`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`InCompliance with 35 US.C § 290 and/or 15 US.C § 1116you are hereby advised thatacourtaction has been
`Eastern District of Texas
`filed in the U.S. District Court
`on the following
`0 Trademarks or
`~Patents. ( 0 the patent action involves 35 U.S. C.§ 292.):
`
`DOCKET NO.
`2:17 -cv-228
`PLAINTIFF
`
`DATE FILED
`3/24/2017
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`
`Uniloc USA, Inc. and Uniloc Luxembourg SA
`
`Amazon.com, Inc., and Amazon Web Services, Inc.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`l 7,804,948 82
`
`9/28/2010
`
`Uniloc Luxembourg SA
`
`2 7,853,000 82
`
`3 8,571,194 82
`
`12/14/2010
`
`Uniloc Luxembourg SA
`
`10/29/2013
`
`Uniloc Luxembourg SA
`
`4
`
`5
`
`In the above--entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`PATENTOR
`TRADEMARK NO.
`
`INCLUDED BY
`
`0 Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`0 Answer
`
`0 Cross Bill
`
`0 Other Pleading
`
`HOLDEROFPATENTORTRADEMARK
`
`1
`
`2
`
`3
`
`4
`
`5
`
`In the above--entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`I (BY) DEPUTY CLERK
`
`Copy 1-Upon initiation of action, mail this copy to Director Copy 3-Upon termination of action, mail this copy to Director
`Copy 2-Upon filing llocument adding patent(s), mail this copy to Director Copy 4--Case file copy
`
`Page 1 of 353
`
`GOOGLE EXHIBIT 1018
`
`
`
`Case 2:17-cv-00228-JRG Document5 Filed 03/24/17 Page 1o0f1PagelD#: 110
`AO 120 (Rev. 08/10}
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1456
`Alexandria, VA 22313-1450
`
`|
`
`:
`
`REPORTON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENTOR
`
`in Compliance with 35 U.S.C. § 290 and/or £5 U.S.C. § 1116 you are hereby advised that a court action has been
`Eastern District of Texas on the folowing
`
`filed in the U.S, District Court
`[] Trademarks or
`ff Patents.
`( (1 the patent action involves 35 U.S.C. § 292}:
`
`DOCKET NO.
`2:17-Gv-228
`PLAINTIFF
`
`DATE FILED
`Be4/2017
`
`I
`
`U.S, DISTRICT COURT
`
`DEFENDANT
`
`Eastern District of Texas
`
`Uniloc USA, Inc. and Uniloc Luxembourg S.A.
`
`| Amazon.com, inc., and Amazon Web Services, inc.
`
`OR TRADEMARK
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`ATWRIADEE
`we
`DATER
`CE
`=n
`.
`HOLDER OF PATENT OR TRADEMARK
`
`7,804,948 B2
`
`9/28/2010
`
`Uniloc Luxembourg $.A.
`
`2 7,853,000 BS
`
`12/14/2010
`
`Uniloc Luxembourg S.A.
`
`3 8,571,184 B2
`
`10/29/2013
`
`DATE INCLUDED
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`
`Ci Cress Bill
`
`[-] Other Pleading
`
`In the above—-entitled case, the following decision has been rendered or judgement issued:
`DECISIONJUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy i-—Upon initiation of action, mai this copy te Director Copy 3--Upon terramation of action, man this copy te Director
`Copy 2—-Upon filing document adding patent(s), mail this copy te Birector Copy 4-—Case file copy
`
`Page 2 of 353
`
`Page 2 of 353
`
`
`
`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and TrademarkOffice
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATIONOF AN
`ACTION REGARDINGA PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`Eastern District of Texas, Tyler Division
`onthe following
`LiTrademarksor
`[fPatents.
`( (1 the patent action involves 35 U.S.C.§ 292.)
`
`DATE FILED
`12/28/2015
`
`DOCKET NO.
`6:15-cv-1168
`PLAINTIFF
`UNILOC USA,INC., and
`UNILOC LUXEMBOURG, S.A.
`
`
`
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Tyler Division
`DEFENDANT
`AVAYAINC.
`
`TRADEMARKN0.
