UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE, INC.,
`Petitioner,
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`
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`
`
`
`Case IPR2017-01685
`Patent 7,805,948
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`PATENT OWNER RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`
`
`
`
`
`Case IPR2017-01685
`Patent 7,805,948
`
`
`PATENT OWNER RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`
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`
`Table of Contents
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`IPR2017-01685
`U.S. Patent No. 7,804,948
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`INTRODUCTION ........................................................................................... 1
`I.
`RELATED MATTERS ................................................................................... 1
`II.
`III. THE ’948 PATENT ......................................................................................... 2
`IV. OVERVIEW OF REFERENCES CITED IN THE PETITION ...................... 5
`A.
`Tanigawa (EX1014) .............................................................................. 5
`B.
`Liversidge (EX1004) ............................................................................. 7
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 9
`V.
`VI. CLAIM CONSTRUCTION .......................................................................... 11
`VII. ARGUMENT ................................................................................................. 14
`A. No proof of obviousness for “generating a conference call
`request responsively to a single request by the conference
`call requester” ...................................................................................... 14
`B. No proof of obviousness for “said conference call request
`identifying each of the potential targets for said conference
`call request” ......................................................................................... 18
`The Petition does not prove the dependent claims are
`obvious ................................................................................................ 21
`VIII. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW .......................... 21
`IX. CONCLUSION .............................................................................................. 22
`
`List of Exhibits
`Description
`Declaration of William Easttom II
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`Exhibit No.
`2001
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`C.
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`ii
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`IPR2017-01685
`U.S. Patent No. 7,804,948
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`S.A. (“Patent Owner”) submits this Response to the Petition for Inter Partes Review
`(“the Petition”) of U.S. Patent 7,804,948 (“the ‘948 Patent”) filed by Google, Inc.
`(now Google, LLC) (“Petitioner”).
`“In an inter partes review ..., the petitioner shall have the burden of proving a
`proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. §
`316(e). The Petition fails to prove obviousness for at least four overarching reasons:
`the Petition (1) does not address the prosecution history and the import it has on the
`claim construction, (2) relies on a primary reference that expressly teaches away
`from the very limitations for which it is cited; (3) impermissibly picks and chooses
`features from references to the exclusion of remainder of such references, and (4)
`relies on a combination that renders a reference inoperable for its intended purpose.
`See generally Declaration of Chuck Easttom II (“EX2002”).
`II. RELATED MATTERS
`The ’948 Patent is part of family including United States Patent No. 7,853,000
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`(the ’000 Patent) and United States Patent No. 8,571,194 (the ’194 Patent).
`Petitioner has filed the following additional petitions:
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`Petitioner
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`Petition No.
`IPR201-01683
`IPR201-01684
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`Patent. No.
`’194 Patent
`’000 Patent
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`Filing Date
`June 29, 2017
`June 29, 2017
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`1
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`Other petitions, with the following institution dates, have been filed for this
`family of patents:
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`Patent. No.
`Petition No.
`Petitioner
`’194 Patent
`IPR2016-01756
`Facebook/Whatsapp
`’948 Patent
`IPR2017-00058
`Cisco
`’000 Patent
`IPR2017-00198
`Cisco
`’194 Patent
`IPR2017-00597
`Cisco
`One further IPR was filed, but has since been dismissed:
`
`Institution Date
`March 26, 2017
`April 11, 2017
`April 18, 2017
`June 26, 2017
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`Petitioner
`Unify
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`Petition No.
`IPR2016-01076
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`Patent. No.
`’194 Patent
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`Terminated Date
`June 12, 2017
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`III. THE ’948 PATENT
`The ’948 Patent issued from U.S. Application No. 11/019,655 (“the
`application”), filed Dec. 22, 2004, which claims the benefit of the U.S. Provisional
`Application No. 60/531,722 (the ’722 application), filed on December 22, 2003.
`In general, the ’948 Patent discloses and claims various embodiments for
`“initiating conference calls via an instant messaging system to reduce the effort
`required to initiate and manage the call.” EX1001 at Abstract; EX2001 at ¶ 18. The
`’194 Patent claims priority to a provisional application filed on December 22, 2003.
