UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.,
`Petitioner,
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
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`
`
`
`
`
`Case IPR2017-00058
`Patent 7,805,948
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`
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`PATENT OWNER PRELIMINARY RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.107(a)
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` IPR2017-000058
`U.S. Patent No. 7,804,948
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`Table of Contents
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`I.
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`INTRODUCTION .............................................................................................. 3
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`II. BACKGROUND OF THE '948 PATENT ....................................................... 4
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`A. Overview of System and Method for Initiating a Conference Call ................ 4
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`B. The '948 Patent Claims.................................................................................... 6
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`C.
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`Prosecution History of the '948 Patent ............................................................ 7
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`D. Petitioner Oversimplifies the Patented Technology ....................................... 7
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`III. INSTITUTION SHOULD BE DENIED BECAUSE PETITIONER FAILS
`TO ESTABLISH A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE ............... 7
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`A. Claim Construction ......................................................................................... 8
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`1.
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`2.
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`“instant messaging” (all challenged claims) .............................................. 10
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`“VOIP address” (Claim 20) ........................................................................ 11
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`B. Brief Summary of Cited References ............................................................. 12
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`1. Overview of Hamberg (Ex. 1005) .............................................................. 12
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`2. Overview of Lamb (Ex. 1006) ................................................................... 13
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`C. Teachings Away from Missing Limitations Prevent a Finding of
`Obviousness .................................................................................................. 15
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`1. Overview of Applicable Law ..................................................................... 15
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`2. The proposed combination fails to disclose and teaches away from
`“generating a conference call request responsively to a single request by
`the conference call requester” .................................................................... 17
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`3. The proposed combination fails to disclose and teaches away from “said
`conference call request identifying each of the potential targets for said
`conference call request” ............................................................................. 22
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`4. The proposed combination fails to disclose and teaches away from “said
`conference call connection further being connected to each of the potential
`targets” ........................................................................................................ 24
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`5. The Challenged Dependent Claims are not rendered Obvious .................. 25
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`IV. CONCLUSION ................................................................................................. 26
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` IPR2017-000058
`U.S. Patent No. 7,804,948
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition”) of U.S. Patent 7,804,948 (“the '948 Patent”) filed by
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`Cisco Systems, Inc. (“Petitioner”).
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`Petitioner has failed to prove that there is a reasonable likelihood that at least
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`one of the claims challenged in the Petition is unpatentable. See 37 C.F.R. § 42.108(c).
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`For several different reasons, Petitioner fails to meet this standard for any of the
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`challenged claims. As non-exhaustive examples, Petitioner: (1) relies on a primary
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`reference that expressly teaches away from the very limitations for which it is cited;
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`(2) relies on a combination that changes the principle operation of the primary
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`reference; and (3) fails to “specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). In
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`view of the reasons presented herein, the Board should reject the Petition in its
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`entirety.1
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`1 Should the Board institute proceedings in this matter, Patent Owner does not
`concede the legitimacy of any arguments in the Petition that are not specifically
`addressed herein. Patent Owner expressly reserves the right to rebut any such
`arguments in its Patent Owner Response.
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`U.S. Patent No. 7,804,948
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`II. BACKGROUND OF THE '948 PATENT
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`A. Overview of System and Method for Initiating a Conference Call
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`In general, the '948 Patent discloses and claims various embodiments for
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`“initiating conference calls via an instant messaging system to reduce the effort
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`required to initiate and manage the call.” Ex. 1001 at Abstract.
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`As explained in the Background section of the '948 Patent, certain disclosed
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`embodiments address “the problem of integrating telephony products into software.”
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`Ex. 1001 at 2:33-34. Certain technologies, such as private branch exchange or “PBX,”
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`were encumbered by multiple deficiencies. Id. at 2:33-47. For example, passing the
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`correct telephony commands to the PBX was problematic because “no two PBX’s are
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`alike.” Id. Further PBX technology often required “system integrators” and had
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`reduced scalability opportunity. Id.
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`Particular systems inefficiently required all users who wanted to join a
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`conference call to dial in to a central number and enter a passcode, which inhibited
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`setting up spontaneous conference calls and is subject to serious security risks. Id. at
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`2:40-58. Other systems enabling host-initiated calls were also inefficient, for
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`example, in that they typically required someone (such as the host) to separately join
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`each participant to the call, such as by taking the time to dial or otherwise separately
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`identify each conference participants. Id. 2:49-3:20. The above nonlimiting examples
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`are among the various technological problems that certain embodiments of the '948
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`Patent overcome.