`
`HOLDER OF PATENT OR TRADEMARK
`
`ATTCOdSC“(Csti‘“‘CrdrS
`Es
`
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`INCLUDED BY
`(J Amendment
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`OR TRADEMARK
`po
`
`(1 Answer
`O CrossBill
`(1 Other Pleading
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`
`
`
`
`
`
`DECISION/JUDGEMENT (BY) DEPUTY CLERK
`
`2
`
`po
`
`4
`
`PC
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upontermination ofaction, mail this copy to Director
`Copy 2—Uponfiling documentaddingpatent(s), mail this copy to Director Copy 4—Casefile copy
`
`Page 3 of 353
`
`Page 3 of 353
`
`
`
`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and TrademarkOffice
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliancewith 35 U.S.C.§ 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Tyler Division
`on the following
`(3 Trademarksor
`(JZ Patents.
`( (J the patentaction involves 35 U.S.C. § 292.):
`
`DOCKETNO.
`6:15-cv-1169
`PLAINTIFF
`UNILOC USA,INC., and
`
`DATE FILED
`12/28/2015
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Tyler Division
`DEFENDANT
`SHORETEL, INC.
`
` UNILOC LUXEMBOURG, S.A.
`
`PATENT OR
`
`DATE OF PATENT
`
`1 7,804,948
`
`2 7,853,000
`
`3 8,571,194
`
`9/28/2010
`
`42/14/2010
`
`10/29/2013
`
`UNILOC LUXEMBOURG,S.A.
`
`UNILOC LUXEMBOURG,S.A.
`
`UNILOC LUXEMBOURG,S.A.
`
`SOTOUTC—OS
`
`DATE INCLUDED
`
`PATENT OR
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`OO Amendment
`DATE OF PATENT
`
`(1 Answer
`
`OD Cross Bill
`
`( Other Pleading
`
`
`
`
`
`
`
`
`
`DECISION/JUDGEMENT (BY) DEPUTY CLERK
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`Copy 1-—Uponinitiation of action, mail this copy to Director Copy 3—-Upontermination of action, mail this copy to Director
`Copy 2—Uponfiling documentadding patent(s), mail this copy to Director Copy 4-—Casefile copy
`
`Page 4 of 353
`
`Page 4 of 353
`
`
`
`Case 6:15-cv-01175 Document 2 Filed 12/30/15 Page 1 of 1 PagelD #: 96
`AO 120 (Rev.08/10
`
`TRADEMARK
`
`TO:
`.
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S.District Court
`Eastern District of Texas, Tyler Division
`on the following
`
`LJ Trademarks or
`Patents.
`( [1 the patent action involves 35 U.S.C. § 292.):
`
`DATE FILED
`12/30/2015
`
`DOCKETNO.
`6:15-cv-1175
`PLAINTIFF
`UNILOC USA,INC., and
`UNILOC LUXEMBOURG, S.A.
`
`Te
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Tyler Division
`DEFENDANT
`CISCO SYSTEMS,INC.
`
`eT
`BT
`
`DATE INCLUDED
`
`PATENT OR
`TRADEMARK NO.
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`INCLUDED BY
`(J Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`O Answer
`CO CrossBill
`OO Other Pleading
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`
`
`
`
`
`
`
`po
`
`
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`
`
`
` eseT
`DECISION/IUDGEMENT
`
`
`
`(BY) DEPUTY CLERK
`
`Copy 1—Uponinitiation of action, mail this copy te Director Copy 3—Upon termination ofaction, mail this copy to Director
`Copy 2—Uponfiling documentadding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Page 5 of 353
`
`Page 5 of 353
`
`
`
`Case 2:16-cv-00566-RWS Document5 Filed 05/30/16 Page 1 of 1 PagelD #: 115
`
`Mail Stop 3
`Director of the U.S. Patent and TrademarkOffice
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDINGA PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`Eastern District of Texas
`on the following
`
`{([] Trademarks or
`Patents.
`( 0 the patent action involves 35 U.S.C. § 292.):
`DOCKET NO.
`DATE FILED
`U.S. DISTRICT COURT
`2:16-cv-566
`5/28/2016
`PLAINTIFF
`
`Uniloc USA,Inc. and Uniloc Luxembourg S.A.
`
`DEFENDANT
`
`GOOGLE,INC.
