Google
`
`v.
`
`Uniloc
`
`Case IPR2017-01683
`(Patent 8,571,194)
`
`Hearing Before Karl D. Easthom,
`Ken V. Barrett, and
`Jeffrey S. Smith,
`Minn Chung
`
`Oct. 16, 2018
`
`
`
`v.
`
`Uniloc
`
`Case IPR2017-01683
`(Patent 8,571,194)
`
`Hearing Before Karl D. Easthom,
`Ken V. Barrett, and
`Jeffrey S. Smith,
`Minn Chung
`
`Oct. 16, 2018
`
`
`
`Claim 1 of the 194 Patent
`
`1. A non-transitory computer readable medium containing computer
`instructions configured to operate with electronic computer
`hardwareto perform thefollowingsteps:
`display, in an instant messaging (IM) chat windowofa first party, an
`exchange of IM messages betweenthefirst party and at least one
`otherparty,the first party andtheat least one other party being
`current participants to an IM session;
`display for the first party an indication of whethertheat least one
`other party is communicably connected to the IM session;
`displayfor the first party an option to automatically initiate voice
`communication betweenthe current participants of the IM session
`without requiring individual selection of potential members
`includingthe first party andtheat least one other party and
`without requiringregistration with a conferencecall server for
`establishing the voice communication by the potential members
`includingthe first party andtheat least one other party; and
`request, in responseto selection of the option, voice communication
`betweenthefirst party and the at least one otherparty;
`wherein in responseto the request, the voice communicationis
`established betweenthefirst party and thoseof the at least one
`
`
`
`Claim 16 of the 194 Patent
`
`16. A non-transitory computer readable medium containing
`computerinstructions configured to operate with an electronic
`hardware computerserverto perform the followingsteps:
`exchange IM messages betweena first party and at least one other
`party, the first party andtheat least one other party being
`current participants to an IM session;
`send to thefirst party an indication of whethertheat least one
`other party is communicably connected to the IM session;
`receive a requestfrom thefirst party to establish voice
`communication amongstcurrentparticipants of the IM session
`without requiring registration with a conferencecall server for
`establishing the voice communication by potential members
`includingthe first party and theat least one otherparty, the
`request lacking a specific identification of the at least one other
`party;
`determine,after reception of the request, the at least one other
`party from information associated with the IM session;
`wherein after determining the at least one party, the voice
`communicationis established betweenthefirst party and those
`
`
`
`“without requiring registration with a conference call server”
`
`As the intrinsic evidencereveals, and as the Office has
`previously determined, the claim language including the
`recitation “... without requiring registration with a
`conferencecall server...” at least excludes:
`
`1. the registration required in the Hambergreference
`cited by the Examiner;
`
`2. the analogousregistration identified by the Examiner
`in the disclaimed embodiment from the ’194 patent
`specification; and
`
`3. the cumulative registration in the Liversidge
`reference considered by the Examiner during
`prosecution, which contains the same disclosure as
`the Liversidge reference relied uponin the Petition.
`
`
`
`(1) Hamberg successfully distinguished during prosecution from “without requiring registration” limitations
`
`Applicant’s successful distinction of Hamberg during
`prosecution included the following remarks:
`
`Hamberg discloses a conference call established between a pre-
`defined group. A server sets up a conference call between the
`subscribers registered with the server as active in a subscriber group.
`(See the Abstract of Hamberg). More specifically, the conference
`call is set up between persons registered to the group at the
`conference call server which establishesthe call. (See paragraph 25
`Of Hamberg). [{] .
`.
`. Hamburg thus requires an active registration
`of each subscriber with the group at
`the server establishing a
`conference call so that the conferencecall can be set up between the
`registered subscribers.
`[§]
`In contrast, Applicant’s amended
`independent claim 103 [now Claim 1] displays an option forthefirst
`party to automatically initiate voice communication between the
`current participants of the IM session without requiring prior
`registration with a conference call server for establishing the voice
`communication by potential members. Thatis, current participants
`of the IM session (or other potential members) need not have
`registered, e.g., with the conference call server that establishes the
`conference call,
`in order to be potential members for the voice
`communication.