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`As disclosed in the specification of the '948 Patent, particular embodiments
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`make novel use of instant messaging technology to trigger initiation of a host-initiated
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`conference call. In the embodiment described with reference to Figure 1, for example,
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`when a “conference call requester” desires to initiate a conference call, a network
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`access device or “NAD” may efficiently respond to a single request by a “conference
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`call requester” by generating and sending a “conference request message” that
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`automatically identifies each of a plurality of potential targets. See, e.g., id. at 7:27-
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`41; 9:48-67. The “conference request message” may identify multiple parties who are
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`potential participants or “targets” to a conference call. Id.
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`In certain instances, the identification of the parties and the initiation of the
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`conference call may be automatic and at least partially based, for example, on a
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`determination of the availability of the conference call targets, even if those targets
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`are not registered with a conference call server. See, e.g., Id. at Figure 2 and
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`accompanying description; 7:34-38 (“The [Instant Messaging or] IM service in
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`communication with User A’s NAD could be implemented to be aware of the ongoing
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`IM session, such that the software would determine the list of conference call targets
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`from the list of parties presently in the IM session.”); 9:25-67. The “conference
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`request message” may be received and processed at a server, for example, which may
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`then initiate or request initiation of a conference bridge between the conference call
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`requester and the conference call targets. See, e.g., Id. 6:51-59.
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`B.
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`The '948 Patent Claims
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`The '948 Patent issued with 66 claims. Of those, Claims 1, 23 and 51 are
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`independent claims. The Petition challenges all independent claims and a majority
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`(though not all) of the dependent claims. The challenged claims are all written in
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`method form and recite the following preamble: “[a] method for initiating a
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`conference call, comprising the steps of ….”
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`Among other meaningful limitations that are missing from Petitioner’s
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`proposed combination of references, independent Claims 1 and 23 recite “generating
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`a conference call request responsively to a single request by the conference call
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`requester, said conference call request identifying each of the potential targets for said
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`conference call request.” Similarly, independent Claim 51 recites “generating a
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`conference call request by the call requester responsively to a single requester
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`6
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`indication.”
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`U.S. Patent No. 7,804,948
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`C.
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`Prosecution History of the '948 Patent
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`The '948 Patent issued from U.S. Application No. 11/019,655 (“the
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`application”), filed Dec. 22, 2004, which claims the benefit of the U.S. Provisional
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`Application No. 60/531,722 (the '722 application), filed on December 22, 2003.
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`D.
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`Petitioner Oversimplifies the Patented Technology
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`Petitioner attempts to summarize the '948 Patent technology at pages 3-4 of the
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`Petition. In doing so, Petitioner grossly oversimplifies the '948 Patent. For example,
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`Petitioner entirely ignores the claimed advantages achieved at least in part through
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`automatically generating a conference call request responsively to a single request by
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`the conference call requester. These deficiencies (among others) are detailed below.
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`III.
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`INSTITUTION SHOULD BE DENIED BECAUSE PETITIONER FAILS
`TO ESTABLISH A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
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`The Petition presents the following grounds, which are all based on a theory of
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`obviousness. As Ground 1, Petitioner alleges obviousness of Claims 1, 2, 5, 6, 8, 12,
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`18, 19, 21-25, 29, 30, 49-51, and 65-66 under 35 U.S.C. § 103 over Hamberg (Ex.
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`1005) in view of Lamb (Ex. 1006). As Ground 2, Petitioner alleges obviousness of
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`dependent Claims 7, 9, 10, 26, 36, 37, 52, and 53 over Hamberg (Ex. 1005) in view
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`of Lamb (Ex. 1006) and Ludwig (Ex. 1007). As Ground 3, Petitioner alleges
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`obviousness of dependent Claim 20 over Hamberg (Ex. 1005) in view of Lamb (Ex.
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`1006) and Vassilovski (Ex. 1008).