`
`Eastern District of Texas
`
`TRADEMARK
`
`
`
`
`2|SS
`
`
`
`
`
`
`
`
`
`
`
`
`
`DATE INCLUDED
`
`PATENT OR
`
`TRADEMARK NO.
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been imcluded:
`INCLUDED BY
`
`(0 Amendment
`OR TRADEMARK
`DATE OF PATENT
`
`(1 Answer
`(] Cross Bill
`(1 Other Pleading
`HOLDER OF PATENT OR TRADEMARK
`
`ll
`
`In the above-—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy |—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination ofaction, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`Page 6 of 353
`
`Page 6 of 353
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 6
`Entered: April 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`Vv.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG,5.A.,
`Patent Owner.
`
`Case IPR2017-00058
`Patent 7,804,948 B2
`
`Before KARL D. EASTHOM,KEN B. BARRETT,and
`JEFFREY S. SMITH, Administrative Patent Judges.
`
`SMITH,Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 CFR. § 42.108
`
`Page 7 of 353
`
`Page 7 of 353
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`I. INTRODUCTION
`
`Petitionerfiled a Petition for inter partes review ofclaims 1, 2, 5—10,
`
`12, 18-26, 29, 30, 36, 37, 49-53, 65, and 66 of U.S. Patent No. 7,804,948
`
`B2 (Ex. 1001, “the *948 patent”). Paper 2 (“‘Pet.””). Patent Ownerfiled a
`
`Preliminary Response. Paper 5 (“Prelim. Resp.”). Institution of an inter
`
`partes review may not be authorized bystatute “unless .
`
`.
`
`. the information
`
`presented in the petition . .. and any response .
`
`.
`
`. showsthat there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challengedin the petition.” 35 U.S.C. § 314(a); see 37
`
`C.F.R. § 42.108.
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`are persuaded Petitioner has demonstrated a reasonablelikelihoodthatit
`
`would prevail in establishing the unpatentability of claims 1, 2, 5-10, 12,
`
`18-26, 29, 30, 36, 37, 49-53, 65, and 66 of the 948 patent. Accordingly,
`
`weinstitute an inter partes review.
`
`A. Related Matters
`
`Oneor both parties identify, as matters involving or related to the
`
`’948 patent, the following:
`
`Uniloc USA, Inc. v. Google, Inc., Case No. 2:16-cv-00566 (E.D.
`
`Tex.), filed March 28, 2016. Pet. 1.
`
`Uniloc USA, Inc. v. Huawei Enterprise USA, Inc., Case No. 6:16-cv-
`
`00099 (E.D. Tex.), filed March 4, 2016. Pet. 1.
`
`Uniloc USA, Inc. v. Cisco Systems, Inc., Case No. 6:15-cv-1175 (E.D.
`
`Tex.), filed Dec. 30, 2015. Pet. 1.
`
`Page 8 of 353
`
`Page 8 of 353
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`Uniloc USA, Inc. v. Avaya, Inc., Case No. 6:15-cv-01168 (E.D. Tex.),
`
`filed Dec. 28, 2015. Pet. 1.
`
`Uniloc USA, Inc. v. ShoreTel, Inc., Case No. 6:15-cv-01169 (E.D.
`
`Tex.), filed Dec. 28, 2015. Pet. 1.
`
`Uniloc USA, Inc. v. GENBAND US LLC, Case No. 6:15-cv-01169
`
`(E.D. Tex.), filed April 30, 2015. Pet. 1.
`Uniloc USA, Inc. v. Microsoft Corp., Case No. 2:14-cv-01040 (E.D.
`Tex.), filed Nov. 13, 2014. Pet. 1.
`
`The °948 patent wasalso asserted against Cisco Systems,Inc.,
`
`Huawei Device USA,Inc., NEC Corporation of America, Shoretel, Inc.,
`
`Unify, Inc., Tangome,Inc. d/b/a Tango, Facebook,Inc., Viber Media S.a.r.1.,
`
`and WhatsAppInc., ooVoo, LLC,in civil actions related to lead case Uniloc
`
`USA, Inc. et al. v. Avaya, Inc., Case No. 6:15-cv-01168, in the Eastern
`
`District of Texas. Patent Owner’s Mandatory Notice, Paper 4.
