Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`———————
`
`IPR No. IPR2017-00058
`U.S. Patent No. 7,805,948 B2
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`———————
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`PETITIONER’S REPLY
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`Petitioner’s Reply, IPR2017-00058
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`B. 
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`TABLE OF CONTENTS
`Petitioner’s Exhibit List ............................................................................................. 4 
`I. 
`Summary ............................................................................................................ 6 
`II.  Person of ordinary skill in the art ...................................................................... 6 
`III.  Claim Construction ............................................................................................ 8 
`“generating a conference call request responsively to a single
`A. 
`request by the conference call requester” ................................................. 8 
`“conference call request” identifying “each of the indicated potential
`targets” ...................................................................................................... 9 
`“instant messaging” ................................................................................... 9 
`C. 
`“VoIP address” (claim 20) ........................................................................ 9 
`D. 
`IV.  Hamberg and Lamb disclose “generating a conference call request
`responsively to a single request by the conference call requester” ................. 10 
`A.  An automatically generated CALL ALIAS message does not change
`Hamberg’s principle of operation ............................................................ 10 
`1.  The CALL ALIAS message of the combination continues to
`initiate a conference call .................................................................. 11 
`2.  Hamberg’s mobile station can automatically generate a CALL
`ALIAS message using status information ....................................... 12 
`3.  The status information of each group member is specific to the
`group ................................................................................................ 13 
`B.  Hamberg does not teach away from removing a user-customizable
`aspect of the CALL ALIAS message, but merely teaches an
`alternative embodiment. .......................................................................... 15 
`C.  The Petition addresses, and the prior art teaches, the “conference call
`request” responsively generated from a “single request by the
`conference call requester” ....................................................................... 18 
`D.  Both the “Call” and “CONF.NOW” buttons teach, independently, a
`“single request by the conference call requester” ................................... 19 
`E.  Hamberg’s CALL ALIAS message identifies “each of the potential
`targets” ..................................................................................................... 20 
`F.  None of the claims of the ’948 Patent require “a single conference
`call request … identifying each of the potential targets.” ....................... 22 
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`Petitioner’s Reply, IPR2017-00058
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`G.  Lamb’s “CONF.NOW” button teaches a “single request” ..................... 26 
`V.  Hamberg and Lamb render obvious “automatically establishing a
`conference call connection to… each of the potential targets” ....................... 27 
`VI.  Hamberg and Lamb render obvious “presenting to said conference call
`requester a display showing a plurality of potential targets” .......................... 28 
`VII.  Petition shows obviousness of the dependent claims ...................................... 30 
`A.  Claim 12 .................................................................................................. 30 
`B.  Remaining claims .................................................................................... 31 
`VIII. Dr. DiEuliis’ testimony should be given little or no weight ........................... 31 
`IX.  Conclusion ....................................................................................................... 33 
`X.  Certificate of Word Count ............................................................................... 34 
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`Petitioner’s Reply, IPR2017-00058
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`Petitioner’s Exhibit List
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`October 12, 2017
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`1001 U.S. Patent No. 7,804,948 to Turner
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`1002 Prosecution File History of U.S. Patent No. 7,804,948
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`1003 Declaration of Dr. Henry Houh under 37 C.F.R. § 1.68
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`1004 Curriculum Vitae of Dr. Henry Houh
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`1005 WIPO Patent Publication No. WO/02/21816 to Hamberg
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`1006 U.S. Patent No. 6,747,970 to Lamb et al.
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`1007 U.S. Patent No. 6,237,025 to Ludwig et al.
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`1008 U.S. Patent Publication No. 2003/0086411 to Vassilovski.
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`1009
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`Ian Grobel, “SIP is a key part in multimedia sessions,” Network World
`(Aug. 12, 2002).
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`1010 Margaret Levine Young, Internet: The Complete Reference (2d ed. 2002)
`(selected pages).
`
`1011 C. Anthony DellaFera, “The Zephyr notification service,” USENIX
`Association Winter Conference 1988 Proceedings, pp. 213-220 (Feb.,
`1988).
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`1012 C. Anthony DellaFera, Project Athena Technical Plan: Section E.4.1:
`Zephyr Notification Service, M.I.T. Project Athena, Cambridge,
`Massachusetts, (June 5, 1989).
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`1013 R. French and J. Kolh, “The Zephyr Programmer’s Manual” draft, (May
`5, 1989).
