Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 6
`Entered: April 11, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00058
`Patent 7,804,948 B2
`____________
`
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and
`JEFFREY S. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 6
`Entered: April 11, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00058
`Patent 7,804,948 B2
`____________
`
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and
`JEFFREY S. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`
`I. INTRODUCTION
`Petitioner filed a Petition for inter partes review of claims 1, 2, 5–10,
`12, 18–26, 29, 30, 36, 37, 49–53, 65, and 66 of U.S. Patent No. 7,804,948
`B2 (Ex. 1001, “the ’948 patent”). Paper 2 (“Pet.”). Patent Owner filed a
`Preliminary Response. Paper 5 (“Prelim. Resp.”). Institution of an inter
`partes review may not be authorized by statute “unless . . . the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37
`C.F.R. § 42.108.
`Upon consideration of the Petition and the Preliminary Response, we
`are persuaded Petitioner has demonstrated a reasonable likelihood that it
`would prevail in establishing the unpatentability of claims 1, 2, 5–10, 12,
`18–26, 29, 30, 36, 37, 49–53, 65, and 66 of the ’948 patent. Accordingly,
`we institute an inter partes review.
`
`
`A. Related Matters
`One or both parties identify, as matters involving or related to the
`’948 patent, the following:
`Uniloc USA, Inc. v. Google, Inc., Case No. 2:16-cv-00566 (E.D.
`Tex.), filed March 28, 2016. Pet. 1.
`Uniloc USA, Inc. v. Huawei Enterprise USA, Inc., Case No. 6:16-cv-
`00099 (E.D. Tex.), filed March 4, 2016. Pet. 1.
`Uniloc USA, Inc. v. Cisco Systems, Inc., Case No. 6:15-cv-1175 (E.D.
`Tex.), filed Dec. 30, 2015. Pet. 1.
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`Uniloc USA, Inc. v. Avaya, Inc., Case No. 6:15-cv-01168 (E.D. Tex.),
`filed Dec. 28, 2015. Pet. 1.
`Uniloc USA, Inc. v. ShoreTel, Inc., Case No. 6:15-cv-01169 (E.D.
`Tex.), filed Dec. 28, 2015. Pet. 1.
`Uniloc USA, Inc. v. GENBAND US LLC, Case No. 6:15-cv-01169
`(E.D. Tex.), filed April 30, 2015. Pet. 1.
`Uniloc USA, Inc. v. Microsoft Corp., Case No. 2:14-cv-01040 (E.D.
`Tex.), filed Nov. 13, 2014. Pet. 1.
`The ’948 patent was also asserted against Cisco Systems, Inc.,
`Huawei Device USA, Inc., NEC Corporation of America, Shoretel, Inc.,
`Unify, Inc., Tangome, Inc. d/b/a Tango, Facebook, Inc., Viber Media S.a.r.l.,
`and WhatsApp Inc., ooVoo, LLC, in civil actions related to lead case Uniloc
`USA, Inc. et al. v. Avaya, Inc., Case No. 6:15-cv-01168, in the Eastern
`District of Texas. Patent Owner’s Mandatory Notice, Paper 4.
`
`
`B. The ’948 Patent
`The ’948 patent relates generally to a method for initiating a
`conference call between two or more users, and more particularly to
`initiating a voice conference call between two or more users using a central
`server to communicate parameters for the call and for initiating the call
`itself. Ex. 1001, 1:13–17. Conference calls are initiated via an instant
`messaging (IM) system to reduce the effort required to initiate and manage
`the call. Id. at Abstract. The system uses an IM connection between a
`requesting party and a conference call server to inform the conference call
`server of the desire to initiate the conference call. Id. The conference call
`server initiates the conference call by having involved parties called by a
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`conference bridge, thus reducing the effort required by the parties to join the
`call. Id. Figure 4 of the ’948 patent is reproduced below.
