Filed: June 29, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`
`GOOGLE, INC.,
`Petitioner,
`
`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`
`_________________
`
`Case No. IPR2017-01685
`U.S. Patent No. 7,804,948
`_________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,804,948
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`I.
`II.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Statement of Precise Relief Requested for Each Claim Challenged ............... 3
`A.
`Claims for Which Review Is Requested ............................................... 3
`B.
`Statutory Ground ................................................................................... 3
`III. Background and Technology of the ’948 Patent ............................................. 4
`A.
`State of the Art ...................................................................................... 4
`B. Overview of the ’948 Patent .................................................................. 9
`IV. The Level of Ordinary Skill in the Art ..........................................................13
`V.
`Claim Construction ........................................................................................14
`VI. Claims 1-4, 6-8, 18, 21, and 22 Would Have Been Obvious over
`Tanigawa in View of Liversidge ...................................................................15
`A. Overview of Tanigawa ........................................................................15
`B. Overview of Liversidge .......................................................................21
`C.
`Rationale to Combine Tanigawa and Liversidge ................................25
`D.
`The Tanigawa/Liversidge Method Renders Obvious Claims 1-
`4, 6-8, 18, 21, and 22 ...........................................................................29
`1.
`Independent Claim 1 .................................................................29
`2.
`Claim 2 ......................................................................................48
`3.
`Claim 3 ......................................................................................49
`4.
`Claim 4 ......................................................................................52
`5.
`Claim 6 ......................................................................................53
`6.
`Claim 7 ......................................................................................55
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`Claim 8 ......................................................................................57
`7.
`Claim 18 ....................................................................................60
`8.
`Claim 21 ....................................................................................60
`9.
`10. Claim 22 ....................................................................................62
`VII. Petitioner Raises a New Ground of Unpatentability .....................................63
`VIII. Mandatory Notices.........................................................................................64
`A.
`Real Party-in-Interest Under 37 C.F.R. § 42.8(b)(1) ..........................64
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ...................................64
`C.
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................66
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) .............................66
`IX. Grounds for Standing .....................................................................................67
`X.
`Conclusion .....................................................................................................67
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Cisco Sys., Inc. v. Uniloc USA, Inc.
`IPR2017-00058, Paper 6 (P.T.A.B. Apr. 11, 2017) ....................................... 2, 63
`Cisco Sys., Inc. v. Uniloc USA, Inc.,
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`IPR2017-00198, Paper 7 (P.T.A.B. Apr. 21, 2017) ........................................... 64
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`Cisco Sys., Inc. v. Uniloc USA, Inc.,
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`IPR2017-00597, Paper 7 (June 26, 2017) ........................................................... 64
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`Facebook, Inc. v. Uniloc USA, Inc.,
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`IPR2016-01756, Paper 9 (P.T.A.B. Mar. 16, 2017) ........................................... 64
`Unify Inc. v. Uniloc USA, Inc.,
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`IPR2017-01076, Paper 6 (June 7, 2017) ............................................................. 64
`Statutes
`35 U.S.C. § 102 .......................................................................................................... 3
`35 U.S.C. § 103 .......................................................................................................... 3
`35 U.S.C. § 311 .......................................................................................................... 3
`35 U.S.C. § 325 ........................................................................................................ 63
`Statutes
`37 C.F.R. § 42.8 ................................................................................................. 64, 66
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`TABLE OF EXHIBITS
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`Exhibit
`Ex. 1001
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`Description
`U.S. Patent No. 7,804,948 to Turner (“the ’948 patent”)
`
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
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`Declaration of Stuart J. Lipoff
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`Curriculum Vitae of Stuart J. Lipoff
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`U.S. Patent Pub. No. 2002/0076025 to Liversidge (“Liversidge”)
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`U.S. Patent No. 7,058,036 to Yu (“Yu”)
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`Bill Michael, Hey, Buddy . . ., 2000 COMPUTER TELEPHONY 49 (2000)
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`U.S. Patent No. 7,984,098 to Enete (“Enete”)
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`U.S. Patent No. 7,085,258 to Creamer (“Creamer”)
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`Ex. 1009
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`U.S. Patent Pub. No. 2002/0023131 to Wu (“Wu”)
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`Ex. 1010
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`Ex. 1011
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`Jabber.com, Inc., MeetingOne and Jabber.com Team Up to Provide
`Advanced Business Teleconferencing Services (Feb. 9, 2010)
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`Yahoo! Integrates WebEx Meeting Capabilities Into Yahoo!