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`1014 Declaration of David Bader
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`1015 Page 61 from Dr. DiEuliis’s Declaration (Ex. 2002), annotated by Dr.
`DiEuliis during deposition.
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`4
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`Petitioner’s Reply, IPR2017-00058
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`1016 Enlargement of U.S. Patent No. 6,747,970 to Lamb et al., Figure 25
`(cols. 109-110).
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`1017 Deposition of Dr. Val DiEuliis (Sept. 26, 2017).
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`1018 K.C. Hopson and S. E. Ingram, Developing Professional Java Applets,
`(1st ed., 1995) (selected pages).
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`1019 D. Flanagan, Java Foundation Classes, in a Nutshell, A Desktop Quick
`Reference, (1st ed., 1999) (selected pages).
`1020 H. Newton, Newton’s Telecom Dictionary, (15th ed., 1999) (selected
`pages).
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`5
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`I.
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`Summary
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`
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`Petitioner’s Reply, IPR2017-00058
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`Patent Owner Uniloc’s arguments ignore or distort the evidence showing the
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`unpatentability of the challenged claims. For example, Uniloc’s first argument is
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`that the combination of Hamberg and Lamb would change the “principle of
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`operation” of Hamberg’s CALL ALIAS message. But in the proposed
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`combination, the CALL ALIAS message operates exactly as it does in Hamberg’s
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`original disclosure: a user’s device sends the CALL ALIAS message to a
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`messaging server to request the establishment of a conference call among users
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`who are specified by name in the CALL ALIAS message. There is no change of a
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`“principle of operation.” Uniloc’s remaining arguments are equally unpersuasive.
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`Petitioner respectfully submits that the Board should find all of the challenged
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`claims unpatentable for the reasons provided in the Petition and responses provided
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`below.
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`II.
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`Person of ordinary skill in the art
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`The parties dispute what technology field the ’948 patent relates to. The
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`patent identifies the field of invention as “initiating a voice conference call
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`between two or more users,” and describes “various forms of real-time, or on-line,
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`collaboration,” including telephone and video conferences, on-line meetings, and
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`instant messaging. CSCO-1001, 1:14 & 1:26-32. Accordingly, a POSITA would
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`have experience in collaboration applications and telecommunication services.
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`Pet., pp.10-11. Uniloc argues that a POSITA would have experience in software
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`Petitioner’s Reply, IPR2017-00058
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`development, but requires no experience in telecommunications or computer-based
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`collaboration. Resp., p.11; CSCO-1017, 70:11-19, 71:23-72:3.
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`Uniloc’s position is wrong because the ’948 patent characterizes its
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`disclosure as an alleged innovation in communication technology. For example,
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`the ’948 patent states that “the problem with integrating telephony products into
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`software has centered on integration with the PBX,” or private branch exchange, a
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`kind of telephone switch. CSCO-1001, 2:33-34. The ’948 patent focuses its
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`disclosure on describing the use of communication technologies, not on describing
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`an alleged innovation in software design. See, e.g., CSCO-1001, 3:51-52 (“present
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`invention may use a communications channel established through an instant
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`messaging service…”). Accordingly, Cisco correctly identified that a POSITA
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`would have had experience in collaboration applications and telecommunication
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`services.
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`Regardless, a POSITA as defined by Uniloc would have found the
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`challenged claims obvious. Dr. DiEuliis agreed that a POSITA would have been
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`familiar with Java, C, and C++ programming languages, and would have known
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`how the phone system works. CSCO-1017, 63:17-65:3, 66:11-67:18, 71:7-72:15.
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`Dr. DiEuliis also agreed that a POSITA would have been familiar with
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`programming concepts such as arrays, lists, loops, and button classes. CSCO-1017,
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`77:17-84:13; CSCO-1019, pp. 6-9. He agreed that a POSITA could have retrieved
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`Petitioner’s Reply, IPR2017-00058
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`data from Hamberg’s database and used criteria to filter a list of names. CSCO-
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`1017, 157:11-19, 84:5-18. Thus, a POSITA would have been able to apply these
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`concepts to understand how to design a mobile station with a button that, when
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`activated in a single request, retrieves users’ status information, and filters the
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`users to generate a list of names for a CALL ALIAS message. CSCO-1017,
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`109:13-17; 82:9-14, 83:5-17, 80:17-81:10, 91:17-21.
