UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`GOOGLE, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`
`
`
`
`
`Case IPR2017-01685
`Patent 7,805,948
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`
`

`

`
`
`Table of Contents
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`I.
`II.
`
`B.
`
`B.
`
`INTRODUCTION ........................................................................................... 1
`THE ‘948 PATENT ......................................................................................... 2
`A. Overview of System and Method for Initiating a Conference Call ...... 3
`B.
`The ‘948 Patent Claims ......................................................................... 6
`C.
`Prosecution History of the ‘948 Patent ................................................. 7
`D.
`Petitioner Oversimplifies the Patented Technology and Does
`Not Address the Prosecution History .................................................... 9
`III. Google’s Cited References ............................................................................ 10
`A.
`Tanigawa (Ex. 1014) ........................................................................... 10
`B.
`Liversidge (Ex. 1004) .......................................................................... 14
`IV. PERSON OF ORDINARY SKILL IN THE ART ........................................ 18
`V.
`Claim Construction ........................................................................................ 19
`A.
`“generating a conference call request responsively to a
`single request by the conference call requester” ................................. 21
`The “conference call request” must identify “each of the
`indicated potential targets” .................................................................. 22
`VI. ARUMENT .................................................................................................... 23
`A.
`The Proposed Combination Fails to Disclose and Teaches
`Away From “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” ............................................. 26
`The Petitioner Improperly Picks and Chooses Teaching
`of Reference to the Exclusion of the Teachings of the
`References as a Whole ........................................................................ 28
`The Petitioner’s Propose Combination Renders Tanigawa
`Inoperable for its Intended Purpose .................................................... 30
`The Petition Does Not Prove Obviousness for the
`Dependent Claims ............................................................................... 31
`Inter Partes Review Proceedings Are Unconstitutional. ............................... 31
`
`C.
`
`D.
`
`VII.
`
`ii
`
`

`

`
`VIII. CONCLUSION .............................................................................................................32
`
`
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`iii
`
`

`

`
`
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`Exhibit No.
`2001
`
`List of Exhibits
`Description
`Declaration of William Easttom II
`
`iv
`
`

`

` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`
`
`
`
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`
`Partes Review (“the Petition”) of U.S. Patent 7,804,948 (“the ‘948 Patent”) filed by
`
`Google, Inc. (now Google, LLC) (“Petitioner”).1
`
`Petitioner has failed to prove that there is a reasonable likelihood that at least
`
`one of the claims challenged in the Petition is unpatentable. See 37 C.F.R. §
`
`42.108(c). For several different reasons, Petitioner fails to meet this standard for any
`
`of the challenged claims. Petitioner: (1) does not address the prosecution history and
`
`the import it has on the claim construction, (2) relies on a primary reference that
`
`expressly teaches away from the very limitations for which it is cited; (3)
`
`impermissibly picks and chooses features from references to the exclusion of
`
`remainder of such references, and (4) relies on a combination that renders a reference
`
`inoperable for its intended purpose. In view of the reasons presented herein, the
`
`Board should reject the Petition in its entirety.
`
`The Board should also deny institution because this proceeding would violate
`
`
`1 Petitioner relies on the exact same combination of references and substantially
`identical obviousness theories to those presented in IPR2017-01684, filed by the
`same Petitioner against U.S. Patent No. 7,853,000, which claims priority to and is a
`continuation of the '948 Patent.
`
`1
`
`

