Trials@uspto.gov
`571-272-7822
`
`
`Paper 10
`Entered: January 16, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC1,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01685
`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 C.F.R. § 42.108
`
`
`
`
`
`
`
`1 Petitioner indicates “Google Inc. converted from a corporation to a limited
`liability company and changed its name to Google LLC on September 30,
`2017.” Paper 7, 2.
`
`
`571-272-7822
`
`
`Paper 10
`Entered: January 16, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC1,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01685
`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 C.F.R. § 42.108
`
`
`
`
`
`
`
`1 Petitioner indicates “Google Inc. converted from a corporation to a limited
`liability company and changed its name to Google LLC on September 30,
`2017.” Paper 7, 2.
`
`
`
`IPR2017-01685
`Patent 7,804,948 B2
`
`
`I. INTRODUCTION
`Petitioner filed a Petition for inter partes review of claims 1–4, 6–8,
`18, 21, and 22 of U.S. Patent No. 7,804,948 B2 (Ex. 1001, “the ’948
`patent”). Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). Institution of an inter partes review may not be
`authorized by statute “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.” 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 reasonable likelihood that it
`would prevail in establishing the unpatentability of claims 1–4, 6–8, 18, 21,
`and 22 of the ’948 patent. Accordingly, we institute an inter partes review.
`A. Related Matters
`The ’948 patent is the subject of IPR2017-00058.
`Both parties identify that the ’948 patent was asserted against Google,
`Inc., in Uniloc USA, Inc. v Google, Inc., Case No. 2:16-cv-00566 (E.D.
`Tex.). Both parties also identify several other civil actions related to the
`’948 patent.
`
`B. The ’948 Patent
`The ’948 patent relates generally to a method for initiating 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 for initiating the call
`itself. Ex. 1001, 1:13–17. Conference calls are initiated via an instant
`messaging (IM) system to reduce the effort required to initiate and manage
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`the call. Id. at Abstract. The system uses an IM connection between a
`requesting party and a conference call server to inform the conference call
`server of the desire to initiate the conference call. Id. The conference call
`server initiates the conference call by having involved parties called by a
`conference bridge, thus reducing the effort required by the parties to join the
`call. Id. Figure 4 of the ’948 patent is reproduced below.
`
`
`
`Figure 4 above shows a block diagram of a system for accomplishing
`the initiation of conference calls. Ex. 1001, 9:13–14. Conference call server
`402 is connected to network 404. Id. at 9:14–15. Database 406, associated
`with conference call server 402, stores account information, user
`information, and call management information. Id. at 9:15–18. The
`conference call server can be connected directly to telephone network 408,
`or indirectly through third party conference bridge 410. Id. at 9:22–25.
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`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 determine a list of parties
`involved in a shared application session. Id. at 9:26–30. The users connect
`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 determines the list of conference call
`targets from the list of parties presently in the IM session. Id. at 7:34–38.
`The conference call server sends a conference call invitation to User B and
`User C. Id. at 7:64–66. If User B and User C accept the conference call
`invitation, the conference call server prompts User B and User C, via the IM
`functionality, to verify their phone numbers for the conference call. Id. at
`7:66–8:10. The conference call server then initiates a conference call bridge
`between the conference requester and the targets. Id. at 8:11–12.
`C. Illustrative Claim
`Claims 1, 23, and 51 of the challenged claims of the ’948 patent are
`independent. Claim 1 follows:
`1. A method for initiating a conference call, comprising
`the steps of:
`providing a conference call requester with a network
`access device, said network access device communicating via an
`instant messaging service, said instant messaging service being
`adapted to communicate conference call request information
`with a conference call server;
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`establishing a communications connection from said
`network access device to the conference call server;
`presenting said conference call requester with a display
`showing a plurality of potential targets then being connected to
`said instant messaging service and participating in a given instant
`messaging session with the conference call requester and with
`whom a conference call may be initiated;
`generating a conference call request responsively to a
`single request by the conference call requester, said conference
`call request identifying each of the potential targets for said
`conference call request;
`transmitting said conference call request from said
`network access device to said conference call server; and
`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
`Petitioner relies on the following references. Pet. 9–10.
`Reference Title
`Date
`Tanigawa US 7,233,589 B2
`Filed Aug. 30, 2002
`Liversidge US 2002/0076025 A1 Filed Dec. 18, 2000
`
`Ex. No.
