Trials@uspto.gov
`571-272-7822
`
`
`Paper 24
`Entered: January 14, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01685
`Patent 7,804,948 B2
`____________
`
`
`Before KEN B. BARRETT, JEFFREY S. SMITH, and MINN CHUNG,
`Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
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`IPR2017-01685
`Patent 7,804,948 B2
`
`
`I. INTRODUCTION
`Petitioner1 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 Owner2 filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). On January 16, 2018, we instituted an inter
`partes review of all the challenged claims. Paper 10. Patent Owner filed a
`Response to the Petition, Paper 13 (“PO Resp.”), and Petitioner filed a
`Reply, Paper 15 (“Pet. Reply”). An oral hearing was held on October 16,
`2018, and a transcript of the hearing is included in the record. Paper 23
`(“Tr.”).
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons discussed below, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–4, 6–8, 18, 21, and 22 of the
`’948 patent are unpatentable.
`A. Related Matters
`The ’948 patent is also the subject of IPR2017-00058.3
`The parties identify several U.S. District Court cases and Patent Trial
`
`and Appeal Board cases as matters involving or related to the ’948 patent,
`including Uniloc USA, Inc. v. Google, Inc., Case No. 2:16-cv-00566 (E.D.
`
`
`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.
`2 Patent Owner’s Mandatory Notice filed on July 20, 2017, identified Uniloc
`Luxembourg S.A. as the Patent Owner. Paper 5. More recently, Patent
`Owner filed an Updated Mandatory Notice identifying Uniloc 2017 LLC as
`the Patent Owner. Paper 17.
`3 Cisco Systems, Inc. (Petitioner) v. Uniloc 2017 LLC (Patent Owner). In a
`Final Written Decision, all challenged claims were held unpatenable.
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`Tex.). Pet. 2, 63–65; Paper 5.
`
`Additionally, Patent Owner identifies as related matters IPR2017-
`01683 (Patent 8,571,194 B2) and IPR2017-01684 (Patent 7,853,000 B2),
`which involve the same parties as the present proceeding. PO Resp. 1–2.
`Oral arguments in those two inter partes review were heard along with those
`in the present proceeding. See Tr. 3:3–4.
`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
`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.
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`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.
`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
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`network communicable device having the appropriate IM software service
`access. Id. at 9:39–41.
`For example, 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
`Claim 1 of the challenged claims of the ’948 patent is the only
`independent claim. 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;
`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
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`
`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. Evidence
`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
`
`Petitioner also relies on the Declaration of Stuart J. Lipoff, dated June
`28, 2017 (Ex. 1002), in support of its arguments. Patent Owner relies on the
`Declaration of William Charles Easttom II, dated October 19, 2017
`(Ex. 2001), in support of its arguments. The parties rely on other exhibits as
`discussed below.
`
`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. Principles of Law
`Petitioner bears the burden of proving unpatentability of the claims
`
`challenged in the Petition, and that burden never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).4 To prevail, Petitioner must establish by a preponderance
`of the evidence that the challenged claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) any objective evidence of
`non-obviousness.5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. The Level of Ordinary Skill in the Art
`Petitioner’s expert, Mr. Lipoff, opines that:
`[A] person of ordinary skill in the art would have been someone
`knowledgeable
`in
`collaboration
`applications
`and
`telecommunications services. That person would have held at
`least a Bachelor’s degree in Computer or Electrical Engineering,
`
`4 To the extent that Petitioner asserts that Patent Owner bears the burden to
`demonstrate patentability, Petitioner is incorrect. See Pet. Reply 1.
`5 The parties have not directed our attention to any objective evidence of
`non-obviousness.
`
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`Computer Science, or the equivalent training, and that person
`would have had approximately five years of experience working
`on computer-based collaboration or
`telecommunications
`services.
`Ex. 1002 ¶ 42; see also Pet. 13–14. Patent Owner’s expert, Mr. Easttom,
`agrees with Mr. Lipoff as to the academic background and states that his
`opinion regarding the level of ordinary skill “appears to largely overlap with
`that offered by Mr. Lippoff,” but “disagree[s] with Mr. Lipoff’s definition to
`the extent ‘ordinary skill’ is interpreted to require more than 4 years of
`academic of experience working on computer-based collaboration or
`telecommunications services [and states that s]uch an amount seems
`inordinate.” Ex. 2001 ¶¶ 13–14. Mr. Easttom opines that the experience
`level should be “at least two years of experience in computer programming
`and software development, including the development of software for
`communication with other computers over a network.” Id. ¶ 13. Mr.
