Uniloc 2017 LLC

Patent Trials and Appeals Board

Jul 22, 2020

IPR2019-00453 (P.T.A.B. Jul. 22, 2020)

Trials@uspto.gov Paper 38
571-272-7822 Date: July 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS LLC,
Petitioner,

v.

UNILOC 2017 LLC,
Patent Owner.
____________

IPR2019-00453
Patent 7,020,252 B2
____________

Before JEFFREY S. SMITH, BARBARA A. PARVIS, and
CHRISTA P. ZADO, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
35 U.S.C. § 318(a)

IPR2019-00453
Patent 7,020,252 B2

2

I. INTRODUCTION
Unified Patents LLC1 (“Petitioner”) filed a Petition requesting inter
partes review of claims 1–5 of U.S. Patent No. 7,020,252 B2 (“the ’252
patent,” Ex. 1001). Paper 2 (“Pet.”). On July 26, 2019, we instituted an
inter partes review of all the challenged claims. Paper 9 (“Inst. Dec.”).
Patent Owner filed a Response (“PO Resp.”) Paper 12. Petitioner filed a
Reply (“Pet. Reply”). Paper 21. Patent Owner filed a Sur-Reply (“Sur-
Reply”). Paper 27. A hearing was held on May 12, 2020, and a transcript
has been entered into the record (“Tr.”). Paper 37.
This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
We determine that claims 1–5 are unpatentable.
A. Related Matters
The parties state that the ’252 patent is the subject of the following
pending proceedings: Uniloc 2017 LLC v. Hike Ltd., Case No. 2:18-cv-
00515 (E.D. Tex. 2018); Uniloc 2017 LLC v. Microsoft Corp., Case No. 8-
18-cv-02054 (C.D. Cal. 2018); Uniloc 2017 LLC v. Apple Inc., Case No. 1-
18-cv-00991 (W.D. Tex. 2018); Uniloc 2017 LLC et al v. Hike Ltd., Case
No. 2-18-cv-00417 (E.D. Tex. 2018). Pet. 70; Paper 3, 2.
B. Real Parties in Interest
Petitioner identifies itself as the real party in interest. Pet. 70. Patent
Owner identifies itself as the real party in interest. Paper 3, 1.
C. The ’252 Patent
The ’252 patent relates to a group audio message board. Ex. 1001,
code (54). A communal audio message recordal apparatus enables multiple

1 Petitioner changed its name from Unified Patents, Inc., to Unified Patents,
LLC. Paper 16.
IPR2019-00453
Patent 7,020,252 B2

3

users to record and access recorded messages. Id. at code (57). Each
message includes at least one qualifying parameter for access to the recordal
apparatus. Id. The qualifying parameter may be an indication of time or
date for a user recording a message and for a user requesting playback of a
message, or the qualifying parameter may indicate a personal characteristic
of a user, such as a pastime. Id. at 3:10–16. The recordal apparatus permits
a user to access a previously recorded message if the user has a matching
qualifying parameter. Id. at 3:52–57.
D. Illustrative Claim
Challenged independent claim 1 is reproduced below.
1. A method for enabling communal audio message
recordal including a provision of audio data recorder coupled
with a communications system configured to enable multiple
users to access the audio data recorder and to record respective
audio messages thereby, wherein a recordal of each message
comprises:
generating and storing by said system at least one
qualifying parameter pertaining to the access to the audio data
recorder;
determining a qualifying parameter for a subsequent
access to the audio data recorder by a user; and
enabling access by said subsequently accessing user to
previously recorded messages having a matching qualifying
parameter, otherwise the denial of such access, wherein the
qualifying parameter includes an indication of time and/or date
for a user recording a message and for a user requesting playback
of a message.
IPR2019-00453
Patent 7,020,252 B2

4

E. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Reference Basis2 Claim(s)
Nabkel3 § 102 1
Nabkel § 103 1
Nabkel, Hidary4 § 103 2–5
Ala-Laurila5, Hidary § 103 2–5
Ala-Laurila, Nabkel § 103 1
II. ANALYSIS
A. Claim Construction
The Petition was accorded a filing date of December 31, 2018.
Paper 5. In an inter partes review for a petition filed on or after November
13, 2018, a claim “shall be construed using the same claim construction
standard that would be used to construe the claim in a civil action under
35 U.S.C. 282(b).” See Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37
C.F.R. § 42.100(b) (2019)).

2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the application from which the ’252 patent issued was filed
before that date, our citations to Title 35 are to its pre-AIA version. See Ex.
1001, code (22).
3U.S. Patent No. 5,963,626, issued Oct. 5, 1999, Ex, 1005.
4U.S. Patent No. 5,852,775, issued Dec. 22, 1998, Ex. 1007.
5U.S. Patent No. 6,246,871 B1, issued June 12, 2001, Ex. 1006.
IPR2019-00453
Patent 7,020,252 B2

5

1. “generating and storing by said system at least one qualifying
parameter pertaining to access of the audio data recorder”
With regard to the limitation “generating and storing by said system at
least one qualifying parameter pertaining to the access to the audio data
recorder,” as recited in claim 1,6 the parties dispute the antecedent basis of
“said system.” The preamble of claim 1 recites
[a] method for enabling communal audio recordal including
provision of audio data recorder coupled with a
communications system configured to enable multiple users to
access the audio data recorder and to record respective audio
messages thereby, wherein a recordal of each message
comprises.
Patent Owner contends “said system” finds antecedent basis in the
preamble recitation of “communications system,” and that we should
construe this limitation as “generating and storing by [a communications
system] at least one qualifying parameter pertaining to the audio access to
the audio data recorder.” PO Response 4–5; PO Sur-Reply 2–3. Petitioner
contends “said system” finds antecedent basis in the preamble recitation of
“a provision of audio data recorder coupled with a communications system,”
and that we should construe this limitation as “generating and storing by [a
provision of audio data recorder coupled with a communications system] at
least one qualifying parameter pertaining to the audio access to the audio
data recorder.” Pet. Reply 5.
In arguing their respective constructions, the parties agree that the
“communications system” recited in the preamble may generate a qualifying

6 Our discussion in this section regarding claim 1 also pertains to the same or
similar recitations in the other challenged claims.
IPR2019-00453
Patent 7,020,252 B2

6

parameter. PO Sur-Reply 4–5; Pet. Reply 2–3. However, the parties dispute
whether the “communications system” may also store the qualifying
parameter, or whether it is the “audio data recorder” that stores the
qualifying parameter. PO Sur-Reply 4–5; Pet. Reply 2–3. Specifically, the
parties agree the group audio message board (GAMB) 10 disclosed in the
Specification stores a qualifying parameter. PO Sur-Reply 4; Pet. Reply 3–
4. However, the parties dispute whether GAMB 10 discloses a
“communications system,” or whether it discloses an “audio data recorder.”
For the reasons that follow, we construe “generating and storing by
said system at least one qualifying parameter pertaining to the access to the
audio data recorder” to encompass “generating and storing by a provision of
audio data recorder coupled with a communications system at least one
qualifying parameter pertaining to the audio access to the audio data
recorder.”
Beginning with the claim itself, the limitation at issue recites “said
system,” leaving out the term “communications.” Nonetheless, Patent
Owner urges that because the only prior appearance of “system” in the claim
is the “communications system” recited in the preamble, we should construe
“said system” to mean “communications system.” PO Sur-Reply 2. “Said
system” must not be construed in a vacuum, devoid of the context of the
claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183
F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim construction . . . demands
interpretation of the entire claim in context, not a single element in
isolation.’); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
IPR2019-00453
Patent 7,020,252 B2

7

considered”). Indeed, “the context in which a term is used in the asserted
claim can be highly instructive.” Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005). The term “system” as used in claim 1 is not
surrounded by uniform language that requires a single interpretation of the
term. Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520
F.3d 1367, 1376 (Fed. Cir. 2008). Rather, the appropriate meaning of
“system” is readily apparent from each occurrence in the context of the
claim as read in light of the Specification. Id.; Phillips, 415 F.3d at 1315
(“Claims must always be read in light of the specification.”).
The preamble recites a “communications system” that is coupled with
an audio data recorder and configured to enable multiple users to access the
audio data recorder. The claim limitation at issue recites both “generating
and storing” at least one qualifying parameter by “said system.”
For reasons discussed below, we find no support in the ’252 Patent
Specification for a construction of the “communications system” that (1) is
“configured to enable multiple users to access the audio data recorder,” as
recited in the preamble, and (2) perform both “generating and storing” a
qualifying parameter. Rather, the Specification indicates that the
combination of the “audio data recorder” coupled with the “communications
system” generates and stores a qualifying parameter. Therefore, in light of
the context in which “communications system” and “said system” appear in
the claim when read in light of the Specification, the interpretation that is
most consistent with the intrinsic evidence is one in which the provision of
the complete system—i.e., the audio data recorder coupled with the
communications system—perform the steps of “generating and storing.”
See Phillips, 415 F.3d at 1313 (“the person of ordinary skill in the art is
IPR2019-00453
Patent 7,020,252 B2

8

deemed to read the claim term not only in the context of the particular claim
in which the disputed term appears, but in the context of the entire patent,
including the specification.”).
a. “system”
The term “system” has more than one meaning in the ’252 patent, and
to ascertain its meaning in any given instance we must look to the context in
which it appears. Above we discussed the context in which the term
“system” appears in the claim. We turn next to the Specification. Phillips,
415 F.3d at 1315 (holding “[t]he descriptive part of the specification aids in
ascertaining the scope and meaning of the claims inasmuch as the words of
the claims must be based on the description. The specification is, thus, the
primary basis for construing the claims.”).
The Summary of the Invention discloses “in accordance with the
present invention,” language that nearly identically recites the preamble of
claim 1:
a method for enabling communal audio recordal comprising
the provision of audio data recordal means coupled with a
communications system configured to enable multiple users to
access the recordal means and to record respective audio
messages thereby.
Ex. 1001, 2:63–3:1.
The Summary of the Invention discloses the invention also as an
apparatus, again using language nearly identical to that in the preamble of
claim 1, disclosing “[i]n accordance with a first aspect of the present
invention”:
Provid[ing] a communications system comprising communal
audio message recordal apparatus comprising audio data
recordal means coupled with a communications system
IPR2019-00453
Patent 7,020,252 B2

9

configured to enable multiple users to access the recordal
means and to record respective audio messages thereby.
Id. at 1:64–2:3.
Accordingly, the Specification uses the term “communications
system” in two different senses. In the narrower sense, “communications
system” refers to a system that is coupled to an audio data recorder and
configured to enable multiple users to access the recorder. In the broader
sense, “communications system” refers to a system including: 1) an audio
data recorder, coupled with 2) a “communications system” as that term is
used in the narrower sense.
Comparing the preamble of claim 1 with the Summary of the
Invention shows that the preamble expressly and unambiguously uses
“communications system” in the narrower sense, i.e., as a “communications
system” that is coupled to an audio data recorder and configured to enable
multiple users to access the recorder:
IPR2019-00453
Patent 7,020,252 B2

