Google Inc v. Uniloc Luxembourg SA

1. Case Identification

• Case #: IPR2017-01683
• Patent #: 8,571,194
• Filed: June 29, 2017
• Petitioner(s): Google, Inc.
• Patent Owner(s): Uniloc USA, Inc. and Uniloc Luxembourg, S.A.
• Challenged Claims: 1-16

2. Patent Overview

• Title: System and method for initiating conference calls via an instant messaging system.
• Brief Description: The ’194 patent discloses a system for initiating multi-party voice communications (conference calls) directly from within an instant messaging (IM) application. The system uses the existing IM channel to transmit a conference call request to a server, which then establishes the call among the IM session participants.

3. Grounds for Unpatentability

Ground 1: Claims 1-16 are obvious over Liversidge in view of Beyda.

• Prior Art Relied Upon: Liversidge (Application # 2002/0076025) and Beyda (Application # 2003/0233417).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Liversidge, the primary reference, discloses all major features of the challenged claims. Liversidge teaches a "virtual team environment" (VTE) system that integrates IM with other communication modes. Specifically, Liversidge discloses an IM session window that displays exchanged messages and participant status. Critically, Liversidge describes a "ConvertSession" button or icon within the IM interface that allows a user to automatically convert an ongoing IM session into a voice communications session (a conference call) among all current participants. This conversion is initiated by sending a message to a server (the "VTE server"), which then establishes the call via a conference bridge without requiring the user to individually select the participants.
  • Petitioner asserted that while Liversidge describes installing a client application on a user device (PC or PDA), it does not explicitly state that the application instructions are stored on a non-transitory computer-readable medium (e.g., memory). Beyda, which also describes an IM system for conducting teleconferences, was introduced to supply this teaching. Beyda explicitly discloses that software for implementing client applications is stored in memory in a "known manner." Thus, Petitioner contended that applying Beyda’s conventional teaching of storing software in memory to Liversidge’s system would have been obvious.
  • The same combination was argued to render the other independent claims obvious. Claims 6 and 11 were presented as recasting the same invention with slightly different wording, and claim 16 recites the method from the server's perspective, which Petitioner argued is fully described by Liversidge's VTE server. The dependent claims were also argued to be obvious, as Liversidge discloses multi-party (three or more users) sessions (claims 2, 7, 12), a single-click "ConvertSession" icon (claims 3, 8, 13), displaying all elements in a common application window (claims 4, 9, 14), and the capability for multi-media communications including video (claims 5, 10, 15).
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Liversidge and Beyda because both address the same technical problem of integrating IM with real-time voice/video communications. A POSITA implementing the system in Liversidge would have been motivated to use the "known manner" of storing application instructions in memory, as taught by Beyda, to enable the client device to operate as described. This represents a predictable and conventional design choice.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in combining the references. Storing software on a non-transitory medium to be executed by a computer was a fundamental and routine practice at the time, and applying this standard technique to the Liversidge system would yield predictable results.

4. Key Claim Construction Positions

• "without requiring registration": Petitioner argued this phrase, added during prosecution to distinguish the claims from a reference (Hamberg), should be construed to mean that participants in an ongoing IM session are not required to complete an additional or separate registration with the conference call server to be joined into a voice call. The system is aware of the current IM participants and can initiate the call for that ad-hoc group. This contrasts with systems requiring users to be pre-registered members of a defined group to communicate. Petitioner asserted Liversidge meets this construction because its "ConvertSession" feature operates on the current, dynamic group of IM participants without requiring a separate registration step for the voice call.
• "said display for the first party": This phrase appears in dependent claims 4, 9, and 14, which require that "said display" and the "display an exchange of IM" occur within a common window. Petitioner contended that, based on the claim language and the patent owner's previous litigation positions, this phrase refers to the "display for the first party an option" to initiate voice communication. Petitioner argued Liversidge discloses this, as its "ConvertSession" option is part of the overall IM session interface that also displays the message exchange.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the core prior art combination was not previously considered by the Patent Office. While a patent related to Liversidge was listed in an Information Disclosure Statement during prosecution of the ’194 patent, it was not cited, discussed, or relied upon by the Examiner.
• Petitioner also contended this petition is not redundant of other IPR proceedings involving the ’194 patent (e.g., Facebook, IPR2016-01756 and Cisco, IPR2017-00957). The grounds raised in this petition were argued to be distinct, as they rely on a different prior art combination (Liversidge and Beyda) and challenge a different, more comprehensive set of claims (1-16) than those previously instituted for review.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-16 of the ’194 patent as unpatentable under 35 U.S.C. §103.