Google Inc v. Uniloc Luxembourg SA

1. Case Identification

• Case #: IPR2017-01685
• Patent #: 7,804,948
• Filed: June 29, 2017
• Petitioner(s): Google, Inc.
• Patent Owner(s): Uniloc USA, Inc. and Uniloc Luxembourg, S.A.
• Challenged Claims: 1-4, 6-8, 18, 21, and 22

2. Patent Overview

• Title: Initiating Conference Calls via an Instant Messaging System
• Brief Description: The ’948 patent discloses a system and method for initiating a multi-party conference call from within an ongoing instant messaging (IM) session. The system uses the existing IM communication channel to transmit a conference call request from a user's device to a conference call server, which then establishes a conference bridge and connects the selected participants.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tanigawa and Liversidge - Claims 1-4, 6-8, 18, 21, and 22 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 fundamental method of the ’948 patent. Tanigawa describes a system for "switching" from a text-based group chat to a group voice chat (i.e., a conference call). In Tanigawa, a user ("taro") on a network access device (IP terminal 7-2) running an IM client can request a "buddy list" of current chat participants, and then send a "voice chatting request command" over an IP network to a server (AP server). The server then processes the request and establishes a multi-party voice connection. Petitioner asserted this maps to the core limitations of independent claim 1, including providing a network access device, using an IM service to communicate a request to a conference call server, and establishing the call.
  • Petitioner argued that while Tanigawa teaches the core system, Liversidge provides teachings that would have made it obvious to a person of ordinary skill in the art (POSITA) to implement certain features claimed in the ’948 patent. For any limitations not explicitly detailed in Tanigawa, Liversidge supplies the missing elements as well-known and obvious modifications. For instance, where Tanigawa broadly describes a user "instructing" the system to initiate a call, Liversidge teaches a specific, user-friendly implementation: a single "ConvertSession" button in the IM interface. This renders obvious the claim limitation of generating a conference call request "responsively to a single request."
  • For dependent claims, Petitioner asserted that the combination of Tanigawa and Liversidge renders the additional limitations obvious. Tanigawa discloses using VoIP and cellular devices (a "radio terminal") in its system, mapping to claims 6 and 8. Liversidge explicitly teaches using its system for video data transmission ("streaming video information"), which would have made it obvious to apply this known capability to Tanigawa's system, as recited in claim 7 and 22. Further, Liversidge teaches that its IM client can be a browser-viewable application, rendering claims 3 and 4 obvious.
  • Motivation to Combine: Petitioner contended a POSITA would combine Tanigawa and Liversidge because both address the same problem of converting an IM session to a voice conference and operate on similar packet-based network architectures. A POSITA looking to implement Tanigawa's broader concept would have been motivated to consult references like Liversidge for known, specific, and user-friendly implementations, such as a single-button interface or the integration of video capabilities, to improve the system's functionality and usability.
  • Expectation of Success: A POSITA would have had a high expectation of success in combining the teachings. Because both systems utilize similar network hardware and software paradigms (IM clients, servers, packet networks), implementing Liversidge's specific features (e.g., a "ConvertSession" button or video streaming) into Tanigawa's foundational system would have involved applying known techniques to a predictable system, requiring minimal modification.

4. Key Claim Construction Positions

• Petitioner argued that its unpatentability contentions are supported by the express definitions provided within the specification of the ’948 patent itself. Key terms relied upon include:
  • Network Access Device: Defined broadly in the specification as "[a]ny device capable of communicating over a network," including computers, PDAs, and cellular telephones.
  • Conference Call: Defined as a "communication between two or more parties who are disparately located," which can include audio, verbal, or visual data.
  • Address: Defined as an "identifier for where a participant...may be contacted," such as a phone number or a VoIP identifier.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the primary prior art references, Tanigawa and Liversidge, were never considered by the USPTO during the original prosecution of the ’948 patent.
• Petitioner also contended that the petition was not redundant of a previously instituted IPR against the ’948 patent (IPR2017-00058). That proceeding was filed by a different petitioner, relied on a different set of prior art references (primarily Hamberg), and did not challenge claims 3 and 4, which are challenged in this petition.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-4, 6-8, 18, 21, and 22 of the ’948 patent as unpatentable.