`Ex. 1014
`Ex. 1004
`
`E. Asserted Ground of Unpatentability
`Petitioner contends that claims 1–4, 6–8, 18, 21, and 22 of the
`
`’948 patent are unpatentable under 35 U.S.C. § 103 over Tanigawa and
`Liversidge.
`
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`II. ANALYSIS
`
`A. Alleged Unconstitutionality of Inter Partes Reviews
`Patent Owner objects to the use of inter partes reviews as
`
`unconstitutional, arguing that adversarial challenges to a patent are suits at
`common law subject to the Seventh Amendment’s guarantee of a jury trial
`and arguing that patents are private property rights for which “disputes
`concerning their validity” must be litigated in an Article III court. Prelim.
`Resp. 31–32. Patent Owner asserts that institution should be denied on this
`basis. Id.
`
`Patent Owner’s arguments relate to the constitutionality of inter
`partes review generally. At this time, no court has found inter partes review
`unconstitutional, and we are bound by Federal Circuit precedent. MCM
`Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1288–92 (Fed. Cir.
`2015), cert. denied, – U.S. –, 137 S.Ct. 292 (2016). As Patent Owner
`acknowledges, the case Oil States Energy Services LLC v. Greene’s Energy
`Group, LLC, No. 16-712, 137 S. Ct. 2293, 2017 WL 2507340 (June 12,
`2017) currently is before the U.S. Supreme Court. Patent Owner’s
`arguments as to denial of this Petition on this basis are premature.
`
`B. Asserted Redundancy
`Patent Owner argues that the Petition should be denied under 35
`
`U.S.C. § 325(d) “as presenting vertically redundant grounds.” Prelim.
`Resp. 24. Patent Owner asserts that Petitioner has alleged that Tanigawa
`alone discloses certain claim features and, in the alternative, that Tanigawa
`in combination with Liversidge discloses those features, but that Petitioner
`has failed to explain why each alternative is the stronger position for a
`particular instance. Id. at 24–25. Patent Owner further argues that “[s]uch
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`redundancies place a significant burden on both the Board and the patent
`owner, causing unnecessary delay, compounding costs to all parties
`involved, and compromising the ability to complete review within the
`statutory deadline.” Id. at 36 (citations omitted).
`
`We have considered Patent Owner’s arguments in light of the
`challenges articulated in the Petition, and we are not persuaded that we
`should deny institution based on redundancy.
`
`C. Level of Ordinary Skill in the Art
`Petitioner and Patent Owner each propose a definition of the person of
`
`ordinary skill in the art. Pet. 13–14; Prelim. Resp. 18. Patent Owner asserts
`that its definition differs from that of Petitioner, specifically referring to the
`number of years of experience. Prelim. Resp. 19 (citing Ex. 2001 ¶ 42).
`Patent Owner, however, does not explain how any difference between the
`two parties’ definitions of the ordinary artisan has any substantive effect on
`this case. See id. at 18–19. On this record and for purposes of this decision,
`we determine that there is no need to define the level of ordinary skill in the
`art expressly, and we will consider the cited prior art as representative of the
`level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001).
`
`D. 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, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard applied
`in inter partes reviews). Consistent with the broadest reasonable
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`construction, claim terms are presumed to have their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in the context
`of the 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. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes the claim terms “network access device” (recited
`in claims 1–3, 21, and 22), “address” (recited in claim 18), “conference call”
`(recited in all challenged claims), and “VoIP” (recited in claim 6) have been
`expressly defined in the ’948 patent. Pet. 14–15.
`Patent Owner proposes construing “generating a conference call
`request responsively to a single request by the conference call requester” in
`light of the prosecution history to exclude a user determining whether
`attendees are available and selecting ones for a conference call invitation.
`Prelim. Resp. 21. Patent Owner quotes an argument made by the applicant
`during prosecution: “Claim 1 calls for the system to automatically establish
`a conference call with a plurality of users who are then participating in a
`common IM session with the requester responsively to a single request.” Id.
`(citing Ex. 1018, 125). Nevertheless, on this limited record, Patent Owner
`does not explain adequately how its prosecution history arguments pertain to
`a dispositive issue in this case.
`Patent Owner also proposes construing the “conference call request”
`to require identifying “each of the indicated potential targets” as recited in
`claim 1. Prelim. Resp. 22–23.
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`For purposes of this Decision, we determine 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 controversy).