`

`
`Patent Owner’s constitutional rights. Patent Owner presents a constitutional
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`challenge now to preserve the issue pending the Supreme Court’s decision in Oil
`
`States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017).
`
`II. RELATED MATTERS
`
`
`
`The ‘948 Patent is part of family including United States Patent No. 7,853,000
`
`(the ‘000 Patent) and United States Patent No. 8,571,194 (the ‘194 Patent).
`
`Petitioner has filed following additional petitions:
`
`Filing Date
`Patent. No.
`Petition No.
`Petitioner
`June 29, 2017
`‘194 Patent
`IPR201-01683
`Google
`June 29, 2017
`‘000 Patent
`IPR201-01684
`Google
`
`
`
`
`The following additional petitions have been filed for this family of patents
`
`with the following institution dates:
`
`Institution Date
`Patent. No.
`Petition No.
`Petitioner
`March 26, 2017
`‘194 Patent
`IPR2016-01756
`Facebook/Whatsapp
`April 11, 2017
`‘948 Patent
`IPR2017-00058
`Cisco
`April 18, 2017
`‘000 Patent
`IPR2017-00198
`Cisco
`June 26, 2017
`‘194 Patent
`IPR2017-00597
`Cisco
`
`
`
`
`The following additional IPR was filed, but has since been dismissed:
`
`Petitioner
`Unify
`
`
`Petition No.
`IPR2016-01076
`
`Patent. No.
`‘194 Patent
`
`Terminated Date
`June 12, 2017
`
`
`
`
`
`2
`
`

`

`
`
`III. THE ‘948 PATENT
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`A. Overview of System and Method for Initiating a Conference Call
`
`In general, the ‘948 Patent discloses and claims various embodiments for
`
`“initiating conference calls via an instant messaging system to reduce the effort
`
`required to initiate and manage the call.” (Ex.1001 at Abstract) (Ex. 2001 at ¶ 18).
`
`The ‘194 Patent claims priority to a provisional application filed on December 22,
`
`2003.
`
`The art at the time of the invention typically required all users who wanted to
`
`join a conference call to dial in to a central number and enter a passcode, which
`
`inhibited setting up spontaneous conference calls and is subject to serious security
`
`risks. (Ex.1001 at 2:40-58) (Ex. 2001 at ¶19). Other systems inefficiently required
`
`someone (such as the host) to separately join each participant to the call, such as by
`
`taking the time to dial or otherwise separately identify each conference participant.
`
`(Ex.1001 at 2:49-3:20) (Ex. 2001 at ¶ 20).
`
`Preferred embodiments disclosed in the ‘948 Patent make novel use of certain
`
`instant messaging (“IM”) technology to facilitate automatic initiation of a
`
`conference call between participants of an IM session. (Ex. 1001 at Figure 2 and
`
`accompanying description) (Ex. 2001 at ¶ 21). According to one embodiment, “IM
`
`presence” features (e.g., monitored by the IM server) may be used to create a display
`
`3
`
`

`

`
`indicating which users are presently connected to the IM session. Such a display
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`may, in certain instances, advantageously “provide the conference call requester
`
`with information on which to base a decision of whether or not to request a
`
`conference call at a given time, based on prospective target ability.” (Ex. 1001 at
`
`9:48-67)(Ex. 2001 at ¶ 22).
`
`In the embodiment described with reference to Figure 4, for example, each
`
`user connects to a network with a network accessible device 414 (also called NAD).
`
`(Ex. 1001, Fig. 4)(Ex. 2001 at ¶ 23).
`
`
`
`These devices comprise computers, digital cellular telephones, personal
`
`digital assistants (an earlier technology whose functionality has been incorporated
`
`4
`
`

`

`
`into today’s smartphones and tablets), and similar technologies. (Ex. 1001 at 5:39-
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`45)(Ex. 2001 at ¶ 24).
`
`The NADs communicate with each other through an instant messaging service
`
`and via a conference call server. As shown in Figure 4, the conference call server
`
`(represented in the illustrated embodiment as block 402) may include multiple
`
`subcomponents (e.g., a conference request processor, an IM communications
`
`processor, a database 406 etc.). The network over which the NADs communicate
`
`may be an Internet protocol (IP) network (e.g., the Internet). (Ex. 1001 at 9:12-
`
`25)(Ex. 2001 at ¶ 25).
`
`Certain embodiments disclosed and claimed in the ‘948 Patent allow a user to
`
`start a conference call from within an IM session using a single request and in a
`
`manner which automatically includes each participant in that session. (Ex. 1001 at
`
`6:22-59 and 7:27-44)(Ex. 2001 at ¶ 26). The instant messaging service can send a
`
`request to the conference call server to start a conference call. (Ex. 1001 at 6:22-59
`
`and 7:27-44)(Ex. 2001 at ¶ 26).
`
`Upon receiving the request, the conference call server 402 may establish the
`
`conference call directly by itself or indirectly using a separate component or system,
`
`which can be provided by a third party (e.g., through one of the bridges 410A or
`
`410B). (Ex. 1001 at 8:11-40)(Ex. 2001 at ¶ 27). According to one embodiment, “IM
`
`5
`
`