`The art at the time of the invention typically required all users who wanted to
`join a conference call to dial in to a central number and enter a passcode, which
`inhibited setting up spontaneous conference calls and is subject to serious security
`risks. EX1001 at 2:40-58; (EX2001 ¶ 19. Other systems inefficiently required
`someone (such as the host) to separately join each participant to the call, such as by
`taking the time to dial or otherwise separately identify each conference participant.
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`EX1001 at 2:49-3:20; EX2001 ¶ 20. The above nonlimiting examples are among the
`various technological problems addressed by certain teachings of the ’948 Patent.
`Figure 4 of the ’000 Patent illustrates an example system according to certain
`embodiments.
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`As disclosed in the specification of the ’000 Patent, particular embodiments
`disclosed in the ’948 Patent make novel use of certain instant messaging (“IM”)
`technology to facilitate automatic initiation of a conference call between participants
`of an IM session. EX1001 at Figure 2 and accompanying description; EX2001 ¶ 21.
`In the embodiment described with reference to Figure 4, for example, each user
`connects to a network with a network accessible device 414 (NADs, also called
`network access devices). These devices can be computers, digital cellular telephones,
`personal digital assistants (an earlier technology whose functionality has been
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`incorporated into today’s smartphones and tablets), or similar technologies. EX1001
`at 5:39-45; EX2001 ¶ 24.
`The network may be an Internet protocol (IP) network, such as the Internet,
`over which the NADs communicate with each other through instant messaging,
`through an instant messaging service (which may be implemented on a server which
`all NADs communicate with), and a conference call server 402. EX1001 at 9:12-25;
`EX2001 ¶ 25.
`Certain embodiments disclosed and claimed in the ’948 Patent allow a user to
`start a conference call from within an IM session using a single request and in a
`manner which automatically includes each participant in that IM session. See, e.g.,
`EX1001 at 6:22-59 and 7:27-48; EX2001 ¶ 26. The instant messaging service can
`send a request to the conference call server to start a conference call. Id.
`Upon receiving the request, in certain embodiments, the conference call server
`402 may establish the conference call directly by itself or indirectly using a separate
`component or system, which can be provided by a third party (e.g., through one of
`the bridges 410A or 410B). EX1001 at 8:11-40; EX2001 at ¶ 27.
`The conference call server 402 or one of the conference call bridges 410A and
`410B may contact each of the prospective targets, possibly directly dialing their
`phones or, if their NAD has audio and video capability, connecting through it using
`one or more communication networks 408, such as publicly switched telephone
`networks (PSTNs), voice over Internet, or cellular telephone. If the conference call
`server is not provided with a direct number to dial, it may instead inform the
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`prospective targets (e.g., through instant messaging) by giving them instructions to
`join. EX1001 at 8:11-24; EX2001 ¶ 28.
`IV. OVERVIEW OF REFERENCES CITED IN THE PETITION
`Google alleges that Claims 1-4, 6-8, 18, 21, and 22 are obviousness under 35
`U.S.C. § 103 over Tanigawa in view of Liversidge.1,2 Claim 1 is the only
`independent claim challenged in the Petition.
`Tanigawa (EX1014)
`A.
`Tanigawa discloses a cross-device communication platform that enables
`
`communications for text chats and voice chats. EX1014 at 11: 42-61; and 11:62-
`12:6; EX2001 ¶ 37. With reference to Figure 3, copied below, Tanigawa discloses
`that presence information is provided to users to enable them to make subjective
`decisions regarding which client devices they may selectively chose to invite to join
`a text chat or a voice chat. EX2001 ¶¶ 38-43.
`
`
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`1 EX1014, U.S. Patent No. 7,233,589 to Tanigawa (“Tanigawa”)
`2 EX1004, U.S. Patent Pub. No. 2002/0076025 to Liversidge (“Liversidge”)
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`Tanigawa discloses an example scenario where a user identified as “taro”
`desires to create a tax chat conference room and invite certain other users to join.
