Trials@uspto.gov
`571-272-7822
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`
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`Paper 17
`Entered: April 6, 2018
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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
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
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`

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`IPR2017-00058
`Patent 7,804,948 B2
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`I. INTRODUCTION
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`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision issues pursuant to 35 U.S.C. § 318(a). For the reasons that follow,
`
`we determine Petitioner has shown by a preponderance of the evidence that
`
`claims 1, 2, 5–10, 12, 18–26, 29, 30, 36, 37, 49–53, 65, and 66 of U.S.
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`Patent No. 7,804,948 B2 (Ex. 1001, “the ’948 patent”) are unpatentable.
`
`A. Procedural History
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`Petitioner filed a Petition for inter partes review of claims 1, 2, 5–10,
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`12, 18–26, 29, 30, 36, 37, 49–53, 65, and 66 of the ’948 patent. Paper 2
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`(“Pet.”). Patent Owner filed a Preliminary Response. Paper 5 (“Prelim.
`
`Resp.”). Pursuant to 37 C.F.R. §§ 42.4(a) and 42.108 and 35 U.S.C.
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`§ 314(a), the Board instituted an inter partes review of (1) claims 1, 2, 5, 6,
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`8, 12, 18, 19, 21–25, 29, 30, 49–51, 65, and 66 as unpatentable under 35
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`U.S.C. § 103 over Hamberg1 and Lamb2; (2) claims 7, 9, 10, 26, 36, 37, 52,
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`and 53 as unpatentable under 35 U.S.C. § 103 over Hamberg, Lamb, and
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`Ludwig3; and (3) claim 20 as unpatentable under 35 U.S.C. § 103 over
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`Hamberg, Lamb, and Vassilovski4. See Paper 6 (“Dec. on Inst.”).
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`After institution, Patent Owner filed a Response (Paper 9, “PO
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`Resp.”), to which Petitioner filed a Reply (Paper 12, “Reply”). An oral
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`argument occurred on January 18, 2018. Paper 16 (“Tr.”).
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`
`1 WO 02/21816 A1, published March 14, 2002 (Ex. 1005).
`2 US 6,747,970 B1, issued June 8, 2004, filed March 21, 2000 (Ex. 1006).
`3 US 6,237,025 B1, issued May 22, 2001 (Ex. 1007).
`4 US 2003/0086411 A1, published May 8, 2003, filed November 2, 2001
`(Ex. 1008).
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`IPR2017-00058
`Patent 7,804,948 B2
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`B. Related Matters
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`Petitioner identifies the following matters involving or related to the
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`’948 patent: Uniloc USA, Inc. v. Google, Inc., Case No. 2:16-cv-00566 (E.D.
`
`Tex.), filed March 28, 2016; Uniloc USA, Inc. v. Huawei Enterprise USA,
`
`Inc., Case No. 6:16-cv-00099 (E.D. Tex.), filed March 4, 2016; Uniloc USA,
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`Inc. v. Cisco Systems, Inc., Case No. 6:15-cv-1175 (E.D. Tex.), filed Dec.
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`30, 2015; Uniloc USA, Inc. v. Avaya, Inc., Case No. 6:15-cv-01168 (E.D.
`
`Tex.), filed Dec. 28, 2015; Uniloc USA, Inc. v. ShoreTel, Inc., Case No.
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`6:15-cv-01169 (E.D. Tex.), filed Dec. 28, 2015; Uniloc USA, Inc. v.
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`GENBAND US LLC, Case No. 6:15-cv-01169 (E.D. Tex.), filed April 30,
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`2015; Uniloc USA, Inc. v. Microsoft Corp., Case No. 2:14-cv-01040 (E.D.
`
`Tex.), filed Nov. 13, 2014. Pet. 1.
`
`Patent Owner describes the ’948 patent as being asserted against the
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`following parties in civil actions related to lead case Uniloc USA, Inc. v.
`
`Avaya, Inc., Case No. 6:15-cv-01168, in the Eastern District of Texas: Cisco
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`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., WhatsApp Inc., and ooVoo, LLC. Paper 4 (Patent Owner’s
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`Mandatory Notice).
