Google
`
`v.
`
`Uniloc
`
`Case IPR2017-01683
`
`(Patent 8,571,194)
`
`Hearing Before Karl D. Easthom,
`
`Ken V. Barrett, and
`
`Jeffrey S. Smith,
`Minn Chung
`
`Oct. 16, 2018
`
`
`
`v.
`
`Uniloc
`
`Case IPR2017-01683
`
`(Patent 8,571,194)
`
`Hearing Before Karl D. Easthom,
`
`Ken V. Barrett, and
`
`Jeffrey S. Smith,
`Minn Chung
`
`Oct. 16, 2018
`
`
`
`Claim 1 of the ’194 Patent
`
`1. A non-transitory computer readable medium containing computer
`instructions configured to operate with electronic computer
`
`hardware to perform the following steps:
`
`display, in an instant messaging (IM) chat window of a first party, an
`exchange of IM messages between the first party and at least one
`other party, the first party and the at least one other party being
`
`current participants to an IM session;
`
`display for the first party an indication of whether the at least one
`other party is communicably connected to the IM session;
`
`display for the first party an option to automatically initiate voice
`communication between the current participants of the IM session
`without requiring individual selection of potential members
`including the first party and the at least one other party and
`without requiring registration with a conference call server for
`establishing the voice communication by the potential members
`including the first party and the at least one other party; and
`
`request, in response to selection of the option, voice communication
`between the first party and the at least one other party;
`
`wherein in response to the request, the voice communication is
`
`
`
`Claim 16 of the ’194 Patent
`
`16. A non-transitory computer readable medium containing
`
`computer instructions configured to operate with an electronic
`hardware computer server to perform the following steps:
`
`exchange IM messages between a first party and at least one other
`party, the first party and the at least one other party being
`
`current participants to an IM session;
`
`send to the first party an indication of whether the at least one
`other party is communicably connected to the IM session;
`
`receive a request from the first party to establish voice
`communication amongst current participants of the IM session
`without requiring registration with a conference call server for
`establishing the voice communication by potential members
`including the first party and the at least one other party, the
`request lacking a specific identification of the at least one other
`
`party;
`
`determine, after reception of the request, the at least one other
`party from information associated with the IM session;
`
`wherein after determining the at least one party, the voice
`communication is established between the first party and those
`
`
`
`“without requiring registration with a conference call server”
`
`As the intrinsic evidence reveals, and as the Office has
`
`previously determined, the claim language including the
`
`recitation “. . . without requiring registration with a
`conference call server . . ." at least excludes:
`
`1. the registration required in the Hamberg reference
`
`cited by the Examiner;
`
`2. the analogous registration identified by the Examiner
`
`in the disclaimed embodiment from the ’194 patent
`
`specification; and
`
`3. the cumulative registration in the Liversidge
`
`reference considered by the Examiner during
`
`prosecution, which contains the same disclosure as
`
`the Liversidge reference relied upon in the Petition.
`
`
`
`(1) Hamberg successfully distinguished during prosecution from “without requiring registration” limitations
`
`Applicant's successful distinction of Hamberg during
`prosecution included the following remarks:
`
`Hamberg discloses a conference call established between a pri
`defined group. A server sets up a conference call between the
`subscribers registered with the server as active in a subscriber group.
`(See the Abstract of Hamberg). More specifically, the conference
`call is set up between persons registered to the group at the
`conference call server which establishes the call. (See paragraph 25
`0f Hamberg).
`[1i]
`.
`.
`. Hamburg thus reggires an active registration
`of each subscriber with the group at
`the server establishing a
`conference call so that the conference call can be set up between the
`registered subscribers.
`[11]
`In contrast, Applicant’s amended
`independent claim 103 [now Claim 1] displays an option for the first
`party to automatically initiate voice communication between the
`current participants of the IM session without requiring prior
`registration with a conference call server for establishing the voice
`communication by potential members. That is, current participants
`of the IM session (or other potential members) need not have
`registered, e. g., with the conference call server that establishes the
`conference call,
`in order to be potential members for the voice
`conununication.