`Messenger Enterprise Edition; WebEx Meeting Center Service
`Available From Within Enterprise Instant Messaging Offering, PR
`NEWSWIRE (June 11, 2003)
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`Ex. 1012
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`AOL ICQ vs MSN Messenger, University of Southampton
`Department of Electronic and Computer Science, available at
`http://mms.ecs.soton.ac.uk/mms2003/ (Jan. 11, 2003)
`
`Ex. 1013 WIPO Patent Pub. No. WO 02/21816 to Hamberg (“Hamberg”)
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`Ex. 1014
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`U.S. Patent No. 7,233,589 to Tanigawa (“Tanigawa”)
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`Ex. 1015
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`U.S. Patent Pub. No. 2003/0185232 to Moore (“Moore”)
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`Ex. 1016
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`U.S. Patent Pub. No. 2004/0141606 to Torvinen (“Torvinen”)
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`Ex. 1017
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`
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`U.S. Patent Pub. No. 2003/0105820 to Haims (“Haims”)
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`Ex. 1018
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`Prosecution History of U.S. Patent No. 7,804,948
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`Ex. 1019
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`Proof of Service of Process of Complaint
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`I.
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`Introduction
`Petitioner Google, Inc. requests inter partes review of claims 1-4, 6-8, 18,
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`21, and 22 of U.S. Patent No. 7,804,948 (“the ’948 patent”) (Ex. 1001). The ’948
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`patent relates to a system and method of using an instant messaging service, and its
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`corresponding network connection, to communicate with a conference call server
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`and initiate a call between members of an ongoing instant messaging session.
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`(Ex. 1001 at Abstract.) This system and method, however, were not new at the
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`time of the ’948 patent. Rather, it was well known that instant messaging services
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`could be adapted to facilitate multi-person voice communications, and thereby
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`“reduce the effort required to initiate and manage [a conference] call.” (Id.; see
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`Ex. 1013; Ex. 1014; Ex. 1004; Ex. 1015.)
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`As the ’948 patent indicates, instant messaging is the “simplest form” of on-
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`line collaboration. (Ex. 1001 at 1:28-41.) It uses presence information indicating
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`when a user may be present, and thereby facilitates real-time discussions across a
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`network. (Id.) It was quickly ascertained that instant messaging was “closely
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`related to voice and video communications [infrastructure-wise],” and that its
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`presence information could beneficially enable real-time voice communication.
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`(E.g., Ex. 1006 at 5, 8.) Accordingly, many began modifying instant messaging
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`services to enable means of communication beyond just simple text messaging.
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`(See, e.g., Ex. 1013; Ex. 1014; Ex. 1004; Ex. 1015; cf. Ex. 1016; Ex. 1017.)
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`Several systems, such as that in Hamberg (Ex. 1013), specifically used an
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`instant messaging service to communicate with a conference call server, and to ask
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`that server to initiate a call between members of an ongoing instant messaging
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`session. These adaptations were the natural and obvious next step in implementing
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`real-time voice communication. In April 2017, the Board instituted a petition
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`challenging several claims of the ’948 patent, finding a reasonable likelihood that
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`Hamberg and other references rendered those claims obvious. See Cisco Sys., Inc.
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`v. Uniloc USA, Inc., IPR2017-00058, Paper 6 at 6-7, 33 (P.T.A.B. Apr. 11, 2017)
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`(instituting inter partes review based on references not raised in this Petition, e.g.,
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`Hamberg (Ex. 1013); U.S. Patent Nos. 6,747,970 and 6,237,025; and U.S. Patent
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`Pub. No. 2003/0086411).