`EX1014 at 12: 5-6 (“The user ‘taro’ can determine a chat party based on the data.”);
`see also id. at S1006, S1008, and S1010 and at 11:43-61, 12:7-21, 12:38-55, and
`13:26-36; EX2001 ¶ 41. Using his Client A, taro creates a text chat conference room
`and then determines, based on available presence information, which other users and
`their respective may be available to join that room. EX1004 12:11-13:25; EX2001
`¶¶ 38-43.
`The user taro then individually selects each of the clients to be invited to the
`text chat conference room. Id. 13:25-28; EX2001 ¶ 41. In the example provided in
`Tanigawa, the user taro selects only Client D and F for inclusion in the text chat
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`because the presence information management table 488 identifies those clients as
`having “text” usable media registered in the field 435 and the 436 of table 488.
`EX1014 13:21-65; EX2001 ¶ 42. This results in a “participation inviting command
`[to be] 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 F).” Id. (emphasis added);
`see also id. at Fig. 10 and accompanying description.
`With reference to Figure 11, Tanigawa discloses that the user taro again
`accesses the available presence information and then selects which clients to invite
`to a voice chat. See, e.g., EX1014 at S1014 and at 15:10-16:16; EX2001 ¶¶ 45-46.
`In the example provided in Tanigawa, taro chooses to select Client E and Client G
`for invitation to a voice chat. Id.
`Liversidge (EX1004)
`B.
`Liversidge discloses a system for enabling users to communicate across
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`packet-switched networks (PSTNs) and circuit switched networks. EX1004 ¶¶ 71-
`72; EX2001 at ¶ 47.
`FIG. 3 of Liversidge (copied and highlighted below) shows an example virtual
`team environment or VTE where a user denoted by 58a, 58b, 58c has certain PSTN-
`based devices 54a, 54b, and 54c (e.g., denoted as phones) that communicate through
`a public switched telephone network (PSTN) and packet-based devices 58a, 58b,
`and 58c (e.g., denoted as computers or a smart phone) that communicate with a
`packet network 46. EX1004 ¶ 71; EX2001 ¶ 48.
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`Liversidge discloses a scenario where users 58a, 58b, and 58c may wish “to
`terminate the instant messaging session and continue the conversation using an
`alternative type of communications, such as, for example, voice communications.
`Consequently, the VTE client application 44 provides an appropriate icon or button
`(a ConvertSession button) which enables the team member to launch a
`ConvertSession message (at 376) to the collaboration services suite 2 to facilitate
`conversion of the communications session to the desired communications type.”
`EX1004 ¶ 126 (emphasis added); see also id. at ¶¶ 175-181; EX2001 ¶ 50.
`Under the section heading “Converting Communications Sessions From One
`Media to Another” (EX1004 ¶ 175), and with reference to Figures 32, 32a, and 32b,
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`Liversidge provides its sole description of the process of terminating an IM session
`and converting the IM communication session, instead, to a voice communication
`session. Id. ¶¶ 175-0181. Figures 32, 32a, and 32b (and paragraphs 0175-0181),
`describe such a process of terminating the IM session and starting an alternative
`voice session. After the VTE server (identified in Fig. 32 as “VTE Svr”) receives a
`ConvertSession message, the VTE server closes the IM Session. EX1004 at
`reference no. 1140 and ¶ 176; EX2001 ¶ 51. The VTE server also sends status event
`messages to the respective VTE Client device indicating the IM session has been
`closed. EX1004 at reference nos. 1144, 1148, and 1150 and at ¶ 176; EX2001 ¶ 62.
`The VTE server then uses team member registration information stored at a
`connected database to initiate a voice communication session involving each
`registered VTE Client device (e.g., the same devices 54a, 54b, and 54c of the VTE
`previously connected to the IM communication session). EX1004 ¶¶ 176-181;
`IPR2017-01683, Paper 10 at 17 (observing that the same Petition argues it is the
`VTE server 40 in Liversidge that “initiate[s] the voice communication session
`between the current participants of the IM session.”). The process implemented by
`the VTE server to initiate the voice communication involves “formulat[ing] a
`MakeCall message providing the dialed numbers of the team members using VTE
`clients (A), (B) and (C) as well as a dialed number for the conference bridge and the
`session ID (step 1154).” EX1004 ¶ 176.
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`V.
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`PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) is someone who would have
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`possessed on the priority date a bachelor’s degree in electrical engineering or
`computer science (or equivalent degree/experience) with 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.