`
`
`
`(1) Hamberg successfully distinguished during prosecution from “without requiring registration” limitations
`
`Hamberg discloses that when a conference call is requested,
`
`the server will establish a conference call only between
`those group-member subscribers who are currently
`registered with the conference call server for the
`
`Hamberg describes its process for setting up a conference call with reference
`
`to Figure 5. EX2002 11 25. It is significant to the present dispute that, when a
`
`conference call is requested, Hamberg does not require users to then complete an
`
`additional or separate registration at that time. Rather, when a call is requested, the
`
`server confirms (in step 5-4), based on stored registration information, whether the
`
`call requester “i; [already] registered and has the right to send the set-up message.”
`
`Id. (emphasis added); see also id. 1] 28 (“If the subscriber sending the conference call
`
`set-up message is not registered or the member in question does not have the right
`
`to set up the conference call in question, the initiation routine of the conference call
`
`is ended in step 5-15.”).5
`
`
`
`(2) Disclaimer during prosecution reveals proper interpretation of
`
`“without requiring registration” limitations
`
`The prosecution history also provides insight as to the proper interpretation
`
`of the definitive statement “without requiring registration with a conference call
`
`server by the potential members ....” Specifically, in the Advisory Action dated
`
`May 13, 2012, the Examiner expressed concern that the ’ 194 Patent itself required
`
`a form of registration similar to that disclosed in Hamberg: “[t]he entire paragraph
`
`56 of Applicant’s published application describes checking to see Whether a user is
`
`or is not already a subscriber to the conference service.” EX1018 at 124.
`
`The conference call server in communication with User
`
`A’s NAD may be provided with functionality for assessing
`charges associated with the conference call._ I
`
`UPRZO 17-0 1683.
`Response at 7-8)
`
`[‘194 patent, 7:55-59)
`
`— Although not shown, User
`
`In response to the Advisory Action, Applicant expressly disc-tainted as an
`
`alternative (and hence unclaimed) embodiment the particular form of required
`
`registration with a conference call server disclosed in the paragraph of the ’194
`
`(IPR2017—01683,
`Response at 8)
`
`
`
`“...without requiring registration with a conference call server
`
`Simply put, at a minimum, this claim language is not satisfied by an that
`
`requires “registration with a conference call server” in the form of a conference call
`
`server checking stored information to confirm whether a potential participant is or
`
`is not currently registered as a subscriber to the requested conference call service.
`
`EX2001 1] 32. As will be shown, this is precisely what Liversidge (the reference
`
`relied upon in the Petition) requires. EX2001 1] 32.
`
`Patent Owner respectfully submits the Board should reconsider its preliminary
`
`interpretation of claim scope (as currently understood) because it appears to
`
`encompass both the successfiilly-distinguished registration check in Hamberg and
`
`the disclaimed registration embodiment
`
`in the ’194 Patent. Neither of those
`
`(11311201701683,
`Response at 27)
`
`similarly-described forms of registration require the potential participants to
`
`complete an additional or separate registration (e.g.. by manually reentering
`
`(IPR2017-01683,
`
`Response at 28)
`
`registration information) when someone requests to transition an IM session to a
`
`
`
`(3) The Examiner considered Liversidge/Thompson during prosecution
`
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`0.s. PATENT Documents
`
`
`
`(3) Liversidge (like Hamberg) is excluded by “without requiring registration with a conference call server”
`
`Elfin—IA
`44!
`
`“Liversidge, EX1004’ at Figure 14
`“C
`
`42
`
`Liversidge discloses a system that
`allows only a "team member" who
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`
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`
`server to initiate a voice
`
`communication session in a
`
`“virtual team environment"
`
`(abbreviated as VTE).
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`StatusEvoM (Team ID. cnmA wood)
`
`
`
`(3) Liversidge (like Hamberg) is excluded by “without requiring
`
`registration with a conference call server”
`
`Liversidge discloses (e.g., in Fig. 5 and accompanying description) that its
`VTE server not only handles registration but also establishes the voice
`communication session within a virtual team environment or VTE:
`
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`
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`
`Patent Owner’s expert
`summarized Liversidge's
`registration check (performed
`When converting from an IM
`session to an alternative voice
`
`session), in part, as shown on the
`right (see EXZOOI at p 24).
