Trials@uspto.gov Paper No. 8
`Entered: July 12, 2017
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIVEPERSON, INC.,
`Petitioner,
`
`v.
`
`24/7 CUSTOMER, INC.,
`Patent Owner.
`____________
`
`
`
`
`
`
`
`Case IPR2017-00614
`Patent 6,975,719 B1
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, ROBERT J. WEINSCHENK,
`and GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Entered: July 12, 2017
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIVEPERSON, INC.,
`Petitioner,
`
`v.
`
`24/7 CUSTOMER, INC.,
`Patent Owner.
`____________
`
`
`
`
`
`
`
`Case IPR2017-00614
`Patent 6,975,719 B1
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, ROBERT J. WEINSCHENK,
`and GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00614
`Patent 6,975,719 B1
`
`
`LivePerson, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–3, 20, and 46 of U.S. Patent No.
`6,975,719 B1 (Ex. 1001, “the ’719 patent”). Patent Owner 24/7 Customer,
`Inc. (“Patent Owner”) did not file a Preliminary Response.
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons set forth below, we conclude that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claims 1–3, 20, and 46. Therefore, we institute inter
`partes review of claims 1–3, 20, and 46.
`
`
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`Petitioner asserts the ’719 patent and patents related to it are involved
`in 24/7 Customer, Inc. v. LivePerson, Inc., 3:15-CV-05585-JST (N.D. Cal.)
`and 24/7 Customer, Inc. v. LivePerson, Inc., 3:15-CV-02897-JST (N.D.
`Cal.). See Pet. 2. The following petitions for inter partes review are related
`to this case:
`Case No.
`IPR2017-00609
`IPR2017-00610
`IPR2017-00612
`IPR2017-00613
`IPR2017-00615
`IPR2017-00616
`
`
`Involved U.S. Patent No.
`U.S. Patent No. 6,970,553
`U.S. Patent No. 9,077,084
`U.S. Patent No. 7,751,552
`U.S. Patent No. 7,027,586
`U.S. Patent No. 7,245,715
`U.S. Patent No. 6,798,876
`
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`IPR2017-00614
`Patent 6,975,719 B1
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`
`B. THE ’719 PATENT
`The ’719 patent is directed to a phone system with an integrated chat
`client service. Ex. 1001, Abstract. The Specification describes a need for a
`“mechanism by which a called party can keep his/her side of the
`conversation private from others who may be present in the room.” Id. at
`1:55–58. When a called party who is subscribed to an integrated chat client
`service receives a phone call, the system determines whether the caller has
`an accessible network-attached computer. Id. at 3:19–27. If they do, the
`system prompts the called party to determine whether to chat or talk with the
`calling party. Id. at 3:31–42. If the called party chooses to chat, the system
`sends a chat invitation to the calling party, and, if the calling party accepts, a
`chat session may be arranged. Id. at 3:46–56.
`C. CHALLENGED CLAIMS
`Petitioner challenges claims 1–3, 20, and 46. Independent claim 1 is
`
`reproduced below.
`1. A phone system, comprising:
`a first call processing system element operable to check a chat
`server for accessibility of a calling party chat client
`associated with a calling party; and
`a second call processing system element operable to prompt a
`called party to select to talk or chat.
`Ex. 1001, 8:41–47.
`Independent claim 2 includes the same elements as claim 1 and adds
`the following:
`wherein the first call processing system element includes a
`service control point operable to receive a query and to check a
`chat server for accessibility of a calling party chat client
`associated with a calling party, the chat server being coupled to
`the internet and the service control point; and wherein the
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`Patent 6,975,719 B1
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`second call processing system element includes a service node
`coupled to the service control point and operable to prompt a
`called party to select either talk or chat.
`Id. at 8:49–64.
`Claim 3 depends from claim 2 and further requires the chat server to
`“send chat invitations to the calling party chat client and a called party chat
`client upon the called party selecting to chat with the calling party.” Id. at
`8:64–67.
`Independent claim 20 is a method claim that mirrors the limitations of
`claim 1. See id. at 9:66–10:4. Independent claim 46 is a computer readable
`medium claim that likewise mirrors the limitations of claim 1. See id. at
`12:7–13.
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 4.
