UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. FACEBOOK, INC., WHATSAPP INC., Petitioners

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1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FACEBOOK, INC., WHATSAPP INC., Petitioners v. UNILOC USA, INC., UNILOC LUXEMBOURG, S.A., Patent Owners TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,243,723

2 Table of Contents Page I. Mandatory Notices Under 37 C.F.R. 42.8(A)(1)... 1 A. Real Party-In-Interest under 37 C.F.R. 42.8(b)(1)... 1 B. Related Matters under 37 C.F.R. 42.8(b)(2)... 1 C. Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3)... 2 D. Service Information... 3 E. Power of Attorney... 3 II. Fee Payment - 37 C.F.R III. IV. Requirements for Inter Partes Review under 37 C.F.R and A. Grounds for Standing under 37 C.F.R (a)... 3 B. Identification of Challenge under 37 C.F.R (b) and Statement of Precise Relief Requested... 4 Technology Background Relevant to a Person of Ordinary Skill in the Art... 4 V. The 723 Patent... 6 VI. Claim Construction Under 37 C.F.R (B)(3)... 7 A. signal... 7 B. node VII. Claims 1-3 Are Unpatentable A. Brief Summary and Date Qualification of the Prior Art Overview of Zydney (Ex. 1003) Overview of Appelman (Ex. 1004) B. Ground 1: Claims 1-3 Are Obvious Over Zydney + Appelman Claim 1 (Independent) (a) A method for instant voice messaging over a packet-switched network, the method comprising: (Preamble, Claim 1) (i) A method for instant voice messaging i-

3 Table of Contents (continued) Page (b) (c) (d) (e) (f) (g) (h) (i) (ii) over a packet-switched network monitoring a connectivity status of nodes within the packet-switched network, said connectivity status being available and unavailable; (Claim 1[a]) recording the connectivity status for each of the nodes; (Claim 1[b]) associating a sub-set of the nodes with a client; (Claim 1[c]) transmitting a signal to a client including a list of the recorded connectivity status for each of the nodes in the sub-set corresponding to the client; (Claim 1[d]) receiving an instant voice message having one or more recipients; (Claim 1[e]) delivering the instant voice message to the one or more recipients over a packet-switched network; (Claim 1[f]) temporarily storing the instant voice message if a recipient is unavailable; and (Claim 1[g]) delivering the stored instant voice message to the recipient once the recipient becomes available. (Claim 1[h]) Dependent Claim 2: The method for instant voice messaging over a packet-switch network according to claim 1, wherein the instant voice message includes one or more files attached to an audio file Dependent Claim 3: The method for instant voice messaging over a packet-switch network according to claim 1, further comprising the step of: controlling a method of generating the instant voice message based upon the connectivity status of said one or more recipient ii-

4 Table of Contents (continued) Page VIII. Conclusion iii-

5 List of Exhibits Ex. No Description of Document 1001 to Michael J. Rojas 1002 Declaration of Tal Lavian, Ph.D PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al. (filed August 7, 2000, published February 15, 2001 as WO 01/11824 A2) (with line numbers added) ( Zydney ) 1004 U.S. Patent No. 6,750,881 to Barry Appelman ( Appelman ) 1005 Excerpts from Margaret Levine Young, Internet: The Complete Reference (2d ed. 2002) ( Young ) 1006 PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al. (filed August 7, 2000, published February 15, 2001 as WO 01/11824 A2) (as-published version without added line numbers) 1007 U.S. Patent No. 6,757,365 B1 to Travis A. Bogard ( Bogard ) 1008 Excerpts from The Authoritative Dictionary of IEEE Standards Terms, 7th Ed. (2000) 1009 Excerpts from McGraw-Hill Dictionary of Scientific and Technical Terms, 5th Ed. (1994) 1010 Excerpts from Microsoft Computer Dictionary, 3rd Ed. (1997) 1011 Excerpts of Joint Claim Construction and Prehearing Statement filed on March 10, 2017 in Case No. 16-cv (E.D. Tex.), including Exhibit A -iv-

6 This is a petition for Inter Partes Review of claims 1-3 of U.S. Patent No. 8,243,723 (Ex. 1001) ( 723 patent ). I. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(A)(1) A. Real Party-In-Interest under 37 C.F.R. 42.8(b)(1) Facebook, Inc. and WhatsApp Inc. ( Petitioners ) are the real parties-ininterest to this inter partes review petition. B. Related Matters under 37 C.F.R. 42.8(b)(2) The 723 patent is the subject of a pending request for inter partes review (IPR ) filed by Apple Inc., on November 14, The Petitioners herein are not parties to IPR and were not involved in the preparation of that petition. An institution decision is expected for IPR by June 5, The 723 patent is also the subject of two pending litigations involving the Petitioners: Uniloc USA, Inc., Uniloc Luxembourg, S.A. v. Facebook, Inc., Case No. 2:16-cv JRG (E.D. Tex. filed July 5, 2016), and Uniloc USA, Inc., Uniloc Luxembourg, S.A. v. WhatsApp, Inc., Case No. 2:16-cv JRG (E.D. Tex. filed June 14, 2016), which have been consolidated for pretrial purposes with Uniloc USA, Inc. et al v. Samsung Electronics America, Inc., Case No. 2:16-cv (E.D. Tex.). The Petitioners are also aware of the following additional pending litigations involving the 723 patent:; Uniloc USA, Inc. et al v. Apple Inc., Case No. 2:16-cv JRG (E.D. Tex.); Uniloc USA, Inc. et al v. BlackBerry Corp. et al, Case No. -1-

7 2:16-cv JRG (E.D. Tex.); Uniloc USA, Inc. et al v. AOL Inc., Case No. 2:16- cv jrg (E.D. Tex.); Uniloc USA, Inc. et al v. BeeTalk Private Ltd., Case No. 2:16-cv JRG (E.D. Tex.); Uniloc USA, Inc. et al v. Green Tomato Ltd., Case No. 2:16-cv JRG (E.D. Tex.); Uniloc USA, Inc. et al v. Sony Interactive Entertainment Ltd., Case No. 2:16-cv JRG (E.D. Tex.); Uniloc USA, Inc. et al v. Avaya Inc., Case No. 2:16-cv JRG (E.D. Tex.); Uniloc USA, Inc. et al v. Telegram Messenger, LLP, Case No. 2:16-cv JRG (E.D. Tex.). Although the Petitioners are not parties to these other litigations, because they involve allegations of infringement of the 723 patent, they may be impacted by a decision by the Board in this IPR proceeding. C. Lead and Back-Up Counsel under 37 C.F.R. 42.8(b)(3) Petitioners provide the following designation of counsel. LEAD COUNSEL Heidi L. Keefe (Reg. No. 40,673) hkeefe@cooley.com FB_Uniloc2_723_PTAB_IPR@cooley.com COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington, DC Tel: (650) Fax: (650) BACK-UP COUNSEL Phillip E. Morton (Reg. No. 57,835) pmorton@cooley.com FB_Uniloc2_723_PTAB_IPR@cooley.com COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington D.C Tel: (703) Fax: (703) Mark R. Weinstein (Admission pro hac vice pending) mweinstein@cooley.com -2-