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`This Petition—the first by Google against the ’948 patent—now challenges
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`not only those claims, but also additional claims (i.e., claims 3 and 4), and relies on
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`two different references, Tanigawa (Ex. 1014) and Liversidge (Ex. 1004). Neither
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`has been used to challenge the claims of the ’948 patent to date, and neither was of
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`record during prosecution. Yet both, together, render obvious claims 1-4, 6-8, 18,
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`21, and 22 of the ’948 patent.
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`II.
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`Statement of Precise Relief Requested for Each Claim Challenged
`A. Claims for Which Review Is Requested
`Petitioner respectfully requests review under 35 U.S.C. § 311 of claims 1-4,
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`6-8, 18, 21, and 22 of the ’948 patent, and cancellation of those claims as
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`unpatentable.
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`Statutory Ground
`B.
`Claims 1-4, 6-8, 18, 21, and 22 of the ’948 patent are unpatentable as
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`obvious under 35 U.S.C. § 103 over Tanigawa (Ex. 1014) in view of Liversidge
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`(Ex. 1004), which are identified in the table below:
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`Prior Art References
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`Tanigawa, U.S. Patent No. 7,233,589; issued June 19, 2007, from an
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`Ref. 1:
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`application filed in the United States on August 30, 2002; prior art
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`under at least pre-AIA 35 U.S.C. § 102(e).
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`Liversidge, U.S. Patent Pub. No. 2002/0076025; published on June
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`20, 2002, from an application filed in the United States on
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`December 18, 2000; prior art under at least pre-AIA 35 U.S.C.
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`§ 102(a), (b), and (e).
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`3
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`Ref. 2:
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`Petition for Inter Partes Review
`U.S. Patent No. 7,804,948
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`III. Background and Technology of the ’948 Patent
`State of the Art
`A.
`By the late 1990s, instant messaging emerged as a popular communication
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`mechanism. (Ex. 1002 ¶ 24; Ex. 1004 ¶ [0008] (indicating that instant messaging
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`services “experienc[ed] explosive growth with millions of subscribers” by 2000).)
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`This was due in large part to “the growth of the Internet and Worldwide Web, and
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`the concomitant desire to ‘be connected’” and “simulate face-to-face interaction.”
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`(See Ex. 1005 at 1:32-35, 1:61-63; Ex. 1002 ¶ 24; Ex. 1005 at 1:44-48
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`(“Advantageously, instant messaging thus avoids the need for the recipient to
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`actively retrieve the message from a mailbox and therefore more closely
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`approximates face-to-face communications.”).) It was also because instant
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`messaging offered presence information that enabled users to access “an indication
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`of other IM clients currently available to receive instant messages.” (Ex. 1005 at
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`2:42-44; see also Ex. 1006 at 5 (“We believe that presence is what is really
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`compelling about instant messaging products, . . . and that presence can be used to
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`negotiate the communication mechanisms that you use today — the phone, e-mail,
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`etc. — as much as it can instant messages.”); Ex. 1002 ¶ 24.)
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`Many quickly realized the benefits of real-time messaging and presence
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`data, and began adapting the instant messaging framework to facilitate other modes
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`of communication. (See Ex. 1006 at 5; see also id. at 8 (“[Some believed] that it
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`would be relatively simple to integrate IM and presence with voice, video, and
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`U.S. Patent No. 7,804,948
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`other forms of communication. . . . [Indeed, i]nstant messaging and presence is
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`just another form of interactive communications, and they’re really quite closely
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`related to voice and video communications
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`. . . [f]rom an
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`infrastructure
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`perspective . . . .”); Ex. 1002 ¶ 24.) Several adaptations involved sending audio
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`and video files through an instant messaging service. (Ex. 1002 ¶ 25.) Yu, for
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`example, designed a system where a user could “speak a response to the instant
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`message,” have that response recorded and compressed into an audio file, and then
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`send that file to another user through an instant messaging service by “preferably
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`encapsulat[ing the audio file] as part or all of the payload in an instant message.”
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`(See Ex. 1005 at 14:42-51.) Similarly, Enete developed a system that used an
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`instant messaging service to send video files between users. (See Ex. 1007 at
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`Abstract; see also id. at 11:45-52, 13:62-16:23.)
