Filed: July 19, 2018
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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 LLC,
`Petitioner,
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
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`_________________
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`Case No. IPR2017-01685
`U.S. Patent No. 7,804,948
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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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 LLC,
`Petitioner,
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
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`_________________
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`
`Case No. IPR2017-01685
`U.S. Patent No. 7,804,948
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`_________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
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`I.
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`II. Argument ......................................................................................................... 1
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`A. Applicant Did Not Clearly and Unambiguously Disclaim
`Selecting Attendees ............................................................................... 1
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`Tanigawa Does Not Disclose Selecting Attendees ............................... 8
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`To the Extent Tanigawa Does Not Disclose A “Single
`Request,” A Skilled Artisan Would Have Been Motivated To
`Modify Tanigawa In Light of Liversidge ............................................ 13
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`Petitioner Relied on Tanigawa for the Claimed “Conference
`Call Request,” So Patent Owner’s Arguments Distinguishing
`Liversidge Are Irrelevant .................................................................... 17
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`Patent Owner Does Not Separately Challenge the
`Unpatentability of Dependent Claims 2-4. 6-8, 18, 21, and 22 .......... 20
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`Patent Owner’s Constitutionality Challenge Is Moot ......................... 20
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`The Parties’ Disagreement Over the Level of Ordinary Skill
`Does Not Affect the Outcome of This Case ........................................ 21
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`III. Conclusion ..................................................................................................... 21
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`Petitioner’s Reply to Patent Owner’s Response
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`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
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`Apple Inc. v. VirnetX Inc.,
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`IPR2014-00481, Paper 35 (P.T.A.B. Aug. 24, 2015) ........................................... 3
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`Cisco Sys., Inc. v. Uniloc USA, Inc.,
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`IPR2017-00058, Paper 17 (P.T.A.B. Apr. 6, 2018) ..................................... 15, 21
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`Cisco Sys., Inc. v. Uniloc USA, Inc.,
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`IPR2017-00198, Paper 19 (P.T.A.B. Apr. 16, 2018) ......................................... 16
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`Ecolab, Inc. v. FMC Corp.,
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`569 F.3d 1335 (Fed. Cir. 2009) ......................................................................... 6,7
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`Elbex Video, Ltd. v. Sensormatic Elecs. Corp.,
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`508 F.3d 1366 (Fed. Cir. 2007) .................................................................... 3, 6, 7
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`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
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`548 U.S. __ (2018) .............................................................................................. 20
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`Omega Eng’g, Inc. v. Raytek Corp.,
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`334 F.3d 1314 (Fed. Cir. 2003) ........................................................................... 3
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`SAS Institute, Inc. v. Complementsoft, LLC,
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`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 7
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`SAS Institute, Inc. v. Iancu,
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`584 U.S. __ (2018) .......................................................................................... 8, 20
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`Statutes
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`35 U.S.C. § 103 ........................................................................................................ 17
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`ii
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`Introduction
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`I.
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`Patent Owner does not challenge most of the substantive positions raised in
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`the Petition for challenged claims 1-4, 6-8, 18, 21, and 22 of U.S. Patent No.
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`7,804,948 (“the ’948 patent”). (Patent Owner’s Response, Paper 13.) Rather,
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`Patent Owner focuses on prosecution disclaimer, contending that (1) a user
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`selecting attendees for a conference call was disclaimed during prosecution of the
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`’948 patent, and (2) Tanigawa falls within the scope of this disclaimer. Patent
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`Owner has to prevail on both to demonstrate patentability, but it cannot prove
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`either. For at least the reasons below, Petitioner respectfully requests that the
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`Board cancel claims 1-4, 6-8, 18, 21, and 22 as unpatentable.
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`II. Argument
`A. Applicant Did Not Clearly and Unambiguously Disclaim Selecting
`Attendees
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`Patent Owner dedicates a majority of its response to arguing that prosecution
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`disclaimer precludes the challenged claims from reading on Tanigawa. According
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`to Patent Owner, the Applicant disclaimed “requiring the requester to select which
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`attendees to invite to join a conference call,” and tied this alleged disclaimer to the
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`claimed “generating a conference call request responsively to a single request by
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`the conference call requester.” (Patent Owner’s Response, Paper 13 at 14-15.)