10

Claim 1 (preamble) Specification
(Ex. 1001, 2:63–3:1)
Specification
(Ex. 1001, 1:64–2:3)
[a] method for enabling
communal audio
recordal including
provision of
a method for enabling
communal audio
recordal comprising the
provision of
Provid[ing] a
communications
system comprising
communal audio
message recordal
apparatus comprising
audio data recorder audio data recordal
means
audio data recordal
means
coupled with coupled with coupled with
a communications
system configured to
enable multiple users
to access the audio data
recorder and to record
respective audio
messages thereby
a communications
system configured to
enable multiple users
to access the recordal
means and to record
respective audio
messages thereby
a communications
system configured to
enable multiple users
to access the recordal
means and to record
respective audio
messages thereby
Like the Specification’s disclosure of a “communications system” in the
narrower sense, the preamble recites that the “communications system” is
coupled with the audio data recorder and is configured to allow multiple
users to access the audio data recorder. In contrast, as discussed further
below (see infra § II.A.d), claim 1’s recitation of “generating and storing by
said system at least one qualifying parameter” uses the term “system” in the
broader sense, referring to an audio data recorder coupled with a
communications system (as the term is used in the narrower sense).
b. “audio data recorder” and “communications system”
The Specification does not expressly define the terms “audio data
recorder” and “communications system.” Accordingly, we look to the plain
and ordinary meaning as of these terms as would be understood by a person
of ordinary skill in the art at the time of the invention and in the context of
IPR2019-00453
Patent 7,020,252 B2

11

the entire patent disclosure. Phillips, 415 F.3d 1313. For the reasons
discussed below, we conclude that GAMB 10 in the Specification discloses
the “audio data recorder” and that the plain and ordinary meaning of “audio
data recorder” would have been understood to encompass a device that
stores recorded audio messages, such as that disclosed by GAMB 10. We
conclude further that telecommunications network 14, with or without
beacons, such as beacons 22, 24, discloses a “communications system” and
that the plain and ordinary meaning of “communications system”
encompasses a telecommunications system, such as that disclosed by
telecommunications network 14 (with or without beacons 22, 24).
The Specification makes plain that the term “audio data recorder”
includes devices such as a message board that stores audio message
recordings (e.g., GAMB 10 comprising storage device 16). Ex. 1001, 3:39–
57, Fig. 1. As noted above, the Summary of the Invention and claim 1
disclose and recite an “audio recordal means” and an “audio data recorder,”
respectively, that “record audio data messages.” Although the preferred
embodiment does not use the term “audio data recorder,” we find that
GAMB 10 discloses an “audio data recorder,” because GAMB 10 comprises
storage device 16 that records and stores audio messages. Ex. 1001, 3:43–
46.
The Specification also makes plain that the term “communications
system” includes telecommunications networks such as telecommunications
network 14 linked to beacons 22, 24. Id. at 4:10–16. As noted above, the
Summary of the Invention and claim 1 disclose and recite a
“communications system.” Although the preferred embodiment does not
use this term, we find that telecommunications network 14 (with or without
IPR2019-00453
Patent 7,020,252 B2

12

beacons 22, 24) discloses a “communications system” coupled with the
audio data recorder and configured to enable multiple users to access the
recorder, as recited in claim 1, because network 14 (with or without
beacons 22, 24) is a telecommunications network, is connected (i.e.,
coupled) with GAMB 10 (i.e., the audio data recorder), and allows (i.e., is
configured to enable) users on mobile telephones to access GAMB 10. Id. at
3:39–46; see also id. at 2:39–44 (disclosing that the communications system
may comprise a plurality of networked beacons).
The file history of the ’252 patent supports our finding that GAMB 10
discloses an “audio data recorder” and telecommunications network 14 (with
our without beacons 22, 24) discloses a “communications system,” as these
terms are used in the preamble of claim 1. Throughout prosecution, the
Examiner consistently mapped telecommunications networks to the claimed
“communications system” and message boards/and or message storage that
store recorded audio messages to the claimed “audio data recorder.”
Ex. 1013, 3; Ex. 3001, 101. For example, in the First Office Acction, dated
May 9, 2003, the Examiner mapped Kanevsky’s “telephone system” (i.e., a
telecommunications network) to the claimed “communications system.”
Ex. 3001, 101. The Examiner mapped Kanevsky’s phone message store 103
that stores recorded audio messages to the claimed “audio data recordal
means.” Id.; Ex. 3002, Fig. 1 (“Kanevsky”). In the Office Action dated
November 3, 2004, the Examiner mapped Creswell’s Switch 130 to a
“communications system.” Ex. 1013, 3. In pertinent part, Creswell
discloses communications network 100 that may be a public switched
telephone network that provides long distance telephone services to
subscribers, wherein network 100 includes switching offices, such as
IPR2019-00453
Patent 7,020,252 B2

13

switch 130. Ex. 3003, 2:54–65. The Examiner mapped “audio recordal
means” to Creswell’s adjunct 150 (Ex. 1013, 3), which Creswell discloses as
storing messages and their associated headers in an available bulletin board
memory location, Ex. 3003, 13:3–6.
During prosecution, Applicant disagreed that the prior art rendered the
pending claims unpatentable and/or cancelled the claims. See generally
Ex. 3001, 11, 58–62. However, Applicant did not correct the Examiner or
disagree that the “communications system” and “audio data recordal means”
were properly mapped. See generally id. Although Applicant’s silence
regarding the Examiner’s mappings is not determinative, the Examiner’s
mappings and Applicant’s acceptance of those mappings may be informative
as to the plain and ordinary meaning of the terms “communications system”
and “audio data recorder” as used in the ’252 patent. Indeed, the claim’s
“ordinary meaning must be considered in the context of all the intrinsic
evidence, including the claims, the specification, and prosecution history.”
Biogen Idec, Inc., v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094 (Fed.
Cir. 2013). Here, the Examiner’s mappings are consistent with, and
therefore support, our determination that the plain and ordinary meaning of
“audio data recorder” encompasses “a device that stores recorded audio
messages,” such as that disclosed by GAMB 10, and that the plain and
ordinary meaning of “communications system” encompasses a
“telecommunications system,” such as that disclosed by telecommunications
network 14 (with or without beacons 22, 24).
Patent Owner is vague as to which embodiments in the Specification
disclose a “communications system,” arguing that the claimed
“communications system” includes “multiple components, such as storage
IPR2019-00453
Patent 7,020,252 B2

14

device 16, parameter index stage 18 and clock 30,” but leaving open what
else it might include. PO Sur-Reply 4. However, what is clear is Patent
Owner’s attempt to map GAMB 10’s storage device 16 to the claimed
“communications system,” in order to support its contention that the
“communications system” stores a qualifying parameter. Id. For reasons
discussed immediately above regarding the Specification’s disclosure and
the prosecution history, nothing in the intrinsic record indicates storage
device 16 would have been understood as comprising part of the
“communications system.” To the contrary, the intrinsic evidence indicates
storage device 16 is part of the “audio data recorder.” For example, as
discussed above, the prosecution history treats telecommunications networks
as “communications systems,” and treats message boards/and or message
storage that store audio recorded messages—i.e., systems like GAMB 10—
as “audio data recorders.” Patent Owner does not address this. Moreover,
Patent Owner does not explain what embodiment(s) in the Specification
disclose(s) the “audio data recorder.” If storage device 16 (part of
GAMB 10) were part of the “communications system” rather than the “audio
data recorder,” as asserted by Patent Owner, there would be no disclosure in
the Specification’s embodiments of an “audio data recorder.”
As noted above, GAMB 10 including storage device 16 records and
stores audio recorded messages, and therefore embodies an “audio data
recorder.” Ex. 1001, 3:43–46. Patent Owner does not identify, nor do we
discern, any disclosure in the Specification that embodies the “audio data
recorder . . . to record audio messages” other than GAMB 10 including
storage device 16. In addition, Patent Owner does not address the recited
language in the preamble that the “communications system” is coupled with
IPR2019-00453
Patent 7,020,252 B2

15

an “audio data recorder.” If GAMB 10 including storage device 16 were
part of the “communications system,” then the “communications system”
would not be “coupled with” the “audio data recorder” as required by the
claim, because no other component disclosed in the Specification records
audio messages. For the foregoing reasons, we disagree with Patent Owner
that storage device 16 would have been understood as embodying part of the
“communications system,” rather than part of the “audio data recorder.”
Having found that GAMB 10 discloses an “audio data recorder” and
network 14 (with or without beacons 22, 24) discloses a “communications
system,” as these terms are used in the preamble of claim 1, next we turn to
the disclosure in the Specification of “generating and storing a qualifying
parameter.”
c. “generating and storing a qualifying parameter”
As to generating a qualifying parameter, the parties agree that the
“communications system” may generate a qualifying parameter. Pet.
Reply 3; PO Sur-reply 4–5. Moreover, although the parties dispute what
disclosure in the Specification corresponds to the claimed “communications
system,” they do not dispute that the Specification discloses networked
beacons, such as beacons 22, 24, may generate a qualifying parameter. PO
Sur-reply 4–5 (citing Ex. 1001, 2:39–44); see also Ex. 1001 at 4:10–20
(describing beacons 22, 24 appending geographical information to audio
recorded messages as a qualifying parameter); see also id. at 4:37–61
(describing a user mobile phone appending date/time information to an
audio recorded message as a qualifying parameter). As we discussed above,
we determine that telecommunications system 14 with networked beacons
discloses a “communications system.”
IPR2019-00453
Patent 7,020,252 B2

16

With regard to the file history of the ’252 patent, in the Notice of
Allowance the Examiner amended the limitation “capturing and storing at
least one qualifying parameter pertaining to access of the audio data
recorder” in what issued as claim 1 by replacing the word “capturing” with
“generating” and inserting “by said system” after “storing.” Ex. 1004, 2.
The Examiner’s reasons for allowance states that “the prior art of record
fails to teach a communications system generates a matching qualifying
parameter including additional information (e. g. time and/or date for [claim
1]) for a user. The claimed parameter is not an ordinary password because it
is automatically generated by the system and the parameter includes
additional information.” Id. at 4. The Examiner’s reasons for allowance do
not include a statement about “storing by said system.” Also, Applicant did
not comment on the Examiner’s reasons for allowance.
“[A]n applicant’s silence regarding statements made by the examiner
during prosecution, without more, cannot amount to a clear and
unmistakable disavowal of claim scope. After all, the applicant has
disavowed nothing.” Salazar v. Proctor & Gamble Co., 414 F.3d 1342,
1345 (Fed. Cir. 2005) (internal citations omitted). Here, the reasons for
allowance were made by the Examiner, not by the Applicant, and do not
amount to clear and unmistakable acquiescence by the Applicant to the
Examiner’s unrebutted characterization of the claims. We determine that the
reasons for allowance “made by the examiner during prosecution, without
more, cannot amount to a clear and unmistakable disavowal of claim scope”
and therefore do not limit the claims. Salazar, 414 F.3d at 1345.
As to storing the qualifying parameter, the parties agree GAMB 10
stores the qualifying parameter. Pet. Reply 3–4 (arguing that only the audio
IPR2019-00453
Patent 7,020,252 B2

17

data recorder GAMB 10 is capable of storing a qualifying parameter); PO
Sur-Reply 4 (arguing GAMB 10’s storage device 16 stores the qualifying
parameter). Moreover, the parties do not dispute that the Specification
nowhere discloses network 14 (with or without beacons 22, 24) storing the
qualifying parameter. Pet. Reply 3–4 (arguing network 14 is merely a
telecommunications network, with no disclosure or indication that it can
store a qualifying parameter); PO Sur-Reply 4 (arguing storage device 16
stores the qualifying parameter, but providing no argument or evidence that
network 14 stores a qualifying parameter).
We agree with the parties that in the Specification, GAMB 10 stores
the qualifying parameter. The Specification provides that GAMB 10
comprises storage device 16 in which recorded messages are stored by
category in distinct areas A–F. Ex. 1001, 3:39–46. The Specification
explains, “[t]he categories are determined by at least one qualifying
parameter appended to each incoming message” and that the messages are
stored in storage device 16. Id. at 3:46–51. Categories include, for example:
1) “date/time” a message is recorded, or 2) geographical location of the user.
Id. at 3:63–4:2, 4:37–38. As disclosed in the Specification, the qualifying
parameter that is appended to the recorded message may be the geographical
location, or the date/time (e.g., time stamp) a message is recorded. Id. at
4:2–16, 4:37–48. Because the qualifying parameter is appended to the
message, and the message is stored in storage device 16 of GAMB 10, we
find that the Specification discloses storing the qualifying parameter in
GAMB 10.
Further support for this understanding is that in a subsequent step,
when a user seeks to access a message stored in GAMB 10’s storage
IPR2019-00453
Patent 7,020,252 B2

