Google Inc v. Uniloc Luxembourg SA

1. Case Identification

• Case #: IPR2017-01684
• Patent #: 7,853,000
• Filed: June 29, 2017
• Petitioner(s): Google, Inc.
• Patent Owner(s): Uniloc USA, Inc. and Uniloc Luxembourg, S.A.
• Challenged Claims: 1-8, 12, and 18-23

2. Patent Overview

• Title: Initiating Conference Calls Via an Instant Messaging System
• Brief Description: The ’000 patent discloses a system and method for using an instant messaging (IM) service to transmit a request from a user's device to a conference call server. The server then automatically initiates a conference call connecting members of the ongoing IM session.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tanigawa and Liversidge - Claims 1-8, 12, and 18-23 are obvious over Tanigawa in view of Liversidge.

• Prior Art Relied Upon: Tanigawa (Patent 7,233,589) and Liversidge (Application # 2002/0076025).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Tanigawa discloses the core elements of the challenged method claims. Tanigawa teaches a system where a user ("taro") participating in a multi-user IM session on a network access device (an IP terminal) can initiate a multi-person "voice chat" (a conference call). The user's device generates a "voice chatting request command" that identifies the other participants and transmits it to an AP server, which functions as a conference call server by processing the request and establishing the call. Tanigawa further discloses indicating the participants in the IM session on a "buddy list" at the user's device before the request is generated.

  • Petitioner contended that to the extent Tanigawa does not explicitly teach certain features, Liversidge renders them obvious. Specifically, for the limitation of generating a request from a "single request," Liversidge teaches initiating a conference call by actuating a single "ConvertSession" button in the IM interface. For the limitation that the conference call connection is "automatically established," Petitioner argued that while Tanigawa’s process is inherently automatic, Liversidge explicitly describes an automatic system where the server establishes the call without further user interaction after the initial request. The combination thus satisfies all limitations of independent claims 1 and 23.

  • Dependent claims were addressed by showing Tanigawa and Liversidge teach the additional specific limitations. For instance, Tanigawa discloses using various communication paths, including PSTN (claim 5), VoIP (claim 6), and cellular networks (claim 8), as well as determining participant availability via presence information (claim 12). Liversidge was cited as teaching video data transmission (claim 7) and browser-based IM clients (claims 3-4) as known alternatives.

  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to combine the references to improve upon Tanigawa's system. Both Tanigawa and Liversidge address the same problem of transitioning an IM session to a voice conference. A POSITA would look to Liversidge’s specific, user-friendly implementation of a single "ConvertSession" button to improve the more general "instruction" step described in Tanigawa. This combination would enhance the system's usability and provide a predictable, efficient method for initiating a call, which was a known goal in the art.

  • Expectation of Success: A POSITA would have a high expectation of success in combining the teachings. Both references describe systems that operate on similar architectures, including general-purpose computers as network access devices and packet-based networks for communication. Integrating a user interface element like Liversidge’s button into Tanigawa’s back-end call processing system would involve only predictable modifications to known software systems.

4. Key Claim Construction Positions

• Petitioner asserted that claim construction was unnecessary for most terms, as the analysis could rely on their plain and ordinary meaning. For several key terms, Petitioner argued that the patentee acted as its own lexicographer by providing express definitions in the ’000 patent specification.
• Petitioner relied on the patent's explicit definitions for terms including "Network Access Device," "Conference Call," "Address," "PSTN," and "VoIP," contending that its unpatentability arguments were consistent with these intrinsic definitions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the primary references, Tanigawa and Liversidge, were never considered by the U.S. Patent and Trademark Office during the original prosecution of the ’000 patent.
• Petitioner also distinguished this petition from a co-pending IPR on the same patent (IPR2017-00198), noting that the other proceeding was filed by a different petitioner, relies on a completely different combination of prior art references (primarily Hamberg), and challenges a different set of claims (e.g., it does not include claims 3 and 4).

6. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-8, 12, and 18-23 of Patent 7,853,000 as unpatentable.