8 LEAD COUNSEL BACK-UP COUNSEL Tel: (650) Fax: (650) D. Service Information This Petition is being served to the current correspondence address for the 723 patent, UNILOC USA INC., Legacy Town Center, 7160 Dallas Parkway, Suite 380, Plano TX The Petitioners consent to electronic service at the addresses provided above for lead and back-up counsel. E. Power of Attorney Filed concurrently in accordance with 37 C.F.R (b). II. FEE PAYMENT - 37 C.F.R This Petition requests review of three (3) claims. A payment of $23,000 is submitted herewith, based on a $9,000 request fee (for up to 20 claims), and a postinstitution fee of $14,000 (for up to 15 claims). This Petition meets the fee requirements of 35 U.S.C. 312(a)(1). III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R AND A. Grounds for Standing under 37 C.F.R (a) The Petitioners certify that the 723 patent is available for inter partes review and that the Petitioners are not barred or otherwise estopped from requesting inter partes review on the grounds identified herein. -3-

9 B. Identification of Challenge under 37 C.F.R (b) and Statement of Precise Relief Requested The Petitioners respectfully request that the Board initiate inter partes review of claims 1-3 on the following ground: Ground Claims Basis for Challenge Unpatentable over Zydney (Ex. 1003) in view of Appelman (Ex. 1004), under 103(a) Part VII below explains why the challenged claims are unpatentable based on the ground identified above. These references were not cited during the original prosecution of the 723 patent, and were not cited in the separate IPR petition filed by Apple Inc. (IPR ). Submitted with the Petition is the Declaration of Tal Lavian, Ph.D. (Exhibit 1002) ( Lavian ), a technical expert with decades of relevant technical experience. (Lavian, 1-10, Ex. A.) IV. TECHNOLOGY BACKGROUND RELEVANT TO A PERSON OF ORDINARY SKILL IN THE ART As explained by Dr. Lavian, a person of ordinary skill in the art for purposes of the 723 patent would have possessed at least a bachelor s degree in computer science, computer engineering, or electrical engineering with at least two years of experience in development and programming relating to network communication systems (or equivalent degree or experience). (Lavian, ) As discussed in more detail below, the 723 patent relates generally to instant messaging systems. The term instant messaging or IM generally refers to a -4-

10 technology that allows two or more people to exchange information with other users, including text, voice data, and/or files. (Id., 30.) Instant messaging technologies date back to at least the 1960s with the MIT Interconsole Messages system, which allowed users to exchange textual messages over a network. (Id., 32.) Through the 1980s and 1990s, companies such as CompuServe, Commodore, and America Online (AOL), among others, released instant messaging solutions to the public, some of which became immensely popular. (Id., ) For example, by 2002, AOL Instant Messenger (AIM), the instant messaging service offered by AOL, had more than 100 million registered users. (Id., 37.) The 723 patent also acknowledges that instant messaging solutions were known in the art. The Background section of the patent explains that known instant messaging ( IM ) systems generally included client devices, IM software installed on those client devices, and IM servers. ( 723, 2:30-34.) IM systems communicated over a packet-switched network, such as the Internet. (Id., 1:33-34, 2:30-34.) The IM server maintained a list of users that were currently online and able to receive messages and presented this list to the users via the instant messaging software. (Id., 2:34-37; Lavian, 40.) A user could select one or more recipients and send them a message. ( 723, 2:38-40; Lavian, 30, 41, 42.) The IM server would transmit the -5-

11 message to the recipients and the message would be displayed to the recipients by the IM software. ( 723, 2:40-42.) Instant messaging services typically required that the user have software (an IM client) that provides a user interface allowing a user to send messages to one or more recipients. The messages would typically be communicated to a server which would either deliver the message to the recipients, or store them at the server if the recipient was not currently available. (Lavian, 30, 41, 42.) IM clients typically varied in terms of what types of information they could transmit, how they indicate availability of other users, whether and how they secure the communications, and other details. (Id., 31.) V. THE 723 PATENT The 723 patent purports to describe a system and method for delivering instant voice messages over a packet-switched network. ( 723, Abstract.) The disclosed system includes a client such as a VoIP telephone or PC computer enabled for IP telephony that is connected to a server and instant voice message ( IVM ) recipients through a network(s). (Id., 1:39-46, 2:56-67, 6:61-65.) In one embodiment, when a user chooses to send an IVM, the IVM client displays a list of one or more IVM recipients. (Id., 7:61-64.) This recipient list is provided and stored by an IVM server. (Id.) Once recipients are selected, the user records a message, such as by using a microphone to record a digitized audio file. -6-

12 (Id., 8:3-7.) The patent states that one or more files may be attached to the instant voice message, such as by using a conventional drag-and-drop technique. (Id., 12:20-33, 13:28-33.) Once the voice message is generated, the client transmits the voice message to the server for delivery to one or more recipients. (Id., 8:17-25.) After receiving the IVM, the server transmits the voice message to the one or more recipients. (Id., 8:22-25.) If the recipient is available (currently connected to the IVM server), it will receive the instant voice message. (Id., 8:28-30.) If a recipient is unavailable (offline), the server temporarily saves the voice message and transmits it once the recipient becomes available. (Id., 8:30-35.) The recipient is notified of the new voice message and can play the audio file. (Id., 8:25-28.) If the message had attachments, the recipient can also access the attached files. (Id., 12:64-13:4.) This Petition addresses claims 1-3. Claim 1 is an independent claim; claims 2 and 3 depend from claim 1. VI. CLAIM CONSTRUCTION UNDER 37 C.F.R (B)(3) The constructions below provide the broadest reasonable interpretation in light of the specification to a person of ordinary skill in the art. A. signal Claim 1 recites the step of transmitting a signal to a client including a list of the recorded connectivity status for each of the nodes in the sub-set corresponding -7-

13 to the client. As explained below, the broadest reasonable construction of signal is information conveyed in a communication system. The written description does not use the term signal in the context of transmitting a list of recorded connectivity statuses, and accordingly, does not mandate a particular form the claimed signal must take. (Lavian, 49.) Other portions of the written description use the word signal to generally refer to information conveyed in a communications system, such as a network. (E.g., 723, 2:12-14 (mentioning the audio signal carried over PSTN ), 8:17-18 (IVM client 208 transmits... the send signal to the local IVM server 202 ), 8:64-67 (a stop signal is generated when the user presses a button... ), 9:45-46 ( [t]he IVM server 202 also signals the IVM client 208 to generate audio file ).) The portions of the written description that appear to correspond to transmitting a signal including a list, as noted, do not use the word signal. Those portions generally describe transmission of a contact list from a server system to a client. For example, the specification states: [T]he IVM client 208 requests from the global IVM server 502 a global contact list (not shown) of global one or more IVM recipients with which the IVM client 208 may exchange instant voice messages.... The global IVM server system 502 stores and maintains this contact list. Thus, the global IVM server system 502 responds by transmitting the contact list to the IVM client 208. The IVM client 208 displays the -8-

14 contact list on its display 216. Alternatively, the is [sic] global contact list may 65 be replicated to the local IVM server 202 within the local IVM system 510, in which case the local IVM client 208 obtains the global contact list from the local IVM server 202. ( 723, 15:56-16:1.) The specification also similarly states: In operation, the IVM client 208 displays a list of IVM recipients on the display device 216 provided and stored by the local IVM server 202. The user operates the IVM client 208 by using the input device 218 on the IVM client 208 to indicate a selection of one or more IVM recipients from the list. (Id., 9:32-38.) The fact that the passages identified above do not use the word signal to describe the list indicates that the term signal, under its broadest reasonable construction, does not require a particular type of signal. The written description provides no detail on the underlying format or structure of the information transmitted in the list. A person of ordinary skill in the art would thus have understood that the claimed signal in claim 1 to refer generally to information conveyed in a communication system, such as a computer network. (Lavian, 49, 51.) The broadest reasonable interpretation of signal is therefore information conveyed in a communication system. This construction is also consistent with relevant dictionary definitions of signal. For example, dictionary definitions of the word signal include [t]he intelligence, message or effect to be conveyed over a communication system, [a] -9-