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`Others adapted instant messaging services to establish a real-time voice
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`communication between users. (Ex. 1002 ¶ 26; Ex. 1004 ¶ [0010] (describing
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`Microsoft Corporation’s NetMeeting®, “which is adapted to enable collaboration
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`between two or more people using text chat, streaming video, and/or voice over
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`Internet Protocol (VoIP) conversation”).) Indeed, as Creamer indicated, “IM/Chat
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`systems work well for many communications, but there are times when clients
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`would prefer voice communications. . . . [O]n occasion the contents or subject
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`matter of an IM/Chat session can give rise to a desire for voice communications.”
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`(Ex. 1008 at 1:23-27.) Accordingly, Creamer created an instant messaging system
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`capable of implementing real-time voice communications by (1) “inserting in an
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`IM a voice communications identifier”; (2) “transmitting the IM to a recipient”;
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`and then (3) “responsive to the recipient selecting the voice communications
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`identifier, establishing a voice communications link with the recipient.” (Id. at 2:5-
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`12.) The communication link could be through a Voice over Internet Protocol
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`(“VoIP”) connection or through a telephony-based communications link on a
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`public switched telephone network (“PSTN”). (Id. at 2:12-20; Ex. 1002 ¶ 26.)
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`Wu also addressed real-time voice communication “between the sender and
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`the recipient through the instant messaging host.” (See Ex. 1009 ¶ [0005];
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`Ex. 1002 ¶ 27.) Wu envisioned its client devices, such as personal computers,
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`using instant messaging services connected through a communications link like the
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`Internet. (See, e.g., Ex. 1009 ¶¶ [0015], [0018], [0036], [0060], [0062].) The
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`instant messaging hosts were then adapted to transfer audio data, thereby
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`“extend[ing] the functionality of instant messaging by allowing the sender 602a
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`and the recipient 602b to communicate peer to peer via audio, i.e., microphone and
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`speaker.” (Id. ¶ [0066].) In one embodiment, Wu described initiating an instant
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`messaging session, assessing whether the other participant was “talk enabled,” and,
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`upon a determination of talk capabilities, providing a “START TALK” button to
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`“initiate a talk session.” (Id. ¶¶ [0066]-[0071].) The sender could then select the
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`“START TALK” button and send a talk request to the recipient. (Id. ¶¶ [0072]-
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`[0073].) The recipient, upon receiving the talk request, could select the
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`“CONNECT” button and “engage in a talk session.” (Id. ¶¶ [0073]-[0075].) In
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`addition to this real-time peer-to-peer example, Wu also contemplated applying its
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`talk session to a conference call with more than two users. (See, e.g., id. ¶ [0082]
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`(“The talk tool may support additional functionality including, but not limited to,
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`multi-conferencing . . . . Multi-conferencing allows more than two users to engage
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`in a talk session.”); Ex. 1002 ¶ 27.)
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`But Wu was not the only reference to establish a multi-person conference
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`call through an instant messaging service. (Ex. 1002 ¶ 28-29.) Several companies
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`devised instant messaging services with conference call capabilities between
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`February 2001 and June 2003. (See, e.g., Ex. 1010 (Jabber.com); Ex. 1011
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`(Yahoo); Ex. 1012 (AOL and MSN Messenger).) And many discussed adapting
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`instant messaging services to specifically communicate with a conference call
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`server to initiate a call between users of an ongoing instant messaging session.
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`(Ex. 1002 ¶ 29; Ex. 1013; Ex. 1014; Ex. 1004; Ex. 1015; accord Ex. 1016 ¶ [0008]
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`(indicating that “it is possible to move from message chatting to conference calling
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`by one of the subscribers in the subscriber group sending a pre-defined message to
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`the server, which message acts as a signal to the server to move to conference
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`calling”); id. (“This methodology requires that the group conference is set up after
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`U.S. Patent No. 7,804,948
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`the desired members of the conference call are already present during a group chat
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`with text messaging.”); cf. Ex. 1017.)
