UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owners.
`__________
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`__________
`
`Record of Oral Hearing
`Held: March 20, 2018
`__________
`
`
`
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and JEFFREY S.
`SMITH, Administrative Patent Judges.
`
`
`
`
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owners.
`__________
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`__________
`
`Record of Oral Hearing
`Held: March 20, 2018
`__________
`
`
`
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and JEFFREY S.
`SMITH, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`THEODORE M. FOSTER, ESQ.
`DAVID L. McCOMBS, ESQ.
`DINA BLIKSHTEYN, ESQ.
`Haynes and Boone, LLP
`2505 North Plano Road, Suite 4000
`Richardson, Texas 75082
`(972) 739-8649
`theo.foster@haynesboone.com
`
`
`
`ON BEHALF OF THE PATENT OWNERS:
`
`
`BRETT MANGRUM, ESQ.
`RYAN LOVELESS, ESQ.
`The Etheridge Group
`2001 Ross Avenue
`Dallas, Texas 75201
`brett@etheridgelaw.com
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, March
`
`20, 2018, commencing at 10:00 a.m. at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia
`
`
`
`
`
`2
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`P R O C E E D I N G S
`- - - - -
`
` (9:59 a.m.)
`
`JUDGE SMITH: Please be seated.
`Patent Owner, are you on the phone?
`MR. MANGRUM: Yes, Your Honor. This is Brett Mangrum,
`Lead Counsel for Patent Owner. With me is also Ryan Loveless.
`JUDGE SMITH: Okay. Thank you.
`Good morning. Welcome to the Patent Trial and Appeal Board.
`We're -- we're here this morning for inter partes Review Number IPR2017-
`00597, Patent Number 8,571,194. Cisco Systems is the Petitioner, and
`Uniloc is the Patent Owner.
`I'd like to start by getting appearance of counsel.
`Petitioner, please step up to the podium with your appearance.
`MR. McCOMBS: Good morning, Your Honors. I'm David
`McCombs here on behalf of Cisco Systems. With me is Dina Blikshteyn
`and Theodore Foster, my colleagues. Theodore Foster will be making a
`presentation.
`JUDGE SMITH: Thank you.
`Patent Owner, once again, if you could state your appearance?
`MR. MANGRUM: Yes, sir. This is Brett Mangrum, Lead
`Counsel for Uniloc, the Patent Owner, and I will be presenting today. With
`me is Ryan Loveless also on the line.
`JUDGE SMITH: Okay. Thank you.
`
`3
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`And before we begin, I'd like to go over some administrative details.
`Our trial hearing order indicated there'd be 30 minutes of argument for each
`side.
`
`Petitioner, you'll present your case first. Patent Owner will respond
`to Petitioner.
`And, Petitioner, if you reserve time for rebuttal, you may do so.
`Do you wish to reserve time for rebuttal?
`MR. FOSTER: Yes, Your Honor. If I could reserve eight
`minutes, please?
`JUDGE SMITH: Eight minutes for rebuttal.
`And, then one more thing about the slides.
`Patent Owner, do you intend to -- you sent us slides. Do you intend
`to use them during your presentation?
`MR. MANGRUM: Yes, Your Honor.
`JUDGE SMITH: Okay. So, for both parties, when you reference
`your slides, please identify the particular slide number that you're
`referencing. It'll help us here during the trial to be able to identify which
`slide you're talking about, and also when we review the transcript, it'll be
`easier for us when we review the transcript to match your discussion with
`the slide that you're referencing.
`MR. MANGRUM: Understood, and will do.
`JUDGE SMITH: Okay.
`Petitioner, when you're ready, you may begin.
`
`4
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`MR. FOSTER: Thank you, Judge Smith. Good morning. And
`may it please the Board? Theodore Foster on behalf of Petitioner Cisco
`Systems.