`
`C. The ’948 Patent
`
`The ’948 patent “relates generally to a method for initiating a
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`conference call between two or more users, and more particularly to
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`initiating a voice conference call between two or more users using a central
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`server to communicate parameters for the call and for initiating the call
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`itself.” Ex. 1001, 1:13–17. Conference calls are initiated via an instant
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`messaging (IM) system to reduce the effort required to initiate and manage
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`IPR2017-00058
`Patent 7,804,948 B2
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`the call. Id. at Abstract. “The system uses an IM connection between a
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`requesting party and a conference call server to inform the conference call
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`server of the desire to initiate the conference call.” Id. “The conference call
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`server initiate[s] 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
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`call.” Id. Figure 4 of the ’948 patent is reproduced below.
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`
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`Figure 4 above shows a block diagram of a system for accomplishing
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`the initiation of conference calls. Ex. 1001, 9:13–14. Conference call server
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`402 is connected to network 404. Id. at 9:14–15. Database 406, associated
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`with conference call server 402, stores account information, user
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`information, and call management information. Id. at 9:15–18. The
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`conference call server can be connected directly to telephone network 408,
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`or indirectly through third party conference bridge 410. Id. at 9:22–25.
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`IPR2017-00058
`Patent 7,804,948 B2
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`Shared application server 412 can also be connected to allow information
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`generated during a shared application session to be accessed by the
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`conference call server as required, such as to determine a list of parties
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`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
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`network communicable device having the appropriate IM software service
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`access. Id. at 9:39–41.
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`During an IM session involving User A, User B, and User C, a
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`conference call requester (User A) requests a conference call through User
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`A’s NAD. Id. at 7:27–34. The IM service in communication with User A’s
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`NAD is aware of the IM session, and determines the list of conference call
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`targets from the list of parties presently in the IM session. Id. at 7:34–38.
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`The conference call server sends a conference call invitation to User B and
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`User C. Id. at 7:64–66. If User B and User C accept the conference call
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`invitation, the conference call server prompts User B and User C, via the IM
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`functionality, to verify their phone numbers for the conference call. Id. at
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`7:66–8:10. The conference call server then initiates a conference call bridge
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`between the conference requester and the targets. Id. at 8:11–12.
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`D. Illustrative Claim
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`Claims 1, 23, and 51 of the challenged claims of the ’948 patent are
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`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;
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`Patent 7,804,948 B2
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`establishing a communications connection from said
`network access device to the conference call server;
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`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;
`
`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
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`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.
`
`
`II. ANALYSIS
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`A. Level of Ordinary Skill in the Art
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`In determining whether an invention would have been obvious at the
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`time it was made, we consider the level of ordinary skill in the pertinent art
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`at the time of the invention. Graham v. John Deere Co. of Kansas City, 383
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`U.S. 1, 17 (1966). The level of ordinary skill in the art may be reflected by
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`the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
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`2001).
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`Petitioner’s expert, Dr. Henry Houh, testifies that a person of ordinary
`
`skill in the art has a bachelor’s degree in Computer or Electrical
`
`Engineering, Computer Science, or equivalent training in computer-based
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`collaboration or telecommunications services, and approximately five years
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`of experience working in computer-based collaboration or
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`telecommunications services. Ex. 1003 ¶ 44. Dr. Houh also testifies that
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`there are likely a range of educational backgrounds in the pertinent
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`technology field. Ex. 1003 ¶ 42. Patent Owner’s expert, Dr. Val DiEuliis,
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`testifies that a person of ordinary skill in that art has a bachelor’s degree in
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`Electrical Engineering or Computer Science, or an equivalent degree or
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`experience, and at least two years of experience in computer programming
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`and software development, including development of software for
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`communication with other computers over a network. Ex. 2001 ¶ 43.
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`Although there is some difference between the ranges of
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`approximately five years of experience and at least two years of experience,
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`there is also an overlap between approximately five years and at least two
`
`years. For example, someone with approximately five years of experience
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`would also have at least two years of experience. Dr. DiEuliis, when asked
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`whether a person ordinary skill in the art could have five years of experience
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`in computer programming software development, answered “certainly, of
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`course, yes.” Ex. 1017, 68:14–21. Further, both experts appear to agree on
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`the skills possessed by a person of ordinary skill. For example, Dr. Houh
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`testifies that a person of ordinary skill does not “need to be taught how to
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`write computer programs or functions.” Ex. 2002, 129:20–130:4. Dr.