15 visual, audible or other indication used to convey information, and similar definitions. 1 (Ex. 1008, The Authoritative Dictionary of IEEE Standards Terms, 7th Ed. (2000), at p. 1047; see also Ex. 1009, McGraw-Hill Dictionary of Scientific and Technical Terms, 5th Ed. (1994), at p ( 1. A visual, aural, or other indication used to convey information. 2. The intelligence, message, or effect to be conveyed over a communication system. ).) These definitions are generally consistent with the broadest reasonable interpretation identified above. (Lavian, 53.) B. node Independent claim 1 recites the step of monitoring a connectivity status of nodes within the packet-switched network, said connectivity status being available and unavailable. The word node (or nodes ) appears only in claim 1 and does not appear anywhere in the written description of the 723 patent. The patent owner in the concurrent litigation involving the 723 patent has proposed to define node as potential recipient. (Ex. 1011, Ex. A, at p.4, 5.) The Petitioners respectfully request that the Board adopt this definition as the broadest reasonable construction of node for purposes of this proceeding. 1 All highlighting in reproduced figures, and all underlining in any quotations, have been added unless otherwise noted. -10-

16 The written description is generally consistent with this broadest reasonable construction. A passage of the 723 written description that pertains to the claimed monitoring capability describes the ability to determine the connectivity status of potential recipients using instant voice messaging (IVM) clients: The user manager 706 is responsible for creating/maintaining IVM clients 206, 208, 506, 508, identifying them and relaying their status to the server engine 704. When an IVM client communicates an instant voice message within the global IVM system 500, the user manager 706 notifies the server engine 704 whether the one or more recipients are unavailable, and thereby the instant voice message is saved in the message database 712. When the one or more IVM recipients become available, the user manager 706 notifies the server engine 704, which instructs the storage manager 710 to retrieve any undelivered instant voice messages for the one or more recipients and delivers the instant voice messages to the designated one or more IVM recipients. ( 723, 22:41-54.) As noted, this passage does not use the word node, but generally describes the monitoring with respect to potential instant voice messaging (IVM) recipients. The Board should therefore adopt a broadest reasonable interpretation of node as potential recipient. 2 2 The Petitioners reserve their right to argue that node is indefinite under the narrower claim construction standards applicable in the concurrent litigation. -11-

17 VII. CLAIMS 1-3 ARE UNPATENTABLE Claims 1-3 are unpatentable based on the following ground: Ground Claims Basis for Challenge Unpatentable over Zydney (Ex. 1003) in view of Appelman (Ex. 1004), under 103(a) This Petition will first provide an overview of each reference. A. Brief Summary and Date Qualification of the Prior Art Overview of Zydney (Ex. 1003) Zydney is a published PCT application that describes a system for voice communication that enables a user to send instant voice messages, which Zydney calls voice containers. (Zydney, Ex, 1003, 2:2-3.) The system transmits the voice containers instantaneously or stored for later delivery, depending on whether or not the recipient is currently online. (Id., 1:19-22, 15:8-21.) Zydney qualifies as prior art vis-à-vis the 723 patent under 35 U.S.C. 102(b) (pre-aia) because Zydney was published on February 15, 2001, more than one year before the earliest patent application filing date for the 723 patent. The Petitioners also note that the Zydney reference contains page numbers but does not contain line numbers. Accordingly, for convenience of the Board and ease of reference, Exhibit 1003 to this Petition contains a copy of Zydney in which line numbers have been added to the left of each page (beginning on page 1), to facilitate precise citation to the passages of the reference cited in this Petition. Any citations -12-

18 to line numbers of Zydney in this Petition and in the Lavian Declaration, therefore, refer to these added line numbers as shown in Exhibit A copy of the original Zydney reference without line numbers is submitted as Exhibit The system of Zydney is generally shown in Figure 1A, reproduced below. (Zydney, Fig. 1A.) Three key components of the system include the SENDER PC SOFTWARE AGENT shown on the left (22), the RECIPIENT PC SOFTWARE AGENT -13-

19 shown on the right (28), and the CENTRAL SERVER shown in the middle (24) of Figure 1A. (Id., 10:19-11:1.) Zydney explains that the sender and recipient software agents may work on any suitable client device such as a personal computer, wireless handheld computer such a personal data assistant (PDA), digital telephone, or beeper. (Id., 11:14-20.) Central server (24) facilitates instant voice messaging between the sender and the recipient. (Id., 10:20-11:1.) The sender, recipient, and central server communicate with each other using a communications network, as shown with the bottom cloud labeled INTERNET in Figure 1A. (Id., Fig. 1A; see also id., 5:4-5, 5:15-18, 10:11-14, 14:2-5.) 3 Sending a voice instant message from a sender to a recipient in Zydney is straightforward. A message sender (originator) selects one or more intended recipients from a list of names that have been previously entered into the software agent. (Id., 14:17-19.) The sender also digitally records messages for one or more recipients using a microphone-equipped device and the software agent. The software agent compresses the voice and stores the file temporarily on the PC if the 3 Figure 1A also depicts an alternative embodiment in which a sender and recipient can communicate using phones (32, 34) connected over the Public Switched Telephone Network (PSTN). This Petition will focus on the Internet-connected embodiment described in the text. -14-

20 voice will be delivered as an entire message. (Id., 16:1-4; see also id., 20:11-14, 21:11-16 (describing the recording of one or more voice packet messages on a personal computer as voice files [that] can be played and recorded using voice container enabled devices. ).) The voice message is placed into a voice container, which can be transmitted to the destination. (Id., 10:20-11:3.) Zydney describes at least two modes in which voice messages can be transmitted: a pack and send mode and an intercom mode. This Petition will focus primarily on the pack and send mode as it is more pertinent to the challenged claims of the 723 patent. Zydney explains that [a] pack and send mode of operation is one in which the message is first acquired, compressed and then stored in a voice container 26 which is then sent to its destination(s). (Id., 11:1-3; see also id., Fig. 4.) The software agent compresses and stores the voice message file, which Zydney refers to as a voice container, on the client device. (Id., 16:3-4, 12:1-8, 10:20-11:3.) The sender also can include multimedia attachments with the voice message, such as graphics. (Id., 19:2-8, 22:17-20, Fig. 6.) The software agent then transmits the voice container (and any attachments) to either the central server for delivery or, alternatively, directly to the recipient. (Id., 12:1, 12:20-23, 16:7-10.) If the recipient is online, it receives the voice container immediately. (Id., 1:21-22 ( routed to the appropriate recipients instantaneously. ).) If the recipient is -15-