`
`E. Asserted Obviousness Over Tanigawa and Liversidge
`Petitioner, relying on the Declaration of Stuart Lipoff (Ex. 1002),
`challenges claims 1–4, 6–8, 18, 21, and 22 as obvious over the combination
`of Tanigawa (Ex. 1014) and Liversidge (Ex. 1004). Pet. 15–63.
`1. Tanigawa (Ex. 1014)
`Tanigawa relates communication technology such as Instant
`Messaging. Ex. 1012, 1:6–7. Figure 1 of Tanigawa is reproduced below.
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`Figure 1 above shows a diagram of an IM-Voice over Internet
`Protocol (VoIP) communication system. Ex. 1014, 3:56–59. An IM client
`is installed in each of IP terminals 7-1 to 7-3. Ex. 1014, 3:67–4:1. IM
`server 4 manages presence information regarding each of the IM clients. Ex.
`1014, Abstract. In order to perform text chatting, IM server 4 manages a
`connection between each of the IM clients participating in the chat. Id. In
`order to perform voice chatting, AP server 5 manages a connection between
`each of the IM clients participating in the chat and MD server 6. Id.
`Figure 11 of Tanigawa is reproduced below.
`
`Figure 11 above shows a diagram for an operation of switching from
`text chat to voice chat. Ex. 1014, 3:17–20. In this example, a user having a
`nickname “taro” participates in IM using IP terminal 7-2 (with account name
`“client A”) including both text chat and voice chat functions. Ex. 1014,
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`10:32–36. Another user having a nickname “hanako” participates in the IM
`using IP terminal 7-1 (with account name “client D”) including only text
`chat functions, and using VoIP telephone 8 (with account name “client E”).
`Id. at 10:36–42. Another user having a nickname “yoshi” participates in the
`IM using IP terminal 7-3 (with account name “client F”) including only text
`chat functions, and using radio terminal 9 (with account name “client G”).
`Id. at 10:42–46.
`IP terminal 7-2 receives an instruction for requesting information
`regarding chat buddies during text chatting from taro and sends the buddy
`list request to IM server 4 (S1014). Id. at 15:10–22. The buddy list is then
`created and sent to IP terminal 7-2 (S1015), where the list is displayed to
`taro, so that taro can check whether a buddy in the conference room can
`voice chat. Id. at 15:36–52. Taro determines from the information in the
`buddy list and through text chatting that the users hanako and yoshi, who are
`participating in the text chat, can participate in voice chatting using client E
`and client G, respectively, and also have an intention to participate in voice
`chatting. Id. at 15:53–62.
`Taro inputs an instruction for requesting to voice-chat with the IM
`clients whose account names are client E and client G to input device 44 of
`IP terminal 7-2. Id. at 15:62–65. IP terminal 7-2, in accordance with the
`instruction for requesting voice chatting from user taro, creates a voice
`chatting request command, including the names of the IM clients to be
`invited to the voice chat, and sends the command to AP server 5 (S1016).
`Id. at 15:67–16:11. AP server 5 sends a mixing setting request command to
`MD server 6 (S1017). Id. at 16:12–30. Once processing is completed, a
`connection for voice chatting is established between the MD server 6 and
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`each of the IM clients (IP terminal 7-2, VoIP telephone 8, and radio
`telephone 9). Id. at 17:57–60.
`2. Liversidge (Ex. 1004)
`Liversidge relates to a virtual team environment that facilitates
`collaboration among geographically dispersed team members using a
`distributed application Ex. 1004 ¶ 3. Communications sessions are
`automatically set up by the collaboration services suite in response to request
`messages generated by a virtual team environment (VTE) client when a team
`member initiates a communications session request using a graphical user
`interface (GUI). Ex. 1004, Abstract. Team members require no knowledge
`of another team member's communications device address in order to initiate
`a communications session. Id. A collaboration services suite includes a
`VTE server that communicates with the VTE clients, a presence engine that
`collects and maintains a status of communications devices specified in a
`current profile of the team member, and a call server for handling setup and
`control of a voice component of each communications session completed.
`Id.
`
`Current participants of an instant messaging session may terminate the
`instant messaging session and continue the conversation using an alternative
`type of communication such as voice. Ex. 1004 ¶¶ 126, 176. An
`appropriate icon or button, such as a convert session button, enables a team
`member to launch a convert session message to facilitate converting the
`session to the desired type of communication. Id.