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`In pursuing this argument, Patent Owner appears to concede that the claim
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`language itself contemplates selecting attendees, otherwise there would be no need
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`to resort to a disclaimer argument.1 This concession is warranted because nothing
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`in the claims precludes selecting attendees before a conference call requester issues
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`the “single request” to convert an instant messaging session into a conference call.
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`Indeed, the ’948 specification teaches selecting attendees for a call, explaining that
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`“User A could be provided with a list of participants of the on-going IM session,
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`and be provided 312 with the opportunity to add or remove potential participants
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`from a planned conference call.” (’948 Patent at 7:34-44; accord Ex. 1032 at
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`22:19-25.) Therefore, giving the claims their broadest reasonable interpretation
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`consistent with the specification, as is currently required in inter partes review,
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`results in the claims including systems where the requester selects attendees for the
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`conference call—hence the need for Patent Owner to argue a prosecution
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`disclaimer.
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`But establishing prosecution disclaimer requires a patent owner to meet an
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`“exacting” standard not met here. See, e.g., Apple Inc. v. VirnetX Inc., IPR2014-
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`00481, Paper 35 at 6-7 (P.T.A.B. Aug. 24, 2015). As the Board has recognized,
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`“[w]hile the prosecution history can inform whether the inventor limited the claim
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`1 Patent Owner contends that its alleged disclaimer is “consistent with the
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`explicit claim language,” but never alleges that the claim language itself precludes
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`selecting attendees. (Patent Owner’s Response, Paper 13 at 13.)
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`scope in the course of prosecution, it often produces ambiguities created by
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`ongoing negotiations between the inventor and the PTO.” Id. As such, a “‘heavy
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`presumption’ exists in favor of the ordinary meaning of claim language,” and “[t]o
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`overcome this presumption, the patentee must ‘clearly set forth’ and ‘clearly
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`redefine’” the claim limitation. Id. at 7 (citation omitted). Prosecution disclaimer
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`“does not apply ‘where the alleged disavowal is ambiguous.’” Elbex Video, Ltd. v.
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`Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (quoting Omega
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`Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003)).
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`The basis for Patent Owner’s disclaimer argument is a single statement that
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`appears toward the end of a file history that included four Office Actions and four
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`responses attempting to distinguish the claims over the prior art. A theme
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`throughout Applicant’s responses was that the asserted prior art did not convert an
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`instant messaging session to a conference call. Because there was no on-going
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`instant messaging session (text chat) to convert to a call, the user instead created a
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`conference call in the first instance, which Applicant argued was outside the scope
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`of the claims. (See, e.g., Ex. 1018 at 123-124, 216-220, 258-259.)
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`In one example, the Examiner rejected the proposed claims as anticipated or
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`obvious over a reference called Green and a secondary reference. (Id. at 269-270.)
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`Applicant argued that Green disclosed using buddy lists from instant messaging
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`services to directly start a conference call, not to adapt those services to convert an
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`instant messaging session into a conference call. (See id. at 258-259; id. at 217-218
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`Petitioner’s Reply to Patent Owner’s Response
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`(“[n]owhere does Green discuss adapting any instant messaging”).) The Examiner
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`abandoned this rejection after Applicant argued Green was not prior art, but the
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`Examiner then rejected the pending claims over a new reference, Haims
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`(Ex. 1017). (Ex. 1018 at 142-146, 183-187, 158-177.)
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`Haims, much like Green, describes a system that generally takes advantage
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`of the presence information maintained by instant messaging services and uses the
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`information to set up a conference call in the first instance. (Ex. 1017 at
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`[0098]-[0112].) As Haims explains, a “host” user can send a request to an
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`“attendee” user via an instant messaging service to begin what it calls a
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`“communication session.” (Id. at [0100].) A session can “include voice, video,
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`collaboration, or the like.” (Id. at [0114].) The user simply sends the message to
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`start the call and the attendee can agree to participate in the call. (Id. at [0098]-
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`[0102]; id. at [0102] (“the message that is forwarded to the communication server
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`is a meeting creation message that causes communication server to establish a
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`communication session involving the host and any attendee(s) who accepted the
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`invitation”).) If the attendee agrees, then a call is initiated. Nowhere does Haims
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`describe converting any on-going instant messaging session to a conference call,
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`much less selecting a subset of participants from the instant messaging session to
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`attend the call.