18

device 16, the Specification states that the requesting user is granted access
to messages “having a matching qualifying parameter.” Id. at 3:52–57.
Making a determination as to whether the stored message’s qualifying
parameter matches the qualifying parameter provided in the access request
further indicates the qualifying parameter is stored with the message in
storage device 16 of GAMB 10.
In contrast with the disclosure of GAMB 10 storing a qualifying
parameter, the parties do not identify, nor do we discern, any disclosure in
the Specification of network 14 (with or without beacons 22, 24) or a similar
telecommunications network storing a qualifying parameter. Nor do the
parties provide any evidence or argument showing a skilled artisan would
have understood network 14 (with or without beacons 22, 24) to store the
qualifying parameter—on the contrary, the parties agree the qualifying
parameter is stored in GAMB 10’s storage device 16, as discussed above.
d.“generating and storing by said system at least one qualifying
parameter pertaining to access of the audio data recorder”
Based on the intrinsic evidence discussed above, we agree with
Petitioner that one of ordinary skill in the art would have understood “said
system” in claim 1 to refer to the system described in the preamble including
the “communication system” and the “audio data recorder.”
Patent Owner’s construction of “said system” as “said
communications system” is inconsistent with the claim language when read
in the context in which “communications system” and “said system” appear
in the claim, the Specification as a whole, and the file history. Moreover,
Patent Owner’s construction excludes the disclosed embodiment of “storing
by [the GAMB] at least one qualifying parameter,” which “is rarely, if ever,
correct and would require highly persuasive evidentiary support.” Adams
IPR2019-00453
Patent 7,020,252 B2

19

Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed.
Cir. 2010). As we discussed above, the only disclosed system that stores the
qualifying parameter is GAMB 10. Ex. 1001, 3:39–57, 3:66–4:1, 4:38–47,
Fig. 1. Moreover, also discussed above, GAMB 10 discloses an “audio data
recorder,” not a “communications system.” Construing “said system” to
mean “said communications system” would exclude the only disclosed
embodiment of “storing by said system at least one qualifying parameter.”
See Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1355 (Fed. Cir.
1998) (“A patent should be construed to encompass at least one disclosed
embodiment”).
For the foregoing reasons, we construe “generating and storing by
said system at least one qualifying parameter pertaining to the access to the
audio data recorder” to encompass “generating and storing by a provision of
audio data recorder coupled with a communications system at least one
qualifying parameter pertaining to the audio access to the audio data
recorder.”
2. “pertaining to the access of the audio data recorder”
Patent Owner contends that “pertaining to the access of the audio data
recorder” should be construed as access that pertains to the audio data
recorder itself. PO Resp. 4–5; PO Sur-Reply 3. Petitioner contends that
Patent Owner’s construction attempts to insert the word “itself” into the
claim, but the claim should not be so limited. Pet. Reply 5. Petitioner
further contends that Patent Owner’s construction is inconsistent with the
Specification of the ’252 patent. Id. Petitioner contends that the ’252 patent
discloses two types of access, (1) password access control for accessing the
audio data recorder, and (2) qualifying parameters for accessing messages
IPR2019-00453
Patent 7,020,252 B2

20

within the audio data recorder. Id. at 6 (citing Ex. 1001, 3:52–57, 4:62–67,
5:44–48). Petitioner contends that the ’252 patent does not disclose using
qualifying parameters to access the audio data recorder itself. Id. (citing Ex.
1001, 5:44–48).
The ’252 patent discloses that the qualifying parameter identifies
where a message should be stored on the GAMB and who should have
access to the stored message, and that the qualifying parameter “is distinct
from the password access control . . . which simply enables or disables
access to the GAMB.” Ex. 1001, 5:44–48; see id. at 3:52–57, 4:62–67. We
agree with Petitioner, that Patent Owner’s construction is too narrow,
because it excludes the disclosed embodiment of a qualifying parameter
pertaining to identifying who should have access to a message stored on the
audio data recorder. We determine that a “qualifying parameter pertaining
to the access to the audio data recorder,” read in light of the specification,
encompasses at least a qualifying parameter pertaining to identifying who
has access to a message stored on the audio data recorder.
3. “qualifying parameter”
Patent Owner, relying on the Examiner’s reasons for allowance,
contends that the term “qualifying parameter” should be construed as
(1) being automatically generated by the system, (2) including additional
information such as date/time or a personal characteristic, and (3) being
distinguishable from a mere user-generated password or user identification.
PO Reply 5–6 (citing Ex. 1004, 4). Petitioner contends that the reasons for
allowance were made by the Examiner, not the Applicant, and do not
amount to clear and unmistakable acquiescence by the Applicant to the
Examiner’s unrebutted characterization of the claims. Pet. Reply 9–10.
IPR2019-00453
Patent 7,020,252 B2

21

We agree with Petitioner. As discussed above, we determine that the
reasons for allowance “made by the examiner during prosecution, without
more, cannot amount to a clear and unmistakable disavowal of claim scope,”
and therefore do not limit the claims. See Salazar, 414 F.3d at 1345.
Petitioner further contends that express construction of “qualifying
parameter” is not necessary, because this term is not in controversy. Pet.
Reply 7. We agree with Petitioner, and do not find it necessary to construe
“qualifying parameter.” Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only terms that are in
controversy need to be construed, and only to the extent necessary to resolve
the controversy).
4. “personal characteristic”
Petitioner proposes that the claimed “personal characteristic” recited
in each of claims 2–5 should be construed to mean “a feature that helps
distinguish a person or thing.” Pet. 7. Patent Owner contends that
Petitioner’s proposed construction is unreasonably broad. PO Resp. 6–7. In
Reply, Petitioner contends that a construction of “personal characteristic” is
not necessary to resolve a controversy. Pet. Reply 11. We agree with
Petitioner, and do not find it necessary to construe “personal characteristic.”
C. Asserted Anticipation of Claim 1 by Nabkel
Petitioner contends claim 1 is anticipated by Nabkel. Pet. 11–19. To
support this contention, Petitioner relies on the declaration testimony of Mr.
Scott Andrews. Id.; Ex. 1002.
1. Nabkel
Nabkel discloses a system for posting a message to callers based on a
caller’s identity. Ex. 1005, at code (57). A subscriber accesses the system
IPR2019-00453
Patent 7,020,252 B2

22

and identifies calling parties authorized to receive a prerecorded message on
a caller list. Id. at 2:25–3:4, Figs. 1, 2. The subscriber records a message,
may enter an expiration time or date for the message, and may also specify
security parameters for the message, such as a personal identification
number (PIN). Id. at 3:12–58, Fig. 3 (steps 132, 136, 141).
When a call from telephony device 22 is routed to communication
station 14, the communication station queries adjunct processor 12 for call
processing functions. Id. at 6:1–4, Fig. 6. Adjunct processor 12 receives
call identification (ID) information of subscriber 20 and incoming caller 22,
and compares the ID number of the calling party with ID numbers stored in
the subscriber’s profile in the database associated with adjunct processor 12.
Id. at 6:10–14, Fig. 6. If the ID number of the calling party indicates that the
calling party is authorized to receive the message, the adjunct processor
instructs intelligent processor (IP) 18 to generate prompts if a PIN is
required. Id. at 6:14–19. After determining the calling party is authorized to
receive the message posted by the subscriber, the adjunct processor instructs
the IP to present the message to the calling party. Id. at 6:20–23.
2. Analysis
Petitioner has not shown Nabkel discloses an “indication of time
and/or date for a user recording a message,” as recited in claim 1. Claim 1
recites “wherein the qualifying parameter includes an indication of time
and/or date for a user recording a message and for a user requesting
playback of a message.” Petitioner contends that Nabkel describes this
limitation in disclosing that a subscriber can enter a time or date for
automatic expiration of the communication, such as seven days. Pet. 18
(citing Ex. 1005, 3:28–36, Fig. 3). Petitioner, relying on the testimony of
IPR2019-00453
Patent 7,020,252 B2

23

Mr. Andrews, contends that “to execute the seven-day expiration restriction,
Nabkel’s system manages one or more qualifying parameters including both
the time and date the user recorded the audio message and the time and date
a user is requesting playback of the message.” Id. at 18–19 (citing Ex. 1002
¶¶ 64–65).
However, Petitioner has not shown that the system of Nabkel
necessarily includes the time and/or date that a user records a message in the
qualifying parameter when a user enters a date of expiration of the message.
The date of expiration, as disclosed in Nabkel, provides the system with the
information necessary to expire the message, and thus the system does not
need the time and date that the message was recorded. Accordingly, based
on the arguments and evidence presented in the Petition and Mr. Andrews’s
declaration (Ex. 1002), we are not persuaded that the system in Nabkel
necessarily stores the time and/or date the message was recorded.
We pointed out this deficiency in the Institution Decision. Inst.
Dec. 8–9. In the Reply, Petitioner has not provided persuasive evidence or
argument to the contrary.
For the foregoing reasons, we determine Petitioner has not shown by a
preponderance of the evidence that claim 1 is anticipated by Nabkel.
D. Asserted Obviousness of Claim 1 Over Nabkel
Petitioner, relying on the testimony of Mr. Andrews, contends that
Nabkel renders claim 1 obvious. Pet. 19–20.
The preamble of claim 1 recites a “method for enabling communal
audio message recordal including a provision of audio data recorder coupled
with a communications system configured to enable multiple users to access
the audio data recorder and to record respective audio messages thereby,
IPR2019-00453
Patent 7,020,252 B2

24

wherein a recordal of each message comprises.” We are persuaded that
Nabkel teaches “enabling communal audio message recordal including a
provision of audio data recorder coupled with a communications system
configured to enable . . . users . . . to record respective audio messages,”
because, as argued by Petitioner, Nabkel discloses a system including an
adjunct processor with a database for storage and a communication station to
allow users to record audio messages on the system. Pet. 11 (citing Ex.
1005, 2:34–37, 3:12–28, 5:30–6:9, Fig. 6; Ex. 1002 ¶¶ 44–47). We are
persuaded that Nabkel teaches “enabl[ing] multiple users to access the audio
data recorder and access the audio data recorder and to record respective
audio messages,” because, as argued by Petitioner, Nabkel discloses a
system that enables a user to post a message to callers based on each caller’s
identity, and that multiple users can record audio messages on the system.
Id. at 11–12 (citing Ex. 1005, Abstract, 1:40–45, 2:25–57; Ex. 1002 ¶¶ 44–
47). We are persuaded that Nabkel teaches the “audio data recorder” in
disclosing an adjunct processor with a database, and teaches the
“communications system,” because, as argued by Petitioner, Nabkel
discloses a communication station. Id. at 12 (citing Ex. 1002 ¶¶ 44–47). We
are persuaded that Nabkel teaches the preamble of claim 1.
Claim 1 recites “generating and storing by said system at least one
qualifying parameter pertaining to the access to the audio data recorder.”
Petitioner contends Nabkel teaches this limitation in disclosing generating
and storing an expiration date or time. Id. at 12–14 (citing Ex. 1005, 3:13–
4:20, 4:40–48, 5:20–29, 5:42–60, 6:10–26, Fig. 3; Ex. 1002 ¶¶ 48–53).
Petitioner contends that Nabkel teaches the “qualifying parameter” in
disclosing one or more variables associated with an audio message, such as
IPR2019-00453
Patent 7,020,252 B2