`Easttom does not elaborate as to why he believes the amount of experience
`in Mr. Lipoff’s opinion “seems inordinate.” Rather, Mr. Easttom states that
`he finds his definition indistinguishable from that offered by another
`declarant in another inter partes review involving a different, but related,
`patent. Id. ¶ 15.6
`
`We discern no material difference between the two experts’
`definitions offered in this case. Cf. PO Resp. 10 (Patent Owner arguing that
`the dispute should be resolved in its favor “to the extent it is outcome
`
`
`6 In an earlier inter partes review that involves the ’948 patent, we applied a
`definition similar to the present-Petitioner’s, namely that involving
`“approximately five years of experience working in computer-based
`collaboration or telecommunications services.” IPR2017-00058,
`Paper 17, 6–7.
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`determinative” but not identifying an outcome-determinative difference).
`Both experts’ definitions are consistent with the level of ordinary skill
`reflected in the prior art references of record. We adopt Mr. Lipoff’s
`definition of the person of ordinary skill in the art.
`C. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b) (2018)7; see also Cuozzo
`Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would have been understood by one 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).
`
`Patent Owner asserts that there is a dispositive claim construction
`dispute concerning the recitation “generating a conference call request
`responsively to a single request by the conference call requester.” PO
`Resp. 12. Patent Owner argues that Petitioner’s obviousness theory involves
`an implied construction of the phrase that would “encompass what was
`expressly and successfully distinguished and disclaimed during
`prosecution.” Id. Patent Owner argues “the intrinsic evidence proscribes
`interpreting ‘generating a conference call request responsively to a single
`request by the conference call requester’ to encompass having the
`
`
`7 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11,
`2018) (to be codified at 37 C.F.R. pt. 42).
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`conference call requester individually select those attendees whom she
`wants invited to join the call.” Id. Patent Owner relies on the testimony of
`Mr. Easttom, who offers the opinion that the subject phrase “excludes
`scenarios where a user determines whether attendees are available for a
`conference call and selects such attendees for invitation.” Ex. 2001 ¶ 31
`(emphasis in original); see PO Resp. 12 (citing Ex. 2001 ¶ 31). Patent
`Owner attempts to distinguish the Tanigawa reference by arguing that that
`reference teaches “manually selecting corresponding clients for invitation.”
`PO Resp. 14–16. At oral argument, Patent Owner referred to the claims as
`containing “negative limitations.” Tr. 21:1–22:3. Thus, we understand
`Patent Owner to assert that, through prosecution history disclaimer, the
`“generating” step should be read as containing a negative limitation that
`precludes the requester from determining attendee availability and manually
`selecting attendees for invitation to the conference call.
`
`We begin our claim construction analysis with the claim language
`itself. The pertinent language of independent claim 1 is “generating a
`conference call request responsively to a single request by the conference
`call requester.” Ex. 1001, 12:7–8. This claim term contains two distinct
`requests. One is “a single request” made by the person wishing to initiate a
`conference call (the claimed “conference call requester”). Another is the
`“conference call request” generated in response to that “single request.” It is
`the scope of the “single request” that is the subject of dispute.
`
`Patent Owner contends that “the explicit claim language” is consistent
`with its argument “that there is a patentable distinction between ‘a single
`request by the conference call requester’ and, instead, requiring the requester
`to select those attendees who will be invited to join the call.” PO Resp. 14–
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`15. Petitioner, on the other hand, argues that “nothing in the claims
`precludes selecting attendees before a conference call requester issues the
`‘single request’ to convert an instant messaging session into a conference
`call.” Pet. Reply 2.
`
`While the claim language does contain a recitation of a “single
`request” by the user to generate a conference call request, we fail to discern
`any explicit claim language that precludes the user’s determination as to
`availability or the selection of call participants as part of or as a prelude to
`that recited “single request.” In other words, the language of claim 1 does
`not contain the negative limitation proposed by Patent Owner. Further, if
`Patent Owner’s proposed negative limitation is set forth explicitly in the
`claim language, as Patent Owner suggests, there would be no need for Patent
`Owner to argue that there is a reduction in scope due to a disclaimer. Cf.
`Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir.