`
`B. The ’948 Patent
`
`The ’948 patent relates generally to a methodforinitiating a
`
`conference call between two or more users, and more particularly to
`
`initiating a voice conference call between two or more users using a central
`
`server to communicate parameters for the call and forinitiating the call
`
`itself. Ex. 1001, 1:13-17. Conference calls are initiated via an instant
`
`messaging (IM) system to reduce the effort requiredto initiate and manage
`
`the call. Jd. at Abstract. The system uses an IM connection between a
`
`requesting party and a conferencecall server to inform the conferencecall
`
`serverof the desireto initiate the conference call. Jd. The conferencecall
`
`serverinitiates the conference call by having involved parties called by a
`
`Page 9 of 353
`
`Page 9 of 353
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`conference bridge, thus reducing the effort required by the parties to join the
`
`call. Id. Figure 4 of the °948 patent is reproduced below.
`
`Conference Request Processor
`
`Telechone Networks
`
`
`Acoouent, User,
`History, Provider
`
`Database
`
`
`IM Communications Procasser
`412
`
`
`
`
`4108
`
`410b
`
`.
`
`Figure 4 above showsa block diagram of a system for accomplishing
`
`the initiation of conference calls. Ex. 1001, 9:13-14. Conferencecall server
`
`402 is connected to network 404. /d. at 9:14-15. Database 406, associated
`
`with conference call server 402, stores account information, user
`
`information, and call management information. Jd. at 9:15—18. The
`
`conferencecall server can be connected directly to telephone network 408,
`
`or indirectly through third party conference bridge 410. Id. at 9:22-25.
`Shared application server 412 can also be connected to allow information
`generated during a shared application session to be accessed by the
`
`conference call server as required, such as to determinea list of parties
`
`involved in a shared application session. Jd. at 9:26-30. The users connect
`
`Page 10 of 353
`
`Page 10 of 353
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`to the system via network access device (NAD) 414, which may be any
`
`network communicable device having the appropriate IM software service
`
`access. Id. at 9:39-41.
`
`During an IM session involving User A, User B, and User C, a
`
`conference call requester (User A) requests a conference call through User
`
`A’s NAD. Id. at 7:27-34. The IM service in communication with User A’s
`
`NAD is aware of the IM session, and determinesthe list of conference call
`
`targets from thelist of parties presently in the IM session. Jd. at 7:34-38.
`
`The conferencecall server sends a conferencecall invitation to User B and
`
`User C. Id. at 7:64-66. If User B and User C accept the conferencecall
`
`invitation, the conference call server prompts User B and UserC,via the IM
`
`functionality, to verify their phone numbersfor the conferencecall. Jd. at
`
`7:66-8:10. The conference call server then initiates a conference call bridge
`
`between the conference requester and the targets. /d. at 8:11-12.
`
`C. Illustrative Claim
`
`Claims 1, 23, and 51 of the challenged claims of the °948 patent are
`
`independent. Claim1is illustrative of the claimed subject matter:
`
`1. A method for initiating a conference call, comprising
`the steps of:
`providing a conference call requester with a network
`access device, said network access device communicating via an
`instant messaging service, said instant messaging service being
`adapted to communicate conference call request information
`with a conference call server;
`
`establishing a communications connection from said
`networkaccess device to the conference call server;
`
`presenting said conference call requester with a display
`showing a plurality of potential targets then being connected to
`
`5
`
`Page 11 of 353
`
`Page 11 of 353
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`said instant messaging service and participating in a given instant
`messaging session with the conference call requester and with
`whom a conference call may beinitiated;
`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
`conferencecall request;
`from said
`request
`transmitting said conference call
`network access device to said conferencecall server; and
`
`automatically establishing a conference call connection to
`said conference call requester, said conference call connection
`initiated by said conference call server, said conference call
`connection further being connected to each of the potential
`targets.
`
`Ex. 1001, 11:58—-12:17.
`
`D. References
`
`
`
`
`
`US6,747,970 BI
`
`US6,237,025 B1
`
` May22, 2001
`
`Petitionerrelies on the following references. Pet. 9-10.