`

`
`presence” features (e.g., monitored by the IM server) may be used to create a display
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`indicating which users are presently connected to the IM session. (Ex. 1001 at 9:48-
`
`67)(Ex. 2001 at ¶ 28).
`
`The conference call server 402 or one of the conference call bridges 410A and
`
`410B may contact each of the prospective targets, possibly directly dialing their
`
`phones or, if their NAD has audio and video capability, connecting through it using
`
`the one or more of the various communication networks 408, including publicly
`
`switched telephone networks (PSTNs), voice over Internet, or cellular telephone. If
`
`the conference call server is not provided with a direct number to dial, it may instead
`
`inform the prospective targets (e.g., through instant messaging) by giving them
`
`instructions to join. (Ex. 1001 at 8:11-24)(Ex. 2001 at ¶ 28).
`
`B.
`
`The ‘948 Patent Claims
`
`The ‘948 Patent issued with 66 claims. Of those, Claims 1, 23 and 51 are
`
`independent claims. The Petitioner challenges Independent Claim 1 and Dependent
`
`Claims 2-4, 6-8, 18-21, and 22.
`
`Among other meaningful limitations that are missing from Petitioner’s
`
`proposed combination of references, Independent Claims 1 recite “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
`
`6
`
`

`

` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`
`said conference call request.”
`
`C.
`
`Prosecution History of the ‘948 Patent
`
`The ‘948 Patent issued from U.S. Application No. 11/019,655 (“the
`
`application”), filed Dec. 22, 2004, which claims the benefit of the U.S. Provisional
`
`Application No. 60/531,722 (the ‘722 application), filed on December 22, 2003.
`
`In the prosecution history, Applicant amended the claims to their current form
`
`– including the phrase “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” and argued as follows:
`
`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
`Ars 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 As IM
`service. See,, e.g., Specification, p. 16, ll. 12-22.
`
`
`(Ex 1018 at 123-124 of 353)(Emphasis in original). The Applicant further argued:
`
`7
`
`

`

`
`
`
`
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`Consistently Claim 1 has been amended to recite:
`
`
`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 each of the potential targets.
`
`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
`
`8
`
`

`

`
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`common IM session with the requester responsively to a single requester
`request.
`
`
`(Ex. 1018 at 124 of 353)( highlighting emphasis added, remainder of emphasis in
`
`original). In the above statements, the Applicant was clarifying that the emphasized
`
`claim language excludes scenarios where a user determines whether attendees are
`
`available for a conference call and selects such attendees for invitation. Following
`
`such an argument and amendment, the application was allowed. (Ex. 1018 at 99 of
`
`353).
`
`D.
`
`Petitioner Oversimplifies the Patented Technology and Does Not
`Address the Prosecution History
`
`The Petitioner attempts to summarize the ‘948 Patent technology at pages 9-
`
`13 of the Petition. In doing so, Petitioner oversimplifies the ‘948 Patent. For
`
`example, Petitioner overlooks disclosed and claimed advantages achieved at least in
`
`part through automatically generating a conference call request responsively to a
`
`single request by the conference call requester.
`
`The Petitioner also does not describe the prosecution history of the application
`
`leading to the ‘948 Patent. At a minimum, one would expect a petitioner to provide
`
`some recognition of what happened in the prosecution history along with an
`
`argument as to whether the prosecution history has any import on the meaning of the
`
`claims. Here, Petitioner does not do so – despite the prosecution undeniably
`
`9
`
`