`
`
`
`(1) Hamberg successfully distinguished during prosecution from “without requiring registration” limitations
`
`Hambergdiscloses that when a conferencecall is requested,
`the serverwill establish a conference call only between
`those group-membersubscribers whoare currently
`registered with the conference call server for the
`
`Hamberg describesits process for setting up a conference call with reference
`
`to Figure 5. EX2002 4 25. It is significant to the present dispute that, when a
`
`conference call is requested, Hamberg does not require users to then complete an
`
`additional or separate registration at that time. Rather, when a call is requested, the
`
`server confirms (in step 5-4), based on stored registration information, whether the
`
`call requester “is [already] registered and hasthe right to send the set-up message.”
`
`Id. (emphasis added); see also id. § 28 (“Ifthe subscriber sending the conferencecall
`
`set-up messageis not registered or the memberin question does not havethe right
`
`to set up the conference call in question, the initiation routine of the conferencecall
`
`is ended in step 5-15.”).°
`
`
`
`“without requiring registration” limitations
`
`(2) Disclaimer during prosecution reveals proper interpretation of
`
`The prosecution history also provides insight as to the properinterpretation
`
`of the definitive statement “without requiring registration with a conference call
`
`server by the potential members ....” Specifically, in the Advisory Action dated
`May 13, 2012, the Examiner expressed concern that the °194 Patent itselfrequired
`a form ofregistration similar to that disclosed in Hamberg: “[t}he entire paragraph
`
`56 ofApplicant’s published application describes checking to see whether a useris
`
`or is not already a subscriber to the conference service.” EX1018 at 124.
`
`(IPR2017-01683,
`Responseat 7-8)
`
`The conference call server in communication with User
`A’s NAD may be provided with functionality for assessing
`charges associated with the conferencecall.
`
`(‘194 patent, 7:55-59)
`
`
`
`heisnotallowedtousetheservice,Although not shown, User
`
`
`
`
`
`In response to the Advisory Action, Applicant expressly disclaimed as an
`
`alternative (and hence unclaimed) embodiment the particular form of required
`registration with a conference call server disclosed in the paragraph of the *194
`Patent cited by the Examiner (which required checking to see whether User A is
`
`(IPR2017-01683,
`Responseat8)
`
`
`
`“,..without requiring registration with a conferencecall server ...”
`
`Simply put, at a minimum, this claim language is not satisfied by art that
`
`requires “registration with a conferencecall server” in the form of a conferencecall
`
`server checking stored information to confirm whether a potential participant is or
`
`is not currently registered as a subscriber to the requested conferencecall service.
`
`EX2001 § 32. As will be shown,this is precisely what Liversidge (the reference
`
`relied upon in the Petition) requires. EX2001 § 32.
`
`Patent Ownerrespectfully submits the Board should reconsiderits preliminary
`
`interpretation of claim scope (as currently understood) because it appears to
`
`encompass both the successfully-distinguished registration check in Hamberg and
`
`the disclaimed registration embodiment
`
`in the °194 Patent. Neither of those
`
`similarly-described forms of registration require the potential participants to
`
`complete an additional or separate registration (e.g., by manually reentering
`
`registration information) when someone requests to transition an IM session to a
`
` (IPR2017-01683,
`Response at 27)
`
`(IPR2017-01683,
`Response at 28)
`
`
`
`(3) The Examiner considered Liversidge/Thompson during prosecution
`mane
`
`6 S
`
`PTONSBO8 (07-09)
`U.S. Patent and Tradermark Office: U.S. DEPARTMENT OF COMMERCE
`Substitute tor form 1449/PTO
`aececcentne tena eee a
`Y
`
`1995. no persons ere required to respondtb ® collection ofinformation uniess & contains @ veld OMB control sumberUnder the Papers Reductos Act oflAppacationNumber|12/907, 550
`INFORMATION DISCLOSURE
`STATEMENTBY APPLICANT
`
`
`
`wa2614
`
`(Use as many sheots as nocessary)
`
`H.