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`Hamberg, for example, developed a method of “mov[ing] from message
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`chatting to conference calling by one of the subscribers in the subscriber group
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`sending a pre-defined message to the server, which message acts as a signal to the
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`server to move to conference calling.” (Ex. 1013 at Abstract.) Hamberg describes
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`a subscriber participating in a group chat sending a “short message CALL,” which
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`may include an “ALIAS” that identifies certain subscribers then participating in the
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`group chat, to a quick message server. (Id. at 6:1-2; see also id. at 4:27-32.) Upon
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`receipt of that “CALL” message, the quick message server processes the request
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`and initiates a conference call session between the users of an ongoing instant
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`messaging session. (See id. at 6:2-32; see also id. at 1:25-27 (“The server reacts to
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`the conference call request by setting up a conference call between the active
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`members of the group.”).)
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`As described above, instant messaging services naturally evolved from text
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`chatting to facilitating larger, multi-person conference calling. (Ex. 1002 ¶ 30.)
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`Hamberg is just one example depicting the integration of these services.
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`(Ex. 1013; see also Ex. 1014; Ex. 1004; Ex. 1015.) By the 2003 priority date of
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`the ’948 patent, there was nothing new about this type of system or functionality.
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`U.S. Patent No. 7,804,948
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`(Ex. 1002 ¶ 30.)
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`B. Overview of the ’948 Patent
`The ’948 patent similarly depicts a “system and method for initiating
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`conference calls via an instant messaging system.” (Ex. 1001 at Abstract;
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`Ex. 1002 ¶ 31.) Specifically, it describes using “a communications channel
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`established through an instant messaging service to transmit a request to initiate a
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`conference call from a network access device associated with a conference call
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`requester to a conference call server.” (Ex. 1001 at 3:51-58.) The conference call
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`server, “upon receiving the request,” “may directly or indirectly establish a
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`conference bridge, initiate a series of outbound calls to each of the selected users
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`from the instant messaging session, and seamlessly join those users in a conference
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`call using a conference bridge.” (Id. at 3:55-58, 4:23-28.) Figure 4, reproduced
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`below, depicts an embodiment of the ’948 patent.
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`(Id. at Fig. 4.)
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`As shown in Figure 4, the conference call server (402) connects to a network
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`(404) and stores data relating to account information, user information, and call
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`management information (406). (Id. at 9:13-18; Ex. 1002 ¶ 32.) The conference
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`call server may then connect directly with telephone networks (408), or indirectly
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`through a third party conference bridge (410), to facilitate a conference call.
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`(Ex. 1001 at 9:18-25; Ex. 1002 ¶ 32.)
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`The users (A, B, and C) similarly connect to the network through network
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`access devices (414). (Ex. 1001 at 9:39-41; Ex. 1002 ¶ 33.) As the ’948 patent
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`describes, each network access device may be, inter alia, a computer, a server, a
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`personal digital assistant, or a mobile telephone. (Ex. 1001 at 5:39-45; Ex. 1002
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`¶ 33.) Each network access device then connects to the “network to which a
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`conference call server is connected, as well as to an instant messaging service
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`adapted to communicate a conference call request to the conference call server.”
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`(Ex. 1001 at 6:24-27.) Specifically, the instant messaging service connected to
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`each network access device is capable of requesting that a conference call be
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`initiated, and may recite parameters associated with the call in its request. (See id.
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`at 6:27-31.)
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`During an instant messaging session involving users A, B, and C, one user
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`(“the conference call requester”) may request a conference call through its instant
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`messaging service. (Id. at 6:36-41, 6:64-66, 7:27-44; Ex. 1002 ¶ 34.) The
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`requester generates a message identifying each party that may be a potential
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`participant (“targets”) in the conference call. (Ex. 1001 at 6:36-41; see also id. at
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`7:34-44 (“The IM service in communication with User A’s NAD could be
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`implemented to be aware of the on-going IM session, such that the software would
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`determine the list of conference call targets from the list of parties presently in the
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`IM session.”); Ex. 1002 ¶ 34.) Each target may be identified by an alias, or by a
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`specific phone number or address. (Ex. 1001 at 6:41-47.) The message is then
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`sent across the network to the conference call server. (See id. at 6:47-50; Ex. 1002
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`¶ 34.)