21 offline, the server stores the voice container until the recipient is available, as shown in Figure 4. (Id., 13:12-15, 14:9-11, Fig. 4 ( if recipient is not online, client sends voice container to server file ).) The central server can later forward the stored voice container to the recipient once it logs in. (Id., claim 1, 14:14-16, Fig. 4 ( recipient logs on to internet or intranet, server recognizes recipient, downloads voice container ), 16:10-12 ( If the intended recipient has a compatible active software agent on line after log on, the central server downloads the voice recording almost immediately to the recipient. ).) Once the recipient s software agent receives the voice container, it unpacks the voice container and any attachments, and presents them to the recipient. (Id., Fig. 18, 35:20-22.) The software agent can then audibly play the voice message to the recipient through the speakers or headset attached to the device. (Id., 13:19-22, 14:14-16, 16:10-14.) Overview of Appelman (Ex. 1004) Appelman, entitled User Definable On-Line Co-User Lists, is an issued United States patent, originally assigned to America Online, describing an instant messaging system that keeps track of the logon status of users. 4 (Appelman, Ex. 1004, Abstract.) This Petition cites Appelman for its teachings regarding a a list of 4 Appelman is currently assigned to Petitioner Facebook, Inc. -16-

22 the recorded connectivity status for each of the nodes, recited in claim 1. Appelman qualifies as prior art to the 723 patent under 35 U.S.C. 102(e) (pre-aia) because it issued from an application filed in the United States on February 24, 1997, which is before the earliest patent application filing date for the 723 patent. Appelman describes a technique for allowing a user to create a list of users called a Buddy List, which records the names of selected other co-users with whom the user may wish to communicate. (Id., 1:53-59, Fig. 3.) The buddy list also keeps track of whether the other co-users are currently logged onto the system. When a user logs on to a system, the user s set of buddy lists is presented to the buddy list system. The buddy list system attempts to match co-users currently logged into the system with the entries on the user s buddy list. Any matches are displayed to the user. As co-users logon and logoff, a user s buddy list is updated to reflect these changes. (Id., 1:64-2:2; see also id., 2:51-3:6.) Figure 2a of Appelman, reproduced below, shows an example Buddy List table 32 that records the screen name of each buddy user as well as the connectivity status of each user (whether the user is logged in or logged out ). -17-

23 (Appelman, Fig. 2a.) Appelman explains that each user can create different buddy lists. (Id., 3:61-64.) In the example above, the user has created two buddy lists ( Home List and Work List ). The buddy list called Home List contains the name/address and logon status for three users: John Smith, Jane Doe and Simon Roe. (Id., Fig. 2a, 3:41-47.) For each user, the table indicates either IN to indicate that the user is currently logged into the system, or OUT to indicate that the user is not logged in. (Id., 3:43-47, 4:4-7.) When a user logs in, the system presents a user interface that displays the buddy list, including the name and connectivity status of each co-user on the list. -18-

24 (Id., 2:66-3:8, 4:28-36.) Figure 3 below shows an exemplary user interface for the Home List buddy list shown in Figure 2a above: (Id., Fig. 3, 4:29-42 ( In the preferred embodiment, when the user first logs into the system the Buddy List window 40 [in Figure 3] opens, informing the user which of the user s buddy list members are currently online. ).) The example above shows -19-

25 that users John Smith and Simon Roe are IN, but Jane Roe is OUT, directly corresponding to the Buddy List table 32 in Figure 2a. (Id., Figs. 3, 2a.) A user can also keep tabs on each list by checking out the numbers posted in parenthesis next to the buddy list names. This number tells the user how many people on that list are logged in out of the total number of screen names on the buddy list. In the illustrated example, 2/3 means that two of the three people on the Home List are currently online. (Id., 4:23-29.) B. Ground 1: Claims 1-3 Are Obvious Over Zydney + Appelman Claim 1 (Independent) (a) A method for instant voice messaging over a packetswitched network, the method comprising: (Preamble, Claim 1) Assuming the preamble of claim 1 imposes a limitation on the claims, it is disclosed and rendered obvious over Zydney. For ease of reference, this Petition will address the preamble in two parts. (i) A method for instant voice messaging Zydney describes that clients create and transmit instant voice messages using voice containers. (Zydney, 12:1-8, 10:20-11:3.) The instant voice messages may also include attached files, as discussed further below. As Zydney explains, the voice containers can be stored, transcoded and routed to the appropriate recipients instantaneously or stored for later delivery. (Id., 1:21-22.) A recipient of the voice -20-

26 message can reply in a complementary way, allowing for near real-time communication. (Id., 16:14-15.) Zydney describes this exchange of voice containers as a voice instant messaging session, as an alternative to the intercom mode noted previously in the summary of Zydney. (Id., 15:8-13, 10:19-11:3, 16:1-12.) Thus, as Zydney summarizes, the present invention for voice exchange and voice distribution provides a voice intercom system with instant messaging, distributed over the Internet. (Id., 10:14-16.) Zydney therefore discloses [a] method for instant voice messaging, as claimed. (ii) over a packet-switched network Zydney discloses instant voice messaging over a packet-based network such as the Internet. (Zydney, 5:3-4 (the system is particularly well suited for use in connecting Internet users and shall be so described ), 10:14-16, (the system is distributed over the Internet ), 1:2-3 (the system relates to the field of packet communications, and more particularly to voice packet communication systems. ), 2:6-10 (the system enables forwarding the message to another Internet or voice container enabled device ).) More specifically, the voice containers (instant voice messages) are transmitted over the Internet in data packets using the well-known TCP/IP protocol. (Id., Fig. 1A (showing sender software agent 22 communicating voice container 26 to recipient software agent 28 through the INTERNET ), 23:

27 12 ( [t]he voice container will be sent using standard TCP/IP transport ), Fig. 2 (identifying Transport Processes (TCP/IP, UDP, PSTN, Others) ).) The term packet-switched network, as recited in the claim, generally refers to a type of communications network in which information is transferred through a series of data units called packets. (Lavian, 78.) Zydney does not explicitly use the term packed-switched network, but such a network is either disclosed by or obvious in view of Zydney. (Id., ) For example, a person of ordinary skill in the art would have known that communication using packets over the Internet, as described in Zydney, necessarily discloses communication over a packet-switched network, as recited in the claim. (Id., 79.) The written description of the 723 patent itself expressly confirms that the Internet is a packet-switched network. ( 723, 1:31-34 ( a VoIP terminal device is connected to a packet-switched network (e.g., Internet) ), 1:47-49 ( FIG. 1 is an illustrative example of a prior art IP telephony system 100 [which] comprises a packet-switched IP network 102, such as the Internet ).) It would also have been obvious to a person of ordinary skill in the art that the Internet as disclosed in Zydney would have been a packet-switched network, as claimed. (Lavian, 80.) The Internet was the most well-known and most widely used packet-switched network as of December 2003, the earliest possible priority date of the 723 patent. (Id.) Zydney itself explains that its system relates to the -22-

28 field of packet communications, and more particularly to voice packet communication systems. (Zydney, 1:4-5.) As Zydney explains, Transaction Control Protocol/Internet Protocol (TCP/IP) is the communications standard between hosts on the Internet. TCP/IP defines the basic format of the digital data packets on the Internet allowing programs to exchange information with other hosts on the Internet. (Id., 5:15-18.) TCP/IP would have been familiar to a person of ordinary skill in the art as a reliable end-to-end transport protocol for packet-switched networks that use the Internet protocol suite, including the Internet. (Lavian, 80.) Accordingly, deploying the system of Zydney using the Internet would have predictably resulted in a method for instant voice messaging over a packet-switched network, as recited in the preamble of claim 1. (Id.) Accordingly, Zydney discloses or renders obvious a method for instant voice messaging over a packet-switched network, as recited. (b) monitoring a connectivity status of nodes within the packet-switched network, said connectivity status being available and unavailable; (Claim 1[a]) As explained in Part VI.B (Claim Construction) above, the Board should adopt a broadest reasonable interpretation of node as potential recipient. The nodes or potential recipients in Zydney take the form of software agents, each software agent used by a particular user and capable of receiving instant voice messages (voice containers). (Zydney, 2:1-3, 10:20-11:1, 14:15-16, 16:7-12.) -23-