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`Petitioner has the burden of proof to establish they are entitled to their requested
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`relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories of
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`obviousness, Petitioner must demonstrate a reasonable likelihood that at least one of
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`the challenged patent claims would have been obvious in view of the art cited in the
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`Petition. Petitioner “must specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`Petitioner fails to meet this burden.2
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`A. Claim Construction
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`Pursuant to 37 C.F.R. § 42.100(b), and solely for the purposes of this review,
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`Patent Owner construes the claim language such that the claims are given their
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`broadest reasonable interpretation (“BRI”) in light of the specification of the '948
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`Patent.3
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`2 While certain deficiencies in the Petition are addressed herein, Patent Owner hereby
`expressly reserves the right to address other deficiencies of the Petition in a full
`Response (and with the support of its own expert) if an inter partes review is
`instituted.
`3 The standard for claim construction at the Patent Office is different from that used
`during a U.S. district court litigation for non-expired patents. See In re Am. Acad. of
`Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004). Uniloc expressly reserves
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`As the Petition appears to recognize, the Specification provides, at the outset of
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`the section entitled “Detailed Description,” a dictionary-like list of explicit
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`“definitions” to “more readily describe the present invention.” Ex. 1001, 5:31-6:6.
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`“Claim terms should generally be given their ordinary and customary meaning, except
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`‘1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when
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`the patentee disavows the full scope of a claim term either in the specification or during
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`prosecution.’” ServiceNow, Inc., v. Hewlett-Packard Co., IPR2015-00699, Paper 12 at
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`8 (Aug. 20, 2015) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
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`1362, 1365 (Fed. Cir. 2012)).
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`While explicit lexicography should govern, it is unnecessary to construe the
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`terms Petitioner proposes to address the parties’ disputes. See Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
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`construed that are in controversy, and only to the extent necessary to resolve the
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`controversy.”). Petitioner’s failure to meet its threshold burden here does not turn on
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`issues of claim construction. Nevertheless, Patent Owner addresses some example
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`inconsistencies in the Petition with respect to claim construction.
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`the right to argue a different claim construction in litigation for any term of the '948,
`as appropriate in that proceeding.
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`1.
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`“instant messaging” (all challenged claims)
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`It is curious that Petitioner does not propose a construction for “instant
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`messaging,” given that Petitioner seeks a particular construction of that term in
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`co-pending litigation, admittedly in the hope it may help advance a non-infringement
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`theory. Specifically, in litigation Petitioner seeks to define “instant messaging” as “a
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`real-time messaging connection between multiple users.” The Petition, however, is
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`conspicuously void of any explanation as to (1) why “instant messaging” must be
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`construed in litigation yet requires no construction here, and (2) how the proposed
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`combination of references allegedly satisfies Petitioner’s construction in the
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`co-pending litigation. Failure to include such analysis in the Petition itself severely
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`prejudices Patent Owner’s ability to offer a preliminary response; and such
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`gamesmanship should not be rewarded.
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`It hardly seems equitable that Petitioner could attempt to escape infringement
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`in district court through an admittedly self-serving construction, and then leave the
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`same term conveniently unconstrued and unanalyzed when the burden shifts to
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`Petitioner in its attempt to invalidate the very same claims before the Board. The
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`respective claim construction standards applied before the Board and in district court
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`converge on the question of whether a claim term requires construction. Petitioner’s
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`inconsistent positions are improper and unreasonable. Cf. Amazon.com, Inc. v.
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`Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not,
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`like a ‘nose of wax,’ be twisted one way to avoid anticipation and another to find
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`infringement”) (citing White v. Dunbar, 119 U.S. 47, 51 (1886)). The Board should
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`reject the Petition on this ground alone.
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`2.
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`“VOIP address” (Claim 20)
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`While the Specification does not define the couplet “VOIP address,” the
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`Specification separately defines both “VOIP” and “address.” As Petitioner
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`acknowledges, the Specification defines “VOIP” as “Voice over Internet Protocol”
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`and it defines “address” as “the identifier for where a participant to a conference call
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`may be contacted.” Ex. 1001, 5:53-54 and 6:6. Concatenating those two explicit and
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`agreed definitions together yields “a Voice-over-Internet-Protocol identifier for
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`where a participant to a conference call may be contacted.” Id.
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`Although it is unclear how it advances Petitioner’s obviousness theory, if at all,
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`Petitioner appears to propose a narrowing construction for “VOIP address” that
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`imports limitations from what Petitioner identifies as one of the “non-limiting
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`examples of an address” disclosed in the Specification. Pet. at 8. Specifically,
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`Petitioner departs from its acknowledged definition of “address” and, instead, seeks
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`to further require additional qualifiers, such as “unique” and “communication path.”