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`DiEuliis testifies that a person of ordinary skill “would be able to program in
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`JAVA.” Ex. 1017, 65:25–66:10.
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`We discern no material dispute arising from the two experts’
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`definitions. Both definitions are consistent with the level of ordinary skill
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`Patent 7,804,948 B2
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`reflected in the prior art references of record. We adopt Dr. Houh’s
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`definition of the person of ordinary skill in the art.
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`B. Claim Construction
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`In an inter partes review, we construe claim terms in an unexpired
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`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);
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
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`(upholding the use of the broadest reasonable interpretation standard as the
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`claim interpretation standard to be applied in inter partes reviews).
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`Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`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
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
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`Petitioner proposes constructions of the claim terms “network access
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`device” (recited in all claims), “address” (recited in claim 18), “automatic
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`number identifier” (recited in claim 19), and “VoIP address” (recited in
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`claim 20). Pet. 6–9. Patent Owner does not present any claim constructions
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`in its Patent Owner Response. PO Resp. 13 (arguing “the parties’ present
`
`disputes make it unnecessary to construe the terms Petitioner proposes”).
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`On the other hand, Patent Owner also states “[t]he Petition at least implicitly
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`injects a dispute over the proper construction for ‘generating a conference
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`call request responsively to a single request by the conference call
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`requester’, as recited in each challenged claim.” Id. at 14.
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`We address Patent Owner’s arguments regarding the “generating”
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`clause below. Neither party has identified any other dispositive term for
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`construction. We determine no terms need an explicit construction to
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`resolve a controversy in the instant case. See Vivid Techs., Inc. v. Am. Sci. &
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`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
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`resolve the controversy).
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`C. 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),
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`challenges claims 1, 2, 5, 6, 8, 12, 18, 19, 21–25, 29, 30, 49–51, 65, and 66
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`as obvious over the combination of Hamberg and Lamb. Pet. 11–60.
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`1. Hamberg (Ex. 1005)
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`Hamberg relates to setting up a conference call in digital
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`communications systems. Ex. 1005, 1:3–4. Figure 1 of Hamberg is
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`reproduced below.
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`Figure 1 above shows a general communication system. Id. at 2:18.
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`Five subscribers, Ann, Henry, Lisa, John, and Max have corresponding
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`mobile stations MS1, MS2, MS3, MS4, and MS5, connected to a
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`communications system, such as a Global System for Mobile
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`Communications (GSM). Id. at 2:19–22. The mobile stations can be
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`equipped with an instant message service. Id. at 2:25–30. The GSM system
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`can be connected directly to the Internet and to a quick message server. Id.
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`at 2:34–3:4. The quick message server can also be connected to an
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`intelligent network service control point (SCP), in which case the quick
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`message server can initiate a conference call in the GSM network. Id. at
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`3:4–8. A database DB represents a database residing in the quick message
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`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
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`database DB. Id. at 3:18–19. Henry, Lisa, and John have registered into
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`chat group 1, and Henry, Lisa, John, Max, and Ann have registered into chat
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`group 2. Id. at 3:19–21. Henry, Lisa, John, and Ann have sent an activating
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`LOGIN message to the second group’s telephone number shown in Figure 2,
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`so they are in active chat status. Id. at 4:10–12. Max has set his status to
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`absent, to indicate he does not want to participate in a conference call, but
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`text messages can be sent to him. Id. at 4:12–15.
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`2. Lamb (Ex. 1006)
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`Lamb is related to providing advanced telecommunications services
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`using a connectionless network host for service implementation, while using
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`connection-based network equipment for transport of at least a portion of a
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`telecommunications session. Ex. 1006, 1:10–16. A telecommunications
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`system uses hosting agents that operate on behalf of users in a hosting server
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`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
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`moment. Id. at 60:37–41; Fig. 12. Figure 12 is reproduced below
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`Figure 12 above shows client interface 250 with colleague list status
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`information field 676 that lists each colleague along with status and other
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`information. Ex. 1006, 59:22–26. Conference selection area 679-1 through
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`679-4 allows the user to schedule, view, and control conference calls. Ex.