`EX2001 ¶13.
`Petitioner argues through its declarant, Mr. Lipoff, that a POSITA should be
`defined as “someone knowledgeable
`in collaboration applications and
`telecommunications services who has a Bachelor’s degree in Computer or Electrical
`Engineering, Computer Science, or equivalent training, and approximately five years
`of experience working on computer-based collaboration or telecommunications
`services.” EX1002 ¶ 42. Mr. Easttom finds the requirement of “approximately five
`years of experience” to be excessive. EX2001 ¶ 14.
`Although the parties here offer differing definitions of POSITA, the dispute
`(to the extent it is outcome determinative) should be resolved in Patent Owner’s
`favor because it has offered a definition consistent with the agreed definition in
`related matter IPR2017-01756. There, the petitioner’s declarant defined a POSITA
`as “a person of ordinary skill in the art as of December 2003 possessed at least a
`bachelor’s degree in electrical engineering or computer science (or equivalent degree
`or experience) with 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.” IPR 2017-01756, EX1002 (emphasis added).
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`Mr. Easttom finds such a POSITA definition essentially the same as his definition.
`EX2001 ¶ 15.
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`VI. CLAIM CONSTRUCTION
`Pursuant to 37 C.F.R. § 42.100(b), and for the purposes of this review, Patent
`Owner construes the claim language such that the claims are given their broadest
`reasonable interpretation (“BRI”) in light of the specification of the ’948 Patent.
`Even when giving claim terms their broadest reasonable interpretation, the
`Board cannot construe the claims “so broadly that its constructions are unreasonable
`under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789
`F.3d 1292, 1298 (Fed. Cir. 2015) (emphasis in original). “[T]he protocol of giving
`claims their broadest reasonable interpretation . . . does not include giving claims a
`legally incorrect interpretation” “divorced from the specification and the record
`evidence.” Id. (citations and internal quotation marks omitted); see PPC Broadband,
`Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751–53 (Fed. Cir. 2016).
`As the Board observed, “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.” Paper 10 at 8. However, the Board
`need not construe the terms identified in the Petition in order to resolve the
`controversy here. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
`Cir. 2011) (claim terms “need only be construed to the extent necessary to resolve the
`controversy”).
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`The Petition does, however, inject at least one dispositive claim construction
`dispute over the proper construction of the recitation “generating a conference call
`request responsively to a single request by the conference call requester” (as recited
`in all challenged claims of the ’948 Patent).3 Specifically, Petitioner’s obviousness
`theory attempts to broaden the scope of this claim language to encompass what was
`expressly and successfully distinguished and disclaimed during prosecution.
`Petitioner’s application of an erroneous claim construction provides an
`independent and fully-dispositive basis to deny the Petition in its entirety. See
`Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, at
`*11 (P.T.A.B. June 11, 2015), aff’d sub nom. Synopsys, Inc. v. Mentor Graphics
`Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction
`unreasonable in light of the specification, and therefore, denying Petition as tainted
`by reliance on an incorrect claim construction).
`The intrinsic evidence proscribes interpreting “generating a conference call
`request responsively to a single request by the conference call requester” to
`encompass having the conference call requester individually select those attendees
`whom she wants invited to join the call. Yet that is precisely the scenario described
`in the art relied upon in the Petition. EX2002 ¶ 31.
`
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`3 To clarify the record, Patent Owner did not advance in its Preliminary Response a
`particular claim construction for the recitation “said conference call request
`identifying each of the potential targets for said conference call request” beyond the
`claim language itself. Rather, Patent Owner noted that the claim language itself
`sufficiently provided a definitive context.
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`During 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 to be persuasive):
`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.
`EX1018 at 124-25 (emphasis added). Thus, the intrinsic evidence unambiguously
`confirms, consistent with the explicit claim language, that there is a patentable
`distinction between “a single request by the conference call requester” and, instead,
`requiring the requester to select which attendees to invite to join a conference call.