25

the time/date, where the values of the variables determine whether a user is
eligible to access a particular audio message. Id. at 13 (citing Ex. 1005,
3:13–4:20; Ex. 1002 ¶ 51). Petitioner contends that Nabkel teaches
“generating . . . by said system at least one qualifying parameter” in
disclosing that the communication system takes a user input of an expiration
time/date, such as seven days, and generates the qualifying parameter based
on the user input, so that the audio message is only available for access for
seven days. Id. at 13–14 (citing Ex. 3:28–58, 4:40–48, 5:42–60; Ex. 1002
¶ 52). Petitioner contends that Nabkel teaches “storing . . . by said system at
least one qualifying parameter” in disclosing a system including an adjunct
processor with a database to store the qualifying parameter so that the
qualifying parameter can be retrieved and evaluated when other users
attempt to access the message. Pet. 14 (citing Ex. 1005, 3:29–58, 4:40–48,
5:20–29, 6:10–26; Ex. 1002 ¶ 53).
Patent Owner contends that Nabkel does not teach “storing . . . by said
system at least one qualifying parameter,” because “said system” refers only
to the “communications system,” and Nabkel’s communication system does
not store the qualifying parameter. PO Resp. 7–10. According to Patent
Owner, the claimed “communications system” is taught by Nabkel’s
communication station, and the claimed “audio data recorder” is taught by
Nabkel’s adjunct processor with a database. Id. at 8. Patent Owner
contends that storing the qualifying parameter by the adjunct processor with
a database (corresponding to the claimed “audio data recorder”) does not
teach storing the qualifying parameter by the “communications system” as
required by claim 1. Id. at 10.
IPR2019-00453
Patent 7,020,252 B2

26

Petitioner contends that Patent Owner’s contention is based on an
erroneous claim construction. Pet. Reply 12. We agree. As discussed in
Section II.A above on claim construction, we agree with Petitioner’s
interpretation of claim 1, namely that “said system” refers to “a provision of
an audio data recorder coupled with a communications system.”
Accordingly, contrary to Patent Owner’s contention, claim 1 does not
require the claimed “communications system” to store the qualifying
parameter. Rather, claim 1 is met if the qualifying parameter is stored by the
“system” comprising “a provision of audio data recorder coupled with a
communications system.” Consequently, Nabkel’s disclosure of storing a
qualifying parameter by an adjunct processor with a database (the “audio
data recorder”) teaches “storing by said system at least one qualifying
parameter” as claimed. See Pet. 14 (citing Ex. 1005, 3:29–58, 4:40–48,
5:20–29, 6:10–26; Ex. 1002 ¶ 53).
For the foregoing reasons, we are persuaded that Nabkel teaches
“generating and storing by said system at least one qualifying parameter
pertaining to the access to the audio data recorder.”
Claim 1 recites, “determining a qualifying parameter for a subsequent
access to the audio data recorder by a user.” We are persuaded that Nabkel
teaches this limitation by disclosing that a user can be denied access to a
recorded audio message after a certain date/time because the audio message
will be expired, as argued by Petitioner. Id. at 15–16 (citing Ex. 1005, 1:49–
51, 3:28–42, 3:53–58, 4:41–57, Figs. 3, 5; Ex. 1002 ¶¶ 54–55). Patent
Owner does not raise any arguments as to this limitation. See generally PO
Response. We are persuaded that Nabkel teaches this limitation.
IPR2019-00453
Patent 7,020,252 B2

27

Claim 1 recites, “enabling access by said subsequently accessing user
to previously recorded messages having a matching qualifying parameter,
otherwise the denial of such access.” We are persuaded that Nabkel teaches
this limitation by disclosing that the system determines if the user is
attempting to access a message that has reached its expiration date/time and,
if so, denying access, as argued by Petitioner. Pet. 16–18 (citing Ex. 1005,
1:49–51, 3:28–42, 4:41–47, 6:45–7:11, Figs. 3, 5; Ex. 1002 ¶¶58–60).
Patent Owner does not raise any arguments as to this limitation. See
generally PO Response. We are persuaded that Nabkel teaches this
limitation.
Claim 1 recites, “wherein the qualifying parameter includes an
indication of time and/or date for a user recording a message and for a user
requesting playback of a message.” Petitioner contends that Nabkel
discloses that a user can set a message to expire in seven days. Pet. 19–20
(citing Ex. 1005, 3:32–34). Petitioner, relying on testimony of Mr.
Andrews, contends that Nabkel would have rendered obvious using an
indication of time and/or date as claimed, because a person of ordinary skill
would have understood that there were a “finite number of identified,
predictable solutions” to the time and date expiration embodiment disclosed
in Nabkel, and would have had “good reason to pursue the known options
within his or her technical grasp,” including providing both indications of
time and date in the qualifying parameter. Id. at 20 (citing KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 402 (2007); Ex. 1002 ¶ 69). Specifically,
Petitioner contends that a person of ordinary skill in the art, in implementing
the time or date expiration feature of Nabkel, would have found it obvious to
include both “an indication of time and/or date for a user recording a
IPR2019-00453
Patent 7,020,252 B2

28

message and an indication of time and/or date for a user requesting playback
of a message” as claimed. Id.
We find Petitioner’s arguments to be persuasive. Nabkel discloses
that the user is prompted to enter “a time or date for automatic expiration of
the communique,” such as “a social group leader . . . set[ting] that message
to expire in seven days.” Ex. 1005, 3:28–32, Fig. 3. We rely on the
testimony of Mr. Andrews, which we find credible, to determine that
Nabkel’s distinction between entering an expiration time or entering an
expiration date, along with Nabkel’s example of setting a message to expire
in seven days, teaches that a user may enter an expiration time, such as by
noting the time of recording and that expiration will occur seven days later,
instead of a precise date of expiration, such as August 10. See Ex. 1002 ¶¶
63–66, 69; Ex. 1005, 3:28–32, Fig. 3 (step 136).
On this record, we find that a person of ordinary skill in the art would
have understood that there were “a finite number of identified, predictable
solutions” to implement Nabkel’s feature of setting a time or date for
automatic expiration of the message, namely, (1) by setting an expiration
time, or (2) by setting an expiration date. See Pet. 19–20 (citing KSR, 550
U.S. at 421); Ex. 1005, 3:28–34, Fig. 3; Ex. 1002 ¶¶ 63–66, 69. We credit
the testimony of Mr. Andrews in finding that a person of ordinary skill in the
art, in order to implement Nabkel’s teaching of setting an expiration time of
seven days, would have noted “the time that the message was created and
the expiry was defined, so that the expiration will occur seven days from that
time” (Ex. 1002 ¶ 65) “by enabling the qualifying parameter disclosed in
Nabkel to include both (a) an indication of time and/or date for a user
IPR2019-00453
Patent 7,020,252 B2

29

recording a message and (b) an indication of time and/or date for a user
requesting playback of a message” (id. ¶ 69).
We are persuaded that a person of ordinary skill who wanted to set a
time for a message to expire, such as seven days after recording the message,
would have had “good reason to pursue the known options within his or her
technical grasp,” such as determining whether the elapsed time between the
recording date and the playback request date was greater than the expiration
time of seven days. KSR, 550 U.S. at 421. “If this leads to the anticipated
success” of causing the message to expire seven days after recording it, then
“it is likely the product not of innovation but of ordinary skill and common
sense. In that instance the fact that a combination was obvious to try might
show that it was obvious under § 103.” Id. Petitioner “provided convincing
evidence that” determining whether an elapsed time between a recording
date and a playback request date was greater than an expiration time “was a
design step well within the grasp of a person of ordinary skill in the relevant
art.” Id. at 427.
We determine that Petitioner shows, by a preponderance of the
evidence, that claim 1 is unpatentable as obvious over Nabkel.
E. Asserted Obviousness of Claims 2–5 Over Nabkel and Hidary
Petitioner contends that the combination of Nabkel and Hidary
renders claims 2–5 obvious. Pet. 21–40.
1. Hidary
Hidary pertains to a cellular telephone system with means for
selective delivery of advertising or other promotional material to
subscribers. Ex. 1007, 1:6–8. An ad server of the system includes a
memory bank to store a table of subscribers, and a corresponding profile for
IPR2019-00453
Patent 7,020,252 B2

30

each subscriber. Id. at 2:33–34. The profile of the subscriber includes
information provided by the subscriber, such as age, gender, income,
hobbies, and profession. Id. at 3:18–23. The memory bank also holds
various commercial messages, which may be generic, or tailored for specific
subscribers or geographic cells. Id. at code (57), 2:28–34. For example, the
memory bank includes a memory for messages correlated with specific
subscriber profile items. Id. at 2:42–43.
The ad server identifies a subscriber using a subscriber identifier, and
looks up the corresponding profile in the memory bank. Id. at 3:13–17.
The ad server selects an appropriate message for the subscriber from the
memory bank based on the profile, and sends the message to the subscriber.
Id. at 3:24–28. For example, if the subscriber has indicated that he likes to
go to the movies, the message selected by the ad server may be an
advertisement for a movie. Id. at 3:41–45.
The subscriber may also actively seek messages from the memory
bank. Id. at 4:26–28. For example, if the subscriber is located in an
unfamiliar area, he may want information about nearby restaurants and gas
stations. Id. at 4:28–30. The subscriber sends a code to the system to
indicate that he wants to access messages in the memory bank. Id. at 4:30–
32. The ad server identifies the subscriber, and provides the subscriber with
a list of available messages for the subscriber to select. Id. at 32–36.
2. Analysis
Claim 2
Petitioner contends that the limitations of claim 2 are identical to
those of claim 1, with the exception of the “wherein” clause, and relies upon
the arguments set forth in the proposed ground of anticipation of claim 1 by
IPR2019-00453
Patent 7,020,252 B2

31

Nabkel to teach the limitations of claim 2 that are identical to those recited
in claim 1. Pet. 24–25.
Claim 2 recites, “wherein the qualifying parameter includes a user-
supplied indication of a personal characteristic.” Petitioner, relying on
testimony of Mr. Andrews, contends that this limitation is taught by the
combination of Nabkel and Hidary. Pet. 22–27 (citing Ex. 1005, 1:15–20,
1:40–45, 3:28–36, 3:53–58, 4:40–47, Fig. 3; Ex. 1007, Abstract, 1:19–65,
2:23–58, 3:4–61, 4:3–36, Fig. 3; Ex. 1002 ¶¶ 70–91). We find Petitioner’s
argument persuasive. Hidary discloses that
The ad server 24 first determines the identity of the subscriber
using subscriber identifier 52 (step 106) . . . . The microprocessor
50 uses this information to look up in data bank 26 the profile of
subscriber 16 (step 110). From the profile the ad server then has
to select an appropriate message from the messages stored in
memory bank 26.
Previously the subscriber 16 has been requested to provide
information about himself which may be useful to target specific
advertising for him. This information may 20 include the age,
sex, income, hobbies, preferences, profession and other similar
information. All this subscriber specific information is stored in
memory 58.
In step 112 the ad server selects a message appropriate for the
subscriber 16 based on the profile.
Ex. 1007, 3:4–5, 13–26; see id. at 1:57–65, 2:25–34, 3:39–50; Ex. 1002
¶¶ 72, 79. We find that Hidary’s disclosure of personal characteristics
provided by a subscriber, stored in a profile, and used to select a message
appropriate for the subscriber, teaches “wherein the qualifying parameter
includes a user-supplied indication of a personal characteristic.”
Mr. Andrews testifies that Nabkel teaches giving a user access to a
recorded message based on a user’s identity. Ex. 1002 ¶¶ 76, 77, 80–82
IPR2019-00453
Patent 7,020,252 B2

32

(citing Ex. 1005, 1:15–20, 1:40–45, 3:53–58, 6:10–33). Mr. Andrews’s
testimony is supported by the record. Nabkel discloses “generating
messages associated with a subscriber for receipt by predetermined callers
based on their identity.” Ex. 1005, 1:42–45. Nabkel discloses “assign[ing] a
message . . . a personal PIN (Personal Identification Number) associated
with a specific individual.” Ex. 1005, 3:53–58. Nabkel also discloses
Adjunct processor 12 then compares the ID number of the
calling party . . . with the ID numbers stored in the subscriber’s
profile in the database associated with the adjunct processor 12
[to determine if] the ID number of the calling party 22 indicates
that the calling party is authorized to receive a personal
communique.