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`III. Claim Construction
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`A.
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`“generating a conference call request responsively to a single
`request by the conference call requester”
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`Neither Petitioner nor Uniloc propose a construction for the “generating”
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`step. Pet., pp.6-9; Resp., pp.12-16. Uniloc, however, alleges that this limitation
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`“clearly refers to automated computerization.” Resp., p.14. But Uniloc fails to
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`acknowledge that claims 23 and 51 recite a substantially similar “generating” step
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`that is performed “by [said/a] conference call requester.” CSCO-1001, 13:42-44,
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`15:47:48. Furthermore, the ’948 specification does not describe “automating”
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`anything, whether by “computerization” or otherwise. Accordingly, it would be
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`improper to read an “automated computerization” requirement into the
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`“generating” step.
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`Petitioner’s Reply, IPR2017-00058
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`B.
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`“conference call request” identifying “each of the indicated
`potential targets”
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`Uniloc alleges that the claimed conference call request must identify each of
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`the indicated potential targets. Resp., pp.16-17. The claims of the ’948 patent do
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`not ever refer to “indicated” potential targets,1 and therefore Uniloc’s proposed
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`construction would only confuse, rather than clarify, the meaning of the claims.
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`C.
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` “instant messaging”
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`Uniloc refers to a proposed construction of instant messaging in the co-
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`pending litigation but does not advocate for any construction here. Resp., pp.17-18.
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`There is no dispute that the prior art teaches instant messaging. CSCO-1017,
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`165:18-167:3, 167:9-23; CSCO-1006, 53:51-55. Because there is no dispute about
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`instant messaging in this proceeding, there is no reason for the Board to construe
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`the term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
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`Cir. 1999).
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`D.
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`“VoIP address” (claim 20)
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`Uniloc’s proposed construction for a VoIP address is different from
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`Petitioner’s, but there appears to be no dispute related to this term. Resp., p.18. The
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`term appears only in claim 20, for which Uniloc does not raise any separate
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`1 Uniloc’s argument appears to have been copied from IPR2017-00198, whose
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`claims refer to “indicated” potential targets.
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`arguments.
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`Petitioner’s Reply, IPR2017-00058
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`Regardless, the prior art teaches a VoIP address under Uniloc’s construction.
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`Vassilovski teaches a “VoIP system” where a “call request” is made to “a
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`destination device that has an IP address,” and Vassilovski provides an example of
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`“an IP address of the form ‘sip://DN@service.com’”. CSCO-1008, ¶¶1, 9-10.
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`Thus, sip://DN@service.com identifies a destination device where a participant to
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`a VoIP call may be contacted. Vassilovski also teaches a VoIP call “between the
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`two (or more) participating phones.” CSCO-1008, ¶7. A call between two or more
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`participants is a conference call. See CSCO-1001, 5:65-66. Thus, Vassilovski
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`teaches a VoIP address under Uniloc’s proposed construction, “a Voice-over-
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`Internet-Protocol identifier for where a participant to a conference call may be
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`contacted.” See Resp., p.18.
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`IV. Hamberg and Lamb disclose “generating a conference call request
`responsively to a single request by the conference call requester”
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`Uniloc makes seven arguments for why Hamberg and Lamb allegedly fail to
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`render obvious the “generating” step of claim 1. Resp., pp.19-20. As discussed
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`below, each argument fails.
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`A. An automatically generated CALL ALIAS message does not
`change Hamberg’s principle of operation
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`Uniloc alleges that “Hamberg teaches away from the Petitioner’s proposed
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`combination because it would change the principle of operation of Hamberg’s
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`CALL ALIAS message.” Resp., pp.20-21. Uniloc alleges that a CALL ALIAS
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`Petitioner’s Reply, IPR2017-00058
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`message cannot be auto-generated because this would require Hamberg’s mobile
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`stations to read minds. Resp., p.22. Uniloc’s assertion is incorrect.
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`1.
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`The CALL ALIAS message of the combination continues to
`initiate a conference call
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`Hamberg teaches a CALL ALIAS message where “ALIAS” represents the
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`names of group members invited to a conference call. CSCO-1005, 4:29-32.
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`Hamberg also describes how a CALL message initiates a conference call. CSCO-
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`1005, Figure 5, 5:36-7:2. Nothing in the combination with Lamb changes the
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`operation of either message.