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`1006, 59:32–35. The “CONF. NOW” feature 679-2 of interface 250 allows
`
`the user to create a conference at the current moment. Ex. 1006, 60:37–39.
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`Figure 9 is reproduced below.
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`
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`Figure 9 above shows a user interface with a “Send a Message” box that
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`includes a message sent from one user to another user, and a “Call” button
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`that may be used to initiate a phone call to the recipient of the message. Ex.
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`1006, cols. 83–86. The call button can be used to make a group conference
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`call. Ex. 1006, cols. 109–110. For example, a MetaTel client user interface
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`allows a user to see availability of colleagues, send messages, and place
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`phone calls instantly. Ex. 1006, cols. 109–110, Fig. 25. Lamb discloses
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`“[t]here is no simpler way to make a group call: you can immediately check
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`on the availability of a group of colleagues, send them a quick message to
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`check their willingness to talk, and press a Call button to set up an instant
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`conference call!” Id.
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`3. Analysis of Claims 1, 2, 5, 6, 8, 12,
`18, 19, 21–25, 29, 30, 49–51, 65, and 66
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`a. Independent Claims 1, 23, and 51
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`“providing a conference call requester . . .”
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`Petitioner contends “providing a conference call requester with a
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`network access device,” as recited in independent claim 1, is disclosed by
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`Hamberg in describing subscribers provided with mobile stations connected
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`to a GSM system. Pet. 20–21 (citing Ex. 1005, Fig. 1, 2:19–22, 4:29–32).
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`We determine Hamberg’s description of subscribers provided with mobile
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`stations connected to a GSM system discloses “providing a conference call
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`requester with a network access device” as claimed. Ex. 1005, Fig 1, 2:19–
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`22, 4:29–32.
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`Petitioner contends “said network access device communicating via
`
`an instant messaging system,” as recited in claim 1 is disclosed by Hamberg
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`in describing mobile stations equipped with an instant message service. Id.
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`at 21–22 (citing Ex. 1005, 2:25–33, 3:11–12). We determine Hamberg’s
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`description of mobile stations equipped with an instant message service
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`discloses “said network access device communicating via an instant
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`messaging system” as claimed. Ex. 1005, 2:25–33, 3:11–12.
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`Petitioner contends “said instant messaging service being adapted to
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`communicate conference call request information with a conference call
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`server,” as recited in claim 1, is disclosed by Hamberg in describing a CALL
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`ALIAS message sent to the server, where the ALIAS represents the names
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`of the group members that the sender of the message wants to call. Pet. 22–
`
`24 (citing Ex. 1005, 4:27–32, 6:1–2, 6–7). We determine Hamberg’s
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`description of a CALL ALIAS message sent to the server, where the ALIAS
`
`represents the names of the group members that the sender of the message
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`wants to call, discloses “said instant messaging service being adapted to
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`communicate conference call request information with a conference call
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`server,” as claimed. Ex. 1005, 4:27–32, 6:1–2, 6–7.
`
`“establishing a communications connection . . .”
`
`Petitioner contends “establishing a communications connection from
`
`said network access device to the conference call server,” as recited in claim
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`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
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`status is set to logged or absent during the group chat session. Pet. 24–25
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`(citing Ex. 1005, 4:10–13). We determine Hamberg’s description of a
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`LOGIN message sent from the mobile station to the quick message server
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`discloses “establishing a communications connection from said network
`
`access device to the conference call server,” as claimed. Ex. 1005, 4:10–13.
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`“presenting said conference call requester . . .”
`
`Petitioner contends “presenting said conference call requester with a
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`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
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`of Hamberg and Lamb. Petitioner contends Hamberg describes a database
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`including a user name, telephone number, status data such as logged or
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`absent, and notable matters, for each group member. Pet. 25–26 (citing Ex.