`
`65. VTE Svr also sends status event messages to the respective
`device indicating the IM session has been closed.
`(Ex. 1004 at 1144. 1148.
`
`and 1150; Ex. 1004 at Par. 0176).
`
`the
`66. With respecting to starting an alternative voice session,
`process continues by the VTE server consulting the table 43 for registered
`
`membership information and communication information. (Ex. 1004 at Par.
`
`176).
`
`67. With reference back to Figure 2, for registered members. item
`
`“43 b contains device identifiers and associated address information (e.g.
`
`PSTN destination number,
`
`IP address.
`
`
`address)
`
`for
`
`each
`
`
`
`(3) Liversidge (like Hamberg) is excluded by “without requiring
`
`registration with a conference call server”
`
`Patent Owner's expert opined that the respective
`descriptions of a required registration check in
`Hamberg and Liversidge are “strikingly" similar:
`
`84.
`
`In my opiniori, 11 ]only are the registration processes in Hamberg
`
`not
`
`and Liversidge the same, the disclosures concerning such registration are
`
`sn'ikingly the same as further described below.
`
`85.
`
`Both describe a group or team tables located on a database.
`
`/ \
`
`We Tabb
`
`
` omen Witch.“
`
`
`Logged in
`
`Fig. 2 of Hamberg on the left, Fig. 2 of Liversidge on the right
`
`86. With reference to the same figures, both maintain membership in
`
`(EXZOO 1, pp. 30-34)
`
`
`
`“without requiring individual selection” and the “request lacking a
`
`specific indication of the at least one other party”
`
`The Petition relies on disclosure in Liversidge
`
`that teaches the opposite of the claim language:
`
`appropriate contact information is available. Accordingly,
`the invitation object 374 includes a directory search frame
`422 which provides access to one or more directories
`
`
`
`—The directories accessed
`
`
`Pet. 30 (citing EX1004 ii 134);
`
`discussed, e.g., in Response at 29—30.
`
`
`
`
`v.
`
`Uniloc
`
`Case IPR2017-01684 and -01685
`
`(Patent 7,853,000 and Patent 7,805,948)
`
`Hearing Before Karl D. Easthom,
`
`Ken V. Barrett, and
`
`Jeffrey S. Smith,
`Minn Chung
`
`Oct. 16, 2018
`
`
`
`Claims 1 of the ’000 Patent
`
`1. A method for initiating a conference call for a conference call
`
`requester using a network access device, the network access
`
`device communicating via an instant messaging service, the instant
`
`messaging service being adapted to communicate conference call
`
`request information with a conference call server, comprising:
`
`indicating, at the network access device, a plurality of potential
`
`targets then being connected to the instant messaging service and
`
`participating in a given instant messaging session with the
`
`conference call requester;
`
`generating a conference call request responsively to a single request
`
`by the conference call requester, said conference call request
`
`identifying each of the indicated potential targets; and
`
`transmitting the conference call request to the conference call server;
`
`wherein, a conference call connection initiated by the conference call
`
`server and connected to the conference call requestor and each of
`
`the indicated potential targets is automatically established
`
`
`
`
`
`Claim 1 of the ’948 Patent
`
`1. A method for initiating a conference call, comprising the steps of:
`
`providing a conference call requester with a network access device, said
`network access device communicating via an instant messaging service,
`said instant messaging service being adapted to communicate conference
`call request information with a conference call server;
`
`establishing a communications connection from said network access device
`to the conference call server;
`
`presenting said conference call requester with a display showing a plurality
`of potential targets then being connected to said instant messaging service
`and participating in a given instant 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
`
`
`
`Tanigawa is cumulative with successfully distinguished art (Haims)
`
`Pros. History distinguishes art (Haims) from “single request" limitations:
`
`Haims neither teaches nor even suggests such a methodology. Rather,Wm
`Mammmmmmmdcamhm See.e.g..