`This case involves technology for initiating a conference call from an
`instant messaging session, and that very same idea is unambiguously
`described in the primary reference, the Lamb patent. And most of the prior
`art's teachings of the claim limitations are not in dispute. The main dispute
`relates to a few negative limitations found in claim one, and additionally, to
`the identification of the conference call server of claim one.
`Going to Slide 5, I have here Figure 3 from the Lamb reference,
`Exhibit 1008, and as presented in the petition, we identified Lamb's
`telecommunications network server, Element 202-1, as the conference call
`server of the claim. And the reason we did this is because as you see from
`Figure 3, the telecommunications network server is connected to a public
`phone switch, 202-2, and from there, further on to the Public Switched
`Telephone Network, PSTN.
`Using the public phone switch, the telecommunications network
`server can create conference calls or voice communications, telephone calls
`over the Public Switched Telephone Network. And this, this functionality
`is described on Slide 6, which is an excerpt from the Lamb disclosure, where
`it states that the telecommunications network server "Can control the public
`phone switch to place call connections to the telephony equipment," and so
`it's quite clear in Lamb that the device that is creating and controlling
`
`5
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`telephone calls is the telecommunications network server, and for that
`reason, we believe that it is properly identified as the conference call server.
`Furthermore, looking at Slide 7, I believe, both of the declarants in
`this case, Petitioners Dr. Henry Houh, and the Declarant, Dr. Bovik, for
`Patent Owner, they agreed that the telecommunications network server is the
`device in Lamb's network that creates or initiates controls the call
`connections, the telephone calls between users.
`And if the Board agrees with the Declarants and reaffirms the
`identification of the telecommunication network server as the conference
`call server as the Panel did in the decision on institution, then there's no
`dispute that Lamb teaches the limitation of, without requiring registration
`with a conference call server as the Patent Owner has not raised any
`arguments that Lamb requires or even describes a registration process with
`the telecommunication network server.
`JUDGE EASTHOM: Counsel, can you help, help me out here?
`Is that consistent with the spec of the 194 patent? In other words, is there,
`is there a conference server connected to the public phone switch, and does
`it have similarities that you outline with respect to your Slide 5 or respect to
`Lamb?
`
`MR. FOSTER: I believe it is. If you look at Figure 4 of the 194
`patent, the -- Item 402 in that Figure, I believe, is identified in the
`specification as the conference call server, and you see that through the line,
`the arrows on the left side of that Figure, then going up and over, Element
`402, over to Element 408, which is a box labeled, "Telephone Networks,"
`6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`including PSTN, and so there you have the conference call server connected
`potentially directly to the PSTN, and then there's also disclosure in the 194
`patent about using a conference call bridge provider.
`And you see there are conference call bridge providers A and B in
`the bottom left corner of Figure 4, and the disclosure is that the conference
`call server could potentially use a conference call bridge provider to create
`and control PSTN connections, and that is quite similar to the disclosure in
`Lamb.
`
`If we look at Slide 21 of Petitioner's demonstratives, we have some
`quotations from Lamb that describe, for example, in Column 52, "The
`telecommunications network server can cause the public phone switch to
`bridge the VOIP call connection with the PSTN call connection," so here,
`again, Lamb is paralleling the 194 disclosure where potentially there's a
`bridge device, and in Lamb, that bridge device would be the public phone
`switch.
`JUDGE BARRETT: Before you move on, could you reiterate
`again as to how you're saying the, the negative limitation without require,
`without requiring registration of the conference call server? I understand
`it's difficult to prove a negative, but could you tell me what, if any, evidence
`you have to support a finding that that limitation is satisfied?
`MR. FOSTER: Certainly. I think, the first thing is that Lamb
`only ever talks about users having a user agent or some other piece of
`software that they would identify themselves to or log into, but user agent
`component is on a different server. It's on a hosting server.