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`The conference call server receives the request and “parse[s] . . . the
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`received message to determine the address of the selected conference call targets.”
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`(Ex. 1001 at 6:51-54; Ex. 1002 ¶ 35.) The conference call server may also process
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`whether each user is a subscriber to the server, and whether each user has adequate
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`charge information. (Ex. 1001 at 7:45-8:10.) “The conference call server may
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`then initiate 114 or request initiation of a conference bridge between the
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`conference call requester and the conference call targets.” (Id. at 6:57-59.) The
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`conference call server may further be connected to a telephone network or VoIP
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`connection to facilitate the call. (See id. at 9:13-25; Ex. 1002 ¶ 35.)
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`
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`Claims 1, 23, and 51 of the ’948 patent are independent. Claim 1 recites:
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`A method for initiating a conference call, comprising the steps
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`1.
`of:
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`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 at 11:58-12:17.)
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`
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`Challenged claims 2-4, 6-8, 18, 21, and 22 depend from claim 1 and require
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`additional limitations, such as a Voice Over Internet Protocol communications path
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`(claim 6), an instant messaging service that is a software client on a network access
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`device (claim 2), and a conference call request that identifies the address of each
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`potential conference call target (claim 18). (See id. at 12:18-13:13.)
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`IV. The Level of Ordinary Skill in the Art
`A person of ordinary skill in the art in the field of the ’948 patent as of its
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`earliest claimed priority date would have been someone knowledgeable in
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`collaboration applications and telecommunications services. That person would
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`have at least a Bachelor’s degree in Computer or Electrical Engineering, Computer
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`Science, or equivalent training, and approximately five years of experience
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`working on computer-based collaboration or
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`telecommunications services.
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`(Ex. 1002 ¶ 42.)
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`V. Claim Construction
`Several terms in the ’948 patent have been expressly defined in the patent
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`specification. (Ex. 1001 at 5:31-6:6.) The terms relevant to the challenged claims
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`have been reproduced in the following table.
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`Claim Term
`
`Definition Provided in the Specification
`
`Network Access
`Device
`
`Address
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`“[A]ny device capable of communicating
`over a network to one or more other Network
`Access Devices using a common protocol.
`Such NADs can include but are not limited
`to computers, servers, workstations, Internet
`appliances, terminals, hosts, personal digital
`assistants (hereafter ‘PDAs’), and digital
`cellular telephones.” (Ex. 1001 at 5:39-45.)
`
`“This is the identifier for where a participant
`to a conference call may be contacted, and
`may be, but is not limited to, a PSTN or
`cellular phone number, such as an ANI, or a
`unique identifier associated with a voice over
`Internet protocol communications path.”
`(Ex. 1001 at 5:53-57.)
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`Challenged
`Claims
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`1-3, 21, and 22
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`Claim Term
`
`Definition Provided in the Specification
`
`Challenged
`Claims
`
`Conference Call
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`“A communication between two or more
`parties who are disparately located, using a
`connection allowing the transmission of
`audible, verbal, or visual data, or a
`combination thereof, including
`videoconferencing in which participants are
`visible to other participants as well as able to
`verbally communicate with each other.”
`(Ex. 1001 at 5:65-6:3.)
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`1-4, 6-8, 18, 21,
`and 22
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`VOIP
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`“Voice over Internet Protocol.” (Ex. 1001 at
`6:6.)
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`6
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`Petitioner has demonstrated the unpatentability of challenged claims 1-4,
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`6-8, 18, 21, and 22 under these express definitions provided in the ’948 patent.