Ex. 1005, 6:10–16. Accordingly, we credit the testimony of Mr. Andrews in
finding that Nabkel teaches giving a user access to a recorded message based
on the user’s identity.
Mr. Andrews testifies that Nabkel does not expressly disclose
associating audio messages with user-supplied characteristics of the user.
Ex. 1002 ¶ 78. Mr. Andrews testifies that Hidary teaches a memory storing
a subscriber profile and recorded messages, where a subscriber sends a code
to the system to allow the system to look up the subscriber’s profile and
select an appropriate message based on a user–supplied personal
characteristic in the subscriber’s profile. Ex. 1002 ¶¶ 73, 79 (citing Ex.
1007, 3:4–28, 4:26–36). Mr. Andrews’s testimony is supported by the
record. Hidary discloses “subscriber 16 sends a code to central station 12 to
indicate that he wants to access the memory bank 26. The ad server 24
again identifies the subscriber and his cell 11 provides the subscriber with a
list of messages that are available from the memory 60.” Ex. 1007, 4:30–36.
IPR2019-00453
Patent 7,020,252 B2

33

Hidary also discloses “ad server 24 first determines the identity of the
subscriber using subscriber identifier 52,” “uses this information to look up
in data bank 26 the profile of subscriber 16,” and “selects a message
appropriate for the subscriber 16 based on the profile.” Ex. 1007, 3:4–5, 13–
15, 24–25. Accordingly, we credit the testimony of Mr. Andrews in finding
that Hidary teaches selecting a message for a subscriber based on a
subscriber-supplied personal characteristic of the subscriber.
Mr. Andrews testifies that adding the personal characteristics from the
subscriber profiles of Hidary to the subscriber profiles stored in the database
of Nabkel, and identifying a subscriber using the identifier of Hidary in
place of the identifier in Nabkel, yields the benefit of providing a wider
range of possible qualifying parameters, such as selecting a message for a
subscriber based on the personal characteristic of the subscriber as taught by
Hidary. Ex. 1002 ¶¶ 79–82. Mr. Andrews’s testimony is supported by the
record, because Hidary teaches that a benefit of its system is providing
automatic selective messages to various subscribers by selecting the
messages “based on information about the subscriber, such as age, sex,
income, hobbies, [and] profession.” Ex. 1007, 1:33–35, 1:61–65.
Therefore, we are persuaded that adding information from the subscriber
profile database of Hidary to the subscriber profile database of Nabkel, and
identifying a subscriber profile using the subscriber identifier of Hidary,
yields the predictable results of looking up the profile of the subscriber, and
selecting a message appropriate for the subscriber based on a personal
characteristic from the profile as taught by Hidary. Pet. 23; Ex. 1007, 3:24–
28, 3:39–50; Ex. 1002 ¶¶ 79, 81. See KSR, 550 U.S. at 416 (“The
IPR2019-00453
Patent 7,020,252 B2

34

combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Patent Owner contends that Petitioner does not address the claim
language, arguing that claim 2 defines each previously recorded message as
having a qualifying parameter, which must itself include the user supplied
indication of a personal characteristic. PO Resp. 14–15. According to
Patent Owner, Hidary does not teach this limitation. Id. We are not
persuaded by Patent Owner’s contention. Hidary discloses a message
memory bank that includes “memory 64 for messages correlated with
specific profile items.” Ex. 1007, 2:38–43; see id. at Fig. 2 (showing
memory 64 containing “messages coded for specific subscriber interests”),
3:24–26 (The “ad server selects a message appropriate for the subscriber 16
based on the profile. These messages are stored in memory 60 or 64.”),
3:46–48 (“If the subscriber indicates that he is an avid sports fan, the
message from memory 64 may indicate when the subscriber’s favorite team
plays in his area.”). We find that Hidary’s disclosure of recorded messages
coded for specific subscriber interests and selected based on a subscriber’s
indication of interest in the subscriber’s profile, teaches “previously
recorded messages having a matching qualifying parameter . . . wherein the
qualifying parameter includes a user-supplied indication of a personal
characteristic” as recited in claim 2.
Patent Owner also contends that Hidary is directed to an entirely
different endeavor, namely, advertising. PO Resp. 15. Even if we were to
find Hidary is not in the same field of endeavor as the ’252 patent, Petitioner
argues, and we agree, that Hidary “is reasonably pertinent to the particular
problem with which the inventor is involved,” namely, using qualifying
IPR2019-00453
Patent 7,020,252 B2

35

parameters to select an appropriate message. Pet. Reply 15; see In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011) (“[a] reference qualifies as prior art for
an obviousness determination under § 103 only when it is analogous to the
claimed invention” and “[t]wo separate tests define the scope of analogous
art: (1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the invention is involved”). We find
Petitioner’s argument is persuasive because Hidary is pertinent to the
problem of how to use qualifying parameters to “select an appropriate
message from messages stored in a memory bank.” Pet. Reply 15 (quoting
Ex. 1007, 3:4–20); see Pet. 21; see also Ex. 1001, 1:46–56 (“if the message
contents are to be meaningful or interesting . . . some form of restriction or
segregation must be applied”).
Patent Owner also contends that Hidary does not grant or deny user
access to previously recorded messages using a user-supplied indication of a
personal characteristic. However, the Petition relies on Nabkel to teach
granting or denying user access to previously recorded messages using a
qualifying parameter, and relies on Hidary to teach that the qualifying
parameter includes a user-supplied indication of a personal characteristic.
Pet. 19–20, 22–23. We find Patent Owner’s contention against Hidary alone
unpersuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually, where the rejections are based on combinations of
references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
IPR2019-00453
Patent 7,020,252 B2

36

Patent Owner further contends that the code of Hidary is
automatically supplied, not entered by a user, and also is not an indication of
a personal characteristic. PO Resp. 15–16. Therefore, according to Patent
Owner, the code of Hidary is not “a user-supplied indication of a personal
characteristic” as claimed. Id. However, the Petition relies on Hidary’s
disclosure of subscriber-supplied information such as age, sex, income,
hobbies, and profession, stored in the subscriber profile 58, to teach the
claimed “user-supplied indication of a personal characteristic.” Pet. 22–23;
Ex. 1002 ¶ 79. The Petition relies on the code of Hidary to teach a
subscriber identifier that allows the system to look up the profile of the
subscriber, and to select a message appropriate for the subscriber based on a
personal characteristic stored in the profile. Pet. 26; Ex. 1002 ¶¶ 87–89. As
we discussed above, Hidary’s description of a subscriber providing
“information about himself . . . includ[ing] the age, sex, income, hobbies,
preferences, profession, and other similar information” teaches “wherein the
qualifying parameter includes a user-supplied indication of a personal
characteristic.” Ex. 1007, 3:13–28. As we also discussed above, identifying
a subscriber profile using the code of Hidary yields the predictable results of
using the code to look up the profile of the subscriber, and to select a
message appropriate for the subscriber based on a user-supplied personal
characteristic from the profile as taught by Hidary.
We determine that Petitioner shows, by a preponderance of the
evidence, that claim 2 is unpatentable over the combination of Nabkel and
Hidary.

IPR2019-00453
Patent 7,020,252 B2

37

Claim 3
Petitioner contends that the limitations of claim 3 are identical to
those of claim 1, with the exception of the “wherein” clause, and relies upon
the arguments set forth in the proposed ground of anticipation of claim 1 by
Nabkel to teach the limitations of claim 3 that are identical to those recited
in claim 1. Pet. 27–28.
Claim 3 recites “wherein the personal characteristic is a pastime of the
user.” On this record, we are persuaded that Hidary teaches “the personal
characteristic is a pastime of the user.” As argued by Petitioner, Hidary
discloses that the user-supplied indication of a personal characteristic can
include information about the user’s hobbies, such as movies or sports. Pet.
28–29 (citing Ex. 1007, 1:60–65, 3:4–29, 3:39–50; Ex. 1002 ¶¶ 97–98).
Patent Owner does not raise arguments specific to claim 3.
We determine that Petitioner shows, by a preponderance of the
evidence, that claim 3 is unpatentable over the combination of Nabkel and
Hidary.
Claim 4
Petitioner contends that the limitations of claim 4 are identical to
those of claim 1, with the exception of the limitations following the
“wherein” clause, and relies upon the arguments set forth in the proposed
ground of anticipation of claim 1 by Nabkel to teach the limitations of claim
4 that are identical to those recited in claim 1. Pet. 29–30.
Claim 4 recites, “wherein the qualifying parameter includes a user-
supplied indication of a personal characteristic.” Petitioner contends clam 2
recites an identical limitation, and relies upon the arguments set forth in the
proposed ground of obviousness of claim 2 over Nabkel and Hidary to teach
IPR2019-00453
Patent 7,020,252 B2

38

this limitation. Pet 30. As discussed in our analysis of claim 2 above, on
this record, we agree with Petitioner that the combination of Nabkel and
Hidary teaches this limitation.
Claim 4 recites “providing a menu selection by operation of which a
user is enabled to supply an indication of one from a plurality of menu-listed
personal characteristics.” Petitioner contends Hidary teaches this limitation
in disclosing an ad server providing a list of messages that are available from
memory for a subscriber to select, and in disclosing that messages can be
selected based on a user-supplied personal characteristic. Pet. 30–31 (citing
Ex. 1007, 1:44–56, 3:39–61, 4:26–37; Ex. 1002 ¶¶ 104–106). Petitioner,
relying on testimony of Mr. Andrews, contends that a person of ordinary
skill would have modified the list of available messages for the user to
choose, into a list of personal characteristics for the user to choose, because
it would have provided the benefit of allowing the user to select an entire
personal characteristic category, such as movie fan, rather than a specific
message about a particular movie. Pet. 31–33 (citing Ex. 1007, 1:44–56,
3:39–61, 4:26–37; Ex. 1005, 2:30–33, 3:28–30; Ex. 1002 ¶¶ 107–110). We
credit the testimony of Mr. Andrews in determining that the combination of
Nabkel and Hidary teaches “further comprising: providing a menu selection
by operation of which a user is enabled to supply an indication of one from a
plurality of menu-listed personal characteristics.”
Patent Owner does not raise arguments specific to claim 4.
We determine Petitioner shows, by a preponderance of the evidence,
that claim 4 is unpatentable over the combination of Nabkel and Hidary.