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`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
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`plurality of potential targets then being connected to said instant messaging
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`service.” Id. (emphasis omitted). Petitioner contends Lamb discloses
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`“presenting said conference call requester with a display showing a plurality
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`of targets then being connected to said instant messaging service,” as recited
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`in claim 1, in describing displaying status information in a user agent
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`interface using a web browser, email, PDA, or an interface as shown in
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`Figure 12. Id. at 26–29 (citing Ex. 1006, Figs. 9 and 12, 59:3–7, 59:22–35,
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`60:25–26, 64:15–17).
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`We determine Hamberg’s disclosure of a list of users who have
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`registered with the group using the LOGIN message discloses “a plurality of
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`potential targets then being connected to said instant messaging service.”
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`Ex. 1005, Fig. 2, 4:10–19, 5:19–22. We determine Lamb’s disclosure of
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`displaying status information in a user agent interface using a web browser,
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`email, PDA, or an interface as shown in Figure 12 discloses “presenting said
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`conference call requester with a display showing a plurality of targets then
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`being connected to said instant messaging service.” Ex. 1006, Fig. 12, 59:3–
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`7, 59:22–35, 60:25–26, 64:15–17.
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`Petitioner relies on testimony from Dr. Houh and contends that
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`incorporating Lamb’s display of status information into Hamberg’s mobile
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`stations and workstations would have made it easier for Hamberg’s users to
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`communicate with each other. Pet. 29 (citing Ex. 1003, pp. 49–50).
`
`According to Petitioner, Hamberg’s stations would benefit from a display of
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`chat group members, such as members in G1 or G2, along with the
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`members’ status information, because a conference call requester would
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`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
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`conference call would be an unwanted disturbance, or those who are not
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`connected to the instant messaging service. Id. (citing Ex. 1003, pp. 49–50).
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`Dr. Houh testifies that
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`[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.
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`Ex. 1003, pp. 49–50. We rely on this testimony and determine that
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`incorporating Lamb’s display of status information into Hamberg’s mobile
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`stations and workstations would have provided the benefit of allowing the
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`conference call requester to know which members are available for a
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`conference call, and avoid attempting to initiate a call with members who are
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`not available, for whom a conference call would be an unwanted
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`disturbance, or those who are not connected to the instant messaging service.
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`Petitioner contends “[presenting said conference call requester with a
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`display showing a plurality of potential targets then being connected to said
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`instant messaging service and] participating in a given instant messaging
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`session with the conference call requester and with whom a conference call
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`may be initiated,” as recited in claim 1, is taught by the combination of
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`Hamberg and Lamb. Pet. 29–33.
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`Petitioner contends Hamberg describes that when the members of the
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`group G1 communicate with each other, only the members of the group are
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`allowed to participate. Id. at 30 (citing Ex. 1005, 4:23–24). According to
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`Petitioner, in Hamberg’s group G1, Henry, Lisa, and John are the members
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`participating in a given instant messaging session with the conference call
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`requester, and with whom a conference call may be initiated. Id. (citing Ex.
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`1003, pp. 50–51). Also according to Petitioner, in group G2 of Hamberg,
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`members Henry, Lisa, John, and Ann are participating in a given instant
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`messaging session with the conference call requester, and with whom a
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`conference call may be initiated. Id. Petitioner contends Hamberg describes
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`that Max’s status of absent in group G2 indicates text messages can be sent
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`to him, but since he is not in active status, he does not want to take part in a
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`conference call. Id. (citing Ex. 1005, 4:10–15).
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`We determine that Hamberg discloses that when members of group
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`G1 communicate with each other, only members of group G1 are allowed to
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`participate. Ex. 1005, Fig. 2, 4:23–24. We determine that Hamberg
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`discloses that when members of group G2 communicate with each other,
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`only the members of group G2 are entitled to participate. Ex. 1005, Fig. 2,
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`4:25–26. We determine that a member who sets his status to “absent” can
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`receive text messages, but does not want to take part in a possible
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`conference call set up from the chat, and is absent from the instant
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`messaging session. Ex. 1005, 4:10–15. We determine that information on
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`Max’s absence, and its cause, may be transmitted to other group members.
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`Ex. 1005, 4:15–19. We determine that Hamberg’s description of the active
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`members of group G1 (Henry, Lisa, and John), and the active members of
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`group G2, Henry, Lisa, John, and Ann, each disclose members “participating
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`in a given instant messaging session with the conference call requester and
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`with whom a conference call may be initiated.”