29 Zydney discloses that the central server tracks the connectivity status of these nodes in the network. (Id., 13:12-14, 14:6-9 ( Central Server:... will track and maintain the status of all software agents. ).) Zydney also explains that the status of the nodes is monitored and may be conveyed by the central server to the software agent of the sender (originator): To use the present invention system and method for voice exchange and voice distribution, the originator selects one or more intended recipients from a list of names that have been previously entered into the software agent. The agent permits a number of distinct modes of communication based on the status of the recipient. The status of all recipients entered into the software agent is frequently conveyed to the software agent by the central server. This includes whether [sic] the core states of whether the recipient is online or offline, but also offers related status information, for example whether the recipient does not want to be disturbed. (Id., 14:17-15:1.) Zydney similarly explains that each user has a buddy list and the online status of each potential recipient in the buddy list can be determined and conveyed. (Id., 30:13-15.) The fact that the connectivity status is track[ed] and maintain[ed] (id., 14:6-9), as disclosed in Zydney, confirms that the central server is performing the claimed monitoring step. Zydney therefore discloses monitoring a connectivity status of nodes, as claimed. -24-

30 Moreover, even assuming the term node was defined to refer to network devices, Zydney clearly discloses monitoring the connectivity status of nodes within the packet-switched network. This is because each recipient in Zydney has a computer or other device running a software agent with a unique address (e.g. IP address) that is used for communication with the server and/or with other software agents. (Id., 11:14-18, 14:2-4, 23:18-20 ( The registration server assigns the software agent a unique address. This address is used for all communications from the software agent to the server, it [sic; its] components and between other software agents. ); id., 15:1-2 ( For online recipients, the software agent is also notified on [sic; of] the recipient s Internet Protocol (IP) address. ).) Zydney further confirms that said connectivity status [includes] available and unavailable, as further recited in the claim. As explained in Zydney: Software agents may also be in other states that will be communicated to the other logged on software agents. These states would be the following: Available available for messages or live talking; Do Not disturb available for messages but not live talking; Not Available system is logged on but not accepting messages or live talk; Will return Stepped out of the office and is accepting messages; Out to Lunch Stepped out to lunch and is accepting messages; Not logged on Message will be sent to the message server (Id., 32:18-33:2.) The claimed available status in Zydney, under the broadest reasonable construction, can include at least Available, among others, which -25-

31 indicate that the agent currently is accepting messages. (Id.) The claimed unavailable connectivity status in Zydney, under its broadest reasonable construction, can include Not Available or Not logged on, both of which indicate that the recipient is not accepting messages. (Id.) Zydney thus discloses the claimed connectivity status. Finally, Zydney makes clear that the potential recipients qualify as nodes within the packet-switched network, as recited in the claim. Each potential recipient is connected through the Internet, which discloses or renders obvious a packet-switched network, as noted previously. (Zydney, 5:3-4, 10:14-16, 1:2-3, 2:6-10.) Each potential recipient also represents a node within the packet-switched network because each potential recipient has a unique address (e.g., IP address) that is used for communication with the server and/or with other software agents. (Id., 23:18-20 ( The registration server assigns the software agent a unique address. This address is used for all communications from the software agent to the server, it [sic; its] components and between other software agents. ); id., 15:1-2 ( For online recipients, the software agent is also notified on [sic; of] the recipient s Internet Protocol (IP) address. ).) It would also have been obvious to a person of ordinary skill in the art that each potential recipient in Zydney represents a network node on the Internet. (Lavian, 87.) As noted in the brief summary of Zydney in Part VII.A.1 above, -26-

32 the sender software agent, recipient software agent, and central server can communicate over the Internet. (Zydney, Fig. 1A; see also id., e.g., 5:4-5, 5:15-18, 10:11-14, 14:2-5.) It was well-known to persons of ordinary skill in the art that each device on the Internet has a unique IP address that other devices use to address communications to that device. This means that each recipient software agent would have had a unique IP address and, as such, each potential recipient would have represented a node on the Internet identified by that address. (Lavian, 87; Zydney, 15:1-2 ( For online recipients, the software agent is also notified on [sic; of] the recipient s Internet Protocol (IP) address. ).) (c) recording the connectivity status for each of the nodes; (Claim 1[b]) As explained in the discussion of the previous claim limitation, the central server in Zydney can track and maintain the status of all software agents (Zydney, 14:8-9) and will provide the status of all software agents to other agents. (Id., 13:12-14.) When the central server in Zydney track[s] and maintain[s] the status of all software agents, the central server is recording the connectivity status for each of the nodes. The Petitioners also note that the claim under its broadest reasonable interpretation does not impose any implementation requirements for the claimed recording, such as the use of any particular type of memory. Nor does the claim under its broadest reasonable construction specify a particular amount of time the -27-

33 connectivity status must be maintained. It would have been obvious to a person of ordinary skill in the art that in order for the central server to track and maintain the connectivity status of each node, as disclosed in Zydney, that server would have to have recorded that connectivity status. (d) associating a sub-set of the nodes with a client; (Claim 1[c]) The claimed client in Zydney takes the form of a personal computer or other device that contains a software agent and can send and receive instant voice messages. (Zydney, 11:16-18, 14:2-3, 31:16, Fig. 4 ( client builds voice container with message, client sends voice container to distant client ).) Zydney discloses that the central server track[s] and maintain[s] the status of all software agents. (Id., 14:8-9.) Furthermore, as discussed above with regard to the preceding elements, Zydney discloses associating a subset of nodes as a list corresponding to each client: The server will maintain a unique set of lists for each software agent. These lists will contain the identifiers of the other software agents that are permitted to send and receive voice containers and other media types. The server will maintain the current list of agents and be able to create, delete, and modify those lists based on software agent requests or web based administration. A software agent will also have the ability to block of filter unwanted messages by sending a command to the server. -28-

34 (Id., 26:10-15.) Zydney s disclosure that the lists contain only those software agents that are permitted to send and receive voice containers discloses associating a subset of the full set of nodes, i.e., a sub-set of all software agents (id., 14:8-9), with each software agent on a client device. Zydney also specifically discloses the step of associating the sub-set of nodes with a client. Each software agent is installed on a specific client device and the server will maintain the current list of agents and create, delete, and modify those lists, thereby associating the nodes with the client device including its software agent. (Id., 11:16-18, 14:2-3, 26:12-14.) (e) transmitting a signal to a client including a list of the recorded connectivity status for each of the nodes in the sub-set corresponding to the client; (Claim 1[d]) As discussed in Part VI.A (Claim Construction) above, the broadest reasonable construction of signal in this context is information conveyed in a communication system. As discussed above regarding elements 1[b] and 1[c], Zydney discloses that the central server maintain[s] a unique set of lists for each software agent that identify a sub-set of nodes corresponding to the client. (Zydney, 26:10-12, 11:16-18, 14:2-3.) Each client device containing a software agent has a corresponding list at the server. (Id.) Further, as discussed above regarding element 1[a], Zydney discloses tracking the connectivity status, i.e., available and unavailable, of those nodes. (Id., 14:17-15:1, 32:18-33:2.) -29-