`Nothing in the prosecution history suggests that the distinction successfully
`raised by the Applicant depends on how the user must select the attendees. Applicant
`made no mention of the particular way in which multiple attendee selection occurs
`because that was not the point of distinction over Haims. Rather, the patentable
`distinction successfully raised during prosecution is simply that Haims required the
`conference call requester to select the attendees for invitation (i.e., regardless how
`the selection occurs). Accordingly, to determine whether the distinction successfully
`raised during prosecution applies equally here, the operative question is not how the
`user in a cited reference must select the conference call attendees, but rather whether
`the user must make such a selection.
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`VII. ARGUMENT
`Petitioner has the burden of proof to establish they are entitled to their
`requested relief. 37 C.F.R. § 42.108(c). The Petition does not satisfy this burden for
`the reasons set forth herein and in the attached Declaration of Chuck Easttom
`(EX2001).
`
`A. No proof of obviousness for “generating a conference call request
`responsively to a single request by the conference call requester”
`The Petition fails to prove obviousness for the recitation “generating a
`conference call request responsively to a single request by the conference call
`requester.” As explained above, the intrinsic evidence unambiguously confirms,
`consistent with the explicit claim language, 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.
`The primary reference cited in the Petition (Tanigawa) fails to disclose and
`teaches away from the claim language at issue at last by expressly requiring what
`the prosecution history unambiguously disclaims. The Petition cites to alleged
`teachings of Tanigawa directed to user identified as “taro” first determining which
`other users can likely participate in voice chatting, and then manually selecting
`corresponding clients for invitation to participate in voice chatting:
`
`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
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`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 whose account names are “client E” and
`the “client G”, respectively, is input to the input device 44.
`EX1014 at 15:53-65.
`As explained above in addressing claim construction, the prosecution history
`unambiguously distinguishes the recitation “a single request by the conference call
`requester” from requiring “a user [to] determine whether attendees are available and
`select ones for invitation” (as disclosed in both Haims and Tanigawa). See Section
`VI, supra. Petitioner’s primary theory essentially asks the Board to second-guess
`the Examiner’s determination of patentability based on a successfully-raised
`distinction and disclaimer that is equally applicable here. The interest of finality
`weighs against revisiting this same issue.
`In its Institution Decision, the Board states that “[t]he 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.” Paper 10 at 15. The Board suggests its
`“appears to be” equivocation is because “Tanigawa does not expressly teach how
`the request is input by a call requester.” Id.
`As explained above in addressing claim construction, the determinative
`question here is not how the user in Tanigawa must select each of the conference
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`call attendees (which, as the Board suggests, Tanigawa fails to adequately explain).
`Rather, the question is whether the user must make such a selection (which
`Tanigawa unambiguously requires). See Section VI, supra. It is irrelevant, for
`example, whether the requesting user must type in multiple selected invitees and
`then hit enter only once or, instead, type in each invitee separately and then hit enter
`for each one. Both scenarios involve the conference call requester manually
`providing input for multiple attendee selections. The intrinsic evidence explicitly
`states this is outside the scope of a “single request by conference call requester.” Id.
`Evidently recognizing the weakness of relying on to Tanigawa alone to prove
`obviousness, the Petition further proposes combing the “convert session button of
`Liversidge in the interface of Tanigawa.” Paper 10 at 14 (citing Pet. 28-29).
`Tanigawa teaches away from the proposed combination for at least two independent
`reasons. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“It is improper to
`combine references where the references teach away from their combination.”).
`First, as explained above, Tanigawa teaches away from the proposed
`combination at least by its reliance on the conference call requester to determine
`who may be available and to select the appropriate clients for invitation to a
`conference call. At least in this respect, Tanigawa is cumulative with the Haims
`reference successfully distinguished during prosecution. See Section VI, supra. This
`cumulative teaching would lead a person of ordinary skill away from the recitation
`“generating a conference call request responsively to a single request by the
`conference call requester,” when properly construed in light of the intrinsic
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`evidence. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (finding that a prior art
`reference teaches away from the claimed invention when a person of ordinary skill,
`upon reading the reference, “would be led in a direction divergent from the path that
`was taken by the applicant.”).
`Second, the proposed combination would render Tanigawa inoperable for its
`intended purpose. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)
`(holding that if proposed modification would render the prior art invention being
`modified unsatisfactory for its intended purpose, then there is no suggestion or
`motivation to make the proposed modification); See In re ICON Health & Fitness,
`Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“a reference teaches away from a
`combination when using it in that combination would produce an inoperative
`result.”).