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`The combination merely provides another way to create a CALL ALIAS
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`message. In Hamberg, a call requester defines a group of people with whom the
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`requester wishes to talk. CSCO-1005, 4:27-29. In the combination, the mobile
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`station generates the CALL ALIAS message in response to the call requester
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`pressing a “Call” or a “CONF.NOW” button. See Pet., pp.33-36; CSCO-1003,
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`pp.53-57. The mobile station can use each group member’s status information—
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`which it already receives—to determine which names to include in the CALL
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`ALIAS message. Pet., pp.29-32; CSCO-1003, pp.44-50. Regardless of the source
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`of input that generates the CALL ALIAS message, the operation of the CALL
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`ALIAS message (e.g., initiating a conference call) remains unchanged. Thus, the
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`combination does not change any “principle of operation” in Hamberg. For this
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`reason alone, Uniloc’s argument fails.
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`Petitioner’s Reply, IPR2017-00058
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`2. Hamberg’s mobile station can automatically generate a CALL
`ALIAS message using status information
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`Hamberg’s mobile stations can initiate a call using status information of the
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`registered group members. Hamberg explains how each group member registers as
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`active (“logged”) or inactive. CSCO-1005, 3:18-22; See also CSCO-1005, 3:22-
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`4:9. Hamberg also explains this status information can be transmitted to the other
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`group members’ mobile stations. CSCO-1005, 4:8-9 and 4:15-19; CSCO-1017,
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`176:6-20. As such, each mobile station receives information about the registered
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`group members and their status information.
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`The mobile station may use this information to automatically generate a
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`CALL ALIAS message. As the Petition and Dr. Houh explain, the CALL ALIAS
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`message includes group members whose status information is set as active or
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`“logged.” Pet., pp.34-36; CSCO-1003, pp.55-56. Hamberg already teaches a
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`routine that checks if each member of the group is active. CSCO-1005, 6:7-9.
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`Thus, it would not change Hamberg’s principle of operation if the mobile station
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`uses the same routine to check the group members’ status information to
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`automatically generate a CALL ALIAS message.
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`Uniloc alleges that the cited art does not teach the general programming
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`knowledge that would be required to automatically generate a CALL ALIAS
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`message. Resp., p.22. Hamberg describes a programming loop for checking
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`whether each group member is “logged” and available for a conference call.
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`Petitioner’s Reply, IPR2017-00058
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`CSCO-1005, 6:7-23, Fig. 5; CSCO-1017, 153:22-154:10. Using substantially the
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`same process, Hamberg’s mobile device can construct the list of names for a
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`CALL ALIAS message, without needing to read the requester’s mind. Resp., p.22;
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`CSCO-1003, pp.55-56. And Lamb refers to various programming languages,
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`including Java, C and C++, which a POSITA would have been familiar with.
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`CSCO-1006, 42:16; CSCO-1017, 66:11-68:4. Mobile stations, such as personal
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`digital assistants, were programmed using Java long before the ’948 patent was
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`filed. CSCO-1018, p.5. A POSITA would have also been familiar with
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`programming loops and iterating over items in a list. CSCO-1017, 76:17-77:8 &
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`91:17-21. As such, Dr. Houh is correct that a POSITA would have been able to
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`program a mobile station to automatically generate a CALL ALIAS message.
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`EX2002, 129:16-130:23.
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`3.
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`The status information of each group member is specific to the
`group
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`Uniloc alleges that the status information of the group members belonging to
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`multiple groups cannot be determined from a local status display. Resp., p.23.
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`Uniloc states this is because Hamberg’s Figure 2 illustrates an instance where Lisa,
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`Henry, and John belong to multiple groups yet have their statuses set to “logged.”
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`Because of this, Uniloc alleges that the status column in Figure 2 cannot provide
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`insight as to whether a conference call requester wishes to initiate a call with the
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`“logged” members of group G1 or group G2. Resp., pp.23-24. This is also
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`Petitioner’s Reply, IPR2017-00058
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`incorrect.
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`First, Figure 2 shows an exemplary snapshot of data stored in “database
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`DB”. CSCO-1005, 4:20. A database is not a local status display. CSCO-1017,
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`89:12-14.