35 Zydney further discloses that the server periodically sends these connectivity statuses to the originating (sending) user, as noted previously. (Id., 14:17-23 ( [T]he originator selects one or more intended recipients from a list of names that have been previously entered into the software agent The status of all recipients entered into the software agent is frequently conveyed to the software agent by the central server. This includes whether [sic] the core states of whether the recipient is online or offline. ), 30:11-15 ( all notification information (such as who else is on line in the users buddy list ) will be transmitted to the software agent from the server), 32:12-15.) A person of ordinary skill in the art would have understood that transmitting the status of potential recipients, as disclosed in Zydney, teaches transmission of a signal under the broadest reasonable interpretation. (Lavian, 97.) This is because the status information is conveyed from the central server over the Internet, a packet-switched network. The connectivity status information transmitted from the server thus qualifies as information conveyed in a communication system, and thus, qualifies as a signal as claimed. (Id.) The Claimed List of The Recorded Connectivity Status: Zydney does not disclose the precise format in which the central server transmits the connectivity statuses to the client, but it would have been obvious that Zydney could have transmitted a list of the recorded connectivity status for each of the nodes, as claimed. (Lavian, ) Zydney makes clear that the identity of the recipients -30-

36 is maintained in the server as a list, as noted. (Zydney, 26:10-12 ( The server will maintain a unique set of lists for each software agent. These lists will contain the identifiers of the other software agents that are permitted to send and receive voice containers and other media types. ).) In light of the storage of potential recipients in a list, a person of ordinary skill in the art would have found it obvious to use a list to store the connectivity status information for those potential recipients, and to transmit that list to the client. (Lavian, 98.) The concept of using a list to store, organize and convey information was within the basic knowledge of persons of ordinary skill in the art. (Id., 99.) Introductory computer science courses in universities, for example, teach a variety of techniques for organizing information into lists, such as arrays. (Id.) For example, since at least the 1970s, well-known programming languages (such as C) provided built-in features for enabling programmers to create and maintain lists such as arrays. (Id. (citing Ex. 1010, Microsoft Computer Dictionary (1997), at p.30 (defining array as a list of data values, all of the same type Arrays are part of the fundamentals of data structures, which, in turn, are a major fundamental of computer programming. ).) 5 A person of ordinary skill in the art would have 5 For example, an array can be used to store a group of elements such as numbers, character strings, or data structures that can contain multiple different types of data. -31-

37 understood that storing connectivity status information for each software agent in a list (such as an array) was one of a finite number of well-known and predictable techniques for organizing connectivity status information and making it available to the client. (Id. 99.) The choice of a list would have been particularly obvious here considering that, as noted, Zydney discloses that its server already maintains the identity of software agents in lists. (Id. (citing Zydney, 26:10-12).) This would have made it plainly obvious to use such lists to store connectivity status information for those same software agents, as it would have made it easier to keep track of the software agents and their corresponding connectivity status. (Id.) Accordingly, a person of ordinary skill in the art would have found it obvious to implement Zydney s teaching that [t]he status of all recipients entered into the software agent is frequently conveyed to the software agent by the central server (Zydney, 14:17-23), by transmitting that information as a list. After all, once the connectivity status for each software agent was stored as a list, as noted above, it would have been obvious to transmit that list to the client. (Lavian, 100.) If the list takes the form of an array, for example, this would have simply involved sending (Lavian, 99, n.5.) Arrays allow computer programs to organize data so related values can be quickly identified, and arrays are one of the most elementary storage techniques taught in computer science courses. (Id.) -32-

38 the contents of the array over the network to the client. (Id.) Zydney alone therefore renders obvious the requirement of transmitting a list of the recorded connectivity status for each of the nodes, as claimed Moreover, to the extent it is determined that Zydney alone does not render obvious transmission of recorded connectivity status information in a list, that requirement is obvious over Zydney in view of Appelman. This Petition cites Appelman because, as demonstrated below, it specifically teaches maintaining and transmitting connectivity status information in a list (known as a buddy list ). Appelman discloses an instant messaging system that keeps track of potential recipients and their connectivity statuses. (Appelman, Abstract.) The instant messaging system in Appelman can be implemented by devices on the Internet, which is a packet-switched network as noted previously. (Appelman, Abstract, 3:44-46 (each user can be identified by Internet address ).) Figure 1 of Appelman, reproduced below, shows an overall architecture including a user station 12 that operates as a client, logon system 24, and buddy list system 26 connected to database 28 that stores user information. (Id., 3:10-32.) -33-

39 (Id., Fig. 1.) Users in Appelman can create buddy lists by entering users into a list, such as by using the interface shown in Figure 5. (Id., Fig. 5, 4:54-63.) Figure 2a below shows exemplary buddy lists in Group Name table 30 at the server, including the exemplary Home List shown in Buddy List table 32: -34-

40 (Id., Fig. 2a.) As shown in Figure 2a, Buddy List table 32 contains data elements for the screen name (or address, such as an Internet address) of a particular co-user to be tracked, and the logon status of that user (e.g., codes for In or Out ). (Id., 3:41-47.) Table 32 discloses a list of the recorded connectivity status for each of the nodes in the sub-set corresponding to the client, as it discloses a list of the connectivity status for each node (potential recipient) in the buddy list, the list containing a subset of the nodes in the network (i.e., the subset of users that a particular user has chosen to add to the buddy list). -35-

41 Figure 3, reproduced below, shows a screen display of the same Home List buddy list from Figure 2a, which has been conveyed to and displayed on the client computer in buddy list window 40: (Id., Fig. 3.) Appelman accordingly discloses the step of transmitting a signal to a client including a list of the recorded connectivity status for each of the nodes in the sub- -36-

42 set corresponding to the client, as claimed. Appelman teaches that when the user first logs into the system, the Buddy List window 40 opens, informing the user which of the user s buddy list members are currently online. (Id., 4:29-32; see also id., 6:66-7:2 (after a user logs in, [t]he Buddy List System then displays a Buddy List window showing the status (i.e., logged in or not) of the co-users on the User s Buddy Lists with any of various indicator markings (Step 208). ).) A person of ordinary skill in the art would have understood that the display of a Buddy List on a client, as disclosed by Appelman, confirms that the list was transmitted to the client. (Lavian, 107.) The Home List on the server shown in Figure 2a, for example, contains the same screen names and login statuses as the buddy list shown on the client in Figure 3, confirming that the buddy list (which includes the connectivity statuses) was transmitted to the client. 6 Indeed, Appelman s description that the Buddy List System at a server displays the Buddy List window at the client station is similar to the reference in the 723 patent that 6 The Petitioners note that the Home List in Figure 2a shows the name Jane Doe, whereas the displayed Home List in Figure 3 shows Jane Roe. This is an obvious typographical error, as the Appelman reference makes clear that these two figures are meant to describe the same buddy list. (Lavian, 107, n.12.) -37-