`

`
`providing meaning to the claims. This, alone, is dispositive of the petition as
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`discussed below because a petition cannot be based on erroneous constructions.
`
`IV. Google’s Cited References
`
`Google alleges the below claims are obvious over two references.
`
`
`Claims
`1-4, 6-8, 18, 21, and 22
`
`Statute
`103
`
`Reference(s)
`Tanigawa 2 and Liversidge 3
`
`
`
`
`
`A.
`
`Tanigawa (Ex. 1014)
`
`Tanigawa discloses a cross-device communication platform
`
`that
`
`advantageously uses presence information to create so-called “buddy lists” to enable
`
`communications for instant messages and voice chats. (Ex. 1014 at Col. 11, lines 42-
`
`61; and Col. 11, lines 62-Col. 12, line 6)(Ex. 2001 at ¶ 37).
`
`
`
`Figure 10 of Tanigawa shows a process for accessing an IM server using such
`
`buddy lists. (Ex. 1014 at Col. 10, lines 27 through Col. 13, line 36)(Ex. 2001 at ¶
`
`38).
`
`
`2 EX1014, U.S. Patent No. 7,233,589 to Tanigawa (“Tanigawa”)
`3 EX1004, U.S. Patent Pub. No. 2002/0076025 to Liversidge (“Liversidge”)
`
`10
`
`

`

`
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`
`In Figure 10 of Tanigawa, three users are shown highlighted in yellow: taro, hanako,
`
`and yoshi. Hanako and yoshi are associated with two different devices, respectively
`
`labeled clients D and E for hanako (highlighted in orange) and clients F and G for
`
`yoshi (highlighted in orange). (Ex. 2001 at ¶ 39).
`
`With reference to the portion of Figure 10 below, Taro logs into the IM server
`
`and requests a buddy list. (Ex. 1004 at S1004; Col. 11, lines 35-42)(Ex. 2001 at ¶
`
`40).
`
`11
`
`

`

`
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`
`Upon being notified of buddies (S1005), taro selects buddies and conference rooms
`
`settings for an IM session. (Ex. 1014 at S1006, S1008, and S1010; Ex. 1014 at Col.
`
`11, lines 43-61; Col. 12, lines 7-21; Col. 12, lines 38-55; and Col. 13, lines 26-36)
`
`(Ex. 2001 at ¶ 41). See, also, specifically Ex. 1014 at Col., 12, lines 5-6 (“The user
`
`‘taro’ can determine a chat party based on the data.”). The IM server “checks
`
`whether or not each of the IM clients in the specified records 440 can participate in
`
`the text chat . . .” (Ex. 1014 at Col. 13, lines 44-47) (Ex. 2001 at ¶ 42). Then, “for
`
`each IM client determined as being able to participate therein, a participation inviting
`
`command including the address and the nickname of the conference room and the
`
`nickname “taro” of the IM client, who is inviting the participation.” (Ex. 1014 at
`
`12
`
`

`

`
`Col. 13, lines 52-57) (Ex. 2001 at ¶ 43).
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`Figure 11 of Tanigawa shows a process for accessing a “voice chat” using
`
`such buddy lists. (Ex. 1014 at Col. 15, lines 10 through Col. 16, line 11)(Ex. 2001
`
`at ¶ 44).
`
`
`Figure 11 shows the same three users: taro, hanako, and yoshi – again
`
`highlighted in yellow. Just like Figure 10, taro requests and receives a buddy list.
`
`(Ex. 1014 at S1014 and 1015; Ex. 1014 at Col. 15, lines 10-39)( (Ex. 2001 at ¶ 45).
`
`Just like Figure 10, taro then selects which clients it would like to voice chat with to
`
`request a voice chat. (Ex. 1014 at S1016; Ex. 1014 at Col. 15, line 40 - Col. 16., line
`
`13
`
`