`7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`There's no direct communication between users and the
`telecommunication network server. There's -- there's this hosting server in-
`between, and so I think it's -- as you said, it's somewhat difficult to prove a
`negative, but it's flowing from the fact that users don't directly interact with
`the network server, and there's description in Lamb about reasons to do that,
`including, you know, in a way protecting the network server from potential
`hacking attacks or other security concerns.
`JUDGE BARRETT: Okay. Thank you.
`JUDGE SMITH: Could you speak to the, the two servers in Lamb?
`You know, I guess, the -- this is in Figure 3 of Lamb. This is on your slide,
`on your Slide 5 in Figure 3 of Lamb. There's the telecommunication
`hosting server, which plays a role in creating this conference call, but there's
`telecom network server, which plays a role in creating the conference call.
`Petitioner is saying that the network server is the conference call
`server. Patent Owner is saying the hosting server is the conference call
`server. I mean, is -- is it really a choice between one or the other? Aren't
`both servers necessary in creating the call? I guess that's my first question,
`and then the second question, if we can choose one or the other rather than
`both, why would we not choose the hosting server to be the conference call
`server?
`MR. FOSTER: Certainly. To take your first question about
`whether they could both be, or --
`JUDGE SMITH: Or, the two of them together are actually
`establishing the call.
`
`8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`MR. FOSTER: I mean, it is true that in Lamb, the hosting server
`has a role to play. It is, it is part of Lamb's system. And as I've explained
`in answering the previous question, there's no direct communication between
`the users and the network server, and so if the hosting server were not part of
`Lamb, then there would be a hole there, but, I think, it's appropriate to look
`at what each server is doing.
`The server that's controlling the phone call connections, right, that's
`controlling the switching equipment to place a call, that is the telecom
`network server, not the hosting server, so I think that's why it's appropriate
`to identify that network server as the conference call server.
`I would also point out that there was some discussion related to this
`that happened in prosecution of the 194 patent. We discussed that in the
`petition. If you look at petition at page nine, we discussed some of the
`arguments that the Patent Owner made in response to a non-enablement
`rejection during prosecution.
`And what the Patent Owner argued was that this negative limitation
`without requiring registration limitation was enabled, because there was
`disclosure in the specification of the conference call server of the claim
`receiving the necessary information for, for creating the telephone calls from
`the instant messaging service, and so, I think, the instant messaging service
`was not recited in the claim, but the disclosure in their specification that they
`relied upon to overcome that non-enablement projection is mirroring what
`we see here with Lamb.
`
`9
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`We've got another server. Here, it's called, "The hosting server."
`And that hosting server is what's providing some of the information needed
`for the calls, but it is not itself, you know, in control of the call connections.
`JUDGE SMITH: I see. So, the -- whatever device that sends the
`message that includes the information needed to make the phone call in the
`patent is different than the conference call server itself in the patent, which
`actually establishes the telephone network connections. Is that what you're
`saying?
`MR. FOSTER: I believe that that's -- yes. That's -- that's -- that's
`correct.
`JUDGE SMITH: Okay. So, if the conference call server gets the
`phone numbers from someplace else that -- someplace else that's sending the
`phone numbers to the conference call server is not the conference call
`server?
`MR. FOSTER: That at a minimum is what the Patent Owner
`argued in prosecution, yes.
`JUDGE SMITH: Okay. Okay. Okay. Thank you. And, so,
`the telecom hosting server here would be similar to the, the instant
`messaging service in the patent that provides the, the phone numbers or
`other information?
`MR. FOSTER: There would be a similarity there, yes. There's --
`JUDGE SMITH: Okay. Okay.
`MR. FOSTER: In a way, you broach the elephant in the room, the
`question of, where are the phone numbers that are called coming from if the
`10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`users aren't registered? And as Patent Owner argues, there's also the
`limitation against selecting participants, and they've identified that providing
`a phone number would be a selection of a participant, so if the participants
`aren't providing the phone numbers, and the conference call server doesn't
`have the phone numbers, because the users aren't registered, how -- how is
`the system working, where are the phone numbers coming from?