`
`
`
`Figure 4 above shows a block diagram of a system for accomplishing
`the initiation of conference calls. Ex. 1001, 9:13–14. Conference call server
`402 is connected to network 404. Id. at 9:14–15. Database 406, associated
`with conference call server 402, stores account information, user
`information, and call management information. Id. at 9:15–18. The
`conference call server can be connected directly to telephone network 408,
`or indirectly through third party conference bridge 410. Id. at 9:22–25.
`Shared application server 412 can also be connected to allow information
`generated during a shared application session to be accessed by the
`conference call server as required, such as to determine a list of parties
`involved in a shared application session. Id. at 9:26–30. The users connect
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`to the system via network access device (NAD) 414, which may be any
`network communicable device having the appropriate IM software service
`access. Id. at 9:39–41.
`During an IM session involving User A, User B, and User C, a
`conference call requester (User A) requests a conference call through User
`A’s NAD. Id. at 7:27–34. The IM service in communication with User A’s
`NAD is aware of the IM session, and determines the list of conference call
`targets from the list of parties presently in the IM session. Id. at 7:34–38.
`The conference call server sends a conference call invitation to User B and
`User C. Id. at 7:64–66. If User B and User C accept the conference call
`invitation, the conference call server prompts User B and User C, via the IM
`functionality, to verify their phone numbers for the conference call. Id. at
`7:66–8:10. The conference call server then initiates a conference call bridge
`between the conference requester and the targets. Id. at 8:11–12.
`
`
`C. Illustrative Claim
`Claims 1, 23, and 51 of the challenged claims of the ’948 patent are
`independent. Claim 1 is illustrative of the claimed subject matter:
`1. A method for initiating a conference call, comprising
`the steps of:
`providing a conference call requester with a network
`access device, said network access device communicating via an
`instant messaging service, said instant messaging service being
`adapted to communicate conference call request information
`with a conference call server;
`establishing a communications connection from said
`network access device to the conference call server;
`presenting said conference call requester with a display
`showing a plurality of potential targets then being connected to
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`said instant messaging service and participating in a given instant
`messaging session with the conference call requester and with
`whom a conference call may be initiated;
`generating a conference call request responsively to a
`single request by the conference call requester, said conference
`call request identifying each of the potential targets for said
`conference call request;
`transmitting said conference call request from said
`network access device to said conference call server; and
`automatically establishing a conference call connection to
`said conference call requester, said conference call connection
`initiated by said conference call server, said conference call
`connection further being connected to each of the potential
`targets.
`Ex. 1001, 11:58–12:17.
`
`
`Lamb
`
`US 6,747,970 B1
`
`Ex. No.
`Ex. 1005
`
`D. References
`Petitioner relies on the following references. Pet. 9–10.
`Reference Title
`Date
`Hamberg WO 02/21816 A1
`Mar. 14, 2002
`
`Ex. 1006
`June 8, 2004
`(filed Mar. 21,
`
`2000)
`May 22, 2001 Ex. 1007
`May 8, 2003
`Ex. 1008
`
`US 6,237,025 B1
`Ludwig
`Vassilovski US 2003/0086411 A1
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 2, 5–10, 12, 18–26, 29, 30, 36, 37,
`
`49–53, 65, and 66 of the ’948 patent are unpatentable based on the following
`specific grounds:
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`References
`Hamberg and Lamb
`
`Hamberg, Lamb, and Ludwig
`
`Hamberg, Lamb, and Vassilovski
`
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Challenged Claims
`1, 2, 5, 6, 8, 12, 18, 19,
`21–25, 29, 30, 49–51,
`65, and 66
`7, 9, 10, 26, 36, 37, 52,
`and 53
`20
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim interpretation standard to be applied in inter partes reviews).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes construction of the claim terms “network access
`device” (recited in all claims), “address” (recited in claim 18), “automatic
`number identifier” (recited in claim 19), and “VoIP address” (recited in
`claim 20. Pet. 6–9. Patent Owner proposes construction of the claim terms
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`“instant messaging” (recited in all claims) and “VoIP address” (recited in
`claim 20). Prelim. Resp. 8–12. At this stage of the proceeding, neither party
`has identified a dispositive term for construction. For purposes of this
`Decision, no terms need an explicit construction to resolve a controversy at
`this preliminary stage. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy
`need to be construed and only to the extent necessary to resolve the
`controversy). We further determine that none of the other terms require
`express construction at this stage.