`3. Analysis of Claims 1–4, 6–8, 18, 21, and 22
`Claim 1 recites “providing a conference call requester with a network
`access device.” Petitioner contends this limitation is disclosed by Tanigawa
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`in describing a user nicknamed “taro” provided with an IP terminal 7-2
`connected to an IP network. Pet. 29–33 (citing Ex. 1014, Figs. 1, 11, 10:32–
`46, 15:53–65).
`Claim 1 recites “said network access device communicating via an
`instant messaging service.” Petitioner contends this limitation is disclosed
`by Tanigawa in describing the user taro participating in IM with other users
`using IP terminal 7-2. Pet. 33–34 (citing Ex. 1014, 6:58–66, 10:32–46).
`Claim 1 recites “said instant messaging service being adapted to
`communicate conference call request information with a conference call
`server.” Petitioner contends this limitation is disclosed by Tanigawa in
`describing an IM client such as IP terminal 7-2 being adapted to
`communicate a voice chatting request command to AP server 5 over the IP
`network. Pet. 34–37 (citing Ex. 1014, 6:18–22, 6:58–66, 7:57–63, 15:60–
`16:11, Fig. 11 (step 1016)).
`Claim 1 recites “establishing a communications connection from said
`network access device to the conference call server.” Petitioner contends
`this limitation is disclosed by Tanigawa in describing IP terminal 7-2
`logging in to the IM server to initiate an IM session with IP terminals 7-1
`and 7-2, then sending a voice chatting request command to the AP server
`during the IM session. Pet. 37–38 (citing Ex. 1014, Figs. 10 and 11, 15:53–
`16:11).
`Claim 1 recites “presenting said conference call requester with a
`display showing a plurality of potential targets then being connected to said
`instant messaging service and participating in a given instant messaging
`session with the conference call requester and with whom a conference call
`may be initiated.” Petitioner contends this limitation is disclosed by
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`Tanigawa in describing a buddy list displayed at IP terminal 7-2 indicating
`which buddies participating in the text conference room can voice chat. Pet.
`38–40 (citing Ex. 1014, 15:40–52).
`Claim 1 recites “generating a conference call request responsively to a
`single request by the conference call requester.” Petitioner contends this
`limitation is taught by the combination of Tanigawa and Liversidge. Pet.
`40–43.
`Petitioner contends Tanigawa discloses a “request by the conference
`call requester” in describing the user Taro inputs into terminal 7-2 an
`instruction for requesting to voice-chat with other IM clients. Pet. 40 (citing
`Ex. 1014, 15:59–65). Petitioner contends Tanigawa discloses “generating a
`conference call request responsively” to the request in describing creating a
`voice chatting request command in response to the instruction requesting
`voice-chat. Pet. 40–41 (citing Ex. 1014, 15:66–16:7).
`Petitioner contends Liversidge discloses that the conference call
`request is generated “responsively to a single request” in describing a
`convert session button viewable in the instant messaging interface which
`enables a user to launch a convert session message to facilitate converting
`the Instant Messaging session to a voice communications session. Pet. 41–
`42 (citing Ex. 1004 ¶¶ 126, 176).
`Petitioner, relying on testimony from Mr. Lipoff, contends a person of
`ordinary skill in the art would use the single convert session button of
`Liversidge in the interface of Tanigawa to provide the benefit of a user-
`friendly way to automatically initiate a conference call between participants
`of an IM session. Pet. 28–29 (citing Ex. 1002 ¶ 69). Petitioner contends
`that the use of a single button to generate a conference call request as
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`described in Liversidge also would operate successfully in the system of
`Tanigawa and would increase the utility of the graphical interface of
`Tanigawa by simplifying the interface. Pet. 42 (citing Ex. 1002 ¶ 82).
`Patent Owner alleges that, in Tanigawa, the user can choose to select
`client E and client G shown in Figure 11 of Tanigawa, and contends that this
`does not disclose the claimed “single request by the conference call
`requester,” read in light of the prosecution history. Prelim. Resp. 27 (citing
`Ex. 1014, 15:63–65). According to Patent Owner, Tanigawa thus fails to
`disclose and teaches away from the “generating” step of claim 1. Id.