IPR2019-00453
Patent 7,020,252 B2

39

Claim 5
Claim 5 recites a “group audio message board.” Petitioner contends
Nabkel teaches this limitation in disclosing a system that allows a user to
record audio messages and allows authorized calling parties to hear the
recorded audio messages. Pet. 33 (citing Ex. 1005, 1:54–65, 2:34–37, 3:5–
28, 4:20–47; Ex. 1002 ¶¶ 111–112). We are persuaded that Nabkel teaches
this limitation.
Claim 5 recites “a storage device.” Petitioner contends Nabkel
teaches this limitation in describing a database storage device associated
with an adjunct processor that stores information provided by a user,
including a user profile. Pet. 33 (citing Ex. 1005, 2:58–63, 3:5–10, 3:12–35,
3:52–61, 6:1–18, 6:27–33; Ex. 1002 ¶¶ 113–117). We are persuaded that
Nabkel teaches this limitation.
Claim 5 recites
a parameter index module wherein said parameter index module
is operable to store a first message having a first at least one
qualifying parameter by said board appended to the first
message within said storage device in response to a first user of
said group audio message board communicating the first
message to said group audio message board.

Petitioner contends that Nabkel teaches the “parameter index module
operable to store a first message . . . in response to a first user”
communicating the message to the message board by describing an adjunct
processor that interfaces with a first user to create and store an audio
message in the database, and interfaces with a second user to retrieve the
message from the database. Pet. 34–35 (citing Ex. 1005, 2:25–40, 3:12–27,
4:20–55, 5:60–6:40, Figs. 1, 3, 5, 6; Ex. 1002 ¶¶ 118–120). On this record,
IPR2019-00453
Patent 7,020,252 B2

40

we are persuaded that Nabkel teaches the “parameter index module operable
to store a first message . . . in response to a first user” communicating the
message to the message board.
Petitioner contends Nabkel teaches the “first message having at least
one qualifying parameter by said board appended to the first message within
said storage device” by describing a qualifying parameter associated with
the message. Pet. 35 (citing Ex. 1005, 2:25–37, 5:60–6:40). Petitioner
contends that although Nabkel does not expressly disclose appending the
qualifying parameter to the message, Nabkel discloses that the database
stores the message and information related to the message. Pet. 35–36
(citing Ex. 1005, 2:25–37, 5:60–6:40). Petitioner, relying on testimony of
Mr. Andrews, contends that it would have been obvious to a person of
ordinary skill in the art to store the qualifying parameter together with the
message in the database for the benefit of easily locating the correct
qualifying parameter for a particular audio message. Pet. 36 (citing Ex.
1002 ¶ 120).
Patent Owner contends that neither the Petitioner nor Mr. Andrews
has shown that there would have been a finite number of identified,
predictable solutions for associating a qualifying parameter with an audio
message, including appending the qualifying parameter to the first message
within the storage device. PO Resp. 12 (citing Ex. 1002 ¶ 120). Patent
Owner also contends that various items of information can be stored
separately within the same database, without appending one of those items
to the other. Id. at 13; PO Sur-Reply 8–9.
The parties do not dispute that a skilled artisan would have known of
the option of appending data to a file. See Pet. 36 (citing Ex. 1009); PO
IPR2019-00453
Patent 7,020,252 B2

41

Resp. 12–13 (citing Ex. 1009); Ex. 1007, Fig. 2 (showing memory 64 that
contains messages coded for specific subscriber interests). Nabkel discloses
storing the date/time qualifying parameter in the same database as the audio
message. Ex. 1005, 2:25–37, 5:60–6:40; Ex. 1002 ¶¶ 119–120. We agree
with Patent Owner’s contention, that the qualifying parameter and the audio
message of Nabkel could be stored within the same database (1) separately,
or (2) with one item appended to the other item. See PO Resp. 12–13; Ex.
1002 ¶ 120. “As the Supreme Court explained, if trying such a limited
number of solutions ‘leads to the anticipated success, it is likely the product
not of innovation but of ordinary skill and common sense.’” Perfect Web
Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed. Cir. 2009)
(quoting KSR, 550 U.S. at 421).
Mr. Andrews testifies that a person of ordinary skill in this art would
have appreciated the value of appending the qualifying parameter to the
audio message. Ex. 1002 ¶ 120. We credit Mr. Andrews’s testimony, which
provides a clear reason for doing so, explaining that a person of ordinary
skill would have understood that the benefits of appending the qualifying
parameter to the audio message include making it easy to locate the correct
qualifying parameter for a particular message, and ensuring that the
qualifying parameter was processed along with the audio message. Id. “In
these circumstances, there is a clear reason for a skilled artisan, knowing of
the [appending] option, to try that option. And there is no . . . argument that
success would be in doubt . . . or that unexpected results would be
produced.” Google LLC v. Koninklijke Philips N.V., 795 F. Appx. 840, 845–
46 (Fed. Cir. 2020).
IPR2019-00453
Patent 7,020,252 B2

42

“Here, the record reveals only two options for what happens” when
the qualifying parameter and the audio message are stored in the database of
Nabkel, (1) storing them separately, or (2) appending the qualifying
parameter to the audio message. Id. at 846. “[S]imple logic suggests that
[appending the qualifying parameter to the audio message] is a readily
achievable option and . . . will serve the undisputed goal of” making it easy
to locate the correct qualifying parameter for a particular message and
ensuring that the qualifying parameter was processed along with the audio
message. Id. Moreover, as discussed above, Mr. Andrews provides a clear
reason for trying the option of appending the qualifying parameter to the
audio message. We are persuaded that Nabkel teaches the “first message
having at least one qualifying parameter by said board appended to the first
message within said storage device.”
Claim 5 recites “the first at least one qualifying parameter for
enabling access to the first message by a second user of said group audio
message board.” Petitioner contends Nabkel teaches this limitation in
describing an automatic expiration date set by the user recording the audio
message. Pet. 37 (citing Ex. 3:28–58; 4:40–48; Ex. 1002 ¶ 121); see Ex.
1002 ¶¶ 48–53. We are persuaded that Nabkel teaches this limitation.
Claim 5 recites “wherein said parameter index module is further
operable to enable access to the first message by the second user in response
to the second user communicating the first at least one qualifying parameter
to said group audio message board.” Petitioner contends Nabkel teaches this
limitation in disclosing that a second user is granted access to a recorded
audio message only when the user communicates a qualifying parameter to
the system that matches the qualifying parameter appended to the recorded
IPR2019-00453
Patent 7,020,252 B2

43

audio message. Pet. 37–38 (citing Ex. 1005, 6:10–26; Ex. 1002 ¶ 122); see
Ex. 1002 ¶¶ 48–53. We are persuaded that Nabkel teaches this limitation.
Claim 5 recites “wherein the qualifying parameter includes a user-
supplied indication of a personal characteristic.” Petitioner contends this
limitation is taught by the combination of Nabkel and Hidary. Pet. 38. We
are persuaded that the combination of Nabkel and Hidary teaches this
limitation for the reasons given in our analysis of claim 2 above.
Claim 5 recites “wherein said parameter index module is further
operable to store a second message having a second at least one qualifying
parameter appended to the second message within said storage device in
response to the first user communicating the first message to said group
audio message board.” Petitioner contends Nabkel teaches this limitation in
describing that the first user, after recording a first message, can create and
store a second message with a second qualifying parameter. Pet. 39 (citing
Ex. 1005, 3:53–64, 6:34–39, Figs. 2, 3; Ex. 1002 ¶ 124). We are persuaded
that Nabkel teaches this limitation.
Claim 5 recites “the second at least one qualifying parameter for
enabling an access to the second message by the second user.” Petitioner
contends Nabkel teaches this limitation in describing an expiration date/time
to restrict access to the message by a second user. Pet. 39–40 (citing Ex.
1005, 3:28–58, 4:40–48, 5:42–60, 6:10–26; Ex. 1002 ¶ 125). We are
persuaded that Nabkel teaches this limitation.
Claim 5 recites “wherein said parameter index module is further
operable to enable access to the second message by the second user in
response to the second user communicating the second at least one
qualifying parameter to said group audio message board.” Petitioner
IPR2019-00453
Patent 7,020,252 B2

44

contends Nabkel teaches this limitation in describing that after a second user
is presented with a first audio message, the adjunct processor repeats the
entire process to determine if the second user is authorized to access any
other recorded audio messages. Pet. 40–41 (citing Ex. 1005, 6:33–38, Fig.
5; Ex. 1002 ¶ 126). We are persuaded that Nabkel teaches this limitation.
We determine Petitioner shows, by a preponderance of the evidence,
that claim 5 is unpatentable over the combination of Nabkel and Hidary.
F. Asserted Obviousness Over Ala-Laurila and Hidary
Petitioner contends that the combination of Ala-Laurila and Hidary
renders claims 2–5 obvious. Pet. 41–65.
1. Ala-Laurila
Ala-Laurila pertains to providing multiple recipients limited access to
a network subscriber’s mailbox in a cellular network for retrieving
designated messages. Ex. 1006, 1:9–14. A network subscriber accesses a
subscriber’s mailbox which contains a message, by entering a voice
messaging service address code and entering a personal access code. Id. at
Abstract. A temporary access code is then assigned to the selected message
and the messaging service address code and temporary access code are
transmitted to the intended recipients of the voice message to allow the
intended recipients to access the selected message by contacting the voice
messaging service and entering the temporary access code. Id.
2. Analysis
Claim 2
Claim 2 recites, “generating and storing by said system at least one
qualifying parameter pertaining to the access to the audio data recorder.”
Petitioner contends Ala-Laurila teaches this limitation in describing
IPR2019-00453
Patent 7,020,252 B2

45

generating and storing a temporary access code and assigning the code to a
message stored in a voice mail server, such that subsequent users need the
code to access the message. Pet. 47–49 (citing Ex. 1006, 2:6–24, 3:60–4:4,
4:32–47, 4:33–65, 5:1–20; Ex. 1002 ¶¶ 143–145).
Patent Owner contends that Ala-Laurila’s wireless network, which
corresponds to the claimed “communications system,” does not teach
“storing by said system at least one qualifying parameter” as claimed. PO
Resp. 10–11. Petitioner argues that Patent Owner’s contention that Ala-
Laurila fails to teach this limitation is based on an erroneous construction of
this limitation. Pet. Reply 12. We agree that Patent Owner’s construction is
erroneous, for the reasons discussed in our construction of “said system” and
our previous analysis of claim 2 in Section II.E above. The Petition relies on
the voice mail server of Ala-Laurila, corresponding to the claimed “audio
data recorder,” to teach “storing by said system at least one qualifying
parameter” as claimed. Pet. 48–49 (citing Ex. 1006, 3:44–4:4, 4:33–65, Fig.
1; Ex. 1002 ¶ 145). We are persuaded that Ala-Laurila teaches this
limitation.
Claim 2 recites, “determining a qualifying parameter for a subsequent
access to the audio data recorder by a user.” Petitioner contends Ala-Laurila
teaches this limitation in describing that recipients of the temporary access
code call the mail server and use the temporary access code to retrieve the
temporary message. Pet. 49–50 (citing Ex. 1007, 3:60–4:4, 4:33–65; Ex.
1002 ¶¶ 146–147). We are persuaded that Ala-Laurila teaches this
limitation.
Claim 2 recites, “enabling access by said subsequently accessing user
to previously recorded messages having a matching qualifying parameter,
IPR2019-00453
Patent 7,020,252 B2