`And in prosecution, the Patent Owner argued, "Well, they're coming
`from some other systems, some other device that is not recited in the claim."
`And similarly in Lamb, they would be coming from the telecom hosting
`server, which is -- does not match any of the claim elements.
`JUDGE SMITH: Okay.
`MR. FOSTER: Moving on to the second issue I'd like to discuss --
`and this is, this is essentially if the Board isn't convinced with the
`identification of the conference call server being the network server, even if
`the hosting server were considered to be part of, or the conference call
`server. There's disclosure in Lamb about completing calls to users who are
`not registered.
`And if we look at our Slide 12, we have here Figure 7 from Lamb,
`and one of the -- this is -- this is illustrating a call flow diagram, so the call
`processing logic for initiating calls using Lamb system, and one of the first
`steps in the top left is Step 551, which states, "Does destination call
`identifier have a corresponding user agent?" And the user agents are
`software components that are on the hosting server, so this is essentially
`translated to asking, "Is the user registered with the hosting server?"
`11
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`And importantly, if the answer is no, then the logic drops straight
`down from that, but it goes on to complete the call to that destination even
`though the user was not registered, so registration is not required by the
`hosting server as Patent Owner has argued.
`JUDGE EASTHOM: So, how does it get that information? Does
`it go through the public directory somehow?
`MR. FOSTER: So, the destination call identifier would have been
`provided to the hosting server by yet some other device, potentially by a user
`or something else.
`JUDGE EASTHOM: I also noticed in the spec, or in the
`prosecution history that you cited, I think, your friend, the Patent Owner,
`cited paragraphs 22, 23, 50 to 53, the published application, and in that --
`some of those paragraphs, there was a network access that relates -- it
`seemed to me that they were probably, maybe getting information from
`those, but I wasn't sure. Can you comment on that? In other words, they
`were sort of similar almost it looked like to me as a hosting server, but I'm
`not sure.
`MR. FOSTER: Certainly. So, in the application as published, the
`paragraphs you mentioned, do discuss an NAD, or the Network Access
`Device, and that device, I believe, is intended to be a client device, so that's,
`that's the, the thing that would be the hands of the user, and so if we look
`back at Slide 5 showing Figure 3 from Lamb, you'll see on the far right side,
`there are two computers labeled, I believe, 240 and 245, so those would be
`the client computers that a user might be using, and that's where they would
`12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`have a user interface, and that's how the end user is interacting with Lamb's
`system overall. Those computers would potentially correspond in some
`way to the idea of the network access device.
`The other negative limitation that Patent Owner disputes is the
`requirement that users not individually select potential members --
`JUDGE SMITH: Before we go on, just real quickly, if -- I noticed
`that in your petition -- so in -- and related to this, we construed without
`requiring registration, we construed it as current participants of an IM
`session are not required to complete an additional or separate registration
`with the conference call server before establishing close communication
`between participants to IM session.
`That's how we construed it, and it looks like on page 14 of your
`petition, you don't think that this is a good way to construe the term. Can
`you -- do you have any thoughts?
`MR. FOSTER: So, in the petition, we, we did address a variety of
`positions that had been taken over time in different fora on the construction
`for this term. And in our first position that we led with in the petition was
`that potentially no construction was necessary, and Patent Owner has agreed
`with that in their responses, and the panel did not construe the term in the
`decision on institution, didn't find that necessary, so I'm not sure -- given at
`this stage, it seems like everyone in this case feels comfortable with not
`construing that for this proceeding, it seems appropriate to stay there.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`13
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`JUDGE EASTHOM: Well, if we did construe it the way we
`construed it in the related case, would you -- is that a problem or not in this
`case?
`
`MR. FOSTER: I don't think so.
`Judge Smith, could you point again where in the -- which
`construction was it that you were referencing?