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`Not only is it impermissible to read in example embodiments as claim limitations,
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`Petitioner’s construction is inconsistent with the broadest reasonable interpretation
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`standard applicable here.
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`B.
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`Brief Summary of Cited References
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`1.
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`Overview of Hamberg (Ex. 1005)
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`Petitioner neglects to mention to the Board that Hamberg was considered by
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`the same Examiner during prosecution of a continuation application of the '948
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`Patent. Although Petitioner curiously opted to cite to a different publication number
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`(WO0221816), the Hamberg reference cited in the Petition and the Hamberg
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`reference identified as U.S. Pub. No. 20040013254 on the face of the child U.S.
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`Patent No. 8,571,194 (“the '194 Patent”) are one and the same.
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`Patent Owner defers to the description of Hamberg provided during
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`prosecution of the child application that issued as the '194 Patent:
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`Hamberg discloses a conference call established between a pre-
`defined group. A server sets up a conference call between the
`subscribers registered with the server as active in a subscriber group.
`(See the Abstract of Hamberg). More specifically, the conference call
`is set up between persons registered to the group at the conference call
`server which establishes the conference call. (See paragraph 25 of
`Hamberg).
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`At least access rights of users, e.g., user names and passwords,
`are required by Hamberg’s registration. Moreover, Hamberg discloses
`that all group members have the right to register as active or inactive
`by sending a special Login message. (See paragraph 16 of Hamberg).
`Hamb[e]rg thus requires an active registration of each subscriber with
`the group at the server establishing a conference call so that the
`conference call can be set up between the registered subscribers.
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`See Applicant Arguments and Remarks dated July 9, 2012, U.S. Patent Appl. No.
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`12/907,550 (underlining original).
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`2.
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`Overview of Lamb (Ex. 1006)
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`Petitioner relies on Lamb for its “CONF.NOW” button and “call” button
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`features. The sole description in Lamb of the “CONF.NOW” button is as follows:
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`Further note the “CONF.NOW” feature 679-2 of the interface 250. This
`feature allows the user of interface 250 to create a conference at the
`current moment (though in this example, there is already a conference
`underway). This feature was used to create the current conference
`between the user of the user client interface 250 and the other
`participants JOE, SUE, SETH and BILL.
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`Ex. 1006 at 60:37-43. The paragraph preceding that disclosure in Lamb explains that
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`the user client interface 250 shown in Fig. 12 shows “selectable participants,”
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`including JOE, SUE, SETH, and BILL (among others). Id. at 60:18-36. Contrary to
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`what the Petition suggests, therefore, the process in Lamb for starting a conference
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`call requires not only pressing the “CONF.NOW” button, but also manually selecting
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`each one of the participants to be joined to the call.
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`Moreover, the subsequent paragraph describing “the feature 679-3 ‘FUTURE
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`CONF.’” states that after that feature/button is selected, “the user is prompted for the
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`names and a time when the future call is to be set up.” Id. at 60:44-54. While Lamb
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`is silent as to precisely what happens when “CONF.NOW” is pressed, presumably
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`that button operates the same way—i.e., after the “CONF.NOW” button is pressed,
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`the user is prompted to choose between the “selectable participants.” Regardless of
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`the order of events, it is significant that Lamb’s process for creation of a conference
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`call requires multiple user actions, including not only a feature/button selection but
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`also separately selecting each one of the names to be included in the call.
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`Lamb similarly describes the “call” button feature as follows:
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`[A] user agent can easily be configured to initiate a large conference
`call with many members (i.e., participants on the connection-based
`telephone network) via the user simply clicking on a conference call
`button in his or her browser. The agent can be preconfigured with the
`appropriate people
`to have
`joined
`in
`the call and
`the
`telecommunications hosting server can control the telecommunications
`network server to setup the required call connections.
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`Id. 16:25-33 (emphasis added). Lamb further describes the “preconfigured” aspect of
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`the group to be joined to the call with the following disclosure:
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`[T]his feature of the invention allows for instance, a manager of a
`number of employees to schedule a conference call with all or some of
`his or her employees at a specified time. The manager can instruct his
`or her user agent 301-1 to send general inter-agent messages to each
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`employee user agent 301-2 through 301-N to schedule each employee
`for the call as a certain time. The manager simply needs to select the
`employee names from that manager's user client interface 250 and then
`select the conference call feature (as explained with respect to FIG. 12).