46

otherwise the denial of such access.” Petitioner contends Ala-Laurila
teaches this limitation in describing that the voice mail server allows a
subsequent user to access the message only if the user communicates a
temporary access code that matches the temporary access code assigned to
the message. Pet. 50 (citing Ex. 1007, 2:6–24, 3:60–4:4, 4:33–65; Ex. 1002
¶ 148). On this record, we are persuaded that Ala-Laurila teaches this
limitation.
Claim 2 recites, “wherein the qualifying parameter includes a user-
supplied indication of a personal characteristic.” Petitioner contends that
Ala-Laurila teaches the claimed “qualifying parameter” in describing a
temporary access code needed to access a recorded message as discussed
above, and that Hidary teaches the qualifying parameter including a user-
supplied indication of a personal characteristic. Pet. 51 (citing Ex. 1002
¶¶ 149–150). In particular, Petitioner contends that Hidary discloses
associating an audio message with a user-supplied indication of a personal
characteristic, such as the age, sex, income, hobbies, preferences, and
profession of the user. Pet. 51 (citing Ex. 1007, 3:4–27, 4:26–36).
Hidary discloses an ad server with a memory bank that stores a profile
for a subscriber, including information provided by the subscriber, such as
age, sex, income, hobbies, preferences, and profession. Id. at 2:33–34, 2:39–
40, 3:13–23. Hidary discloses that the memory bank also stores messages
correlated with specific profile items. Id. at 2:42–43. Hidary discloses that
the ad server selects a message appropriate for a subscriber based on the
subscriber’s profile, such as an advertisement for a recently released movie
when the subscriber’s profile indicates that the subscriber likes going to
movies. Id. at 3:24–25, 3:42–50. We are persuaded that Hidary’s
IPR2019-00453
Patent 7,020,252 B2

47

description of using a profile to select a message appropriate for the
subscriber, where the profile includes information provided by the
subscriber, such as hobbies, teaches “wherein the qualifying parameter
includes a user-supplied indication of a personal characteristic.”
Petitioner contends that a person of ordinary skill in the art would
have modified Ala-Laurila’s qualifying parameter to include a user-supplied
indication of a personal characteristic as taught by Hidary for the benefit of
allowing the system to send an appropriate and relevant audio message to
that user as taught by Hidary. Pet. 52 (citing Ex. 1002 ¶¶ 149–150). Mr.
Andrews testifies that a problem with using Ala-Laurila’s temporary access
code is that the network subscriber originating the message must manually
determine which recipients receive the code, which is time consuming and
requires the subscriber to remember types of messages for each recipient.
Ex. 1002 ¶ 135. Mr. Andrews testifies that the user-supplied indication of a
personal characteristic taught by Hidary would be an improvement to Ala-
Laurila’s temporary access code, because the subscriber can classify users
according to their profile information, automatically cross-reference between
the type of message and a database of user profiles, and send a temporary
access code to numerous appropriate recipients. Id. Mr. Andrews testifies
that, by using the method in Hidary, a user would enter a code for
identification, and the system would determine the user’s personal
characteristics and present an appropriate audio message. Id. ¶ 150. Mr.
Andrews testifies that the improvement of automatically determining to
which recipients to send the access code for any particular type of message
is predictable, and allows the message originator to assign access codes to
IPR2019-00453
Patent 7,020,252 B2

48

users for whom the message would be appropriate, without the need to do so
manually. Id. ¶¶ 135, 150.
Patent Owner contends that the system of Ala-Laurila allows a
subscriber who records an audio message to manually determine which
recipients will receive the temporary access code, and that the subscriber
would not benefit from replacing this manual process with the process of
Hidary. PO Resp. 17–19. According to Patent Owner, neither the Petition,
nor Mr. Andrews, nor the prior art, shows that Ala-Laurila’s manual process
of entering names is a deficiency. Id. Patent Owner contends that the
manual process of Ala-Laurila is not a deficiency, but rather, a fundamental
principle of operation. Id. (citing Ex. 1006, Abstract, 3:61–65).
Petitioner contends that substituting the personal characteristic of
Hidary for the temporary code of Ala-Laurila does not destroy the
functionality of Ala-Laurila’s principle of operation, which is providing a
user with access to a restricted message by matching data of the message
with corresponding data of the user. Pet. Reply 17–18. In particular,
Petitioner contends that both Hidary’s personal characteristic, and Ala-
Laurila’s temporary code, provide a user with access to a restricted message
by matching data of the message (the personal characteristic or the
temporary code) with corresponding data of the user. Id. (citing Ex. 1007,
2:38–43, 3:15–17, 3:24–28; Ex. 1006, 3:61–4:3). Mr. Andrews testifies that
using Hidary’s approach to classify users according to profile information
allows the system of Ala-Laurila to cross reference between types of
messages and the database of user profiles, in order to send a temporary
code to numerous appropriate recipients automatically rather than manually.
Ex. 1002 ¶¶ 135, 150.
IPR2019-00453
Patent 7,020,252 B2

49

We agree with Petitioner and Mr. Andrews. Ala-Laurila discloses
providing access of select messages by matching a temporary access code of
a user to a temporary access code of a message. Ex. 1006, Abstract, 3:61–
4:3. Hidary discloses providing access to select messages by matching a
personal characteristic of a user to a personal characteristic of a message.
Ex. 1007, 3:13–28. The Supreme Court has “recognized that when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR, 550 U.S. at 416. Here,
substitution of the personal characteristic of Hidary for the temporary access
code of Ala-Laurila yields the predictable result of automatically providing
access to select messages as taught by Hidary. Ex. 1007, 1:33–43.
Further, we disagree with Patent Owner’s contention that the prior art
does not teach a benefit to modifying the manual selection process of Ala-
Laurila. Hidary teaches that an advantage of its system is that it provides
automatic selective messages to various subscribers. Ex. 1006, 1:33–35.
Hidary teaches that its system “is easily integrated with the existing system
so that there is a minimal amount of additional equipment, or modifications
required.” Id. at 1:36–38. Hidary teaches that its system provides messages
to targeted audiences in an efficient and reliable manner, yet does not
interfere with the normal operation of the telephone system. Id. at 1:39–43.
Mr. Andrews testifies that using Hidary’s approach to classify users
according to profile information allows the system of Ala-Laurila to cross
reference between types of messages and the database of user profiles, in
order to send a temporary code to numerous appropriate recipients
automatically rather than manually. Ex. 1002 ¶¶ 135, 150.
IPR2019-00453
Patent 7,020,252 B2

50

We find that the testimony of Mr. Andrews regarding the benefits of
automatically selecting appropriate messages is supported by Hidary’s
teaching of automatically selecting and delivering an audio message to a
user, where the content of that message is based on the user’s profile. See
Ex. 1007, Abstract, 1:33–43, 3:13–25, 3:39–50, 4:26–37. We are persuaded
that the Petition and supporting evidence show that using the user-supplied
indication of a personal characteristic of Hidary as the qualifying parameter
of Ala-Laurila does no more than yield the predictable results of
automatically selecting an audio message based on the content of the user
profiles, and delivering the message to an appropriate user in an efficient and
reliable manner, as taught by Hidary. See Pet. 44–45; Ex. 1007, Abstract,
1:33–43, 3:24–28, 3:39–50; Ex. 1002 ¶¶ 135, 150.
We determine that Petitioner shows, by a preponderance of the
evidence, that claim 2 is unpatentable over the combination of Ala-Laurila
and Hidary.
Claim 3
Petitioner contends that the limitations of claim 3 are identical to
those of claim 2, with the exception of “wherein said personal characteristic
is a pastime of the user,” and relies upon the arguments set forth in the
analysis of claim 2 to teach the identical limitations. Pet. 52–53.
Claim 3 recites, “wherein the personal characteristic is a pastime of
the user.” Petitioner contends that Hidary discloses that the user-supplied
indication of a personal characteristic can include information about the
user’s hobbies, such as movies or sports. Pet. 53–54 (citing Ex. 1007, 3:4–
29, 3:39–50; Ex. 1002 ¶¶ 156–157). Hidary discloses that the user can
provide information about his hobbies, such as movies or sports, and that
IPR2019-00453
Patent 7,020,252 B2

51

this information is stored in a profile of the ad server’s memory bank. Ex.
1007, 3:13–23, 3:42–50. We are persuaded that Hidary teaches “the
personal characteristic is a pastime of the user.”
We determine Petitioner shows, by a preponderance of the evidence,
that claim 3 is unpatentable over the combination of Ala-Laurila and Hidary.
Claim 4
Petitioner contends that the limitations of claim 4 are identical to
those of claim 2, with the exception of “further comprising: providing a
menu selection by operation of which a user is enabled to supply an
indication of one from a plurality of menu-listed personal characteristics,”
and relies upon the arguments set forth in the analysis of claim 2 to teach the
identical limitations. Pet. 54–55.
Claim 4 recites, “further comprising: providing a menu selection by
operation of which a user is enabled to supply an indication of one from a
plurality of menu-listed personal characteristics.” Petitioner contends that
Hidary teaches this limitation in disclosing an ad server providing a list of
messages that are available from memory for a subscriber to select, and in
disclosing that messages can be selected based on a user-supplied personal
characteristic. Pet. 56–58 (citing Ex. 1007, 1:44–56, 3:39–61, 4:26–37).
Petitioner, relying on testimony of Mr. Andrews, contends that a person of
ordinary skill would have modified the list of available messages for the user
to choose, into a list of personal characteristics for the user to choose, for the
benefit of allowing the user to select an entire personal characteristic
category, such as movie fan, rather than a specific message about a
particular movie. Pet. 57–58 (citing Ex. 1002 ¶¶ 163–166).
We are persuaded that the combination of Ala-Laurila and Hidary
IPR2019-00453
Patent 7,020,252 B2

52

teaches “further comprising: providing a menu selection by operation of
which a user is enabled to supply an indication of one from a plurality of
menu-listed personal characteristics.”
We determine that Petitioner shows, by a preponderance of the
evidence, that claim 4 is unpatentable over the combination of Ala-Laurila
and Hidary.
Claim 5
Claim 5 recites a “group audio message board.” Petitioner contends
Ala-Laurila teaches this limitation in disclosing a system including a mail
server with a message database selector and a message database, and a
communication network that allows a user to record a message on the
system and subsequent users to access the messages. Pet. 58 (citing Ex.
1006, 1:26–2:24, 2:45–3:30, 3:40–4:3, 4:33–65, Fig. 1; Ex. 1002 ¶¶ 167–
169). We are persuaded that Ala-Laurila teaches this limitation.
Claim 5 recites “a storage device.” Petitioner contends Ala-Laurila
teaches this limitation in disclosing a network message database that stores
audio messages and temporary access codes associated with those messages.
Pet. 58–59 (citing Ex. 1006, 1:34–45, 2:6–24, 3:12–30, 3:47–4:3, 4:33–65,
5:1–20, Fig. 1; Ex. 1002 ¶¶ 170–172). We are persuaded that Ala-Laurila
teaches this limitation.
Claim 5 recites a “parameter index module.” Petitioner contends Ala-
Laurila teaches this limitation in disclosing a message database selector that
receives and stores temporary messages in a network message database. Pet.
59 (citing Ex. 1006, 1:34–45, 2:6–24, 3:12–30, 3:43–4:3, 4:33–65, Fig. 1;
IPR2019-00453
Patent 7,020,252 B2