`
`
`B. Asserted Obviousness Over Hamberg and Lamb: Claims 1, 2, 5, 6, 8, 12,
`18, 19, 21–25, 29, 30, 49–51, 65, and 66
`Petitioner, relying on the Declaration of Dr. Henry Houh (Ex. 1003),
`challenges claims 1, 2, 5, 6, 8, 12, 18, 19, 21–25, 29, 30, 49–51, 65, and 66
`as obvious over the combination of Hamberg and Lamb. Pet. 11–60.
`1. Hamberg (Ex. 1005)
`Hamberg relates to setting up a conference call in digital
`communications systems. Ex. 1005, 1:3–4. Figure 1 of Hamberg is
`reproduced below.
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`Figure 1 above shows a general communication system. Id. at 2:18.
`Five subscribers, Ann, Henry, Lisa, John, and Max have corresponding
`mobile stations MS1, MS2, MS3, MS4, and MS5, connected to a
`communications system, such as a Global System for Mobile
`Communications (GSM). Id. at 2:19–22. The mobile stations can be
`equipped with an instant message service. Id. at 2:25–30. The GSM system
`can be connected directly to the Internet and to a quick message server. Id.
`at 2:34–3:4. The quick message server can also be connected to an
`intelligent network service control point (SCP), in which case the quick
`message server can initiate a conference call in the GSM network. Id. at
`3:4–8. A database DB represents a database residing in the quick message
`server. Id. at 3:16–17. Figure 2 of Hamberg is reproduced below.
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`Figure 2 above shows an example of a more detailed structure of the
`database DB. Id. at 3:18–19. Henry, Lisa, and John have registered into
`chat group 1, and Henry, Lisa, John, Max, and Ann have registered into chat
`group 2. Id. at 3:19–21. Henry, Lisa, John, and Ann have sent an activating
`LOGIN message to the second group’s telephone number shown in Figure 2,
`so they are in active chat status. Id. at 4:10–12. Max has set his status to
`absent, to indicate he does not want to participate in a conference call, but
`text messages can be sent to him. Id. at 4:12–15.
`2. Lamb (Ex. 1006)
`Lamb is related to providing advanced telecommunications services
`using a connectionless network host for service implementation, while using
`connection-based network equipment for transport of at least a portion of a
`telecommunications session. Ex. 1006, 1:10–16. A telecommunications
`system uses hosting agents that operate on behalf of users in a hosting server
`to control call connections. Id. at Abstract. A conference now feature of a
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`user interface allows a user to create a conference call at the current
`moment. Id. at 60:37–41; Fig. 12.
`The user interface can be a MetaTel client user interface that is
`installed onto a user’s computer. Id. at 64:16–19. A MetaTel view allows a
`user to see availability of colleagues, send messages, and place phone calls
`instantly. Id. at 109–110. A user can press a call button to set up an instant
`conference call. Id.
`3. Analysis of Claims 1, 2, 5, 6, 8, 12,
`18, 19, 21–25, 29, 30, 49–51, 65, and 66
`a. Independent Claims 1, 23, and 51
`Petitioner contends “providing a conference call requester with a
`network access device,” as recited in independent claim 1, is disclosed by
`Hamberg in describing subscribers provided with mobile stations connected
`to a GSM system. Pet. 20–21 (citing Ex. 1005, Fig. 1; 2:19–22, 4:29–32).
`Petitioner contends “said network access device communicating via
`an instant messaging system,” as recited in claim 1 is disclosed by Hamberg
`in describing mobile stations equipped with an instant message service. Id.
`at 21–22 (citing Ex. 1005, 2:25–33, 3:11–12).