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`In response to the rejection over Haims, Applicant amended the claims to
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`recite “generating a conference call request responsively to a single request by the
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`conference call requester.” (Ex. 1018 at 112-122.) It was after this amendment that
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`Applicant presented the argument Patent Owner now relies on for its prosecution
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`disclaimer:
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`In certain embodiments of the present invention, and as is shown in
`FIG. 3 for example, three parties, User A 302, User B 304, and User C
`306, are 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.
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`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.
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`(Id. at 123-124 (emphases added).)
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`As with the arguments to distinguish Green, Applicant tried to distinguish
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`Haims because it failed to disclose “users who are then participating in a common
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`IM session,” much less any conversion or automatic establishment of a conference
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`call based on that non-existent instant messaging session. There was no disclaimer
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`of any attendee selection, as the statements pertained only to selecting attendees for
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`a call to start in the first instance, not a call started by converting from an existing
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`instant messaging session.
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`When considering the prosecution history as a whole—as is required when
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`evaluating potential prosecution disclaimers—Applicant’s prosecution statements
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`contradict Patent Owner’s current disclaimer theory. Elbex, 508 F.3d at 1372-73
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`(prosecution history as a whole is to be considered when assessing disclaimer);
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`Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1342 (Fed. Cir. 2009) (“Even if an
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`isolated statement appears to disclaim subject matter, the prosecution history as a
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`whole may demonstrate that the patentee committed no clear and unmistakable
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`disclaimer.” (citing Elbex, 508 F.3d at 1372-73)).
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`Patent Owner’s expert reached the opposite conclusion, declaring that he
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`viewed the statements as constituting a disclaimer. (Ex. 2001 ¶¶ 31-33.) But his
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`declaration should be given no weight on this issue because he did not conduct a
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`thorough analysis of the prosecution history. During his deposition, he admitted
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`“an in-depth analysis of Haims was not part of my process.” (Ex. 1032 at 37:1-2;
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`U.S. Patent No. 7,804,948
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`id. at 36:13-14 (“My only opinions on Haims and my only analysis of Haims is in
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`my declaration.”). Without a more thorough analysis of what Haims discloses,
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`Patent Owner’s expert was not in a position to accurately testify regarding how one
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`would have understood the prosecution history statements about Haims, nor could
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`Patent Owner’s expert have accurately opined on the true scope of the alleged
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`disclaimer.
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`Ultimately, Patent Owner has not met its burden of demonstrating that the
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`prosecution history clearly and unambiguously disclaimed selecting attendees to a
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`conference call. See Elbex, 508 F.3d at 1371-73. The prosecution statements refute
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`Patent Owner’s theory, but even if they are viewed as ambiguous, this still defeats
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`Patent Owner’s disclaimer argument. See SAS Institute, Inc. v. Complementsoft,
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`LLC, 825 F.3d 1341, 1349-50 (Fed. Cir. 2016) (declining to find disclaimer “when
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`the alleged disavowal is ambiguous, or even ‘amenable to multiple reasonable
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`interpretations’” (citations omitted)), rev’d on other grounds sub nom., SAS
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`Institute, Inc. v. Iancu, 584 U.S. __ (2018). Patent Owner has not carried its burden
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`of establishing disclaimer, and its non-existent disclaimer cannot provide any basis
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`for distinguishing Tanigawa.
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`Tanigawa Does Not Disclose Selecting Attendees
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`B.
`Even if Applicant had successfully disclaimed selecting attendees, which it
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`did not do, Tanigawa does not disclose selecting attendees and therefore does not
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`fall within the scope of the alleged disclaimer.