`JUDGE SMITH: Well, this is on page -- I'm looking at the petition.
`I'm looking at page 14 of the, of the petition. There's a section called,
`"Patent Owner's Stipulated Construction" in prior litigation. And we -- it's
`not exactly this construction, but it's pretty close, so I'll read the construction
`that we gave.
`It's "Current participants of an IM session are not required to
`complete an additional or separate registration with the conference call
`server before establishing a voice communication between current
`participants of an IM session."
`And, I think, one of the points that you made in the petition is that
`adding the word "separate" obfuscates the claim's meaning, because it's
`unclear what the registration is separate from, so, anyway.
`MR. FOSTER: I don't think it would change the outcome of
`anything in this case as far as I can tell, you know, because, again, the, the
`hosting server, which is the only server that any form of registration even
`arguably occurs in Lamb, the hosting server is not the conference call server,
`and so regardless of what the separate from, is that separate from getting into
`the instant message session, is that separate from a previous registration,
`14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`whatever it might be separate from, there's no registration with the
`telecommunications network server.
`JUDGE SMITH: I think that's one of the points you raise in your
`reply is that, is that the patent itself mentions people logging into the IM
`session with the user name and password. Would that be -- do you think
`that type of thing would be registration within the scope of the claim or no?
`MR. FOSTER: Well, so in prosecution -- and this was another
`point that we discussed in the petition. In prosecution -- and I'm looking at
`the petition at the bottom of page 11 -- the Applicants argue that this
`registration concept referred to providing access rights of users, e.g. user
`names and passwords, so that would, that would sound like a login process
`is a form of registration as it was already to be examined.
`JUDGE SMITH: Okay. Thank you.
`JUDGE BARRETT: Just make sure I'm on the same page with
`you, you referred earlier to a non-enablement position. When I first was
`looking at this, I thought it was written description, but nonetheless, we're
`talking about the 112 first issue. The examiner characterized it as not
`described and supported in the specification. We're talking about the same
`thing?
`
`MR. FOSTER: Yes. And my apologies if my recollection was
`that it had been non-enablement as opposed to written description, but in
`either event, yes, the 112 issue that the examiner raised was what I was
`referring to, yes.
`
`15
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`JUDGE BARRETT: No need for apologies because I see the
`examiner didn't specify enablement or written description, so --
`MR. FOSTER: Okay.
`JUDGE BARRETT: -- I think, I think we're on the same page.
`Thank you.
`MR. FOSTER: There we have it, okay.
`One of the other negative limitations that I'd like to move over to is
`the requirement of not requiring individual selection of potential members in
`the IM session to then participate in the voice communication. And with
`respect to that, we pointed to a variety of things, including in Lamb, and I'm
`on Slide 14 of our demonstratives, Lamb's Figure 5, which actually appears
`in the middle of Columns 85 and 86, which Lamb describes as a button that,
`"May be used to initiate a phone call to the recipient of the call messages."
`The call messages here being the instant messages exchange between the
`users shown in that figure.
`JUDGE SMITH: You have about a minute left.
`MR. FOSTER: All right. Thank you.
`And, so, the call button we explained is this option to initiate a voice
`communication, and it, it is essentially automatic. There's no further
`requirement of interaction from the user. The user just has to click the call
`button.
`
`And Patent Owner did not directly dispute the functionality of the
`call button. They pointed to another window, and another button in another
`window and said, "We'll put that button in that other window," would
`16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`require identification of a user, and so it wouldn't meet this limitation, but, of
`course, that's not the button we pointed to or identified in the petition. We
`identified the call button in this call message window as being the claimed
`option to initiate voice communication.
`JUDGE SMITH: Thank you. What is this call on this window?
`MR. FOSTER: So, in this window --
`JUDGE SMITH: Say the slide number, Slide No. 14.