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`Second, Figure 2 shows the status information for members of group G2,
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`who are Henry, Lisa, John, Ann and Max. CSCO-1005, Figure 2. Hamberg
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`explains that Henry, Lisa, John, and Ann send to the group’s address, e.g., the
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`telephone number 050-123456-2 of group G2, a short message with an active
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`(“logged”) status, while Max sets his status to “absent.” CSCO-1005, 4:10-14. This
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`is the status information illustrated in Figure 2. Thus, Figure 2 shows status
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`information for members of group G2.
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`Third, Hamberg explains how the status information of each group member
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`is sent to the other group members. Hamberg explains that group members can
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`send “an activating short message LOGIN” with their status to a group’s E.164
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`address, such as 050-123456-2. CSCO-1005, 4:10-13. Hamberg then explains that
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`the status information can be transmitted in a short message to the other group
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`members. CSCO-1005, 4:15-19. Accordingly, mobile stations in Hamberg receive
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`the status information for the group members of a particular group and from the
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`group’s address. Because the mobile stations have the group members’ status
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`information, it would have been obvious to make the mobile stations easier to use
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`Petitioner’s Reply, IPR2017-00058
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`by displaying that information to the user (as taught by Lamb). CSCO-1003, ¶¶73-
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`74. And with group members’ status information displayed to each user, it would
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`have been obvious to use that status information to identify the active and available
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`members who should be invited to a conference call requested by the user. CSCO-
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`1003, pp.55-56. Using the displayed status information—instead of status
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`information stored at a central server, which could be different—avoids the
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`possibility that the group members invited to the conference call will be different
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`than the list of group members that the user expected. CSCO-1003, pp.55-56.
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`Thus, it would have been obvious to use the status information displayed on a
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`user’s device to automatically generate a CALL ALIAS message. CSCO-1003,
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`pp.55-56. Such a CALL ALIAS message, however, would still be sent by the
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`user’s device and processed by the server in the same way that Hamberg describes.
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`Thus, a mobile station that automatically generates a CALL ALIAS message
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`does not change principle of operation of Hamberg.
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`B. Hamberg does not teach away from removing a user-customizable
`aspect of the CALL ALIAS message, but merely teaches an
`alternative embodiment.
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`Uniloc’s argument that Hamberg “teaches away” is also flawed. See Resp.,
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`p.25.
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`First, a reference teaches away from a proposed combination when a
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`POSITA “would be discouraged from following the path set out in the reference,
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`Petitioner’s Reply, IPR2017-00058
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`or would be led in a direction divergent from the path that was taken.” Meiresonne
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`v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017). Nowhere does Hamberg
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`discourage the use of a CALL ALIAS message to initiate a conference call with all
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`group members. Nor does Hamberg disparage or discourage the use of a button to
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`initiate a conference call, as taught by Lamb.
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`Second, Uniloc argues that the combination would eliminate a user’s ability
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`to selectively define whom to include or exclude from the conference call. Resp.,
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`p.26. This assertion is incorrect. As explained in the Petition (p.34), Lamb’s “Call”
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`button would generate a CALL ALIAS message, but this would not preclude a user
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`from manually entering a CALL ALIAS message. Thus, Uniloc’s assertion that the
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`combination would require removing some of Hamberg’s original functionality is
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`incorrect.
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`Third, Hamberg teaches a CALL message and a CALL ALIAS message, but
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`the “mere disclosure of alternative designs does not teach away” from a proposed
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`combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Uniloc has no
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`legally cognizable basis for characterizing Hamberg’s two message formats as
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`“teaching away.” See Resp., p.25.
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`Uniloc also argues that in combining the ideas of Hamberg and Lamb, a
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`POSITA would have chosen for Lamb’s “Call” button to generate a CALL
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`message instead of a CALL ALIAS message.2 Resp., pp.26-27. While both the
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`Petitioner’s Reply, IPR2017-00058
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`CALL and CALL ALIAS messages might have been available design choices, Dr.
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`Houh explained the benefits of initiating a conference call with a CALL ALIAS
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`message. CSCO-1003, p.55. Dr. Houh identified situations in which using a CALL
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`message would cause the system to respond differently than a user expected.
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`CSCO-1003, p.55-56. For example, the status information in the quick message
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`server’s database may be different than the displayed status information because a
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`status update has not yet been received at the user’s network access device. Id.
