PTAB

IPR2013-00312

Oracle Corp v. Click To Call Technologies LP

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Anonymous Voice Communication Using An Online Data Service
  • Brief Description: The ’836 patent relates to a system and method for establishing anonymous telephone calls between two parties. The system uses an "on-line data system" (ODS) for electronic communication and an "anonymous voice system" (AVS) to connect the call without revealing the initiating party's personal information to the receiving party.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Dezonno - Claims 1, 2, 12-13, 18-19, 22-24, 26, and 30 are anticipated by or obvious over Dezonno.

  • Prior Art Relied Upon: Dezonno (Patent 5,991,394).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dezonno, which discloses a "click-to-call" system for a user on a corporate website to request a callback from a company agent, teaches every limitation of the challenged claims. Dezonno’s system used a website (the on-line data service) to present information and a user-selectable element (a "CALL ME" button) to a first party (the user). Upon selection, the system would establish a voice connection between the user and a second party (the agent). Petitioner contended that the user is anonymous to the agent prior to the call being connected, as the user’s identifying information is only requested after the initial electronic communication is established, thus meeting the "anonymous" limitation.
    • Key Aspects: Petitioner emphasized that the functionality described in Dezonno is highly similar to the commercial "click-to-call" services that the Patent Owner accused Petitioner of infringing in parallel district court litigation.

Ground 2: Obviousness over Freeman and Attention Shoppers - Claims 1, 2, 8, 12-13, 15-16, 18-19, 22-24, and 26-30 are obvious over Freeman in view of Attention Shoppers.

  • Prior Art Relied Upon: Freeman (Patent 5,428,608) and Attention Shoppers (a New York Times article, Aug. 12, 1994).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Freeman taught the core claimed system: a "voice assist" feature for an on-line shopping system that allows a user to click a button to request a voice call with a customer service representative. While Freeman described the system operating on a generic packet network, the contemporaneous Attention Shoppers article described a World Wide Web storefront accessible over the Internet. The combination of these references was argued to teach providing a voice-connection feature over the Internet as claimed.
    • Motivation to Combine: A POSITA would combine Freeman’s voice assist feature with the Internet-based storefronts described in Attention Shoppers. This combination would serve the predictable goal of providing users of emerging e-commerce websites with a convenient method to communicate with sales representatives, thereby improving the online shopping experience.
    • Expectation of Success: The combination involved applying a known communication feature to an analogous and emerging platform (Internet storefronts). Petitioner argued this would have been a straightforward implementation with a high expectation of success.

Ground 3: Obviousness over Freeman, Cyberspace, and Whole Internet - Claims 1, 2, 8, 12-13, 15-16, 18-19, 22-24, 26, and 29-30 are obvious over Freeman in view of Cyberspace and Whole Internet.

  • Prior Art Relied Upon: Freeman (Patent 5,428,608), Cyberspace (a 1991 book), and Whole Internet (a 1992 book).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on Freeman's "talk and play" feature, which provided voice communication between users of an online game. Cyberspace was cited for its description of the anonymous, multi-user online game "Habitat," where users interacted via avatars. Whole Internet was cited to show that such multi-player games were known to be hosted on publicly accessible Internet servers. Petitioner argued the combination taught an anonymous voice communication system for users of an on-line data service (the game) accessible over the Internet.
    • Motivation to Combine: A POSITA would combine Freeman's "talk and play" feature with the online gaming environments described in Cyberspace and Whole Internet. The motivation was to enhance the interactive experience of online games by adding real-time voice communication to the existing text-based chat functionality.
    • Expectation of Success: Integrating a known voice feature into a known online gaming environment to improve user interaction was argued to be a predictable and logical step for a POSITA.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Freeman and Attention Shoppers with Blinken (Patent 4,796,293) for call disconnect features, and combining Dezonno with Dozier (Patent 5,870,552) or the Mosaic Handbook for limitations specific to graphical icons.

4. Key Claim Construction Positions

  • Petitioner presented the Patent Owner's proposed claim constructions from parallel district court litigation, arguing that the claims were unpatentable even under those constructions.
  • on-line data service: The Patent Owner’s proposed construction was broad, encompassing services like "electronic mail, chat, newsgroups, or access to information." Petitioner leveraged this breadth to argue that the prior art websites and online gaming platforms met this limitation.
  • anonymous: The Patent Owner’s proposed construction was "identity is not revealed." Petitioner argued that prior art systems met this limitation because the first party’s identity was not revealed to the second party prior to the establishment of the voice connection, even if it was revealed later.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner argued that the claim limitations reciting "first information characterizing the second party" and "second information representing a communication from the second party" are non-functional, descriptive material. Citing Federal Circuit precedent, Petitioner contended these limitations have no functional relationship to the claimed invention and, therefore, should not be given patentable weight in the obviousness analysis.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 8, 12-13, 15-16, 18-19, 22-24, and 26-30 of the ’836 patent as unpatentable.