`Reference(s)
`Basis
`Challenged Claims
`Luehrig1
`§ 102(e)2
`1–3, 20, and 46
`
`Truetken3 and Luehrig
`
`§ 103(a)
`
`1–3, 20, and 46
`
`
`1 U.S. Patent Publication No. 2003/0039339 A1, Pub. Feb. 27, 2003 (Ex.
`1004, “Luehrig”).
`2 Although Petitioner characterizes this ground as one based on obviousness,
`in substance, Petitioner asserts Luehrig anticipates the challenged claims.
`See Pet. 16 (asserting that Luehrig “discloses, and at a minimum renders
`obvious, the alleged invention claimed by each of the Challenged Claims”);
`id. at 18–31 (not identifying any potential differences between claimed
`subject matter and Luehrig). We therefore treat Petitioner’s challenge as one
`based on anticipation, not obviousness.
`3 U.S. Patent No. 6,493,324 B1, Dec. 10, 2002 (Ex. 1002, “Truetken”).
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`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`Petitioner does not propose any claim constructions, and we conclude
`no express claim constructions are necessary for our determination of
`whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
`B. ASSERTED PRIOR ART
`
`1. Luehrig (Ex. 1004)
`Luehrig was filed on March 12, 2002, before the earliest priority date
`of the ʼ719 patent, and, on the present record, is prior art under 35 U.S.C.
`§ 102(e). Pet. 5. Luehrig addresses a method for facilitating mediated
`communication. Ex. 1004, Abstract. In Luehrig, a subscriber may accept or
`defer an inbound communication. Id. ¶ 0059. In particular, in response to
`receiving a request for voice-based communication, an operation is
`performed that offers an option of sending the caller a text-messaging based
`response. Id. ¶ 0118. When the called party selects this chat option, the
`system provides a “follow-through action,” such as sending a predefined text
`message. Id. ¶ 0120. According to Luehrig, “[t]he text messaging follow-
`through action enables the subscriber to initiate a notification to the calling
`device that a text messaging response to the request for voice-based
`communication is to be used.” Id.
`2. Truetken (Ex. 1002)
`Truetken was filed on March 29, 1999, before the earliest priority date
`of the ʼ719 patent, and, on the present record, is prior art under 35 U.S.C.
`
`
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`§ 102(e). Pet. 5. Truetken teaches an Internet Protocol (“IP”) telephony
`client that initiates and manages multimedia sessions. Ex. 1002, Abstract.
`When a calling party initiates a call, the system prompts the calling party to
`select from a list of available helper applications or media types, including
`“IP phone, browser, e-mail, chat, personal directory, video streaming
`applications, and the like.” Id. at 4:2–4, 15–33. Once selected, a Session
`Initiation Protocol or “SIP” invite is sent to the called party, prompting the
`called party to accept, decline, or negotiate for other options. Id. at 4:41–47.
`In particular,
`if the called party wishes to negotiate for a different time or
`media for the call, the called party clicks on an other options
`button, which causes the called party client to open another
`options dialog box . . . . The options dialog box gives the called
`party the opportunity to suggest alternative media or an
`alternative time for the call. The called party client populates
`the options dialog box with the names of the other helper
`applications that the called party has available.
`Id. at 4:59–67. Once the calling and called parties have agreed on a
`communications medium, the appropriate helper application launches on the
`parties’ respective systems. See id. at 5:9–19, 58–60, Fig. 6.
`C. ASSERTED GROUNDS
`1. Ground 1: Anticipation Based on Luehrig (Ex. 1004)
`Petitioner asserts Luehrig anticipates claims 1–3, 20, and 46. Pet. 18–
`31. As explained below, based on this record and for purposes of this
`Decision, Petitioner has shown a reasonable likelihood of succeeding on its
`anticipation challenge to claims 1–3, 20, and 46 based on Luehrig.
`a. Independent Claim 1
`Petitioner has made an adequate showing that Luehrig discloses “[a]
`phone system, comprising a first call processing system element operable to
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`check a chat server for accessibility of a calling party chat client associated
`with a calling party.” See Pet. 18–20 (citing Ex. 1004 ¶¶ 0002, 0037, 0046;
`Ex. 1005 ¶¶ 61–62), 25–27 (citing Ex. 1004, Abstract, ¶¶ 0037, 0119, claim
`1, Table 2, Table 3). Petitioner also has made an adequate showing that
`Luehrig discloses “a second call processing system element operable to
`prompt a called party to select to talk or chat.” See id. at 20–21 (citing Ex.