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`Uniloc argues that a POSITA would “use the accurate information available at the
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`server.” Resp., p.28. But Uniloc ignores that a user, not having this “accurate”
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`information, would perceive the system as malfunctioning, since it unexpectedly
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`included or excluded a group member. CSCO-1003, p.55. Uniloc does not provide
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`any reason for which a POSITA would choose a design option that causes a system
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`to appear to malfunction.
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`Because Hamberg does not disparage a system design that includes a button
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`that generates a CALL ALIAS message to establish a conference call with “active”
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`group members, Hamberg does not teach away from the proposed combination.
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`2 Uniloc does not explain how this question of design choice relates to the alleged
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`“teaching away” argument, but Petitioner responds nonetheless.
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`Petitioner’s Reply, IPR2017-00058
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`C. The Petition addresses, and the prior art teaches, the “conference
`call request” responsively generated from a “single request by the
`conference call requester”
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`Uniloc alleges that Petitioner relies on hindsight to show an inter-
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`relationship between a single request by the conference call requester and a
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`responsively generated conference call request. Resp., pp.28-29.
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`First, the Petition addresses how a conference call request is responsively
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`generated from a single request. Pet., p.33-34. The Petition explains that a CALL
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`ALIAS message is a conference call request and a group member who sends a
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`CALL ALIAS message is a conference call requester. Pet., p.33. The Petition also
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`explains that pressing a “Call” or a “CONF.NOW” button is a single request by the
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`conference call requester. Pet., p.33. Next, the Petition explains that a POSITA
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`would have found it obvious to incorporate Lamb’s “Call” or “CONF.NOW”
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`button into Hamberg’s mobile stations so that the mobile stations respond to
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`actuation of the “Call” or “CONF.NOW” button by generating a CALL ALIAS
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`message. Pet., pp.33-34. Thus, the Petition explains how Hamberg and Lamb
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`together render obvious the responsively generated conference call request recited
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`in the independent claims.
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`Second, Uniloc alleges that the responsively generated inter-relationship is
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`not taught by Hamberg or Lamb. Resp., pp.28-29. However, Lamb teaches an
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`instant message reply “YES” button. CSCO-1006, 59:55-62. The “YES” button,
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`when selected, causes the generation of a call application message. CSCO-1006,
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`Petitioner’s Reply, IPR2017-00058
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`
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`59:62-64. Lamb teaches that this call application message can be processed to
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`immediately initiate a PSTN call. CSCO-1006, 59:65-60:2. Such inter-relationship
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`between a button and a message also applies to pressing a “Call” or a
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`“CONF.NOW” button to generate a conference call request (the CALL ALIAS
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`message). CSCO-1003, p.54. Thus, a responsively generated inter-relationship is
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`taught in the cited art.
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`D. Both the “Call” and “CONF.NOW” buttons teach, independently,
`a “single request by the conference call requester”
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`Uniloc alleges that Petitioner relies on multiple user requests to teach the
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`single request by the conference call requester. Resp., p.31. Here, Uniloc alleges
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`that after pressing the “Call” or the “CONF.NOW” button, the user must then
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`manually enter the CALL ALIAS message details. Resp., pp.31-32.
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`Patent Owner fundamentally misunderstands (or misstates) Petitioner’s
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`combination. As explained in the Petition, pressing either the “Call” button or the
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`“CONF.NOW” button teaches a single request by the conference call requester as
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`recited in the claims. Pet., p.33. Dr. DiEuliis agreed that pressing a button
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`constitutes a single request as recited in the claims. CSCO-1017, 120:21-121:4.
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`Further, the combination does not require user input to identify conference call
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`participants. Rather, the Petition explains that pressing the “Call” or the
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`“CONF.NOW” button – a single request – will generate a CALL ALIAS message
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`that includes “names of the group members” available for the conference call
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`Petitioner’s Reply, IPR2017-00058
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`based on the group members’ statuses. CSCO-1005, 4:30; Pet., p.34. As such,
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`pressing the “Call” or “CONF.NOW” button teaches a single request by the
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`conference call requester as claimed.
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`E. Hamberg’s CALL ALIAS message identifies “each of the
`potential targets”
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`Uniloc incorrectly alleges that Hamberg’s CALL ALIAS message does not
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`identify each of the potential targets. Resp., p.32.
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`To advance this argument, Uniloc relies on a preferred embodiment of the
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`’948 patent. Resp., p.32. This embodiment allegedly allows a user to request a
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`conference call from within an IM session with each participant in the IM session.