`
`
`
`
`Mar. 14, 2002|Ex. 1005
`
`
`WO 02/21816 Al
`
`
` June 8, 2004
`(filed Mar. 21,
`
`
` Ex. 1007
`
`
`
`US 2003/0086411 Al May8, 2003|Ex. 1008
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1, 2, 5—10, 12, 18-26, 29, 30, 36, 37,
`
`49-53, 65, and 66 of the 948 patent are unpatentable based on the following
`
`specific grounds:
`
`Page 12 of 353
`
`Page 12 of 353
`
`
`
`
`
`
`
`
`Challenged Claims
`Basis
` Hamberg and Lamb
`
`§ 103(a)|1, 2, 5, 6, 8, 12, 18, 19,
`21-25, 29, 30, 49-51,
`
`65, and 66
`
`Hamberg, Lamb, and Ludwig
`
`and 53
`Hamberg, Lamb, and Vassilovski|§ 103(a)
`
`
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`
`
`References
`
`
`
`
`
`
`
`
`Il. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016)
`
`(upholding the use of the broadest reasonable interpretation standard as the
`
`claim interpretation standard to be applied in inter partes reviews).
`
`Consistent with the broadest reasonable construction, claim terms are
`
`presumedto havetheir ordinary and customary meaning as understood by a
`
`person of ordinary skill in the art in the context ofthe entire patent
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). An inventor may provide a meaning for a term that is different from
`
`its ordinary meaning by defining the term in the specification with
`
`reasonable clarity, deliberateness, and precision. Zn re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
`
`Petitioner proposcs constructionof the claim terms “network access
`
`device”(recited in all claims), “address” (recited in claim 18), “automatic
`
`numberidentifier” (recited in claim 19), and “VoIP address”(recited in
`
`claim 20. Pet. 6-9. Patent Ownerproposes construction of the claim terms
`
`Page 13 of 353
`
`Page 13 of 353
`
`
`
`IPR2017-00058
`Patent 7,804,948 B2
`
`“instant messaging”(recited in all claims) and “VoIP address”(recited in
`
`claim 20). Prelim. Resp. 8-12. At this stage of the proceeding,neither party
`
`has identified a dispositive term for construction. For purposesofthis
`
`Decision, no terms need an explicit construction to resolve a controversy at
`this preliminary stage. See Vivid Techs., Inc.v. Am Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in controversy
`
`need to be construed and only to the extent necessary to resolve the
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`controversy). We further determine that none of the other terms require
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`express constructionatthis stage.
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`B. Asserted Obviousness Over Hamberg and Lamb: Claims 1, 2, 5, 6, 8, 12,
`18, 19, 21-25, 29, 30, 49-51, 65, and 66
`
`Petitioner, relying on the Declaration of Dr. Henry Houh (Ex. 1003),
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`challenges claims1, 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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`Hambergrelates to setting up a conferencecall in digital
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`communications systems. Ex. 1005, 1:3-4. Figure 1 of Hambergis
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`reproduced below.
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`mox [msg
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`.
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`Ann [Ms1)
`“LT
`tony fas] — Vv
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`FIG. 1
`
`
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`y
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`lisa
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`John
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`Figure 1 above shows a general communication system. Jd. 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 MSS, connected to a
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`communications system, such as a Global System for Mobile
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`Communications (GSM). Jd. at 2:19-22. The mobile stations can be
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`equipped with an instant message service. Jd. at 2:25-30. The GSM system
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`can be connecteddirectly 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
`message server can initiate a conference call in the GSM network. Id. at
`3:4-8. A database DB represents a database residing in the quick message
`server. Jd. at 3:16-17. Figure 2 of Hamberg is reproduced below.
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`Group 2: 050-123456-2
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` Group 1: 050-123456-1;
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`Figure 2 above shows an example of a more detailed structure of the
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`database DB. Jd. at 3:18-19. Henry, Lisa, and John have registered into
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`chat group I, and Henry, Lisa, John, Max, and Ann haveregistered into chat
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`group 2. Jd. at 3:19-21. Henry, Lisa, John, and Ann havesent an activating
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`LOGIN messageto the second group’s telephone number shown in Figure 2,
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`so they are in active chat status. Jd. at 4:10-12. Max has sethis status to
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`absent, to indicate he does not want to participate in a conferencecall, but
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`text messages can be sent to him. /d. at 4:12—-15.