`

`
`16) (Ex. 2001 at ¶ 46. See, also, specifically, Ex. 1014 at Col 15, lines 63-65 (“[A]n
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`instruction for requesting to voice-chat with the IM clients whose account names are
`
`“client E” and the “client G”, respectively, is input to the input device 44.”). In
`
`particular, taro can choose to select client E and client G of Figure 11. (Ex. 1014 at
`
`Col 15, lines 63-65)(Ex. 2001 at ¶ 46).
`
`B.
`
`Liversidge (Ex. 1004)
`
`
`
`Liversidge discloses a system for enabling users to communicate across
`
`packet-switched networks (PSTNs) and circuit switched networks. (Ex. 1004 at Par.
`
`0071-0072) (Ex. 2001 at ¶ 47).
`
`FIG. 3 of Liversidge shows an example environment where a user denoted by
`
`58a, 58b, 58c has certain PSTN-based devices 54a, 54b, and 54c (e.g., denoted as
`
`phones) that communicate through a public switched telephone network (PSTN) and
`
`packet based devices 58a, 58b, and 58c (e.g., denoted as computers or a smart phone)
`
`that communicate with a packet network 46. (Ex. 1004 at Par. 0071)(Ex. 2001 at ¶
`
`48).
`
`14
`
`

`

`
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`
`In order to “initiate and control communications involving the PSTN-based
`
`communications devices 54, a virtual switching point (VSP) 60 of the CCS
`
`network 53 is adapted to interact with the VTE server 40 via, for example, a suitable
`
`connection to the packet network 46.” (Ex. 1004 at Par. 0071)(Ex. 2001 at ¶ 49).
`
`In the specific context cited by petitioners, users 58a, 58b, and 58c may wish
`
`“to terminate the instant messaging session and continue the conversation using an
`
`alternative type of communications, such as, for example, voice communications.
`
`Consequently, the VTE client application 44 provides an appropriate icon or button
`
`(a ConvertSession button) which enables the team member to launch a
`
`15
`
`

`

`
`ConvertSession message (at 376) to the collaboration services suite 2 to facilitate
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`conversion of the communications session to the desired communications type.” (Ex.
`
`1004 at Par. 0126)(Emphasis added)(Ex. 2001 at ¶ 50).
`
`Figures 32, 32a, and 32b (and paragraphs 0175-0181), describe such a process
`
`of terminating the IM session and starting an alternative voice session. Specifically,
`
`with reference to the top portion of Figure 32 below and the terminating, after a VTE
`
`Svr receives a ConvertSession message, the Svr closes the IM Session. (Ex. 1004 at
`
`1140; Ex. 1004 at Par. 0176)(Ex. 2001 at ¶51).
`
`
`
`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)(Ex. 2001 at ¶52).
`
`With respecting to starting an alternative voice session, the process continues
`
`by the VTE svr handing off control to a VSP, which contact each device (e.g., 54a,
`
`54b, and 54c) one by-one through respective enhanced integrated services digital
`
`16
`
`

`

`
`network user part (E-ISUP) voice trunks, and service switching points (SSP). Each
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`device (e.g., 54) upon answering causes a respective second end of the E-ISUP to
`
`dial into the conference bridge and waits for another participant to join, which
`
`follows the same process. (Ex. 1004 at Par. 176-181)(Ex. 2001 at ¶ 53).
`
`The lower portion of Figure 32 describes this process with the VSP. (Ex. 2001
`
`at ¶ 54).
`
`
`Specifically, the VSP causes SSP (X) (through an E-ISUP (A)) to “ring” a first PSTN
`
`corresponding to Client A. (Ex. 1004 at 1160; Ex. 1004 at Par. 177)(Ex. 2001 at ¶
`
`55). The first PSTN corresponding to the Client A answers the ring from the SSP
`
`(X), which causes a second end of the E-IUSP to reach out to the VSP and ultimately
`
`17
`
`