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`Resp., p.32. But, this embodiment is not recited in the claims. In fact, the claims
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`require, and Uniloc’s expert agreed, that to be invited to the conference call, each
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`participant must also be someone with whom a conference call may be initiated.
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`CSCO-1017, 145:21-146:3; EX2001, ¶36.
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`Uniloc also relies on prosecution history of a grandchild application of the
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`’948 Patent (Appl. 12/907,550, now U.S. 8,571,194). Resp., p.33. Such reliance is
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`irrelevant because the prosecution arguments highlighted by Uniloc focus on an
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`unrelated limitation, namely, “registering with a conference call server.”
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`Additionally, Uniloc chose not to make the prosecution history of record in this
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`proceeding. Uniloc’s arguments based on unrelated limitations and unfiled
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`evidence are without merit.
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`
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`Petitioner’s Reply, IPR2017-00058
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`Contrary to Uniloc’s position, claim 1 requires that each of the potential
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`targets in a plurality of potential targets be:
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`1) “then being connected to said instant messaging service;”
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`2) “participating in a given instant messaging session;”
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`and
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`3) “with whom a conference call may be initiated.”
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`CSCO-1001, 12:2-6.
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`Independent claims 23 and 51 recite similar limitations. Thus, each of the
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`potential targets must meet all three recited requirements to be included in the
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`conference call request.
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`The Petition explained why the users Henry, Lisa, John, and Ann are
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`members of group G2 that meet the three requirements, and are therefore “potential
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`targets.” Pet., pp.25-30, 36; CSCO-1003, pp.44-45, 50-51, 57.
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`Uniloc, however, alleges that the CALL ALIAS message does not include
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`each of the potential targets because it excludes Max, a member of group G2. But
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`Max’s status is set to “absent” and he is not a potential target for several reasons.
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`CSCO-1005, 4:12-13. As Dr. DiEuliis testified, Max is not a potential target
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`because Max is not participating in the instant messaging session (requirement 2).
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`CSCO-1017, 167:24-168:4; see also CSCO-1017, 251:21-252:6 (Max “is not
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`participating in the chat session because he is not responding.”). And, as Petitioner
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`Petitioner’s Reply, IPR2017-00058
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`
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`stated, Max is not a potential target because he is not someone with whom a
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`conference call may be initiated (requirement 3). Pet., p.30, CSCO-1003, p.51.
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`Thus, Max is properly excluded from the CALL ALIAS message and the
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`subsequent conference call.
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`Uniloc also argues that with whom a conference call may be initiated
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`(requirement 3) is actually non-limiting. Resp., p.35. Here, Uniloc alleges that this
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`claim language is optional. Resp., p.35. In other words, Uniloc states that each
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`potential target must only meet requirements 1) and 2). Regardless of whether
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`requirement 3) is optional, Hamberg contemplates embodiments where all users
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`are “logged”. EX2001, pp. 63-64; EX2002, 79:25-80:15, 81:2-7; CSCO-1017,
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`96:16-23, 95:8-20. When Max is “logged”, Max is a potential target as recited in
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`requirements 1), 2) and 3). In this case, because the CALL ALIAS message
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`includes names of the “logged” group members, the CALL ALIAS message would
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`include Max as a potential target. EX2002, 103:4-6.
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`Thus, a CALL ALIAS message that includes the names of users with
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`“active” or “logged” status teaches including each of the potential targets as
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`recited in the claims.
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`F. None of the claims of the ’948 Patent require “a single conference
`call request … identifying each of the potential targets.”
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`Uniloc argues that the “Call” button is not a “single conference call request”
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`for a plurality of potential targets who are each participating in an instant
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`Petitioner’s Reply, IPR2017-00058
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`messaging session. Resp., pp.37-38.
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`First, the independent claims recite two requests: a single request and a
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`conference call request. Uniloc’s argument that the “Call” button is not “a single
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`conference call request” confuses the two distinct requests recited in the claims.
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`Because none of the claims recite “a single conference call request,” Uniloc’s
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`arguments do not apply.
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`Next, Uniloc argues that Lamb’s “Call” button enables a user to contact only
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`one person at one time. Resp., p.37. Based on that assertion, Uniloc argues that
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`Hamberg and Lamb do not teach a single request … identifying each of the
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`potential targets from the plurality of potential targets.