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`2. Lamb (Ex. 1006)
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`Lambis related to providing advanced telecommunicationsservices
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`using a connectionless network host for service implementation, while using
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`connection-based network equipmentfor transport ofat 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. Jd at Abstract. A conference now feature ofa
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`10
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`user interface allows a user to create a conferencecall at the current
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`moment. Jd. at 60:37-41; Fig. 12.
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`The userinterface can be a MetaTelclient user interface thatis
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`installed onto a user’s computer. Jd. at 64:16-19. A MetaTel view allows a
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`userto see availability of colleagues, send messages, and place phonecalls
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`instantly. fd. at 109-110. A user can press a call button to set up an instant
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`conference call. Jd.
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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 5]
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`Petitioner contends “providing a conference call requester with a
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`network access device,” as recited in independentclaim 1, is disclosed by
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`Hambergin 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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`Petitioner contends “said network access device communicating via
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`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 messageservice. Id.
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`at 21-22 (citing 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 conferencecall request information with a conferencecall
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`server,” as recited in claim 1 is disclosed by Hambergin describing a CALL
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`ALIASmessagesent to the server, where the ALIASrepresents the names
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`of the group membersthat the sender of the message wants to call. /d. at
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`22-24 (citing Ex. 1005, 4:27—32, 6:1-2, 6-7).
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`Petitioner contends “establishing a communications connection from
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`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 messagesent from the
`
`1]
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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. Jd. at 24—25
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`(citing Ex. 1005, 4:10-13).
`
`Petitioner contends “presenting said conference call requester with a
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`display showinga plurality of potential targets then being connected to said
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`instant messaging service,” as recited in claim 1 is taught by the combination
`
`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. Jd. at 25—26 (citing Ex.
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`1005, Fig. 2; 4:10-19, 5:19-22). Accordingto Petitioner, the list of users
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`who haveregistered 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.” /d. (emphasis omitted). Petitioner contends Lambdiscloses
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`“presenting said conference call requester with a display showinga plurality
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`of targets then being connected to said instant messaging service,”as recited
`
`in claim 1, in describing displaying status information in a user agent
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`interface. Id. at 26-29 (citing Ex. 1006, Figs. 9, 12; 59:3-7, 59:22-35,
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`60:25—26, 64:15-17).
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`Petitioner relies on testimony from Dr. Houh and contendsthat
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`incorporating Lamb’s display of status information into Hamberg’s mobile
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`stations and workstations would have madeit easier for Hamberg’s users to
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`communicate with each other. /d. at 29 (citing Ex. 1003, pp. 49-50).
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`Accordingto 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 conferencecall, and avoid
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`attempting to initiate a call with members whoare not available, for whom a
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`conference call would be an unwanted disturbance, or those whoare not
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`connectedto the instant messaging service. /d. at 29 (citing Ex. 1003,
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`pp. 49-50).
`
`Dr. Houhtestifies that
`
`[a] POSITA would have been motivated to incorporate Lamb’s
`display that includes status information into Hamberg’s mobile
`stations and workstations to facilitate communication between
`Hamberg’s group members. Hamberg’s stations would benefit
`from a display that displays chat group members, such as
`members in group GI 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 conferencecall.
`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 conferencecall could be initiated with Henry, Lisa, John,
`and Ann. Thus,
`the conference call
`requester could avoid
`attemptingto initiate a call with members whoare notavailable,
`such as those who do not want to participate, those for whom a
`conference call would be an unwanted disturbance, or those who
`are registered into the chat group but are not connected to the
`instant messaging service.
`
`Ex. 1003, pp. 49-50.