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`Id. at 54:53-63.
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`C.
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`Teachings Away from Missing Limitations Prevent a Finding of
`Obviousness
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`Petitioner alleges invalidity of claims 1, 2, 5, 6, 8, 12, 18, 19, 21-25, 29, 30,
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`49-51, and 65-66 as allegedly obvious over WIPO Application Publication No.
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`WO0221816 to Hamberg (“Hamberg”) (Ex. 1005) in view of U.S. Patent No.
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`6,747,970 to Lamb, et al. (“Lamb”) (Ex. 1006). At a minimum, however, the
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`references (even if combined) fail to disclose or suggest each independent claim
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`element. Moreover, both references teach away from the proposed combinations.
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`Accordingly, a prima facie case of obviousness has not been established and
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`institution of the Petition should be denied.
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`1.
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`Overview of Applicable Law
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`A patent is obvious “if the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole would have been
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`obvious at the time the invention was made to a person having ordinary skill in the
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`art to which said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
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`determination must be based on four factual inquiries: (1) the scope and content of
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`the prior art; (2) the differences between the claims and the prior art; (3) the level of
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`ordinary skill in the art; and (4) objective indicia of nonobviousness. KSR Int’l Co.
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`v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co. of Kan.
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`City, 383 U.S. 1, 17-18 (1966)).
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`If a single limitation of a claim is absent from the prior art, the claim cannot be
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`considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
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`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim.”)
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`(citing In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d 1531,
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`1534 (Fed. Cir. 1993) (reversing obviousness rejection where prior art did not teach
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`or suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs.
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`LLC, Case No. IPR2012-00001, slip op. at 15 (P.T.A.B. Jan. 9, 2013) (refusing to
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`institute an inter partes review under 35 U.S.C. § 103 where prior art did not disclose
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`all claim limitations).
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`“It is improper to combine references where the references teach away from
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`their combination.” In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). A prior art
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`reference teaches away from the claimed invention when a person of ordinary skill,
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`upon reading the reference, “would be led in a direction divergent from the path that
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`was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior
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`art also teaches away when it “criticize[s], discredit[s], or otherwise discourage[s]
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`investigation into the claimed invention.” See DePuy, 567 F.3d at 1327. Additionally,
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`“a reference teaches away from a combination when using it in that combination
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`would produce an inoperative result.” See In re ICON Health & Fitness, Inc., 496
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`F.3d 1374, 1382 (Fed. Cir. 2007).
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`Furthermore, the claims cannot be obvious in light of a combination of
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`elements that changes the principle operation of the prior art reference being applied.
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`In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (If a proposed modification or
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`combination of the prior art would change the principle of operation of the prior art
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`device being modified, then the teachings of the references are not sufficient to render
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`the claims prima facie obvious.”).
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`2.
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`The proposed combination fails to disclose and teaches away
`from “generating a conference call request responsively to a
`single request by the conference call requester”
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`As recited in independent Claims 1 and 23, the recitation “generating a
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`conference call request responsively to a single request by the conference call
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`requester” requires a specific arrangement of distinct elements that the Petition
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`overlooks. Each claim expressly distinguishes the “single request by the conference
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`call requester” from the “conference call request” which, instead, must be generated
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`(i.e., by the Network Access Device or “NAD”) responsively to that single request.4
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`Petitioner attempts to combine disparate references in a manner that would
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`require the conference call requester to not only provide the “single request,” but also
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`to nonsensically respond to her own request by generating the “conference call
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`request” as well. Not surprisingly, the cited references teach away from such an
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`untenable combination. Accordingly, the Petition should be denied in its entirety.
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`Petitioner alleges that “pressing the ‘Call’ or ‘CONF. NOW’ button [in Lamb]
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`is a single request by the conference call requester” and that “the CALL ALIAS
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`message [in Hamberg] is a conference call request.” Pet. at 33 (emphasis original).
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`Petitioner’s proposed combination admittedly relies on “the mobile stations or
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`workstations [of Hamberg to] respond to a press of the ‘Call’ or ‘CONF.NOW’
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`button by generating a CALL ALIAS message.” Id. at 33-34. Petitioner’s theory fails
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`for at least four independent reasons.