`1004 ¶¶ 0059, 0118, claim 1; Ex. 1005 ¶¶ 65–66), 27–28 (citing Ex. 1004 ¶
`0118, claim 1, Table 2, Table 3).
`b. Independent Claim 2
`Petitioner has made an adequate showing that Luehrig discloses “[a]
`phone system, comprising: a first call processing system element operable to
`check a chat server for accessibility of a calling party chat client associated
`with a calling party.” See id. at 22, 28 (citing Ex. 1004, Abstract, ¶¶ 0002,
`0046, 0037, 0119, claim 1). Petitioner also has made an adequate showing
`that Luehrig discloses “a second call processing system element operable to
`prompt a called party to select to talk or chat, wherein the first call
`processing system element includes a service control point operable to
`receive a query and to check a chat server for accessibility of a calling party
`chat client associated with a calling party, the chat server being coupled to
`the internet and the service control point; and wherein the second call
`processing system element includes a service node coupled to the service
`control point and operable to prompt a called party to select either talk or
`chat.” See id. at 22–24 (citing Ex. 1004, Fig. 2, ¶¶ 0031, 0038, 0119, 0120;
`Ex. 1005 ¶¶ 69–71), 28–29 (citing Ex. 1004, ¶¶ 0031, 0038, 0039, 0118,
`Tables 2–3, claim 1).
`
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`
`c. Dependent Claim 3
`Petitioner has made an adequate showing that Luehrig discloses the
`additional element recited in claim 3: “wherein the chat server is operable to
`send chat invitations to the calling party chat client and a called party chat
`client upon the called party selecting to chat with the calling party.” See id.
`at 24–25 (citing Ex. 1004, Tables 2–3, ¶¶ 0018, 0120; Ex. 1005 ¶¶ 72–73),
`29–30 (citing Ex. 1004, ¶¶ 0118, 0120, Tables 2–3).
`d. Independent Claim 20
`Petitioner has made an adequate showing that Luehrig discloses “[a]
`method for connecting phone calls, comprising the steps of: checking for
`accessibility of a calling party chat client associated with a calling party.”
`See id. at 18–20 (citing Ex. 1004 ¶¶ 0002, 0037, 0046; Ex. 1005 ¶¶ 61–62),
`30 (citing Ex. 1004, Abstract, ¶¶ 2, 46, 37, 119). Petitioner also has made an
`adequate showing that Luehrig discloses “prompting a called party to choose
`to either talk or chat if the calling party chat client is accessible.” See id. at
`20–21 (citing Ex. 1004 ¶¶ 0059, 0118, claim 1; Ex. 1005 ¶¶ 65–66), 30
`(citing 1004 ¶ 0118, claim 1).
`e. Independent Claim 46
`Petitioner has made an adequate showing that Luehrig discloses “[a]
`computer readable medium having a program for connecting phone calls, the
`program performing the steps of: checking accessibility of a calling party
`chat client associated with a calling party.” See id. at 18–20 (citing Ex. 1004
`¶¶ 0002, 0037, 0046; Ex. 1005 ¶¶ 61–62), 30 (citing Ex. 1004, Abstract, ¶¶
`0002, 0037, 0046, 0119, 0134, claim 1). Petitioner also has made an
`adequate showing that Luehrig discloses “prompting a called party to choose
`to either talk or electronically chat if the calling party chat client is
`
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`accessible.” See id. at 20–21 (citing Ex. 1004 ¶¶ 0059, 0118, claim 1; Ex.
`1005 ¶¶ 65–66), 31 (citing 1004 ¶ 0118, claim 1).
`f. Conclusion
`Accordingly, for the reasons outlined above, we conclude that
`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`challenge to claims 1–3, 20, and 46 as anticipated under 35 U.S.C. § 102(e)
`by Luehrig.
`2. Ground 2: Obviousness Based on Truetken (Ex. 1002) and Luehrig (Ex.