`Petitioner contends “said instant messaging service being adapted to
`communicate conference call request information with a conference call
`server,” as recited in claim 1 is disclosed by Hamberg in describing a CALL
`ALIAS message sent to the server, where the ALIAS represents the names
`of the group members that the sender of the message wants to call. Id. at
`22–24 (citing Ex. 1005, 4:27–32, 6:1–2, 6–7).
`Petitioner contends “establishing a communications connection from
`said network access device to the conference call server,” as recited in claim
`1 is disclosed by Hamberg in describing a LOGIN message sent from the
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`mobile station to the quick message server to indicate whether a subscriber’s
`status is set to logged or absent during the group chat session. Id. at 24–25
`(citing Ex. 1005, 4:10–13).
`Petitioner contends “presenting said conference call requester with a
`display showing a plurality of potential targets then being connected to said
`instant messaging service,” as recited in claim 1 is taught by the combination
`of Hamberg and Lamb. Petitioner contends Hamberg describes a database
`including a user name, telephone number, status data such as logged or
`absent, and notable matters, for each group member. Id. at 25–26 (citing Ex.
`1005, Fig. 2; 4:10–19, 5:19–22). According to Petitioner, the list of users
`who have registered with the group using the LOGIN message describes “a
`plurality of potential targets then being connected to said instant messaging
`service.” Id. (emphasis omitted). Petitioner contends Lamb discloses
`“presenting said conference call requester with a display showing a plurality
`of targets then being connected to said instant messaging service,” as recited
`in claim 1, in describing displaying status information in a user agent
`interface. Id. at 26–29 (citing Ex. 1006, Figs. 9, 12; 59:3–7, 59:22–35,
`60:25–26, 64:15–17).
`Petitioner relies on testimony from Dr. Houh and contends that
`incorporating Lamb’s display of status information into Hamberg’s mobile
`stations and workstations would have made it easier for Hamberg’s users to
`communicate with each other. Id. at 29 (citing Ex. 1003, pp. 49–50).
`According to Petitioner, Hamberg’s stations would benefit from a display of
`chat group members, such as members in G1 or G2, along with the
`members’ status information, because a conference call requester would
`know which members are available for a conference call, and avoid
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`attempting to initiate a call with members who are not available, for whom a
`conference call would be an unwanted disturbance, or those who are not
`connected to the instant messaging service. Id. at 29 (citing Ex. 1003,
`pp. 49–50).
`Dr. Houh testifies that
`[a] POSITA would have been motivated to incorporate Lamb’s
`display that includes status information into Hamberg’s mobile
`stations and workstations to facilitate communication between
`Hamberg’s group members. Hamberg’s stations would benefit
`from a display that displays chat group members, such as
`members in group G1 or group G2, along with the members’
`status information. For example, by looking at a display
`displaying that information, a conference call requester would
`know which group members are available for a conference call.
`As such, when a conference call requester views the status
`information for group G2, a conference call requester would
`know that Max would not be available for a conference call, and
`that the conference call could be initiated with Henry, Lisa, John,
`and Ann. Thus, the conference call requester could avoid
`attempting to initiate a call with members who are not available,
`such as those who do not want to participate, those for whom a
`conference call would be an unwanted disturbance, or those who
`are registered into the chat group but are not connected to the
`instant messaging service.
`Ex. 1003, pp. 49–50.
`Petitioner contends “[presenting said conference call requester with a
`display showing a plurality of potential targets then being connected to said
`instant messaging service and] participating in a given instant messaging
`session with the conference call requester and with whom a conference call
`may be initiated,” as recited in claim 1, is taught by the combination of
`Hamberg and Lamb. Pet. 29–33.
