PTAB

IPR2018-00559

LG Electronics Inc v. 3G Licensing SA

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1. Case Identification

2. Patent Overview

  • Title: Mixed Media Telecommunication Call Manager
  • Brief Description: The ’091 patent describes call set-up techniques for telecommunications networks, specifically for arranging a mixed-media call (audio and video) between videophones. The alleged novelty centers on allowing a videophone to switch between call types, such as from a video call to a voice-only call, by discontinuing a first call and initiating a second call.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 6-11 are obvious over Ericsson, 3GPP-972, and Priestman.

  • Prior Art Relied Upon: Ericsson (Tdoc N1-99637, "In-Call Modification Procedures"), 3GPP-972 (3G TR 23.972, "Multimedia Telephony"), and Priestman (WO 99/59312).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the core inventive concept—switching call modes by discontinuing a first call and initiating a second—is explicitly taught by Ericsson. Ericsson discloses this "disconnect and connect" method for in-call modification, providing a specific example of switching from a voice call to add a video channel. To address the ’091 patent’s claims of switching from a video call to a voice call, Petitioner argued that 3GPP-972 explicitly teaches that such call type modifications are possible "vice versa" (i.e., from multimedia to speech). This establishes that bidirectional switching was a known and obvious design choice. Finally, because the Ericsson and 3GPP-972 documents focus on network protocols and do not detail the hardware, Priestman was introduced to supply the well-known components of a mobile videophone recited in the claims, including the processor, RF interface, and transmitter.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ericsson and 3GPP-972 to achieve a seamless, bidirectional call-switching capability, which is a predictable improvement offering greater flexibility. A POSITA would then implement this known functionality using the standard videophone architecture disclosed in Priestman, as it provides a known and suitable hardware platform for the telecommunication methods described in Ericsson and 3GPP-972.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involves applying a known call-switching method (Ericsson) in a known, alternate direction (3GPP-972) on a conventional hardware platform (Priestman), without any apparent technical hurdles.

Ground 2: Claims 5 and 12 are obvious over Ericsson, 3GPP-972, Priestman, and 3GPP-135.

  • Prior Art Relied Upon: Ericsson (Tdoc N1-99637), 3GPP-972 (3G TR 23.972), Priestman (WO 99/59312), and 3GPP-135 (3G TS 22.135, "Multicall; Service description").
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Ericsson, 3GPP-972, and Priestman from Ground 1 to establish the base system for switching between mixed-media calls. It adds 3GPP-135 to address the additional limitation in claims 5 and 12, which require "placing the first call on hold" in response to an indication to switch. Petitioner argued that while Ericsson’s method of disconnecting the first call functionally places it on hold, 3GPP-135 explicitly discloses "multicall" functionality where a user can "put a[] speech call on hold and set-up a new call." This reference directly teaches the use of a call-hold feature to manage the transition between calls.
    • Motivation to Combine: A POSITA would be motivated to incorporate the call-hold feature from 3GPP-135 into the call-switching system of Ericsson. Ericsson itself suggests using "Multicall" to provide a seamless switch, and 3GPP-135 details the established standards for such multicall functionality, including placing calls on hold. Combining these references would simply implement a known feature (call hold) to improve the user experience of a known process (call switching), which was a common design goal in telecommunications.
    • Expectation of Success: Success would be expected, as it involves integrating a standard, well-documented telecommunication feature (call hold from 3GPP-135) into a system that already contemplates multicall capabilities (Ericsson).

4. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-12 of Patent 7,995,091 as unpatentable under 35 U.S.C. §103.