`1004)
`Petitioner contends claims 1–3, 20, and 46 would have been obvious
`over Truetken and Luehrig at the time of the invention. Pet. 31–45. As
`explained below, based on this record and for purposes of this Decision,
`Petitioner has shown a reasonable likelihood of succeeding on its
`obviousness challenge to claims 1–3, 20, and 46 based on Truetken and
`Luehrig.
`a. Independent Claim 1
`Petitioner has made an adequate showing that the combination of
`Truetken and Luehrig teaches “[a] phone system, comprising a first call
`processing system element operable to check a chat server for accessibility
`of a calling party chat client associated with a calling party.” See Pet. 33–36
`(citing Ex. 1002, Abstract, 1:34–39, 1:51–55, 2:53–55, 4:2–4, 4:15–33,
`4:41–65, Fig. 3; Ex. 1004, Abstract, claim 1; Ex. 1005 ¶¶ 82–84, 85, 87, 89–
`91, 92–93), 40–42 (citing Ex. 1002, Abstract, 1:51–55, 4:2–4; Ex. 1004,
`Abstract, ¶ 0119, Table 2, Table 3, claim 1). Petitioner also has made an
`adequate showing that Truetken discloses “a second call processing system
`element operable to prompt a called party to select to talk or chat.” See id. at
`
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`36–37 (citing Ex. 1002, 4:3–7, 4:65–67, Fig. 4), 42 (citing Ex. 1002, 4:2–4,
`4:41–65).
`b. Independent Claim 2
`Petitioner has made an adequate showing that the combination of
`Truetken and Luehrig teaches “[a] phone system, comprising: a first call
`processing system element operable to check a chat server for accessibility
`of a calling party chat client associated with a calling party.” See id. at 37–
`38 (citing Ex. 1005 ¶¶ 99–102), 42–43 (citing Ex. 1002, Abstract, 1:51–55,
`4:2–4; Ex. 1004, Abstract, ¶¶ 0002, 0037, 0046, 0119). Petitioner also has
`made an adequate showing that the combination of Truetken and Luehrig
`discloses “a second call processing system element operable to prompt a
`called party to select to talk or chat, wherein the first call processing system
`element includes a service control point operable to receive a query and to
`check a chat server for accessibility of a calling party chat client associated
`with a calling party, the chat server being coupled to the internet and the
`service control point; and wherein the second call processing system element
`includes a service node coupled to the service control point and operable to
`prompt a called party to select either talk or chat.” See id. at 38–39 (citing
`Ex. 1002, 4:41–65, Fig. 4, Ex. 1004 ¶¶ 0031, 0119; Ex. 1005 ¶¶ 97–100,
`102), 43 (citing Ex. 1004, ¶¶ 0031, 00038, 0039, 0118, Table 2, Table 3,
`claim 1; Ex. 1002, 4:41–35).
`c. Dependent Claim 3
`Petitioner has made an adequate showing that Truetken discloses the
`additional element recited in claim 3: “wherein the chat server is operable to
`send chat invitations to the calling party chat client and a called party chat
`
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`client upon the called party selecting to chat with the calling party.” See id.
`at 39–40 (citing Ex. 1002, 4:41–65, claim 5), 44 (citing Ex. 1002, 4:41–65).
`d. Independent Claim 20
`Petitioner has made an adequate showing that Luehrig discloses “[a]
`method for connecting phone calls, comprising the steps of: checking for
`accessibility of a calling party chat client associated with a calling party.”
`See id. at 33–36 (citing Ex. 1002, Abstract, 1:34–39, 1:51–55, 2:53–55, 4:2–
`4, 4:15–33, 4:41–65, Fig. 3; Ex. 1004, Abstract, claim 1; Ex. 1005 ¶¶ 82–84,
`85, 87, 89–91, 92–93), 44 (citing Ex. 1004, Abstract, ¶¶ 0002, 0037, 0046,
`0119, claim 1). Petitioner also has made an adequate showing that Luehrig
`discloses “prompting a called party to choose to either talk or chat if the
`calling party chat client is accessible.” See id. at 36–37 (citing Ex. 1002,
`4:3–7, 4:65–67, Fig. 4), 44 (citing Ex. 1004 ¶ 0118, claim 1).