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`VI. Claims 1-4, 6-8, 18, 21, and 22 Would Have Been Obvious over
`Tanigawa in View of Liversidge
`A. Overview of Tanigawa
`Tanigawa describes a system and method for using an instant messaging
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`service to initiate a conference call. (Ex. 1002 ¶ 48.) As acknowledged in the
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`background of the invention, “text-based group chat may be not enough for the
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`business use in many cases, . . . [and often] voice support is needed.” (Ex. 1002
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`¶ 48; Ex. 1014 at 1:38-43.) As a result, Tanigawa adapted then-existing instant
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`messaging services to communicate group voice chatting request information, and
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`thereby facilitate group voice chatting, i.e., conference calls. (Ex. 1014 at 2:6-12
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`(“[I]t is an object of the present invention to achieve . . . switching between a group
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`chat through electronic documents and a group chat through voice . . . flexibly.”).)
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`Figure 1, reproduced below, depicts Tanigawa’s general communications system.
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`
`(Id. at Fig. 1; see also id. at 3:56-59 (Figure 1 “is a schematic diagram of an IM-
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`Voice over Internet Protocol (VoIP) interconnecting system”).)
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`As shown in Figure 1, an IP (Internet Protocol) network connects a plurality
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`of IP terminals (7-1, 7-2, and 7-3) to an IM server (4); an AP server that manages
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`voice chatting (5); an MD server that mixes voice data (6); and a VR server (10)
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`that relays voice among an IP network (1), a radio communication network (2), and
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`a publicly switched telephone network (3). (See id. at 3:60-4:9; Ex. 1002 ¶ 49.)
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`One embodiment of IP terminal (7) is shown in Figure 6, and “is achieved
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`by configuring functional blocks 781 to 794 shown within a balloon 78 in FIG. 6,
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`when[] a CPU 41 executes a predetermined program (IM client program) loaded
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`onto a memory 42 in a computer system having the same hardware configuration
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`as that of the IM server 4.” (Ex. 1014 at 6:61-66, see also id. at Fig. 6.) The IP
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`terminals (7) running instant messaging programs connect across the IP network to
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`each other and to an IM server (4). (Ex. 1002 ¶ 50.)
`
`As shown in Figure 3, the IM server (4) maintains the presence information
`
`of each IM client. (Id. ¶ 50.)
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`
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`(Ex. 1014 at Fig. 3.) This information includes “a field 431 for registering an
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`account name of a user of an IM client, a field 432 for registering an address of the
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`IM client, . . . a field 435 for registering presence information of the IM client,
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`[and] a field 436 for registering a medium (text chat and voice chat), which can be
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`used by [an] IM client for a chat . . . .” (Id. at 5:25-38; see also id. at 5:39-46
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`(“[W]hen a terminal in which an IM client is installed is an IP terminal, an IP
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`address or a DNS [address] of the terminal is registered, as an address of the IM
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`client, in the field 432. [Moreover, w]hen the terminal in which the IM client is
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`installed is a mobile telephone and/or a fixed telephone, a telephone number and an
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`IP address . . . are registered therein.”).) A user of an IP terminal can request this
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`information. The IM server accordingly sends this information in the form of a
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`“buddy list,” which the IP terminal displays on the personal computer. (Ex. 1002
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`¶¶ 51-52; Ex. 1014 at 15:40-52.)
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`The IP terminals (7) also connect across the IP network to an AP server (5),
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`which “manag[es] a connection for voice chatting using VoIP.” (Ex. 1002 ¶ 53;
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`Ex. 1014 at 5:62-63.) When the AP server receives “a voice chat requesting
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`command from an IM client,” it effects the “processing required for calling the
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`other parties of the conference in which the IM client participates to participate in a
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`voice-chat,” and then “performs connection management of a voice chat.”
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`(Ex. 1002 ¶ 53; Ex. 1014 at 6:18-22, 6:31-32.) Similar to the IM server, the AP
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`server also stores user data relevant to establishing a voice chat, such as the address
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`and nickname of each voice-enabled IM client. (Ex. 1002 ¶ 53; Ex. 1014 at Fig. 5,
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`6:41-56.)
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`The IP terminals (7) last connect across the IP network to an MD server (6)
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`and to a VR server (10). (Ex. 1002 ¶ 54.) The MD server “mixes voice data for
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`multi-party voice speech (communication).” (Ex. 1014 at 8:33-34.) The VR
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`server “voice-relays between the radio communication netwo