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`First, Lamb does not disclose that use of its “call” or “CONF.NOW” features
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`requires only a single request by the conference call requester. On the contrary, as
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`4 Independent Claim 51 similarly recites “generating a conference call request by the
`call requester responsively to a single requester indication.”
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`explained above in the overview of Lamb, the use of either feature requires multiple
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`requests, including not only selection of the feature/button itself, but also separately
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`selecting each one of the names to be included in the conference call. Accordingly,
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`Lamb teaches away from this missing limitation.
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`Second, Hamberg does not disclose, and in fact teaches away from, requiring
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`its “mobile stations or workstations” to generate the “CALL ALIAS” message.
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`Hamberg expressly distinguishes its alternative “CALL ALIAS” embodiment from
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`its preferred “CALL” embodiment at least in that the sender of the “CALL ALIAS”
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`text message must manually input within that message the names of each one of the
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`group members with whom she wants to converse. Ex. 1005 at 6, lines 27-32. In the
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`context of a “CALL ALIAS” text message, the word “ALIAS” “represents the names
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`of the group members.” Id. For example, if “the conference call is to be established
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`with the members LISA, HENRY and ANN,” then to invoke the “CALL ALIAS”
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`functionality the sender must manually input the text message “CALL LISA HENRY
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`ANN.” Id.
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`In other words, Hamberg’s “CALL ALIAS” is only invoked when the sender
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`manually inputs (as part of the “CALL ALIAS” text message) each one of the
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`separate alias names she wants joined to the call. Accordingly, Hamberg not only
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`fails to disclose that its “mobile stations or workstations” generate the manually
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`inputted “CALL ALIAS” text message, Hamberg also teaches away from any
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`combination requiring such a modification. See, e.g., In re Kahn, 441 F.3d 977, 990
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`(Fed. Cir. 2006) (“A reference may be said to teach away when a person of ordinary
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`skill, upon reading the reference, would be discouraged from following the path set
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`out in the reference, or would be led in a direction divergent from the path that was
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`taken by the applicant.”) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).5
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`Third, even if it were appropriate to combine the cited teachings of Hamberg
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`and Lamb, such a combination fails to disclose the missing limitations. If combined,
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`the purported “conference call request” would necessarily rely on multiple distinct
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`requests by a conference call requester, including not only the feature/button press
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`and the manual selection of each one of the participants in Lamb, but also each one
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`5 Although the Petition does not allege (and has therefore waived) a theory that
`Hamberg’s preferred “CALL” message satisfies the responsive “conference call
`request,” such an argument would have been equally futile. A simple “CALL” text
`message, as described in Hamberg, does not identify “each of the potential targets for
`said conference call request,” as further required by Claim 1. On the contrary,
`Hamberg discloses that after the server-side receives the generic “CALL” text
`message, the server-side must then determine, exclusively using server-side
`information extraneous to the “CALL” text message itself, which members have an
`“active status” registered with the server and therefore should be included in the
`conference call. See, e.g., Ex. 1005 at 6-7.
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`of Hamberg’s multiple, manually-inputted alias names. A combination requiring the
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`requester to make multiple, and potentially duplicative requests would vitiate a key
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`technical benefit emphasized at length in the Specification and unambiguously
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`reflected in the claim language as “…a single request by the conference call
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`requester.”
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`Finally, it is also significant that Claim 1 recites an explicit interrelationship
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`between the “conference call request” and the “single request by the conference call
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`requester”–i.e., the former must be generated responsively to the latter. The Petition
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`points to two unconnected requests found in disparate references; and in a futile
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`attempt to tie those unrelated requests together, the Petition relies on nonsensical
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`hindsight reconstruction (as explained above) rather than providing sufficiently
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`articulated reasoning, with rational underpinning, in view of what the cited references
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`actually disclose.
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`Each one of the foregoing reasons provides an independent and fully
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`dispositive basis to deny the Petition in its entirety as failing to present a prima facie
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`case of obviousness.
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`3.
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`The proposed combination fails to disclose and teaches away
`from “said conference call request identifying each of the
`potential targets for said conference call request”
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`Petitioner also overlooks limitations within “said conference call request
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`identifying each of the potential targets for said conference call request,” as recited
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`in independent Claims 1 and 23. The missing limitations must be understood in the
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`context of how the claim further defines “the potential targets.” That limitation has
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`antecedent basis in the claim language, “a plurality of p