as a transport mechanism. Petitioner asserted a POSITA would be motivated to use a well-known, standardized protocol like HTTP as detailed in Hethmon to simplify implementation, leverage mature technology, increase interoperability, and easily traverse network firewalls, a benefit explicitly acknowledged in Zydney. Adding a network interface as taught by Shinder was not a choice but a necessity for the system to function.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involves implementing a known messaging system (Zydney) using basic, off-the-shelf networking hardware (Shinder) and a ubiquitous, well-documented communication protocol (Hethmon).

Ground 2: Claim 12 is obvious over Zydney, Shinder, Microsoft (1991), and Moghe.

• Prior Art Relied Upon: Zydney (WO 01/11824), Shinder ("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 targets dependent claim 12, which adds the limitation of the communication platform "periodically transmitting a connection status request" to update connection information. Petitioner argued that the base system is disclosed by the combination of Zydney and Shinder, as in Ground 1. While Zydney's server tracks client status, it does not specify how it handles all status updates, particularly unexpected disconnections. Microsoft, a technical dictionary, and Moghe, a patent on network management, were cited to show that "polling"—the process of periodically sending requests to determine device status—was a universally known, fundamental technique in computer networking. Petitioner asserted this known polling technique directly meets the limitation of periodically transmitting a status request.
  • Motivation to Combine: A POSITA would be motivated to incorporate polling into Zydney’s system as an obvious solution to the problem of maintaining accurate client status. Polling represents a simple, predictable design choice to ensure the central server is aware of client status, especially in cases where a client cannot actively report its own disconnection (e.g., a crash or power loss). Moghe teaches that polling is increasingly important for bandwidth-intensive applications like conferencing, and Petitioner argued that instant voice messaging is a similar type of application, providing further motivation.
  • Expectation of Success: The combination had a high expectation of success because polling was one of two standard, well-understood solutions (along with event-driven notifications) for status management. Implementing this basic technique in Zydney's system would involve no technical hurdles and would predictably achieve the desired result of maintaining current connection information.

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, stipulated to in concurrent litigation, was critical for Petitioner's argument that a standard HTTP POST request satisfies the claim, as the request contains both status data and "code" in the form of the POST method itself.
• "communication platform system" (claims 3, 24): Petitioner argued for a broad construction of a "system of the server which relays communications and/or tracks client connection information." This construction allowed Petitioner to map the functionality to various components within Zydney's described central server, such as its notification server and message server.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d). The petition asserted it was substantively identical to a petition filed by Facebook in IPR2017-01668 and that Petitioner would seek joinder. Petitioner contended that the primary prior art references (Zydney, Hethmon, Moghe) were not uncovered during searches for its own earlier-filed (and denied) IPRs on the ’622 patent. It argued this was not an improper follow-on petition using a prior decision as a "roadmap," but rather a petition based on newly discovered, stronger art.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 4, 5, 12, and 24-26 of Patent 8,724,622 as unpatentable.