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`Petitioner contends Hamberg describes that when the members of the
`group G1 communicate with each other, only the members of the group are
`allowed to participate. Id. at 30 (citing Ex. 1005, 4:23–24). Petitioner
`contends Hamberg describes in group G2, Max’s status of absent indicates
`that text messages can be sent to him, but since he is not in active status, he
`does not want to take part in a possible conference call. Id. (citing Ex. 1005,
`4:10–15). According to Petitioner, in Hamberg’s group G1, Henry, Lisa,
`and John are the members participating in a given instant messaging session
`with the conference call requester, and with whom a conference call may be
`initiated. Id. (citing Ex. 1003, pp. 50–51). Also according to Petitioner, in
`group G2 of Hamberg, members Henry, Lisa, John, and Ann are
`participating in a given instant messaging session with the conference call
`requester, and with whom a conference call may be initiated. Id.
`Petitioner contends Lamb discloses a MetaTel client user interface
`displaying messages from an instant messaging session between two users,
`and also displaying a call button to initiate a phone call. Id. at 31–32 (citing
`1006, Fig. 9; 64:15–17). Petitioner contends that although the MetaTel
`client interface shows only two participants in the instant messaging session,
`Lamb also discloses an instant messaging session involving a group of
`colleagues, one of whom presses the call button to set up a conference call.
`Id. at 32 (citing Ex. 1006, cols. 109 and 110).
`Petitioner relies on testimony of Dr. Houh to contend incorporating
`Lamb’s display of potential targets into Hamberg’s mobile stations and
`workstations allows a group member who initiates a conference call to see
`which group members are available for a conference call, and avoid
`attempting to initiate a call with group members who are not present in the
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`instant messaging session or who have indicated they do not wish to
`participate in the conference call. Pet. 32 (citing Ex. 1003, p. 53).
`Dr. Houh testifies that
`Hamberg’s mobile stations and workstations would benefit from
`a display that displays chat group members of group G1 or G2
`that are participating in the respective instant messaging sessions
`because the group member who initiates the conference call
`would be able to see which group members are available for a
`conference call by the group member’s presence in the instant
`messaging session. For example, the conference call requester
`of group G2 would be able to see that Henry, Lisa, and Ann are
`available for a conference call, while Max is not available and
`may initiate a conference call where Max is not an essential
`party. Alternatively, when Max is an essential party to the
`conference call, the conference call requester may not initiate a
`conference call with other members of group G2 because Max is
`not available. Thus, the conference call requester could avoid
`attempting to initiate a call with group members who are not
`present in the instant messaging session and do not wish to
`participate in the conference call, or avoid making a conference
`call altogether when the group member notices that one or more
`group members who are essential to the conference call are not
`available for a conference call.
`Ex. 1003, p. 53.
`Petitioner contends “generating a conference call request responsively
`to a single request by the conference call requester,” as recited in claim 1 is
`taught by the combination of Hamberg and Lamb. Pet. 33–36.
`Petitioner contends Hamberg describes a CALL ALIAS message used
`to initiate a conference call, and also describes that the group member who
`sends the CALL ALIAS message is a conference call requester. Pet. 33
`(citing Ex. 1005, 3:4–8). According to Petitioner, the CALL ALIAS
`message describes a conference call request. Id. at 33.
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`Petitioner contends Lamb’s MetaTel client interface includes a call
`button that, when pressed, triggers a setup of an instant conference call. Pet.
`33 (citing Ex. 1006, 109–110). Petitioner also contends the conference now
`button of Lamb allows the user to create a conference at the current moment.
`Id. (citing Ex. 1006, Fig. 12, 60:38–39). According to Petitioner, pressing
`either the call button or the conference now button of Lamb describes a
`single request by the conference call requester. Id.
`Petitioner relies on testimony of Dr. Houh to contend incorporating
`the call button or the conference now button of Lamb into the user interface
`of Hamberg provides the benefit of informing the user that the conference
`calling feature is available, relieves the user from needing to remember the
`correct command word for initiating a conference call, and reduces the effort
`required of a user to initiate a conference call. Id. at 33–34 (citing Ex. 1003,
`pp. 54–56).