43 the IVM client 208 displays a list of IVM recipients on the display device 216 provided and stored by the local IVM server 202. ( 723, 8:5-8.) Rationale and Motivation to Combine. It would have been obvious to a person of ordinary skill in the art to combine the teachings of Zydney and Appelman, with no change in their respective functions. (Lavian, ) This would have predictably resulted in Zydney s system in which the central server transmits a signal to the client computer including a list of the recorded connectivity status for each node in the list, as taught by the buddy list in Appelman. (Id., 108.) A person of ordinary skill in the art would have had multiple reasons to make this combination. To begin with, it should be emphasized that this Petition has cited Appelman only with respect to a very narrow issue. As explained previously, Zydney already discloses tracking and maintaining the connectivity status for the nodes, and transmitting that status to the sending (originating) client. (Zydney, 14:17-23, 30:11-15.) This Petition cites Appelman solely as further support for the unremarkable proposition that the connectivity status information could be in the form of a list. As explained above, maintaining and transmitting connectivity status information in a list (such as the buddy list of Appelman) was one of a finite number of well-known and predictable techniques in fact, it would have been the most straightforward technique, that would have been trivially simple to implement as explained previously. (Lavian, 99, 109.) Zydney itself provides an express -38-

44 motivation to combine with Appelman by explaining that a buddy list can be used with its system. (Zydney, 30:13-15.) This would have motivated a skilled artisan to adapt the buddy list teachings of Appelman to organize and transmit the connectivity status information in Zydney. As noted previously, Zydney already discloses the use of lists to store the identity of potential recipients (id., 26:10-12), and thus, using lists to convey the connectivity status of those same recipients would have been obvious. (Lavian, 109.) And as explained in detail above, creating a list (such as an array) to store information was a technique well-known to persons of ordinary skill in the art. (Id., 99, 109; Ex. 1010, p.30.) A person of ordinary skill in the art would also have regarded Appelman and Zydney as closely analogous references in the same field of providing instant messaging communication over a computer network. (Lavian, 110.) As noted, Zydney specifically discloses use of a buddy list, the same type of list described in Appelman. (Zydney, 30:13-15.) And like Appelman, Zydney discloses a technique for conveying the available and unavailable status of each potential recipient. (Id., 14:17-15:7; 13:12-14, 14:6-13, 30:13-15, 32:18-33:2.) Appelman and Zydney are thus both directed at solving the common problem of tracking the availability of other users on the system in order to determine which other users are available for communication. (Lavian, 110.) In light of the fact that both systems have common goals and seek to address the same problem, it would have been -39-

45 natural for a person of ordinary skill in the art to apply the more detailed Buddy List teachings in Appelman to Zydney to provide the recorded connectivity statuses to the client in a list, as claimed. (Id.) More generally, a person of ordinary skill in the art would also have readily appreciated Appelman s motivation to use its buddy list system with Zydney to provide a convenient and straightforward interface to view the online/offline status of users. (Lavian, 111; Appelman, 4:33-36 ( If the Buddy List window 40 [Fig 3] is left open, the user has a current, real-time list of all the user's buddies in who are online at any particular moment. ).) Appelman facilitates this straightforward interface by organizing and displaying, together in a list, each potential recipient along with its respective connectivity status. (Lavian, 111.) Finally, the buddy list techniques disclosed in Appelman were so ubiquitous in instant messaging systems prior to 2003 that basic market considerations would have compelled a person of ordinary skill in the art to have been aware of and have considered them. (Lavian, 112.) The Appelman patent originated with AOL, as indicated on the face of the patent, and Appelman discusses AOL in its Background section. AOL s Instant Messenger program, which included the use of buddy lists to keep track of online buddies and offline buddies, had more than 100 million registered users by (Young, Ex. 1005, at pp , Fig ) Zydney s Background of the Invention section similarly discusses known text-based -40-

46 messaging systems including instant messaging, where text is typed and exchanged between computers when a buddy address (or group address) is present in an address field, and explains that a need existed for a convenient voice messaging technique. (Zydney, 1:7-17.) Zydney also contemplates that each user has a buddy list, as noted above. (Id., 30:13-15.) With hundreds of millions of instant messaging users familiar with buddy lists that indicate which friends are online and offline, a person of ordinary skill in the art considering Zydney s instant messaging system would have been amply motivated to use the known and straightforward buddy list features disclosed by Appelman in order to meet the expectations of likely instant messaging users. (Lavian, 113.) A person of ordinary skill in the art would have understood that adapting buddy list techniques of Appelman could have reduced the learning curve of users of the IM system of Zydney by leveraging an existing and exceedingly wellknown use of lists to convey connectivity status information. (f) receiving an instant voice message having one or more recipients; (Claim 1[e]) The claimed instant voice message in Zydney takes the form of a voice container. Zydney describes a Software Agent Sender on the client device that generates the voice message: To create a message, the software agent will address, pack and send the message in a voice container. (Zydney, 14:2-5; see also Fig. 4 ( client builds voice container with message ).) The voice container is a file that -41-

47 contains voice data and may also contain properties of the voice data: The term voice containers as used throughout this application refers to a container object that contains no methods, but contains voice data or voice data and voice data properties. (Id., 12:6-8.) As explained in the preamble above, the voice containers can be instantaneously transmitted to recipients. (Id., 1:21-22.) The voice container in Zydney therefore qualifies as an instant voice message, as claimed. The voice container in Zydney also ha[s] one or more recipients, as claimed. Zydney explains that, during the process of creating a voice container, the sender (originator) selects one or more recipients. (Id., 14:17-19 ( To use the present invention system and method for voice exchange and voice distribution, the originator selects one or more intended recipients from a list of names that have been previously entered into the software agent. ), Fig. 4 (describing user selects one or more recipients before client builds voice container and transmits to each recipient ), Fig. 7, Step ( selecting one or more recipients from a list maintained by the originator and presented visually by the agent. ).) The recipient information is stored with the voice container. (Id., 23:3-4 (disclosing one or more recipient s code 304 in exemplary embodiment of voice container), Fig. 3 (same).) Finally, Zydney discloses the step of receiving the voice container. The Petitioners note the claim under its broadest reasonable construction does not require that any particular device or system receive the instant voice message, or that the -42-

48 instant voice message even be received over a network. For example, while claim 1[f] (discussed below) recites the step of delivering the instant voice message over a packet-switched network, the receiving step discussed here contains no such limitation. This indicates that, unlike the delivery step, the claim does not require that receipt of the instant voice message take place over a network. Zydney discloses the receiving step in at least two separate and independent ways in which the voice container is received: (1) by the originating (sending) software agent when the user records the audio message and generates the voice container; and (2) by the central server when the sending agent sends the voice container to the server over the Internet. Scenario (1) discloses receiving the voice container locally by the sending software agent, and scenario (2) discloses receiving the voice container by the central server over the Internet. Each of these scenarios separately and independently satisfies the receiving step. First, the sending software agent in Zydney receives the voice container after the user records his or her voice. Zydney explains that the sender (originator) digitally records messages for one or more recipients using a microphone-equipped device and then [t]he software agent compresses the voice and stores the file temporarily on the PC if the voice will be delivered as an entire message. (Id., 16:1-4; see also Fig. 4 ( user talks and stops and then client builds voice container with message ).) The generation and subsequent storage of the voice container at -43-