53

Ex. 1002 ¶¶ 172–173). We are persuaded that Ala-Laurila teaches this
limitation.
Claim 5 recites “wherein said parameter index module is operable to
store a first message . . . in response to a first user of said group audio
message board communicating the first message to said group audio
message board.” Petitioner contends Ala-Laurila teaches this limitation in
disclosing a message database selector that interfaces with the first user to
create a first audio message, and to store the first message in the network
message database. Pet. 59–60 (citing Ex. 1006, 1:34–45, 2:6–24, 3:12–30,
3:47–4:3, 4:33–65, Fig. 1; Ex. 1002 ¶ 174). We are persuaded that Ala-
Laurila teaches this limitation.
Claim 5 recites “a first message having a first at least one qualifying
parameter by said board appended to the first message within said storage
device.” Petitioner contends Ala-Laurila teaches this limitation in disclosing
assigning a temporary access code to the first message stored in the
database. Pet. 60 (citing Ex. 1006, 2:11–15, 3:47–4:3, 4:33–56, 4:57–51,
Figs. 1, 2; Ex. 1002 ¶ 174). Petitioner, relying on testimony of Mr.
Andrews, contends that a person of ordinary skill in the art would have
understood that there were a finite number of identified, predictable ways of
associating the qualifying parameter with the audio message, including
appending the qualifying parameter to the audio message within the
database. Pet. 60–61 (citing Ex. 1002 ¶ 174). Patent Owner contends that
the Petition does not identify a finite number of practical solutions, nor
explain any rational underpinning for such a conclusion. PO Resp. 13–14;
PO Sur-Reply 8–9. We find Patent Owner’s contentions unpersuasive for
IPR2019-00453
Patent 7,020,252 B2

54

the reasons given in our previous analysis of claim 5 above. We are
persuaded that Ala-Laurila teaches this limitation.
Claim 5 recites “the first at least one qualifying parameter for
enabling an access to the first message by a second user of said group audio
message board.” Petitioner contends Ala-Laurila teaches this limitation in
disclosing a temporary access code that grants a user access to retrieve a first
recorded audio message. Pet. 62 (citing Ex. 1006, 3:60–4:3, 4:33–65, Fig. 2;
Ex. 1002 ¶ 175). We are persuaded that Ala-Laurila teaches this limitation.
Claim 5 recites “wherein said parameter index module is further
operable to enable access to the first message by the second user in response
to the second user communicating the first at least one qualifying parameter
to said group audio message board.” Petitioner contends Ala-Laurila teaches
this limitation in disclosing that a second user will only gain access to the
stored audio message by communicating a temporary access code that
matches the temporary access code appended to the stored audio message.
Pet. 62 (citing Ex. 1006, 3:60–4:3, 4:33–65, Fig. 2; Ex. 1002 ¶ 176).
Claim 5 recites “wherein the qualifying parameter includes a user-
supplied indication of a personal characteristic.” Petitioner contends that
this limitation is taught by the combination of Ala-Laurila and Hidary. Pet.
62–63 (citing Ex. 1002 ¶ 177). We are persuaded that the combination of
Ala-Laurila and Hidary teaches this limitation for the reasons given in our
analysis of claim 2 above.
Claim 5 recites “wherein said parameter index module is further
operable to store a second message having a second at least one qualifying
parameter appended to the second message within said storage device in
response to the first user communicating the first message to said group
IPR2019-00453
Patent 7,020,252 B2

55

audio message board.” Petitioner contends Ala-Laurila teaches this
limitation in disclosing a first user storing a second message having its own
unique temporary access code. Pet. 63 (citing Ex. 1006, 1:9–14, 1:39–44,
1:65–2:1, 2:5–25, 3:1–4, 3:13–30, 3:47–4:65, 5:1–10, 5:16–35, Fig. 1; Ex.
1002 ¶ 178). We are persuaded that Ala-Laurila teaches this limitation.
Claim 5 recites “the second at least one qualifying parameter for
enabling an access to the second message by the second user.” Petitioner
contends Ala-Laurila teaches this limitation in disclosing recording a second
audio message with its own temporary access code, and granting access to a
second user only after the second user enters the correct second temporary
access code. Pet. 63–64 (citing Ex. 1006, 3:60–4:3, 4:33–68, Fig. 2; Ex.
1002 ¶ 179).
Claim 5 recites “wherein said parameter index module is further
operable to enable access to the second message by the second user in
response to the second user communicating the second at least one
qualifying parameter to said group audio message board.” Petitioner
contends that Ala-Laurila teaches this limitation in disclosing that a second
user will only gain access to a second stored message when the second user
enters a temporary access code that matches the second temporary access
code. Pet. 64–65 (citing Ex. 1006, 3:60–4:3, 4:33–65, Fig. 2; Ex. 1002
¶ 180). We are persuaded that Ala-Laurila teaches this limitation.
We determine Petitioner shows, by a preponderance of the evidence,
that claim 5 is unpatentable over the combination of Ala-Laurila and Hidary.
G. Asserted Obviousness Over Ala-Laurila and Nabkel
Petitioner contends that the combination of Ala-Laurila and Nabkel
renders claim 1 obvious. Pet. 65–69. Petitioner relies upon Ala-Laurila to
IPR2019-00453
Patent 7,020,252 B2

56

teach the limitations of claim 1 as discussed in the analysis of claim 2 as
obvious over Ala-Laurila and Hidary, with the exception of the “wherein”
clause. Id. at 67–68 (citing id. at 47–50). Petitioner relies upon Nabkel to
teach the “wherein” clause as discussed in the analysis of claim 1 as
obviousness over Nabkel. Id. at 68–69 (citing id. at 19–20). Petitioner,
relying on testimony of Mr. Andrews, contends that a person of ordinary
skill in the art would have supplemented Ala-Laurila’s user-supplied
temporary code with a qualifying parameter that includes an indication of a
date and/or time as taught by Nabkel for the benefit of providing an
automatic means of removing messages that are no longer relevant as taught
by Nabkel. Id. at 66; Ex. 1002 ¶¶ 187–188. We credit the testimony of Mr.
Andrews in determining that the combination of Ala-Laurila and Nabkel
teaches this limitation.
We determine Petitioner shows by a preponderance of the evidence
that claim 1 is unpatentable over the combination of Ala-Laurila and Nabkel.
H. Real Parties in Interest
Patent Owner contends that the Petition fails to name all real parties in
interest (“RPIs”) as required by 35 U.S.C. § 312(a)(2). PO Resp. 19–35.
Patent Owner’s contention that the Petition fails under § 312(a)(2) is “a
contention that the agency should have refused to institute an inter partes
review,” which “raises an ordinary dispute about the application of an
institution-related statute.” ESIP Series 2, LLC v. Puzhen Life USA, LLC,
958 F.3d 1378, 1386 (Fed. Cir. 2020) (citing Thryv, Inc v. Click-To-Call
Techs., LP, 140 S. Ct. 1367, 1373–74 (2020)). The Petitioner bears the
burden of persuasion to show that it accurately names all RPIs. Applications
in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1343, 1356 (Fed. Cir.
IPR2019-00453
Patent 7,020,252 B2

57

2018) (“AIT”). We generally accept Petitioner’s initial identification of its
RPIs unless Patent Owner presents some evidence to support its argument
that an unnamed party should be included as an RPI. Worlds Inc. v. Bungie,
Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). Whether a particular entity is an
RPI is a “highly fact-dependent question” that is assessed “on a case-by-case
basis.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 13
(Nov. 2019),
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. We
consider multiple factors, including the following: whether a non-party is
funding, directing, or controlling the IPR; whether the non-party had the
ability to exercise control; the non-party’s relationship with the petitioner
and with the petition, including any involvement in the filing; and the nature
of the entity filing the petition. Id. at 15–18.
Petitioner identifies Unified Patents, Inc. (“Unified”) as the sole RPI
in this proceeding. Pet. 70. Patent Owner, relying primarily on the Federal
Circuit’s decision in AIT and also on a concurring opinion from IPR2018-
00199 (May 31, 2019) (Paper 33), contends that Petitioner also should have
named Apple, Inc. (“Apple”) as an RPI. PO Resp. 19–20. Patent Owner
contends that because Apple was a paid member of Unified prior to Patent
Owner filing a suit against Apple asserting infringement of the ’252 patent,
and remains a member, Apple has a preexisting, established relationship
with Unified. Id. at 22–23. In addition, Patent Owner asserts that Apple is
the beneficiary of the Petition because “as a client of Unified who was sued
in district court litigation asserting the ’252 patent, it is self-evident that
Apple has an interest in and will benefit from Unified’s actions in this trial.”
Id. at 27 (citing AIT, 897 F.3d at 1353).
IPR2019-00453
Patent 7,020,252 B2

58

Petitioner asserts that “[n]o other party exercised control or could
exercise control over Unified’s participation in this proceeding, the filing of
this petition, or the conduct of any ensuing trial,” and provides voluntary
interrogatory responses in support of that certification. Pet. 70 (citing Ex.
1003); see Pet. Reply 19–29. Petitioner also contends that the concurring
opinion from IPR2018-00199 should be unpersuasive, because every time
the issue of whether Unified is the sole RPI has been considered by the
Board, the Board has held that Unified is the sole RPI. Pet. Reply 26 (citing
IPR2014-01252, Paper 37; IPR2016-00364, Paper 13; IPR2017-02148,
Paper 9 (all pre-AIT); IPR2018-00199, Paper 33; IPR2018-00883, Paper 36;
IPR2017-01430, Paper 30; IPR2018-01186, Paper 24, Paper 56; IPR2018-
01150, Paper 9; IPR2018- 00952, Paper 31; IPR2019-00474, Paper 9;
IPR2019-00482, Paper 36).
Here, the facts of this case are distinguishable from AIT where
Salesforce—the alleged unnamed RPI—made a payment to petitioner RPX
shortly before RPX filed its petition, discussed the patent and related
litigation with RPX, and shared a board member with RPX, and RPX
negotiated a license on behalf of Salesforce. See AIT, 897 F.3d at 1340–42.
In contrast, we agree with Petitioner that the record here contains
insufficient evidence of client-specific or pre-filing communications
between Unified and Apple regarding this proceeding or the preparation of
the Petition filed in this proceeding. See Pet. 70, Pet. Reply 19–20. There is
also no specific evidence that the Petition was filed at Apple’s behest. See
Pet. Reply 20–26. We also agree with Petitioner, that the persuasiveness of
the concurring opinion in IPR2018-00199 is outweighed by the fact that
other decisions by the Board that have addressed whether Unified is the sole
IPR2019-00453
Patent 7,020,252 B2

59

IPR have held that Unified is the sole RPI absent a showing of control or
involvement by the Unified member. Consequently, the evidence and
arguments advanced by Patent Owner do not lead us to determine that Apple
is an unnamed RPI to this proceeding.

III. CONCLUSION7
In summary:

IV. ORDER

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1 § 102(b) Nabkel 1
1 § 103(a) Nabkel 1
2–5 § 103(a) Nabkel, Hidary 2–5
2–5 § 103(a) Ala-Laurila,
Hidary
2–5
1 § 103(a) Ala-Laurila,
Nabkel
1
Overall
Outcome
1–5
IPR2019-00453
Patent 7,020,252 B2

60

Accordingly, it is
ORDERED that claims 1–5 are unpatentable under 35 U.S.C. § 103;
FURTHER ORDERED that because this Final Written Decision is
final, a party to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2019-00453
Patent 7,020,252 B2

61

For PETITIONER:

Trenton Ward
Lionel Lavenue
Umber Aggarwal
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
trenton.ward@finnegan.com
lionel.lavenue@finnegan.com
umber.aggarwal@finnegan.com

Jessica Marks
Roshan Mansinghani
Jonathan Stroud
UNIFIED PATENTS INC.
jessica@unifiedpatents.com
roshan@unifiedpatents.com
jonathan@unifiedpatents.com

For PATENT OWNER:

Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
ETHERIDGE LAW GROUP PLLC
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com