`However, the cited section of Tanigawa describes inputting an
`instruction requesting voice chat with clients E and G. See Ex. 1014, 15:63–
`65. Clients E and G, corresponding to users named “hanako” and “yoshi,”
`appear to be the only clients in the IM session who are both present and
`capable of voice chat. See Ex. 1014, 15:53–65, Figs. 3, 5, 10, 11. The
`instruction described by Tanigawa appears to be a single instruction for
`requesting voice chat for each participant of the IM session then being
`connected to the IM session and with whom a conference call may be
`established. Id. To the extent that Tanigawa does not expressly teach how
`the request is input by a call requester, Mr. Lipoff testifies that Liversidge
`teaches that a person of ordinary skill would have understood that the call
`requester only has to push one button once to input the single request. Ex.
`1002 ¶ 87.
`Patent Owner contends Liversidge does not teach a conference call
`request that identifies each of the potential targets for the conference call
`request. Prelim. Resp. 27–28. However, Petitioner relies on Tanigawa to
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`teach generating a conference call request that identifies each of the potential
`targets for the conference call request. Pet. 40–41.
`Patent Owner contends that it is improper to consider Liversidge to
`teach “generating the conference call request responsively to a single request
`by the conference call requester,” and ignore Liversidge for teaching “said
`conference call request identifying each of the potential targets for said
`conference call request.” Prelim. Resp. 28–30. Patent Owner also contends
`that substituting the lookup feature of Liversidge for the buddy list feature of
`Tanigawa would render Tanigawa inoperable for its intended purpose.
`Prelim. Resp. 30.
`However, Petitioner’s expert, Mr. Lipoff, testifies that Tanigawa and
`Liversidge both describe similar systems for converting an IM session to a
`conference call, and that a person of ordinary skill would have understood
`that using a single button to generate a call request as described in
`Liversidge, would also operate successfully in Tanigawa. Ex. 1002 ¶ 88.
`Mr. Lipoff’s testimony provides evidence that pressing a single
`button, such as the convert session button taught by Liversidge, to generate
`the conference call request taught by Tanigawa, would have been obvious to
`a person of ordinary skill in the art. For purposes of this decision, we credit
`Mr. Lipoff’s testimony and determine at this stage of the proceeding that
`Petitioner has sufficiently established that combination of Tanigawa and
`Liversidge teaches pressing the convert session button of Liversidge to
`generate the conference call request of Tanigawa.
`Claim 1 recites “said conference call request identifying each of the
`potential targets for said conference call request.” Petitioner contends this
`limitation is disclosed in Tanigawa in describing the voice chatting request
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`command includes the names of the IM clients to be invited to the chat. Pet.
`43 (citing Ex. 1014, 15:66–16:7).
`Claim 1 recites “transmitting said conference call request from said
`network access device to said conference call server.” Petitioner contends
`this limitation is disclosed by Tanigawa in describing IP terminal 7-2
`sending the voice chatting request command to the AP server over the IP
`network. Pet. 43–44 (citing Ex. 1014, 16:7–11, Fig. 11).
`Claim 1 recites “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.” Petitioner contends
`Tanigawa discloses this limitation in describing an AP server that receives
`the voice chatting request identifying each target from the IP terminal 7-2,
`and establishes a connection for voice chatting that connects the requester,
`“taro,” and each of the targets. Id. at 45 (citing Ex. 1014, 15:59–17:39,
`17:57–59). Petitioner contends that a person of ordinary skill in the art
`would have understood the AP server establishes the connection
`automatically because the conference call is established in direct response to
`IP terminal 7-2 transmitting its request command over the IP network to the
`AP server, without further interaction from the user. Id. at 45–46 (citing Ex.
`1002 ¶ 92).
`To the extent Tanigawa does not disclose “automatically establishing
`a conference call connection” limitation feature, Petitioner alternatively
`contends Liversidge “expressly discloses automatic operation, teaching a
`method of ‘automatically converting a communications session from one
`communications medium to another,’ for example, from an instant
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`messaging session to a voice communications session.” Id. at 45–48
`(quoting Ex. 1004 ¶ 0176 (emphasis added).) Petitioner relies on the
`testimony of Mr. Lipoff, who testifies it would have been obvious to employ
`automatic processing to relieve users of “additional involvement.” See Ex.