`2013) (“[W]hen the patentee unequivocally and unambiguously disavows a
`certain meaning to obtain a patent, the doctrine of prosecution history
`disclaimer narrows the meaning of the claim [relative to the full ordinary
`and customary meaning] consistent with the scope of the claim
`surrendered.”); see Pet. Reply 2 (Petitioner arguing that “Patent Owner
`appears to concede that the claim language itself contemplates selecting
`attendees, otherwise there would be no need to resort to a disclaimer
`argument”).
`
`We now turn to the remainder of the Specification. Neither party
`directs us to any use in the Specification of the phrase “single request” other
`than in the claims themselves. We do, however, find informative the
`Specification’s description of the invention. Additionally, Petitioner points
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`to an example in the Specification as supporting its argument that Patent
`Owner’s proposed negative limitation precluding user selection of attendees
`is inconsistent with the Specification. Pet. Reply 2 (citing Ex. 1001 (the
`’948 patent), 7:34–44; Ex. 1032 (the cross-examination testimony of Patent
`Owner’s expert), 22:19–25).
`
`The Specification describes the problem addressed as the need for
`integration of a conference call into the collaboration process and for a more
`efficient way to initiate such a conference call. See, e.g., Ex. 1001, 2:25–47,
`3:16–20. According to the Specification, there were, at the time, two ways
`to initiate a conference call: 1) via a “Meet Me” call with all the users
`individually dialing in to a conference bridge, or 2) via a “Host-Initiated”
`call with the host calling all the participants individually or with the host
`entering all the phone numbers into a web site that initiates a conference
`bridge or providing them to an operator who initiates the call. Id. at 2:59–
`3:15. The Specification explains that “[t]hese methods are inefficient, in that
`they require a conference call requester or party to the conference call to
`manually inform either the parties to the conference call, or the conference
`bridge itself, of parameters, passwords, and phone numbers for the call.” Id.
`at 3:16–20. Thus, contrary to Patent Owner’s characterization, this portion
`of the Specification does not identify the general act of “separately
`identify[ing] each conference participant[]” as an inefficiency problem to be
`overcome. PO Resp. 2–3 (citing Ex. 1001, 2:49–3:20; Ex. 2001 ¶ 20).
`Rather, the Specification identifies the undesirable inefficiencies as those
`flowing from the need to call everyone individually or to have each
`participant call in individually or for the requestor to identify several specific
`pieces of data, namely parameters, passwords, and phone numbers for the
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`call. See Ex. 1001, 3:16–20.
`
`The disclosed method, according to the Specification, addresses the
`problems of the past, in part, by allowing a conference call requestor to
`transition from an instant messaging session to a conference call without
`requiring each person to dial-in individually or requiring the host to look up
`each participant’s phone number in order to call those persons. Id. at 4:7–
`19.
`
`The present invention may further use the presence component
`of an instant messaging system to determine whether prospective
`attendees are available for a conference call through this
`presence with the instant messaging service, then using stored
`information that includes an address for a party, either through
`an IM channel or at a specific phone number or VOIP address,
`create the ability for instant messaging users to immediately
`create any combination of PSTN, Cellular, and VOIP conference
`calls between users some of whom may be in instant messaging
`sessions, and without the necessity of each user to dial a
`telephone number or having the host look up the phone number
`of each participant in order to place an outbound telephone call.
`
`Id.
`Patent Owner identifies, as an example of a single request by the
`
`conference call requester, that described in the Specification as follows:
`
`When a conference call requester desires to initiate a
`conference call, the conference call requester may generate 106
`a message (hereafter referred to as the “conference request
`message”) to the conference server identifying parties who are
`potential participants (“potential targets”) to a conference call.
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`Id. at 6:36–40; see PO Resp. 4 (citing Ex. 1001, 6:22–59).8
`
`Both parties identify a description of the “more robust embodiment”
`of Figure 3 (Ex. 1001, 7:27–28) as providing further examples of a single
`request. See PO Resp. 4 (citing Ex. 1001, 7:27–48); Pet. Reply 2 (citing
`Ex. 1001, 7:34–44). That portion of the Specification provides:
`
`As shown in FIG. 3, a more robust embodiment of the
`present invention may be implemented to allow further
`functionality. For the purposes of illustration, the Figure shows
`three parties, User A 302, User B 304, and User C 306, involved
`308 in an IM session, such as a chat session which could occur
`during a shared application session. User A 302, the conference
`call requester, could request a conference call through the NAD
`in use by User A. The IM service in communication with User
`A’s NAD could be implemented to be aware of the on-going IM
`session, such that the software would determine the list of
`conference call targets from the list of parties presently in the IM
`session. Thus, User A could request a conference call with one
`step, such as through actuation of a “call now” button or icon
`associated with User A’s IM service. Alternately, User A could
`be provided with a list of participants of the on-going IM session,
`and be provided 312 with the opportunity to add or remove
`potential participants from a planned conference call.