`e. Independent Claim 46
`Petitioner has made an adequate showing that the combination of
`Truetken and Luehrig teaches “[a] computer readable medium having a
`program for connecting phone calls, the program performing the steps of:
`checking accessibility of a calling party chat client associated with a calling
`party.” See id. at 33–36 (citing Ex. 1002, Abstract, 1:34–39, 1:51–55, 2:53–
`55, 4:2–4, 4:15–33, 4:41–65, Figs. 3; Ex. 1004, Abstract, claim 1; Ex. 1005
`¶¶ 82–84, 85, 87, 89–91, 92–93), 44–45 (citing Ex. 1004 ¶¶ 0002, 0037,
`0046, 0119, 0134, claim 1). Petitioner also has made an adequate showing
`that Luehrig discloses “prompting a called party to choose to either talk or
`electronically chat if the calling party chat client is accessible.” See id. at
`20–21 (citing Ex. 1004 ¶¶ 0118, 0119, claim 1; Ex. 1005 ¶¶ 65–66), 45
`(citing Ex. 1004, Abstract, ¶ 0118, claim 1).
`
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`f. Rationale for Combining Truetken and Luehrig
`In addition, based on this record and for purposes of this Decision,
`Petitioner made a sufficient showing that one skilled in the art would have
`reason to combine the known elements in the manner Petitioner suggests.
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Petition
`explains, with relevant support from Petitioner’s Declarant, that it would
`have been obvious for one skilled in the art to combine Truetken with
`Luehrig because “Truetken provides a prompt dialog user interface and
`invitation-based negotiation methods for connecting parties through various
`communications media” while “Luehrig provides additional methods that a
`person of ordinary skill in the art would understand could streamline and
`increase the efficiency of the Truetken method.” Pet. 32 (citing Ex. 1005
`¶ 83). Petitioner explains also that “Luehrig teaches the advantage of
`determining whether the calling party has text chat capabilities prior to
`prompting the called party whether to talk or chat, thereby eliminating the
`problem of Truetken in which a suggested communications medium may be
`unavailable to the other party.” Id. at 32–33. Thus, as Petitioner explains,
`one skilled in the art “would be further motivated to include this
`improvement from Luehrig in the system of Truetken because it would
`increase the likelihood of a successful negotiation for a desired
`communications medium, and reduce the overhead involved in multi-step
`negotiations.” Id. at 33 (citing Ex. 1005 ¶¶ 82–84).
`g. Conclusion
`Based on the analysis above, we find Petitioner has made an adequate
`showing that the combination of Truetken and Luehrig teaches or suggests
`each limitation in claims 1–3, 20, and 46, and articulated an adequate
`
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`rationale explaining why one skilled in the art would have combined
`Truetken and Luehrig in the manner Petitioner proposes. Thus, on the
`current record and for purposes of this Decision, we determine that
`Petitioner has set forth a reasonable likelihood of succeeding on its
`obviousness challenge to claims 1–3, 20 and 46.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
`would prevail in showing claims 1–3, 20, and 46 unpatentable. Any
`discussion of facts in this Decision is only for the purposes of institution and
`is not dispositive of any issue related to any ground on which we institute
`review. We note that Patent Owner has not, at this stage of the proceeding,
`addressed Petitioner’s analysis and supporting evidence. The Board’s final
`determination will be based on the record as fully developed during trial.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–3, 20, and 46 the ’719 patent is instituted, commencing
`on the entry date of this Decision;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the following
`grounds of unpatentability:
`A. claims 1–3, 20, and 46 are unpatentable under 35 U.S.C. § 102(e)
`as anticipated by Luehrig;
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`B. claims 1–3, 20, and 46 are unpatentable under 35 U.S.C. § 103(a)
`as having been obvious over Truetken and Luehrig;
`and
`FURTHER ORDERED that no other grounds are authorized for inter
`partes review.
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`PETITIONER:
`
`LivePerson-24-7Team@kirkland.com
`
`Robert Kang
`Kristen Reichenbach
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`robert.kang@kirkland.com
`kristen.reichenbach@kirkland.com
`
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`eugene.goryunov@kirkland.com
`
`
`PATENT OWNER:
`Mark E. Miller
`Brian M. Cook
`Jay Choi
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`markmiller@omm.com
`bcook@omm.com
`jchoi@omm.com
`
`
`
`
`15
`
`
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