`
`HONG
`
`et
`Apgecant of Cited Docurrent
`MMLOO-YYYY
`
`06-24-2003_Nixon
`
`
`
`08-18-2002
`|-——
` ys.20020076420020071540_ oehsons
`
`=eeUS-6,
`11-18-2003|Shoff et al
`
`
`101-06-2004Kadyketal00000000PO
`[fa] sosara208[Gren
`
`Liversigeetal
`
`
`
` ee
`04-27-2006 |Green, et al.
`
`
`
`_
`
`—
`
`:
`
`Inctuce name of the author (im CAPITAL LETTERS) tithe of the articte (when appropriate) tithe of
`the fom (book, magazine, journal, serial, symposium, catalog. etc.) Gate, page(s), volume-issue
`bens)
`puts
`City
`andlor co
`where pub
`
`
`
`
`
`
`
`emmes}HanyHong eres|cozezor2|Ue Hany Hong
`
`
`
`(3) Liversidge (like Hamberg) is excluded by “without requiring registration with a conference call server”
`
`FIG.1444b Liversidge, EX1004, at Figure 14 Liversidge discloses a system that
`
`44a
`44¢
`40
`42
`allows only a “team member” who
`PS.
`:
`:
`is registered with a conferencecall
`serverto initiate a voice
`communication sessionin a
`“virtual team environment”
`
`|
`|
`> Create Team (Team [DeToam Nama)
`Seloct Members (ClientB, ClientC)
`reateTeam (Team ID, Client A,Client B,ClientC)
`
`|A
`
`234
`
`VTEserver40,which forwards StatusEvent messages(at
`a invitation (Team ID, ClientA,
`Client8,ChientC)
`.
`.
`260
`Liversidge, EX1004,at [100]
`
`ddMomber (Team |D, ClientA)
`S
`StatusEvent (Team ID, ClientA added)
`
`(abbreviated as VTE) CreateTeam (Team |0)
`
`
`
`registration with a conference call server”
`
`(3) Liversidge (like Hamberg) is excluded by “without requiring
`
`Liversidge discloses(e.g., in Fig. 5 and accompanying description)thatits
`VTEservernot only handlesregistration but also establishes the voice
`
`communication session within a virtual team environmentor VTE:
`
`
`
`(3) Liversidge (like Hamberg) is excluded by “without requiring registration with a conference call server”
`
`EIG. 32 Convert 3-Way IM Session to 3-Way Voice Communications Session
`
`
`
` oe oe4
`«8 @@ ©&ee peri
`
`Patent Owner’s expert
`summarized Liversidge’s
`registration check (performed
`when converting from an IM
`session to an alternative voice
`session), in part, as shown on the
`right (see EX2001 at Dp. 24).
`
`65. VTE Svr also sends status event messages to the respective
`device indicating the IM session has been closed.
`(Ex. 1004 at 1144, 1148,
`
`and 1150; Ex. 1004 at Par. 0176).
`
`the
`66. With respecting to starting an alternative voice session,
`process continues by the VTE server consulting the table 43 for registered
`
`membership information and communication information. (Ex. 1004 at Par.
`
`176).
`
`67. With reference back to Figure 2, for registered members, item
`
`“43 b contains device identifiers and associated address information (e.g.
`
`PSTN destination number,
`
`IP address,
`
`
`address)
`
`for
`
`each
`
`
`
`registration with a conference call server”
`
`(3) Liversidge (like Hamberg) is excluded by “without requiring
`
`Patent Owner’s expert opinedthat the respective
`descriptions of a required registration check in
`HambergandLiversidge are “strikingly” similar:
`84.