`Patent Owner contends that using the call button or the conference
`now button of Lamb requires multiple requests, including selecting the
`button itself and separately selecting each one of the names to be included in
`the conference call. Prelim. Resp. 18–19. Patent Owner also contends the
`combination of Hamberg and Lamb would teach a “conference call request”
`that relies on multiple distinct requests by a conference call requester,
`including the button press and manual selection of each participant in Lamb,
`and Hamberg’s multiple, manually-inputted alias names, but would not teach
`“a single request by the conference call requester.” Id. at 20–21.
`Dr. Houh testifies that “Pressing the ‘Call’ or ‘CONF. NOW’ button
`is a single request by the conference call requester.” Ex. 1003, p. 54. For
`purposes of this decision, we credit Dr. Houh’s testimony and determine at
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`this stage of the proceeding that Petitioner has sufficiently established that
`Lamb teaches “a single request by the conference call requester.”
`Patent Owner contends the CALL ALIAS embodiment of Hamberg
`requires a sender to manually input each one of the names the sender wants
`joined to the call. Prelim. Resp. 19–20 (citing Ex. 1005, 6:27–32).
`According to Patent Owner, Hamberg does not disclose that its mobile
`stations or workstations generate the manually inputted CALL ALIAS text
`message, and teaches away from such a modification. Prelim. Resp. 20.
`Dr. Houh testifies that
`Hamberg’s group member who sends a CALL ALIAS message
`to the quick message server is a conference call requester.
`Hamberg’s quick message server and SCP respond to the CALL
`ALIAS message by “initiat[ing] a conference call.” [citing Ex.
`1005, 3:4–8]. Thus, the CALL ALIAS message is a conference
`call request.
`Ex. 1003, p. 54. Dr. Houh further testifies that
`in combining these features of Hamberg and Lamb, a POSITA
`would have recognized that the “Call” button should generate a
`CALL ALIAS message, and not simply a CALL message . . . to
`avoid race conditions between different status information
`available on the mobile station/workstation and the quick
`message server which may cause unintended surprises to the
`conference call requester.
`Id., p. 55. Dr. Houh’s testimony provides evidence that pressing the call
`button of Lamb to generate the CALL ALIAS message taught by Hamberg
`would have been obvious to a person of ordinary skill in the art. For
`purposes of this decision, we credit Dr. Houh’s testimony and determine at
`this stage of the proceeding that Petitioner has sufficiently established that
`the CALL ALIAS message of Hamberg teaches “a conference call request,”
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`and the combination of Hamberg and Lamb teaches pressing the call button
`of Lamb to generate the CALL ALIAS message of Hamberg.
`Patent Owner contends the Petition relies on nonsensical hindsight
`reconstruction in pointing to two unconnected requests found in disparate
`references to establish the “conference call request” is generated
`responsively to the “single request by the conference call requester.” Prelim.
`Resp. 21.
`Dr. Houh testifies as follows:
`The combination of Hamberg and Lamb provides benefit to a
`user that includes a simple, one-step click-to-call mechanism that
`generates Hamberg’s CALL ALIAS message . . . . For example,
`because some instant messaging services do not include
`conference calling features, the “Call” or “CONF. NOW” button
`would inform (or remind) the user that the conference calling
`feature is available on Hamberg’s instant messaging service. The
`“Call” button would also relieve the user from needing to
`remember the correct command word or series of commands for
`initiating a conference call with other group members. Finally,
`the combination would reduce the effort required of a user to
`initiate a conference call by providing a simple and quick “click-
`to-call” interface.
`Further, in combining these features of Hamberg and Lamb, a
`POSITA would have recognized that the “Call” button should
`generate a CALL ALIAS message, and not simply a CALL
`message. . . . The reason a POSITA would use a CALL ALIAS
`message as opposed to a CALL message is to avoid race
`conditions between different status information available on the
`mobile station/workstation and the quick message server which
`may cause unintended surprises to the conference call requester.
`. . . [T]he CALL ALIAS message ensures that the conference
`call participants will be the group members listed and seen by the
`user as “active” or “logged” in at the time the user initiates the
`call.