`Ex. 1001, 7:27–44 (emphasis added); see also id. at Fig. 3 (the above-
`referenced box 312 labeled “User A selects which people to have joined in
`the conference”). Thus, the Specification describes that there are at least
`two alternatives by which the requester may make a request—either via a
`
`
`8 While we agree that this portion of the Specification is informative, we
`note that the quoted language more closely tracks with the claim language
`prior to amendment and when the actor performing the “generating” was the
`requester, as opposed to the current phrasing where the “generating” is
`performed responsively to request by the requester. See Ex. 1018, 112 (the
`Amendment that is related to Patent Owner’s prosecution history disclaimer
`argument).
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`one-step button, or by first being offered the opportunity to add or remove
`participants. Accordingly, the Specification indicates that the recited “single
`request” is in contrast to the prior need to make multiple requests, for
`example where the user would have to call (i.e. “request”) each conference
`call participant separately or each participant would have to call in
`separately.
`
`We now turn to the prosecution history, and specifically to that of the
`’948 patent’s parent application, which contains the interactions between the
`examiner and the applicant that are discussed by the parties in the context of
`Patent Owner’s disclaimer argument. See, e.g., PO Resp. 13 (identifying
`Ex. 1018 as the subject prosecution history, and asserting that “[d]uring
`prosecution of the application that issued as the ’948 patent, Applicant
`successfully distinguished the Haims reference, at least in part, with the
`following remarks (which the Office ultimately found persuasive)”).
`
`“Prosecution disclaimer ‘promotes the public notice function of the
`intrinsic evidence and protects the public’s reliance on definitive statements
`made during prosecution.’” Elbex Video, Ltd. v. Sensormatic Elecs. Corp.,
`508 F.3d 1366, 1371 (Fed. Cir. 2007) (quoting Omega Eng’g, Inc. v. Raytek
`Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)). “The doctrine is rooted in the
`understanding that ‘[c]ompetitors are entitled to rely on those representations
`when determining a course of lawful conduct, such as launching a new
`product or designing-around a patented invention.’” Aylus Networks, Inc. v.
`Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017) (quoting Biogen Idec, Inc.
`v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013)); see also
`Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)
`(“[T]he PTO is under no obligation to accept a claim construction proffered
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`as a prosecution history disclaimer, which generally only binds the patent
`owner.”). For prosecution history disclaimer to apply and thereby result in a
`narrowing of the breadth that the claim would have otherwise, the disavowal
`of claim scope must be unambiguous, clear, and unmistakable to one of
`ordinary skill in the art. Elbex Video, 508 F.3d at 1371 (citations omitted).
`
`Patent Owner, the proponent of the disclaimer argument, refers to a
`three-sentence quotation from the prosecution history, which we discuss
`further below. PO Resp. 13; id. at 14–17 (Patent Owner again citing the
`prosecution history section of its brief and arguing that Petitioner’s primary
`reference, Tanigawa, is similar to art discussed during prosecution history,
`and therefore the disclaimer distinguishes the claims over Tanigawa).
`
`Patent Owner’s expert, Mr. Easttom, states the opinion, based on all
`of the intrinsic evidence, that a person of ordinary skill would understand the
`“generating” claim phrase to exclude user determination of availability and
`selection of attendees. Ex. 2001 ¶ 31. Mr. Easttom testifies that his opinion
`is “partially based on the prosecution history” and “note[s]” that quoted
`arguments were made. Id. ¶ 32 (emphasis added). Mr. Easttom concludes
`this section of his declaration with the opinion: “The above phrasing
`pointing to claim language that excludes scenarios where a user determines
`whether attendees are available for a conference call and selects such
`attendees for invitation.” Id. ¶ 33 (emphasis in original). Mr. Easttom does
`not explain how or to what extent his opinion is “partially based” on the
`prosecution history and his conclusory declaration testimony does not
`support a determination that a person of ordinary skill in the art would
`understand there to have been an unambiguous, clear, and unmistakable
`disclaimer of claim scope due to the applicant’s arguments during
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`prosecution. To the contrary, Mr. Easttom’s opinion is that it is the claim
`language itself that excludes the specified scenario. Id. (referring to “claim
`language that excludes scenarios”). As discussed above, we fail to see the
`proposed negative limitation in the claim language, and Mr. Easttom’s
`conclusory opinion does not change our determination in that regard.