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`Petitioner contends Lamb discloses a client user interface displaying
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`messages from an instant messaging session between two users, and also
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`displaying a call button to initiate a phone call. Pet. 31–32 (citing 1006, Fig.
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`9, 64:15–17). Petitioner contends that although the client interface of Figure
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`9 shows only two participants in the instant messaging session, Lamb also
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`contemplates a user pressing the call button to set up an instant conference
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`call with a group of colleagues. Id. at 32 (citing Ex. 1006, cols. 109 and
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`110, Fig. 25).
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`We determine Lamb discloses a client user interface displaying an
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`instant messaging session between two users and also displaying a call
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`button to initiate a phone call. Ex. 1006, Fig. 9, 64:15–17. We determine
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`Lamb also discloses a user interface that allows a user to immediately check
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`on the availability of a group of colleagues, send call messages, and place
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`phone calls instantly by pressing a call button to set up an instant conference
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`call. Ex. 1006, Fig. 25, cols. 109 and 110.
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`Petitioner relies on testimony of Dr. Houh to contend incorporating
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`Lamb’s display of potential targets into Hamberg’s mobile stations and
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`workstations allows a group member who initiates a conference call to see
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`which group members are available for a conference call, and avoid
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`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
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`participate in the conference call. Pet. 32–33 (citing Ex. 1003, p. 53).
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`Dr. Houh testifies that
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`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. We credit Dr. Houh’s testimony and determine that
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`incorporating Lamb’s display of potential targets into Hamberg’s mobile
`
`stations and workstations would allow a group member who wants to initiate
`
`a conference call to see which group members are available for a conference
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`call, and avoid attempting to call those who are not available.
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`Patent Owner, relying on the Declaration of Dr. Val DiEuliis (Ex.
`
`2001), contends that a person of ordinary skill would not display Lamb’s
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`presence information in the mobile stations of Hamberg. PO Resp. 46–48.
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`According to Dr. DiEuliis, changing the text-based interface of Hamberg
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`into a graphical user interface of Lamb would require time and effort, and
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`would change Hamberg’s principle of operation from text-based to
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`graphical. Ex. 2001 ¶¶ 98–100.
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`However, during his deposition, Dr. DiEuliis testifies Hamberg
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`discloses “mobile stations that have an internet browser,” and further
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`testifies mobile stations that have an internet browser usually have a
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`graphical user interface, because “that is the norm for internet browsers.”
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`Ex. 1017, 233:9–23. Dr. DiEuliis also concedes the graphical interface in
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`Lamb could have been implemented in JAVA. See Ex. 1017, 235:15–20.
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`Dr. DiEuliis testifies that a person of ordinary skill in the art “would be able
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`to program in JAVA.” Ex. 1017, 66:8–14.
`
`During his deposition, Dr. Houh testifies that the prior art “doesn’t
`
`need to talk about how to do software programming.” Ex. 2002, 129:16–18.
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`According to Dr. Houh, a person of ordinary skill “has a degree in computer
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`science and five years of experience. They don’t need to be taught to write
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`computer programs or functions . . . you don’t have to include a
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`programming manual . . . to say that it discloses writing a software
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`program.” Ex. 2002, 129:19–130:4.
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`We rely on the above-noted testimony of Dr. DiEuliis and Dr. Houh
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`and determine that combining Hamberg’s mobile station that has an internet
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`browser with Lamb’s graphical user interface would not change Hamberg’s
`
`principle of operation, because, as Dr. DiEuliis testifies, “that is the norm for
`
`internet browsers,” Ex. 1017, 233:9–23. We rely on the testimony of Dr.
`
`DiEuliis and Dr. Houh and determine that implementing the graphical user
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`interface of Lamb in the mobile station of Hamberg using software
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`programming such as JAVA would be within the level of ordinary skill.
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`In addition, as quoted above, Dr. Houh credibly explains that one of
`
`ordinary skill would have recognized that the combination of Hamberg and
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`Lamb would provide several benefits, and, therefore, the ordinary artisan
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`would have had