`

`
`the conference bridge through SSP(D). (Ex. 1004 at 1166, 1174; Ex. 1004 at Par.
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`177)(Ex. 2001 at ¶56). Once everything is completely set-up with the first PSTN
`
`corresponding to Client A, a welcome message is played. (Ex. 1004 at 1192; Ex.
`
`1004 at Par. 178)(Ex. 2001 at ¶57). The process is repeated for each respective PSTN
`
`as shown in FIGURES 32B and 32C. Once a second PSTN is connected, a join as
`
`between connection is performed. (Ex. 1004 at 1230; Ex. 1004 at Par. 178)(Ex. 2001
`
`at ¶ 58). When a third PSTN is connect, a similar joint process is performed. (Ex.
`
`1004 at 1230; Ex. 1004 at Par. 181)(Ex. 2001 at ¶ 58).
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) is someone who would have
`
`possessed on the priority date a bachelor’s degree in electrical engineering or
`
`computer science (or equivalent degree/experience) with at least two years of
`
`experience in computer programming and software development, including the
`
`development of software for communication with other computers over a network.
`
`Ex. 2001, ¶13.
`
`This definition of a POSTA differs with the Declaration of Mr. Lipoff,
`
`Google’s Declarant, and agrees with the Declaration of Dr. Klausner, Facebooks’
`
`Declarant for United States Patent No. 8,571,194 – a family member of the ‘948
`
`Patent.
`
`18
`
`

`

`Mr. Lipoff defines the qualification of a POSITA as “someone knowledgeable
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`
`
`in collaboration applications and telecommunications services who has a Bachelor’s
`
`degree in Computer or Electrical Engineering, Computer Science, or equivalent
`
`training, and approximately five years of experience working on computer-based
`
`collaboration or telecommunications services.” (Ex. 1002 ¶ 42.) Mr. Eastom finds
`
`the years of experience inordinate. Ex. 2001, ¶14.
`
`Dr. Klausner defines “a person of ordinary skill in the art as of December 2003
`
`possessed at least a bachelor’s degree in electrical engineering or computer science
`
`(or equivalent degree or experience) with at least two years of experience in
`
`computer programming and software development, including the development of
`
`software for communication with other computers over a network.” IPR 2017-
`
`01756, Ex. 1002. Mr. Eastom finds such a POSITA definition indistinguishable from
`
`his definition. Ex. 2001, ¶15.
`
`VI. Claim Construction
`
`Pursuant to 37 C.F.R. § 42.100(b), and for the purposes of this review, Patent
`
`Owner construes the claim language such that the claims are given their broadest
`
`reasonable interpretation (“BRI”) in light of the specification of the ‘948 Patent.
`
`Even when giving claim terms their broadest reasonable interpretation, the
`
`Board cannot construe the claims “so broadly that its constructions are unreasonable
`
`19
`
`

`

`
`under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`F.3d 1292, 1298 (Fed. Cir. 2015) (emphasis in original). “[T]he protocol of giving
`
`claims their broadest reasonable interpretation . . . does not include giving claims a
`
`legally incorrect interpretation” “divorced from the specification and the record
`
`evidence.” Id. (citations and internal quotation marks omitted); see PPC Broadband,
`
`Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751–53 (Fed. Cir. 2016).
`
`As recently provided by the Federal Circuit in the context of broadest
`
`reasonable interpretations:
`
`The correct inquiry in giving a claim term its broadest reasonable
`interpretation in light of the specification is not whether the specification
`proscribes or precludes some broad reading of the claim term adopted
`by the examiner. And it is not simply an interpretation that is not
`inconsistent with the specification. It is an interpretation that
`corresponds with what and how the inventor describes his invention in
`the specification, i.e., an interpretation that is “consistent with the
`specification.”
`In re: Smith International, Case No. 2016-2303 at 12-13 (Fed. Cir. September 26,
`
`2017)(citations omitted). These principles are important here as Petitioner has
`
`provided no meaning for certain phrases and specifically excludes discussion of the
`
`intrinsic record concerning such phrases. When examined in light of the intrinsic
`
`records, these terms have meanings as prescribed below.
`
`20
`
`