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`IPR2017-00058
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`Ex. 1003, pp. 54–56. Dr. Houh’s testimony provides evidence of a reason
`for a person of ordinary skill in the art to cause a mobile station or a
`workstation to generate a CALL ALIAS message, rather than a CALL
`message, in response to a user pressing a call button. For purposes of this
`decision, we credit Dr. Houh’s testimony and determine at this stage of the
`proceeding that Petitioner has sufficiently established that the combination
`of Hamberg and Lamb teaches generating the “conference call request”
`responsively to the “single request by the conference call requester.”
`Petitioner contends “said conference call request identifying each of
`the potential targets for said conference call request,” as recited in claim 1 is
`disclosed by Hamberg in describing the CALL ALIAS message that
`identifies the group members to be included in the requested conference call.
`Pet. 36 (citing Ex. 1005, 4:28–32, 5:34–36).
`Patent Owner contends the CALL ALIAS message of Hamberg does
`not disclose a “conference call request identifying each of the potential
`targets” that are (1) “connected to said instant messaging service,” and
`(2) “participating in a given instant messaging session” as recited in claim 1.
`Prelim. Resp. 22–23. According to Patent Owner, the CALL ALIAS
`message relied on in the Petition (CALL LISA HENRY ANN), excludes
`John and Max, both of whom the Petition fails to disqualify as being
`“potential targets” as claimed. Prelim. Resp. 22–23.
`Dr. Houh testifies that Max is not a participant “with whom [a]
`conference call can be initiated” as claimed, because Max’s status is set to
`absent, which indicates that “text messages can be sent to him, [but] since he
`is not in an active status, he does not want to take part in a possible
`conference call.” Ex. 1003, p. 51 (citing Ex. 1005, 4:13–15). Dr. Houh also
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`IPR2017-00058
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`testifies that the conference call requester of group G2 (i.e., John) would be
`able to see that Henry, Lisa, and Ann are available for a conference call,
`while Max is not available, and may initiate a conference call where Max is
`not an essential party. Ex. 1003, p. 53. For purposes of this decision, we
`credit Dr. Houh’s testimony and determine at this stage of the proceeding
`that Petitioner has sufficiently established that Hamberg teaches “said
`conference call request identifying each of the potential targets for said
`conference call request.”
`Petitioner contends “transmitting said conference call request from
`said network access device to said conference call server,” as recited in
`claim 1, is disclosed by Hamberg in describing transmitting a CALL
`message from a mobile station to the quick message server when a group
`member sends a CALL message to the server. Pet. 37 (citing Ex. 1005, 6:1–
`2).
`
`Petitioner contends “automatically establishing a conference call
`connection to said conference call requestor,” as recited in claim 1, is taught
`by the combination of Hamberg and Lamb. Id. at 37–40. Petitioner
`contends Hamberg describes the server triggering, in the intelligent network
`service control point (SCP), a service to direct the GSM network to connect
`a speech connection for the called subscriber, then complete call set-up for
`all other active members of the group. Pet. 37–38 (citing Ex. 1005, 6:15–
`21).
`
`Petitioner contends Lamb describes a user agent pre-programmed via
`invite processing rules to automatically establish a call connection. Pet. 39
`(citing Ex. 1006, Fig. 5A; 54:35–37). Petitioner relies on testimony from
`Dr. Houh to contend including Lamb’s invite processing rules in Hamberg’s
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`IPR2017-00058
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`quick message server would allow each user to control whether the server
`should automatically establish a call connection, or prompt the user first for
`an accept or denial of the call connection. Pet. 39 (citing Ex. 1003, pp. 60–
`61).
`
`Petitioner contends “said conference call connection initiated by said
`conference call server, said conference call connection further being
`connected to each of the potential targets,” as recited in claim 1 is disclosed
`by Hamberg in describing the quick message server and SCP setting up
`individual calls between the quick message server and each active group
`member, then connecting the individual calls into a conference call. Pet. 40–
`41 (citing Ex. 1005, 6:19–23).
`Patent Owner contends that Hamberg states that a conference call
`connection will only be established with members of a pre-defined group
`who have
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