`Inmy opiniodsa baty are the registration processes in Hamberg
`
`t
`
`and Liversidge the same, the disclosures concerning such registration are
`
`strikingly the same as further described below.
`
`85.
`
`Both describe a group or team tables located on a database.
`oo
`\
`
`
`
`Status Table
`
`
`
`Memoers Logged in|Devices|Watchers
`
`PC, DN|A,B,C
`PC, ON|B,A,C
`PC, ON|C,A,8
`
`(EX2001, pp. 30-34)
`
`
`
`
`
`Fig. 2 of Hamberg ontheleft, Fig. 2 of Liversidge on the right
`
`86. Withreference to the samefigures, both maintain membership in
`
`
`
`“without requiring individual selection” and the “request lacking a
`
`Specific indication of the at least one other party”
`
`ThePetition relies on disclosurein Liversidge
`that teaches the opposite of the claim language:
`
`appropriate contact information is available. Accordingly,
`the invitation object 374 includes a directory search frame
`422 which provides access to one or more directories
`
`
`
`theywishtodirecttheinvitation.The directories accessed
`
`Pet. 30 (citing EX1004 J 134);
`discussed, e.g., in Response at 29-30.
`
`
`
`
`v.
`
`Uniloc
`
`Case IPR2017-01684 and -01685
`(Patent 7,853,000 and Patent 7,805,948)
`
`Hearing Before Karl D. Easthom,
`Ken V. Barrett, and
`Jeffrey S. Smith,
`Minn Chung
`
`Oct. 16, 2018
`
`
`
`Claims 1 of the 000 Patent
`
`1.A methodfor initiating a conferencecall for a conferencecall
`requester using a networkaccess device, the network access
`device communicating via an instant messagingservice, the instant
`messaging service being adapted to communicate conferencecall
`request information with a conferencecall server, comprising:
`indicating, at the networkaccess device, a plurality of potential
`targets then being connectedto the instant messaging service and
`participating in a given instant messaging session with the
`conference call requester;
`generating a conference call request responsively to a single request
`by the conferencecall requester, said conferencecall request
`identifying each of the indicated potential targets; and
`transmitting the conference call request to the conferencecall server;
`wherein, a conferencecall connection initiated by the conferencecall
`server and connectedto the conferencecall requestor and each of
`the indicated potential targets is automatically established
`
`
`
`Claim 1 of the 948 Patent
`
`1. A methodforinitiating a conferencecall, comprising the stepsof:
`providing a conference call requester with a networkaccess device, said
`networkaccess device communicatingvia an instant messagingservice,
`said instant messaging service being adapted to communicate conference
`call request information with a conferencecall server;
`establishing a communications connection from said networkaccess device
`to the conferencecall server;
`presenting said conferencecall 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 conferencecall maybeinitiated;
`generating a conferencecall request responsively to a single request by the
`conference call requester, said conferencecall requestidentifying each of
`the potential targets for said conferencecall request;
`transmitting said conferencecall request from said networkaccessdevice to
`said conferencecall server; and
`automatically establishing a conferencecall connection to said conference
`call requester, said conferencecall connectioninitiated by said conference
`call server, said conferencecall connection further being connected to
`
`
`
`Tanigawa is cumulative with successfully distinguished art (Haims)
`
`Pros. History distinguishes art (Haims) from “single request” limitations:
`
`Haims neither teaches nor even suggests such a methodology. Rather, Haims proposes
`that auserdetermine whether attendees are available and select ones for invitation. See, e.g.