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`Tanigawa describes three users participating in a text-chatting session: taro,
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`hanako, and yoshi. (Ex. 1014 at 10:32-46.) During the text session, taro assesses
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`whether hanako and yoshi can also participate in a voice chat. (Id. at 15:53-65
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`(“the user ‘taro’ determines, from the information on the buddy list displayed in
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`the display device and by exchanging messages through text chatting, that the users
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`‘hanako’ and ‘yoshi’ participating in the conference can participate in voice
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`chatting . . . .”) An assessment of availability does not constitute “selecting”
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`participants under any reasonable interpretation of the term.
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`Tanigawa never states that taro selects hanako, yoshi, or any of their
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`associated devices, for the call. Instead, it explains that taro issues a single
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`instruction to convert the existing text session between taro, hanako, and yoshi, to
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`a voice session between the same three users, taro, hanako, and yoshi. (Id. at 2:6-
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`12, 10:32-49, 14:56-57, 15:36-65, Fig. 11.) All of the instant messaging
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`participants capable of voice chatting are then invited to the voice chat. (Id.) This
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`supports the Board’s finding that “Clients E and G, corresponding to users named
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`‘hanako’ and ‘yoshi,’ appear to be the only clients in the IM session who are both
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`present and capable of voice chat. The instruction described by Tanigawa appears
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`to be a single instruction for requesting voice chat for each participant of the IM
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`session then being connected to the IM session.” (Institution Decision, Paper 10 at
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`15 (citations omitted, emphasis added).)
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`In attempting to refute these facts, Patent Owner focuses on Tanigawa’s
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`Figure 10. (Patent Owner’s Response, Paper 13 at 6-7; Ex. 2001 ¶¶38-43.) Patent
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`Owner contends this figure necessarily shows that Tanigawa selects participants
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`for the call, and quotes Tanigawa’s statement that “user ‘taro’ can determine a chat
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`party based on the data.” (Patent Owner’s Response, Paper 13 at 6.) Patent
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`Owner’s focus on selection in Figure 10 to set up the chat session is irrelevant to
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`the claims. The claims do not prohibit selecting users for the initial instant
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`messaging session. In fact, they are not directed to the creation of the text session
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`in the first instance at all. Rather, the claims contemplate converting a text session
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`to a voice session. And the alleged prohibition Patent Owner seeks is on selecting
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`participants for the call from attendees already in an ongoing instant-messaging
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`session. (See, e.g., ’948 Patent at 11:58-12:17.) Patent Owner’s reliance on Figure
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`10 is therefore misplaced.
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`After focusing almost exclusively on how Tanigawa sets up the text session
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`in the first instance, (see Patent Owner’s Response, Paper 13 at 5-7), Patent Owner
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`devotes only one short paragraph to how Tanigawa converts from the text session
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`to the voice session:
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`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 ¶¶ 44-46. In the example provided in
`Tanigawa, taro chooses to select Client E and Client G for invitation
`to a voice chat. Id.
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`(Id. at 7.)
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`But as explained above, nowhere in the cited passages does Tanigawa
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`explain that user taro “selects which clients to invite to a voice chat.” Instead, it
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`states that taro uses buddy list (presence) information to simply “check, through
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`the text chat he is executing, whether or not the buddy participating in the
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`conference room can voice-chat, and, if so, which IM client . . . is used for the
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`voice chat.” (Ex. 1014 at 15:48-52.) It then states that “an instruction for
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`requesting to voice-chat with the IM clients whose account names are ‘client E’
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`and the ‘client G’, respectively, is input to the input device.” (Id. at 15:62-65.) But
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`checking whether someone is capable of voice chatting and issuing an instruction
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`for requesting a voice chat do not state or imply that taro has selected conference
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`call attendees. Patent Owner conflates two distinct aspects of Tanigawa’s
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`teachings: the selection that occurs while setting up the initial instant messaging
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`session and the request to convert to a conference call, which involves no selection.
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`Petitioner’s Reply to Patent Owner’s Response
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`But a skilled artisan would not conflate the two. (E.g., Ex. 1002 ¶¶ 55-57, 85-86.)
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`Patent Owner last emphasizes that taro, hanako, and yoshi have their
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`respective text and chat capabilities on different devices, and suggests that this too
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`implies that taro selects attendees. (Patent Owner’s Response, Paper 13 at 18-20.)