`
`pars. [0110] and{0111]. In omuast, Claim 1 mils forth: system to automatically establish a
`
`conferencccall with aplmalityofuserswhoarethmparfieipafinginacommonstessionwith
`
`the requester Wively to a singleWu request-
`
`Resp. 6 (quoting szooz at 124-25)
`
`Tanigawa '5 cumulative
`With Haims and is
`distinguishable for the
`same reasons:
`
`Now. it is assumed that. the user “taro" determines, from
`the information on the buddy list displayed in the display
`device and by exchanging messages through text chatting.
`that the users “hanako” and “yoshi” participating in the
`conference can participate in voice chatting by using IM
`client (the VoIP telephone 8 and the radio terminal 9) having
`the account names “client E” and “client C", respectively. In
`addition. it is assumed that the user “taro” determines that
`each of the users “hanako” and “yoshi” has an intention to
`participate in voice chatting. Then, it is assumed that an
`instruction for requesting to voice-chat with the 1M clients
`
`
`
`Liversidge does not cure Tanigawa’s deficiencies
`
`No proof that it would have been obvious to replace Tanigawa's user-
`
`selection feature with, instead, Liversidge’s “convert session button"
`and that such a combination maps onto the claim language:
`
`/ The proposed modification would render Tanigawa inoperable by
`eliminating a feature (like Haims) that relies upon the conference
`call requester to determine who may be available and to select the
`
`appropriate clients for invitation to a conference call.
`
`\/ Even if replaced as proposed, neither the Petition itself nor its
`attached declaration provides any rational explanation for how the
`modified system could possibly read the user’s mind to determine
`which client[s) the user would have otherwise subjectively
`selected for invitation.
`
`\/ The proposed combination runs afoul of the limitation “said
`conference call request identifying each of the potential targets for
`said conference call request"
`
`
`
`potential targets for said conference call request”
`
`“said conference call request identifying each of the
`
`Petitioner has argued that Liversidge’s request sent to the
`server does not identify each of the potential targets:
`
`[161] “the request lacking a specific identification of the at least
`
`one other party;”
`
`Liversidge discloses this limitation. (Ex. 1002 1[ 138.) The ConvertSession
`
`request received by VIE server 40 “provides session ID and a new session type.”
`
`(EL 1004 ‘ii [0176];
`
`id. 1”] [0126], [0176]-[0181].) The ConvertSession request
`
`does not identify the at least one other party. (Ex. 1002 1i 138.) Instead, VTE (IPR2017-01683 pet. 59
`addressed in IPR2017-
`
`[l6g] “determine, after reception of the request, the at least one
`other party from information associated with the 1M session;”
`
`01684 Resp. 19-22)
`
`Liversidge discloses this limitation. (Ex. 1002 1] 139.) After reception of the
`
`request. VTE server 40 determines the at least one other party from information
`
`associated with the 1M session. (Id.) Particularly. “[o]n receipt of the message [i.e.,
`
`the request], the VTE server translates the session ID (step 1138) to determine the
`
`session type and the participants." (Ex. 1004 11 [0176].) Liversidge explains that the
`
`
`
`potential targets for said conference call request”
`
`“said conference call request identifying each of the
`
`Tanigawa’s request does n_ot identify each of the potential
`targets at least because the claim language defines “potential
`targets,” at least in part, as “then being connected to the
`instant messaging service and participating in a given instant
`
`messaging session with the conference call requester"
`
`Tanigawa states Clients D and F are
`participating in chat session but are n_ot
`identified in the conference call request
`
`Clients E and G cannot be “potential
`targets" because they are not & cannot
`
`participate in an IM session
`
`Next. the command processing portion 484 causes the
`output data creating portion 485 to create. for each IM client
`determined as being able to participate therein. a participa-
`tion inviting command including the address and the nick-
`name of the conference room and the nickname “taro” of the
`
`IM client. who is inviting the participation. The panicipation
`inviting command created for each IM client determined as
`being able to participate-is IP-packetized in the packet ‘
`assembling portion 486 and is sent to each of the addresses
`of the destination 1M clients via the [1’ network I (81011).
`Here, the participation inviting command is sent to the IM
`terminal 7-1 (account name of the IM client: client D) and
`the IM terminal ‘7-3 (account name of the IM client: client
`
`‘31
`
`
`
`
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