`Petitioner proposes using Liversidge’s “convert session button” in place of
`Tanigawa’s feature that enables a user to subjectively select the clients for invitation
`to a conference call.4 Yet neither the Petition itself nor its attached declaration
`provides any rational explanation for how the modified system could possibly read
`the user’s mind to determine which client(s) the user would have otherwise
`subjectively selected for invitation (i.e., if the user-selection feature had not been
`
`
`4 Had Petitioner proposed, instead, a combination that applies Liversidge’s “convert
`session button” after a user had manually selected which clients to invite to a
`conference call, the selection itself would still render such a combination outside the
`scope of the claim language, as explained above. See Section VI, supra. In any event,
`the Petition itself raises no such argument and it is therefore waived.
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`replaced, instead, with a single button press of Liversidge’s “convert session button”
`as Petitioner proposes).
`
`B. No proof of obviousness for “said conference call request identifying
`each of the potential targets for said conference call request”
`As explained above (see Section IV.B), Liversidge discloses that the server
`determines whom to include in a conference call, without disclosing or suggesting
`that a conference call request is generated locally at the client and “ident[ies] each
`of the potential targets for said conference call request.” This is undisputed. In
`related matter IPR2017-01683 (filed by the same Petition on the same day),
`Petitioner admitted the following concerning Liversidge:
`The ConvertSession request does not identify the at least one other
`party. (Ex. 1002 ¶ 138.) Instead, VTE server 40 uses the session ID,
`which is associated with the IM session, to “determine . . . the
`participants,” i.e., the at least one other party, information which is not
`included in the ConvertSession request. (Ex. 1004 ¶ [0176]; id. ¶¶
`[0075], [0117]-[0123].)
`IPR2017-01683, Pet. 59. Petitioner has conceded, therefore, that the alleged
`conference call request in Liversidge (i.e., the ConvertSession request sent from the
`VTE client to the VTE server) fails to disclose, and rather teaches away from,
`“identifying each of the potential targets” that are “connected to said instant
`messaging service and participating in a given instant messaging session with the
`conference call requester.” Id.; EX2001 ¶ 64.
`Tanigawa does not cure the acknowledged deficiencies of Liversidge with
`respect to the limitation “said conference call request identifying each of the
`
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`potential targets for said conference call request.” In addressing the dispute
`concerning Tanigawa over this claim language, the Board explained its decision to
`institute trial, at least in part, based on a preliminary observation that “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.” Paper 10 at 15
`(citing EX1014 (Tanigawa) at 15:53-65 and Figs. 3, 5, 10, and 11). While it is
`unclear how the Board’s preliminary observation is relevant to Petitioner’s
`obviousness theory, particularly given the Board makes no citation to the Petition
`or its attached declaration, the observation mischaracterizes Tanigawa and thus
`cannot support a final determination of obviousness.
`Contrary to what the Board states, Tanigawa does not disclose or suggest that
`clients E and G are participating in an IM session at all, let alone are “the only clients
`in the IM session.” Id. Although the Board cites Figures 10 and 11 in Tanigawa, the
`corresponding description states that, after the user named taro creates a text chat
`conference room, taro causes “the participation inviting command [to be] 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 F).” EX1014 13:21-25, 62-65 (emphasis
`added). Tanigawa does not disclose that clients E and G are also invited to, and
`ultimately participate in, the example text chat created by the user named taro.
`In addition, the table shown in Figure 3 of Tanigawa (also cited by the Board)
`identifies clients E and G as having only “voice” capabilities registered in the
`“USABLE MEDIA” field 436. This is significant because Tanigawa’s system
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`“checks whether or not each of the IM clients in the specified records 440 can
`participate in the text chat with reference to the presence information and the usable
`media registered in the field 435 and the [USABLE MEDIA field] 436 of the
`specified records 440.” Id. 13:44-48 (emphasis added). Thus, clients E and G cannot
`be invited to participate in the example text chat created by the user named taro
`because those clients are not appropriately registered for text. A confe
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