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`But dividing capabilities across devices makes no difference to the ultimate
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`analysis. Three, and only three, users are participating in the text session, and all
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`three of the users are converted to the voice chat when taro issues the instruction.
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`(Ex. 1014 at 2:6-12, 10:32-49, 14:56-57, 15:36-65, Fig. 11; Institution Decision,
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`Paper 10 at 15; Ex. 2001 ¶ 39 (Tanigawa’s users—taro, hanako, and yoshi—
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`having two associated devices—D and E for hanako, F and G for yoshi).)
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`Using different devices for text and voice chatting facilitates conversion and
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`comports with teachings in the ’948 patent. Patent Owner’s Response explains that
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`“[t]he conference call server 402 or one of the conference bridges 410A and 410B
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`may contact each of the prospective targets, possibly direct dialing their phones or,
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`if their [network access device] NAD has audio and visual capability, connecting
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`through it using one or more” networks. (Patent Owner’s Response, Paper 13 at 4
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`(emphasis added).) Figure 4 depicts this arrangement, illustrating a user having one
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`device for text chat and a second device for voice chat, as shown below:
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`Petitioner’s Reply to Patent Owner’s Response
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`(’948 Patent at Fig. 4 (annotated by Petitioner); id. at 9:39-47 (each user may have
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`its telephonic capability either “implemented into the NAD, such as through a
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`digital cell phone, or VOIP connection through a desktop or laptop computer
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`connected to the network”).)
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`Tanigawa aligns with this example, as taro, hanako, and yoshi have different
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`devices for text chat and voice chat. (Ex. 1014 at 10:32-46.) Taro can both text and
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`voice chat at IP terminal 7-2. (Id.) Hanako can only text chat at IP terminal 7-1 but
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`can voice chat using a VoIP telephone. (Id.) And yoshi can text chat at IP terminal
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`7-3 and voice chat over a telephone. (Id.) In each instance, though, the devices are
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`uniquely associated with taro, hanako, or yoshi, and all three users convert from a
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`text chat to a voice chat, as contemplated by the ’948 patent specification and
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`claims. Patent Owner cannot rely on this operation to distinguish Tanigawa.
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`Accordingly, even if Patent Owner had established a clear and unambiguous
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`disavowal of selecting attendees, which it has not, Tanigawa does not fall within
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`the scope of that disclaimer. Tanigawa does not select call attendees, and the fact
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`that taro, hanako, and yoshi operate on multiple devices is not a distinguishing
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`feature. As explained in the Petition, Tanigawa teaches converting a text chat
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`between taro, hanako, and yoshi, into a voice chat between taro, hanako, and yoshi,
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`consistent with the claims and the express disclosure in the ’948 specification.
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`(Petition, Paper 1 at 15-21, 38-44.)
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`C. To the Extent Tanigawa Does Not Disclose A “Single Request,” A
`Skilled Artisan Would Have Been Motivated To Modify Tanigawa
`In Light of Liversidge
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`As noted above and in the Petition, a skilled artisan would have understood
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`Tanigawa to disclose “generating a conference call request responsively to a single
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`request by the conference call requester.” (Petition, Paper 1 at 40-43.) In addition,
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`if one were to conclude that Tanigawa does not disclose this feature, it would have
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`been obvious to a skilled artisan in view of Liversidge and its disclosure of the
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`“ConvertSession” button. (See, e.g. id. at 25-29; see also Ex. 1004 ¶ [0126].)
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`Petitioner’s Reply to Patent Owner’s Response
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`U.S. Patent No. 7,804,948
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`Tanigawa and Liversidge similarly describe implementing instant messaging
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`services over an Internet Protocol (IP) network and converting to a conference call
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`for users having various communications means, e.g., a telephone on PSTN. (E.g.,
`
`Ex. 1014 at 3:60-4:5, 6:58-66, 3:60-4:9, Fig. 1; Ex. 1004 ¶¶ [0065], [0076], [0150],
`
`[0078]-[0079], [0135], [0183], [0021]; Ex. 1002 ¶ 65; Pet. at 25-29.) To facilitate
`
`this, both have similar hardware and network capabilities. (Ex. 1002 ¶¶ 65-66.) In
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`seeking ways to implement the “instruct” step of Tanigawa, a skilled artisan would
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`have looked at Liversidge and its specific implementation of a “ConvertSession”
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`button to modify and thereby improve Tanigawa to also have a user-friendly way
`
`to automatically convert to a call. (Id. at ¶¶ 67, 69, 88; Petition, Paper 1 at 28-29.)
