PTAB

IPR2017-02090

Huawei Device Co Ltd v. Uniloc Luxembourg SA

Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method For Instant VoIP Messaging
  • Brief Description: The ’622 patent describes a client-server system for sending and receiving instant voice messages over a packet-switched network. The system features a central server that manages communications and maintains connection status information for a plurality of client systems.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Zydney (WO 01/11824) and Shinder (a 2002 textbook titled Computer Networking Essentials).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zydney taught the core elements of the challenged claims, including a client-server architecture for instant voice messaging. Zydney’s system used "voice containers" for messages and featured a central server that functions as a "communication platform system" to track the online/offline status of client software agents. Petitioner contended that while Zydney’s system inherently requires network connectivity, it did not explicitly describe the "network interface" hardware. Shinder, a general networking textbook, was cited to supply this element, teaching that a network interface controller (NIC) is a basic, required hardware component for any computer to communicate over a network.
    • Motivation to Combine: A POSITA would combine the teachings because Shinder explained that a network interface is not merely an optional component but is always required for a device to connect to a network. Therefore, implementing Zydney's networked messaging system would have obviously and necessarily required including a standard network interface as taught by Shinder.
    • Expectation of Success: The integration of a standard NIC to provide network connectivity to a computer system was a routine, predictable, and fundamental task in the art.

Ground 2: Claims 14-17 and 28-31 are obvious over Zydney and Shinder, in further view of Clark.

  • Prior Art Relied Upon: Zydney (WO 01/11824), Shinder (a 2002 textbook), and Clark (Patent 6,725,228).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Zydney and Shinder to address claims requiring a client-side "message database" for storing instant voice messages, where each message is represented by a database record with a "unique identifier." While Zydney disclosed temporary local storage of messages, Petitioner argued it lacked a formal database structure. Clark was introduced because it explicitly taught a system for organizing electronic messages—including voice and instant messages—in a client-side message database, where each message is assigned a unique StoreMessageId and stored in a database record.
    • Motivation to Combine: Clark was presented as an express solution to the problem of inefficiently organized electronic messages. Petitioner asserted a POSITA would be motivated to integrate Clark’s advanced database system into Zydney’s client software to provide users with the expected functionality of storing, organizing, and retrieving sent and received messages, thereby improving the system.
    • Expectation of Success: Applying a message database to a client messaging application was a well-understood design choice with no technical barriers to implementation.

Ground 3: Claims 22 and 39 are obvious over Zydney and Shinder, in further view of Appelman.

  • Prior Art Relied Upon: Zydney (WO 01/11824), Shinder (a 2002 textbook), and Appelman (Patent 6,750,881).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground also built on the Zydney and Shinder combination to address claims requiring the client application to display a visual "indicia" indicating a potential recipient's availability (e.g., online or offline). While Zydney’s server tracked this status and conveyed it to the client, Petitioner argued it did not explicitly disclose displaying a visual status indicator. Appelman was added because it taught the ubiquitous "Buddy List" feature for instant messaging, which displays a list of users alongside visual status indicators such as "IN" or "OUT."
    • Motivation to Combine: Appelman directly addressed the need for users to know the online status of others in a communication system. Given that buddy lists were a pervasive and expected feature in instant messaging systems at the time, a POSITA would have been highly motivated to incorporate Appelman’s straightforward user interface feature into Zydney’s system to meet market expectations and enhance usability.
    • Expectation of Success: Implementing a visual status indicator next to a name in a user list was a simple and predictable task in graphical user interface design.

4. Key Claim Construction Positions

  • "instant voice messaging application": Petitioner proposed a construction of "hardware and/or software used for instant voice messaging." This construction was argued to be necessary because the ’622 patent specification does not limit the term to software, instead describing the client system as a "general-purpose programmable computer."
  • "client platform system": Consistent with the above, Petitioner proposed this term be construed as "hardware and/or software on a client for generating an instant voice message."
  • "communication platform system": Petitioner proposed this term be construed as a "system of the server which relays communications and/or tracks client connection information," based on its function described in the specification.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 3, 6-8, 10, 11, 13, 14-23, 27-35, 38, and 39 of the ’622 patent as unpatentable.