`1002 ¶ 95. Petitioner similarly notes that the combined teachings provide a
`“simple and user-friendly means” of connection; in other words, automatic
`processing provides efficiency and simplicity for the user. See Pet. 28–29;
`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
`F.3d 1356, 1368 (Fed. Cir. 2006) (“[W]e have repeatedly held that an
`implicit motivation to combine exists not only when a suggestion may be
`gleaned from the prior art as a whole, but when the ‘improvement’ is
`technology-independent and the combination of references results in a
`product or process that is more desirable, for example because it is stronger,
`cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”)
`We determine at this stage of the proceeding Petitioner has articulated
`sufficient reasoning to support its conclusion of obviousness. We also
`determine the Petition and supporting evidence adequately establishes a
`reasonable likelihood that the combination of Tanigawa and Liversidge
`teaches the limitations of claim 1.
`Claim 2 recites “said instant messaging service comprises a software
`client active on said network access device.” Petitioner contends Tanigawa
`discloses this limitation in describing a CPU that executes an IM client
`program loaded onto a memory of a computer system. Pet. 48–49 (citing
`Ex. 1014, Fig. 12, 6:58–7:6).
`Claim 3 recites “said instant messaging service comprises an internet
`accessible application, said internet accessible application being
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`communicably connected to said network access device via the Internet.”
`Petitioner contends Tanigawa discloses this limitation in describing an IM
`server that manages instant messaging between IM clients on each IP
`terminal across the IP network. Pet. 49–50 (citing Ex. 1014, Fig. 1, 3:66–
`4:1, 4:24–5:24).
`Claim 4 recites “wherein said internet accessible application
`comprises a browser viewable web page.” Petitioner contends Liversidge
`discloses this limitation in describing a virtual team environment (VTE)
`client, or instant messaging service, that can access a VTE server using a
`browser application in a manner known in the art. Pet. 52 (citing Ex. 1004
`¶¶ 66, 76–78, 135). Mr. Lipoff testifies that the manner “known in the art”
`was for instant messaging services to connect individuals across the Internet
`via an Internet browser application. Ex. 1002 ¶ 101.
`Claim 6 recites “said conference call connection utilizes a voice over
`internet protocol communications path.” Petitioner contends Tanigawa
`discloses this limitation in describing an IM–Voice over Internet Protocol
`(VoIP) interconnecting system, where IP terminals communicate via a VoIP
`pathway. Pet. 53–55 (citing Ex. 1014, Figs. 1, 10 ,11, 3:56–59, 10:36–42).
`Claim 7 recites “wherein said conference call connection provides for
`video data transmission.” Petitioner contends Tanigawa discloses this
`limitation in describing the system for voice chatting may be applied to the
`system for video chatting. Pet. 55–56 (citing Ex. 1014, 27:10–13).
`Claim 8 recites “said conference call connection utilizes a cellular
`communications path.” Petitioner contends Tanigawa discloses this
`limitation in describing an IM client as a mobile telephone connected to a
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`Patent 7,804,948 B2
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`radio communication network. Pet. 57–59 (citing Ex. 1014, Fig. 1, 3:60–
`4:5, 4:10–14).
`Claim 18 recites “said conference call request comprises addresses for
`a plurality of targets.” Petitioner contends Tanigawa discloses this limitation
`in describing a voice chatting request command that includes the client
`addresses of the IM clients to be invited to the chat. Pet. 60 (citing Ex.
`1014, 15:66–16:7).
`Claim 21 recites “said network access device comprises a capability
`for communicating audio information via an Internet protocol connection.”
`Petitioner contends Tanigawa discloses this limitation in describing IP
`terminal 7-2 as a personal computer with a headset that that sends voice
`information across the IP network pursuant to the connection for voice
`chatting established between the MD server, and each of the IM clients. Pet.
`60–62 (citing Ex. 1014, Fig. 1, 10:32–36, 17:57–60).
`Claim 22 recites “said network access device comprises a capability
`for communicating audio and visual information via an Internet protocol
`connection.” Petitioner contends Tanigawa discloses this limitation in
`describing that the system for voice chatting may be applied to a system for
`video chatting. Pet. 62 (citing Ex. 1014, 27:10–13).
`Further regarding the challenged dependent claims 3, 7, 8, and 22,
`Petitioner alternatively relies on teachings in Liversidge to supplement the
`teachings of Tanigawa, providing sufficient rationale for the combination on
`this limited record. See Pet. 49–51, 55–59, and 62–63.
`After reviewing Petitioner’s arguments and evidence, and Patent
`Owner’s responses, we determine that Petitioner has, on this preliminary
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`record, shown a reasonable likelihood that it would prevail in establishing
`the unpatentability of each of the challenged dependent claims.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes
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