`
`A skilled artisan would thus reasonably expect Liversidge’s “ConvertSession”
`
`button to successfully operate in Tanigawa and would have been motivated to
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`incorporate it into Tanigawa’s user interface. (Ex. 1002 ¶ 88.)
`
`The Board found a similar rationale persuasive in a prior inter partes review
`
`challenging the same ’948 patent at issue here. There, the Board “determine[d] that
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`Dr. Houh provides an articulate reason with a rational underpinning for a person of
`
`ordinary skill in the art to incorporate the call button or conference now button of
`
`Lamb into the user interface of Hamberg, namely . . . to reduce effort for initiating
`
`a conference call.” Cisco Sys., Inc. v. Uniloc USA, Inc., IPR2017-00058, Paper 17
`
`at 23 (P.T.A.B. Apr. 6, 2018). The Board should reach a similar conclusion here.
`
`
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`14
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`
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`Petitioner’s Reply to Patent Owner’s Response
`
`U.S. Patent No. 7,804,948
`
`Patent Owner does not challenge that Liversidge discloses a single request; it
`
`instead challenges whether a skilled artisan would have been motivated to modify
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`Tanigawa to include Liversidge’s single request. (Patent Owner’s Response, Paper
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`13 at 14-18.) Patent Owner first argues Tanigawa teaches away from the proposed
`
`combination because it requires the user to pick the attendees for the call. As noted
`
`above, however, Tanigawa does not require selection of conference call attendees.
`
`(See supra § II.B.) But even if it had taught attendee selection, it is not clear how
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`this would teach away from a streamlined system where selection would be boiled
`
`down to a single request, as taught by Liversidge.
`
`Teaching away requires a reference to criticize, discredit, or discourage the
`
`proposed combination, and Patent Owner’s abbreviated teaching-away argument
`
`does not make this showing. (See Patent Owner’s Response, Paper 13 at 16-17.)
`
`The Board has rejected similar positions presented by Patent Owner in a
`
`proceeding challenging the related ’000 patent. There, the Board found:
`
`The prior art’s mere disclosure of more than one alternative does not
`constitute teaching away from any of the alternatives when the
`disclosure does not criticize, discredit, or otherwise discourage the
`solution claimed. We agree with Petitioner and determine that using a
`call button to generate a CALL ALIAS message that identifies all
`active users does not criticize, discredit, or otherwise discourage a
`user from manually entering desired names in a CALL ALIAS
`message.
`
`
`
`15
`
`
`
`
`
`
`
`Cisco Sys., Inc. v. Uniloc USA, Inc., IPR2017-00198, Paper 19 at 20 (P.T.A.B.
`
`Petitioner’s Reply to Patent Owner’s Response
`
`U.S. Patent No. 7,804,948
`
`Apr. 16, 2018) (citations omitted). Petitioner requests the Board come to the same
`
`conclusion here. The ConvertSession button of Liversidge can be used in
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`Tanigawa’s system to facilitate conversion of a text chat to a voice chat, all while
`
`identifying targets to the voice chat. (Petition, Paper 1 at 40-43; Ex. 1002 ¶¶ 67-68,
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`85-88.)
`
`Next, Patent Owner contends that modifying Tanigawa in light of Liversidge
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`renders Tanigawa inoperable for its intended purpose. (Patent Owner’s Response,
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`Paper 13 at 17-18.) Patent Owner contends the Petition fails to identify “how the
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`modified system could possibly read the user’s mind to determine which client(s)
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`the user would have otherwise subjectively selected for invitation.” (Id. at 17.) But,
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`again, Patent Owner’s position assumes Tanigawa discloses selecting attendees for
`
`a call; it does not. (See supra § II.B.) Patent Owner also fails to explain precisely
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`how this modification undermines Tanigawa’s principles of operation. (See Patent
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`Owner’s Response, Paper 13 at 17-18.) Patent Owner’s expert fares no better, only
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`providing one conclusory paragraph on this issue with no basis for the underlying
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`opinion. (Ex. 2001 ¶ 70.) Because this testimony “does not disclose the underlying
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`facts or data on which the opinion is based[, it] is entitled to little or no weight.”