`

` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
` “generating a conference call request responsively to a single
`request by the conference call requester”
`
`
`
`A.
`
`The Petitioner neither provides a construction for this phrase or an analysis of
`
`the prosecution history, which provides meaning to the phrase. The broadest
`
`reasonable interpretation of this phrase when read in light of the specification and
`
`the prosecution history excludes scenarios where a user determines whether
`
`attendees are available for a conference call and selects such attendees for invitation.
`
`Ex. 2002, ¶31. As discussed infra, in distinguishing from the Heim reference in the
`
`prosecution history, the following was argued:
`
`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.
`
`
`(Ex. 1018 at 125 of 353)(highlighting emphasis added).
`
`The meaning of this phrase and the import of the prosecution history cannot
`
`simply be ignored. Petitioner has specifically raised an issue as to whether or not the
`
`Tanigawa reference disclose such a limitation, providing the alternative Liversidge
`
`reference if the Tanigawa reference is deemed not to disclose the limitation.
`
`21
`
`

`

`The Petitioner’s use of an erroneous construction is reason enough to deny the
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`
`
`petition. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL
`
`3637569, at *11 (P.T.A.B. June 11, 2015), aff’d sub nom. Synopsys, Inc. v. Mentor
`
`Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim
`
`construction unreasonable in light of the specification, and therefore, denying
`
`Petition as tainted by reliance on an incorrect claim construction). Petitioner’s
`
`erroneous interpretation of “generating a conference call request responsively to a
`
`single request by the conference call requester” provides an independent and fully-
`
`dispositive basis to dismiss the Petition in its entirety.
`
`B.
`
`The “conference call request” must identify “each of the indicated
`potential targets”
`
`The Petition should be dismissed as applying the cited art in a manner that
`
`overlooks the requirement that the “conference call request” must identify “each of
`
`the indicated potential targets.” That claim language must be understood in the
`
`context of how the challenged claims define the “potential targets.”
`
`The independent claims introduce the “potential targets” in the recitation “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.” That claim language
`
`explicitly defines the “potential targets” as those who are connected to the instant
`
`22
`
`

`

`
`messaging service and participating in a given instant messaging session with the
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`conference call requester and with whom a conference call may be initiated. Ex.
`
`2001, ¶35.
`
`Expressly referring to that antecedent basis, the challenged claims further
`
`recite “said conference call request identifying each of the [identified/indicated]
`
`potential targets”. Id. Thus, among other limitations, each claim expressly requires
`
`that the “conference call request” must identify “each of the indicated potential
`
`targets” who are “connected to said instant messaging service and participating in
`
`an instant messaging session with the conference call requester and with whom a
`
`conference call may be initiated.” Ex. 2001, ¶34. As explained below, the Petition
`
`and the testimony cited therein offer admissions that confirm these limitations are
`
`missing from the proposed combination.
`
`In particular, as a proposed combination and as further discussed below, the
`
`Petitioner points to the Liversidge reference which undeniably could not disclose
`
`this feature when properly considered.
`
`VII. ARUMENT
`
`Petitioner has the burden of proof to establish they are entitled to their
`
`requested relief. 37 C.F.R. § 42.108(c). The Petition does not satisfy this burden for
`
`the reasons set forth herein and in the attached Declaration of Chuck Easttom
`
`23
`
`

`

`
`(EX2001).
`
` IPR2017-01685
`U.S. Patent No. 7,804,948
`
`
`A. The Petition Redundantly Challenges the Patentability of Claims
`
`The Petition should be denied under 35 U.S.C. § 325 (d) as presenting
`
`vertically redundant grounds because the Petitioner has not met its burden
`
`concerning presentation of such redundant grounds. In pa