`Petitioner contends “[presenting said conferencecall requester with a
`display showinga plurality of potential targets then being connectedto said
`
`instant messaging service and] participating in a given instant messaging
`
`session with the conference call requester and with whom a conference call
`maybeinitiated,” 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 membersofthe
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`group G1 communicate with each other, only the members ofthe group are
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`allowedto participate. /d. at 30 (citing Ex. 1005, 4:23-24). Petitioner
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`contends Hamberg describes in group G2, Max’s status of absent indicates
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`that text messages can be sent to him,but since heis not in active status, he
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`does not want to take part in a possible conference call. Jd. (citing Ex. 1005,
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`4:10-15). According to Petitioner, in Hamberg’s group G1, Henry, Lisa,
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`and John are the membersparticipating in a given instant messaging session
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`with the conference call requester, and with whom a conference call may be
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`initiated. Jd. (citing Ex. 1003, pp. 50-51). Also accordingto Petitioner, in
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`group G2 of Hamberg, members Henry, Lisa, John, and Ann are
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`participating in a given instant messaging session with the conferencecall
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`requester, and with whom a conferencecall maybe initiated. Jd.
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`Petitioner contends Lambdiscloses a MetaTelclient user interface
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`displaying messages from an instant messaging session between twousers,
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`andalso displaying a call buttonto initiate a phone call.
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`/d. at 31-32 (citing
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`1006, Fig. 9; 64:15-17). Petitioner contends that although the MetaTel
`
`client interface shows only two participants in the instant messaging session,
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`Lambalso discloses an instant messaging session involving a group of
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`colleagues, one of whompressesthe call button to set up a conferencecall.
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`Id. at 32 (citing Ex. 1006, cols. 109 and 110).
`
`Petitioner relies on testimony of Dr. Houh to contend incorporating
`
`Lamb’s display ofpotential targets into Hamberg’s mobile stations and
`workstations allows a group memberwhoinitiates a conference call to see
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`which group membersare available for a conference call, and avoid
`
`attempting to initiate a call with group members whoarenot presentin the
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`instant messaging session or whohave indicated they do not wish to
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`participate in the conference call. Pet. 32 (citing Ex. 1003, p. 53).
`
`Dr. Houhtestifies that
`
`Hamberg’s mobile stations and workstations would benefit from
`a display that displays chat group members of group G1 or G2
`that are participating in the respective instant messaging sessions
`because the group member whoinitiates the conference call
`would be able to see which group membersare 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
`conferencecall, the conference call requester may notinitiate a
`conferencecall 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 whoare 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 membernotices that one or more
`group members whoare essential to the conference call are not
`available for a conferencecall.
`
`Ex. 1003, p. 53.
`Petitioner contends “generating a conference call request responsively
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`to a single request by the conference call requester,” as recited in claim 1 is
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`taught by the combination of Hamberg and Lamb.Pet. 33-36.
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`Petitioner contends Hamberg describes a CALL ALIAS message used
`
`to initiate a conference call, and also describes that the group member who
`
`sends the CALL ALIAS messageis a conference call requester. Pet. 33
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`(citing Ex. 1005, 3:4-8). According to Petitioner, the CALL ALIAS
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`message describes a conference call request. /d. at 33.
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`Petitioner contends Lamb’s MetaTelclient interface includesa call
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`button that, when pressed, triggers a setup of an instant conferencecall. Pet.
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`33 (citing Ex. 1006, 109-110). Petitioner also contends the conference now
`
`button of Lamballowsthe user to create a conference at the current moment.
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`Id. (citing Ex. 1006, Fig. 12, 60:38-39). According to Petitioner, pressing
`
`either the call button or the conference now button of Lamb describes a
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`single request by the conferencecall requester. Jd.
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`Petitioner relies on testimony of Dr. Houhto contend incorporating
`
`the call button or the conference now button of Lambinto the userinterface
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`of Hamberg provides the benefit of informing the user that the conference
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`calling feature is available, relieves the user from needing to rememberthe
`
`correct commandwordfor initiating a conferencecall, and reduces the effort
`
`required ofa userto initiate a conference call. Jd. at 33-34 (citing Ex. 1003,
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`pp. 54-56).
`
`Patent Owner contendsthat using the call button or the conference
`
`now button of Lamb requires multiple requests, including selecting the
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`button itself and separately selecting each one of the namesto be included in
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`the conference call. Prelim. Resp. 18-19. Patent Owneralso contends the
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`combination of Hamberg and Lamb would teach a “conference call request”
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`that relies on multiple distinct requests by a conference call requester,
`including the button press and manual selection of each participant in Lamb,
`and Hamberg’s multiple, manually-inputted alias names, but would not teach
`
`“a single request by