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`37 C.F.R. § 42.65(a).
`
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`16
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`Petitioner’s Reply to Patent Owner’s Response
`
`U.S. Patent No. 7,804,948
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`For the reasons provided in the Petition and as set forth above, it would have
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`been obvious to modify Tanigawa in view of Liversidge. Patent Owner’s positions
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`are conclusory and lack merit. Claims 1-4, 6-8, 18, 21, and 22 are unpatentable
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`under 35 U.S.C. § 103 over Tanigawa in view of Liversidge.
`
`D.
`
`Petitioner Relied on Tanigawa for the Claimed “Conference Call
`Request,” So Patent Owner’s Arguments Distinguishing
`Liversidge Are Irrelevant
`
`Patent Owner also contends the challenged claims are not obvious because
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`Liversidge fails to disclose the “conference call request identifying each of the
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`potential targets for said conference call request.” (Patent Owner’s Response,
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`Paper 13 at 18-20 (IPR2017-01683).) But this issue is irrelevant because Petitioner
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`relies on Tanigawa’s disclosure for this claim feature. (See Petition, Paper 1 at 43;
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`Institution Decision, Paper 10 at 15-16.)
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`In the same section of the Patent Owner’s Response, Patent Owner also
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`contends that Tanigawa fails to disclose this feature because some devices in
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`Tanigawa are incapable of participating in an instant messaging session. (Patent
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`Owner’s Response, Paper 13 at 19-20.) Patent Owner focuses on the devices
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`involved in the communication, rather than users, and contends that, since hanako
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`and yoshi’s voice-chat devices cannot participate in the text chat, a request that
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`identifies those devices for the subsequent conference call cannot satisfy this
`
`
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`17
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`
`
`
`
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`limitation because it is identifying “only client devices that are not participating in
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`Petitioner’s Reply to Patent Owner’s Response
`
`U.S. Patent No. 7,804,948
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`an IM session.” (Id. at 20.)
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`But this contention is inconsistent with the ’948 patent specification and
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`claims, and overlooks that the claims are user-centric, not device-centric. Each
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`challenged claim recites a “plurality of potential targets,” as in the following
`
`example in claim 1: “a plurality of potential targets then being connected to the
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`instant messaging service.” The patent specification expressly defines these
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`“potential targets” to be “parties who are potential participants.” (Ex. 1001 at 6:36-
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`41 (emphasis added).) It further provides “the conference call targets have an NAD
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`in communication with an instant messaging service,” meaning that the targets are
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`not network access devices themselves; instead the targets are the users who “have
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`an NAD.” (Id. at 6:65-66 (emphasis added).)
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`The specification also provides, if “it is determined that, for each target, that
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`direct dial calls are enabled, the conference bridge provider can dial 334 the direct
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`dial number for the targets, connect to VOIP paths . . . , or may implement a
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`combination of direct dialed and VOIP connections.” (Id. at 8:11-27.) Each target,
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`therefore, may have multiple connection options. Consistent with this fact, claim
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`14 recites that a “conference bridge selects between alternate communications
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`paths at least partially dependent upon cost criteria.” Claim 16 recites a similar
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`feature except it selects a path based on performance criteria. The communications
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`18
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`paths identified in other claims include “a publicly switched telephone network”
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`Petitioner’s Reply to Patent Owner’s Response
`
`U.S. Patent No. 7,804,948
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`(claim 5), “a voice over Internet protocol (VoIP) communications path” (claim 6),
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`and a “cellular communications path” (claim 8). One would not expect these
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`options all to apply to a single device, but these options may all apply to a single
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`user who has multiple devices (e.g., a standard telephone, a cellular phone, and a
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`computer). Accordingly, the ’948 patent claims and specification support that the
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`claimed “targets” are users, not individual devices.
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`It is therefore irrelevant that some of the user’s
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