`pars. [0110] and [0111]. in contrast, Claim 1 calls for the system to automatically establish a
`
`conference call with a plurality ofusers who are then participating in a common IM session with
`
`the requester responsively to a single requester request:
`
`Resp. 6 (quoting EX2002 at 124-25)
`
`Tanigawais cumulative
`with Haimsandis
`distinguishable for the
`same reasons:
`
`Now,it is assumed that, the user “taro” determines, from
`the information on the buddy list displayed in the display
`device and by exchanging messages through text chatting,
`that the users “hanako” and “yoshi” participating in the
`conference can participate in voice chatting by using IM
`client (the VoIP telephone 8 and the radio terminal 9) having
`the account names “client E” and “client C”, respectively. In
`addition, it is assumed that the user “taro” determines that
`each of the users “hanako” and “yoshi” has an intention to
`participate in voice chatting. Then, it is assumed that an
`instruction for requesting to voice-chat with the IM clients
`Resp. 16 (quoting EX1014 15:53-65) Whose account names are “client E” and the “client G”,
`
`
`
`Liversidge does not cure Tanigawa’s deficiencies
`
`No proof that it would have been obvious to replace Tanigawa’s user-
`selection feature with, instead, Liversidge’s “convert session button”
`and that such a combination mapsonto the claim language:
`
`Y The proposed modification would render Tanigawainoperable by
`eliminating a feature (like Haims) that relies upon the conference
`call requester to determine who maybeavailable and to select the
`appropriateclients for invitation to a conferencecall.
`
`Y Evenif replaced as proposed, neither the Petition itself norits
`attached declaration provides any rational explanation for how the
`modified system could possibly read the user’s mind to determine
`whichclient(s) the user would have otherwise subjectively
`selected for invitation.
`
`Y The proposed combination runsafoul of the limitation “said
`conferencecall request identifying each of the potential targets for
`said conferencecall request”
`
`
`
`“said conferencecall request identifying each of the potential targets for said conference call request’
`
`Petitioner has arguedthat Liversidge’s request sentto the
`server doesnotidentify each of the potential targets:
`
`[16f] “the request lacking a specific identification of the at least
`one other party;”
`
`Liversidge discloses this limitation. (Ex. 1002 §] 138.) The ConvertSession
`
`request received by VTEserver 40 “provides session ID and a newsession type.”
`
`(Ex. 1004 § [0176];
`
`id. §§ [0126], [0176]-[0181].) The ConvertSession request
`
`does not identify the at least one other party. (Ex. 1002 § 138.) Instead, VTE (IPR2017-01683, Pet. 59
`addressed in IPR2017-
`01684 Resp. 19-22)
`
`[16g] “determine, after reception of the request, the at least one
`other party from information associated with the IM session;”
`
`Liversidge discloses this limitation. (Ex. 1002 § 139.) After reception of the
`
`request. VTE server 40 determines the at least one other party from information
`
`associated with the IM session. (/d.) Particularly, “[o]n receipt of the message[i.e.,
`
`the request], the VTE servertranslates the session ID (step 1138) to determine the
`
`session type and the participants.” (Ex. 1004 4 [0176].) Liversidge explains that the
`
`
`
`potential targets for said conference call request’
`
`“said conferencecall request identifying each of the
`
`Tanigawa’s request doesnot identify each of the potential
`targets at least because the claim languagedefines “potential
`targets,” at least in part, as “then being connectedto the
`instant messaging service and participating in a given instant
`messaging session with the conference call requester”
`
`Tanigawastates Clients D and F are
`participating in chat session but are not
`identified in the conferencecall request
`
`Next, the command processing portion 484 causes the
`output data creating portion 485 to create, for each IM client
`determined as being able to participate therein, a participa-
`tion inviting commandincluding the address and the nick-
`nameofthe conference room and the nickname “taro” ofthe
`IM client, whois inviting the participation. The participation
`inviting commandcreated for each IM client determined as
`being able to participateis IP-packetized in the packet |
`assembling portion 486 andis sent to each of the addresses
`of the destination IM clients via the IP network 1 (S1011).
`Here, the participation inviting command is sent to the IM
`terminal 7-1 (account name of the IM client: client D) and
`the IM terminal 7-3 (account name of the IM client: client
`
`Clients E and G cannotbe “potential
`targets” because they are not & cannot
`participate in an IM session
`
`
`
`
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