`
`Petitioner, in contrast to Patent Owner’s treatment of the issue,
`discusses more of the prosecution history to place the quotation in context,
`and persuasively argues that the applicant did not clearly and unambiguously
`disavow coverage of the selection of attendees. Pet. Reply 1–7. In
`particular, Petitioner contends that Applicant tried to distinguish claim 1
`over Haims by arguing that Haims did not disclose “users who are then
`participating in a common IM session.” Reply 6; see Ex. 1018, 124
`(Applicant argued that “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 requestor responsively to a
`single requestor request.”). Petitioner contends that Applicant’s statements
`do not pertain to a call started by converting from an existing IM session,
`because Haims does not disclose starting a conference call from an existing
`IM session. Reply 6; see Reply 4 (“Nowhere does Haims describe
`converting any on-going instant messaging session to a conference call,
`much less selecting a subset of participants from the instant messaging
`session to attend the call.”).
`We agree with Petitioner that Applicant did not clearly and
`unambiguously disavow coverage of the selection of attendees. During the
`prosecution, the Examiner rejected independent claim 1 as anticipated by
`Haims (Ex. 1017). Ex. 1018, 142–143. Applicant responded by making
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`IPR2017-01685
`Patent 7,804,948 B2
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`several amendments to, inter alia, claim 1, and by presenting arguments. Id.
`at 112 (showing amendments to claim 1), 123–125 (arguments regarding
`claim 1). Applicant amended the “presenting,” “generating,” and
`“establishing” limitations and emphasized all of those limitations in arguing
`against the rejection. Id. We note that, prior to the amendment, the claims
`broadly recited presenting a display of at least one target and recited
`“generating a conference call request by said conference call requestor [i.e.
`the user],” whereas after amendment, the claim required presenting a display
`of a plurality of targets, that the “generating” is performed responsively to a
`single request by that person, and that the step of “establishing a conference
`call connection” was limited to being performed “automatically.” Id. at 112.
`In arguing that the claim as amended overcame the Haims reference, the
`applicant made the following statement that Patent Owner now asserts
`constitutes a disclaimer of subject matter:
`
`Haims neither
`teaches nor even suggests such a
`methodology. Rather, Haims proposes that a user determine
`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 of users who are then participating in a common IM
`session with the requester responsively to a single requester
`request.
`Id. at 124; see PO Resp. 13.
`
`Immediately preceding these assertions is a quotation of the entire
`claim, as amended, with emphasis added to five different phrases. Ex. 1018,
`124. Applicant’s statement that “such a methodology” is lacking in Haims
`refers to the entire claim and specifically to the five emphasized claim
`phrases. Those emphasized phrases include the “automatically establishing
`a conference call connection” that is the subject of the sentence purportedly
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`IPR2017-01685
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`creating the disclaimer. Id. (“In contrast, Claim 1 calls for the system to
`automatically establish a conference call . . . .”). The emphasized phrases
`also include “a plurality of potential targets then . . . participating in a given
`instant messaging session with the conference call requester,” that is also the
`subject of the sentence purportedly creating the disclaimer. Id. (“In contrast,
`Claim 1 calls for . . . a conference call with a plurality of users who are then
`participating in a common IM session with the requester . . . .”). Thus, the
`record does not indicate an unambiguous narrowing of claim scope
`associated with the step of “generating . . . responsively to a single request”
`that would include a negative limitation not already explicit in the claim
`language after amendment. Rather, the record indicates that the applicant
`was attempting to distinguish the claim over Haims due to the combination
`of several phrases that together persuaded the Examiner to allow claim 1.
`
`Although Patent Owner now ascribes the prosecution argument to the
`“generating” limitation (PO Resp. 13), the record indicates that Applicant
`directed that argument to the Examiner’s findings regarding a different
`limitation. See Ex. 1018, 124 (Applicant arguing that Haim’s paragraphs
`110 and 111 “propose[] that