49 the sending software agent qualifies as receiving an instant voice message, as recited in the claim. (Lavian, 118.) As a second and independent way of showing the receiving step, the central server in Zydney can receive the voice container from the sending software agent. For example, if the recipient is not currently online, the sending software agent can send the voice container to the central server for temporary storage. (Zydney, 16:7-12 ( Based on status information received from the central server, the agent then decides on whether to transport the voice containers to a central file system and/or sends it directly to another software agent using the IP address previously stored in the software agent. If the intended recipient has a compatible active software agent on line after log on, the central server downloads the voice recording almost immediately to the recipient. ); see also id., Fig. 4 ( if recipient is not online, client sends voice container to server file ), Fig. 8, Step ( uploading the voice container(s) to a central file server ), 15:19-21 ( [T]he voice containers are delivered to the central server to manage the ultimate delivery to the recipient. ).) This discloses the central server receiving an instant voice message, as claimed. Accordingly, each of these two scenarios discussed above separately and independently discloses receiving an instant voice message having one or more recipients, as claimed. -44-

50 (g) delivering the instant voice message to the one or more recipients over a packet-switched network; (Claim 1[f]) As discussed above with respect to the preamble of claim 1, Zydney discloses a system for instant voice messaging over the Internet, which is a packet-switched network. (Zydney, 5:3-4, 10:14-16, 1:4-5.) As discussed in the preceding claim limitation, Zydney discloses at least two separate and independent ways in which an instant voice message may be received: (1) by the originating (sending) software agent when the user creates and stores the voice container; and (2) by the central server when the sending agent sends the voice container to the server. With respect to both of these scenarios, Zydney discloses corresponding techniques for delivery of the voice container to the one or more recipients over a packet switched network. In particular, Zydney explains that the voice container can be delivered in at least two different ways: (a) the sending agent can directly send the voice container to the recipient (which corresponds to scenario (1) discussed above), or (b) the sending agent can send the voice container to the central server, which subsequently delivers it to the recipient (corresponding to scenario (2)): Based on status information received from the central server, the agent then decides on whether to transport the voice containers to a central file system and/or sends it directly to another software agent using the IP address previously stored in the software agent. If the intended recipient has a compatible active software agent on line after log on, the -45-

51 central server downloads the voice recording almost immediately to the recipient. The voice is uncompressed and the recipient can hear the recording through the speakers or headset attached to their computer. (Id., 16:7-14.) These two delivery mechanisms separately and independently disclose the step of delivering the instant voice message to the one or more recipients, as recited in the claim. Finally, as noted repeatedly above, because the system in Zydney transmits messages over the Internet, the delivery of the voice container occurs over a packet-switched network, as claimed. (h) temporarily storing the instant voice message if a recipient is unavailable; and (Claim 1[g]) Zydney describes a technique for temporarily storing the instant voice message (voice container) when an intended recipient is unavailable. Zydney specifically discloses storing said message at said central server when said recipient is not available. (Zydney, claim 1.) Figure 4, reproduced below, shows that a message for one or more recipients is sent to a server file for storage if a recipient is not online until the recipient subsequently logs on to receive the message. -46-

52 (Id., Fig. 4.) Zydney further explains that its system provides the ability to store messages both locally and centrally at the server whenever the recipient is not available for a prescribed period of time. (Id., 2:3-5; see also id., 11:3-6.) The Central Server provides the following functionality:... store the voice container if the recipients are not available. (Id., 13:12-15; see also id., 14:9-11 (the central server will store -47-

53 the voice container for the intended recipient if the recipient is not available ).) Zydney discloses that the messages for unavailable recipients are temporarily stored at the central server based on desired control settings: The central server will implement a set of controls that manage capabilities associated with revenue generating offers. These capabilities include: how long voice containers are stored in the central server. (Id., 22:11-20; see also id., 30:8-10 ( [T]he messages will be retained at the server until they have been aged off by administrative settings ).) Zydney accordingly describes that the system provides the ability to store messages both locally and centrally at the server whenever the recipient is not available for a prescribed period of time. (Id., 2:3-5.) Different storage time periods may also be provided as a revenue-generating feature. (Id., 22:4-20.) Figure 8, reproduced below, similarly describes selectively removing stored files from the central server after delivery in step 1.2.6, reflecting that the voice message is not permanently stored. -48-

54 (Id., Fig. 8.) Accordingly, Zydney discloses temporarily storing the instant voice message if a recipient is unavailable. (i) delivering the stored instant voice message to the recipient once the recipient becomes available. (Claim 1[h]) -49-

55 Zydney discloses that a temporarily stored message will be delivered to a previously-unavailable recipient once the recipient becomes available. Zydney s claim 1 recites this feature directly: storing said message at said central server when said recipient is not available for forwarding when said recipient is available. (Zydney, claim 1.) Therefore, [i]f the recipient is not on-line, the messages will be transported to them when they log on to a network. (Id., 14:14-16; see also id., 15:15-21 (if the recipient is offline, the voice message will be delivered the next time the recipient logs in and is delivered to the central server for storage until the recipient becomes available), 16:10-12 ( If the intended recipient has a compatible active software agent on line after log on, the central server downloads the voice recording almost immediately to the recipient. ).) (Id., 25:1-4.) As Zydney further explains: The message server will be the repository for messages sent to software agents that are not logged onto the system. Once a software agent has been authenticated all messages that have been stored on the message server will be sent to the appropriate software agent. Messages will be stored on the server until the software agent has gone on line and authenticated. Once authenticated all of the messages for that software agent will be sent to the software agent. (Id., 33:7-10.) -50-

56 Figure 4, reproduced below, illustrates how the temporarily stored messages are delivered once the recipient becomes available. (Id., 2:20-21, 34:13-15.) (Id., Fig. 4.) Accordingly, Zydney discloses delivering the stored instant voice message to the recipient once the recipient becomes available. Accordingly, claim 1 is obvious. -51-

57 Dependent Claim 2: The method for instant voice messaging over a packet-switch network according to claim 1, wherein the instant voice message includes one or more files attached to an audio file. Zydney explains that the instant voice message (the voice container ) can include one or more files attached to an audio file (the voice container file containing the voice message). Zydney explains how an instant voice message is generated: Once the delivery mode has been selected, the originator digitally records messages for one or more recipients using a microphoneequipped device and the software agent. The software agent compresses the voice and stores the file temporarily on the PC if the voice will be delivered as an entire message. (Id., 16:1-4.) Zydney makes clear that the voice instant message can contain more than simply the voice data in this audio file: Example: Multimedia Attachments Another important application of the present invention system and method for voice exchange and voice distribution is attaching other media to the voice containers to provide a richer communications environment. For example, voice containers may have digitized greeting cards appended to them to present a personalized greeting. The voice container has the ability to have other data types attached to it and thus be transported to the recipient. (Zydney, 19:1-7; id., 22:11-20 (disclosing controls for specifying the number and type of attachments that can accompany a voice container message. ).) -52-

58 Figure 6, reproduced below, depicts a process for generating an instant voice message that includes attaching a multimedia file to the voice container audio file. The user clicks talk to record a voice message in a voice container and then can specify a file to attach to the voice container. (Id., Fig. 6.) Figures similarly provide a three-part description of the generation and transmission of a voice container with multimedia attachments. (Id., 35:15-22, -53-

59 Fig ) As shown in Figure 16, reproduced below, the originator can obtain a multimedia file, record a voice container, and associate (attach) the multimedia file to the voice container. (Id., Fig. 16.) Figure 17, reproduced below, shows that the central server receives the message with the attached file and uploads (i.e., delivers) it to the recipient. (Id., Fig. 17.) Zydney also describes attaching files to voice containers using the industrystandard Multipurpose Internet Mail Extension (MIME) format, which allows attachments including binary, audio, and video files to be specified in message -54-

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