`MR. FOSTER: Yes. In Slide 14, there are two users exchanging
`messages, and it's a little bit difficult to read, but just below where the
`messages are, it says, "To StobbeBill," and so I believe the, the other
`participant, right, other than whoever is the user seeing this user interface,
`the other user would be StobbeBill, and so the call button would call the
`recipient of those call messages, as it says, and so that would -- it would call
`StobbeBill.
`JUDGE SMITH: Thank you.
`MR. FOSTER: Thank you.
`JUDGE SMITH: Patent Owner, you have 30 minutes to respond.
`You may begin when you're ready.
`MR. MANGRUM: Thank you, Your Honors. I want to start on
`Slide 3 actually. On Slide 3, there's a reference to the language, "An option
`to automatically initiate voice communication," and as was emphasized in
`Petitioner's remarks here, there's two important depositional statements in
`what we automatically initiate voice communication.
`
`17
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`And one of them is that without requiring individual selection of
`potential members, including the first party, and at least one other party, and
`the second is about requiring registration with a conference call server for
`establishing the voice communication by the potential members, including
`the first party, and be able to use one of the parties.
`And for these two aspects of what it means to automatically initiate
`voice communication, Petitioner relies exclusively on Lamb, so I'm going to
`focus the first part of presentation on why Lamb does not render obvious
`either of those two aspects of automatically initiating voice communication.
`And, so, if I go to Slide 4, and I'm going to focus first on the second
`requirement and what it means without requiring registration with a
`conference call server. As Petitioner has emphasized in responding to your
`questions, there's a subtle dispute as to which server in Lamb most closely
`resembles the conference call server disclosed and claimed in the 194 patent.
`And in order to resolve this dispute, I'm going to first address some
`statements made in the papers regarding what it means to be a conference
`call server, and so referring to the first bullet on Slide 4, the 194 patent
`repeatedly and consistently teaches that the claim conference call server may
`either directly or indirectly establish voice communication.
`And the second bullet, Petitioner conceded in its claim construction
`briefing and litigation that the language in the Phillips invention (phonetic)
`makes clear that the conference call server initiates the call directly or
`indirectly, and also referring to the papers, both declarants testified that a
`
`18
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`conference call server's claim, they initiate a conference through a separate
`bridge connected to a telephone network.
`Now, I didn't hear Petitioner emphasize this new construction in their
`remarks today, but in the reply brief, they attempt to set forth a new
`construction of a conference call server where they pulled in a third party
`requirement. And I believe the reason why they did that in their reply brief
`is an attempt to inoculate the teachings in Lamb, and to suggest that Lamb
`doesn't require its bridge to be a third party bridge.
`JUDGE EASTHOM: Counsel, can I interrupt you for a second?
`This is Judge --
`MR. MANGRUM: Yes.
`JUDGE EASTHOM: -- Judge Easthom. Just as a way of
`background, can you explain, please, where in your spec you're getting the
`information to make the call that gives you support further without
`registration clause? In other words, are you getting that information from,
`as counsel says, either the IM, an IM server, or are you getting it from the
`nad that's disclosed? How are you -- how are you establishing the call?
`Can you please explain that?
`MR. MANGRUM: Well, first of all, if you look at Figure 4 of the
`patent, the conference call server has a database, and the database has -- and,
`actually, if you go to Slide 6, I have a picture of it if you want to refer to
`that, but there is a database in the conference call server, which has account
`information, user history, provider information, and it's referred to the
`database. That -- that database is used to facilitate establishment of calls.
`19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`JUDGE EASTHOM: Oh, okay. Counsel, then, can I ask a
`followup. Then, in other words, you are requiring registration. It's just
`that the registration occurs prior to the IM session. Is that correct?
`MR. MANGRUM: Well, there's two different things that occur in
`the patent. One is, people getting into an IM session, and the patent teaches
`how over the course of a call -- or sorry, over the course of
`intercommunication between people, if you feel that it's necessary to
`transition that head space communication to a phone call, then you can
`transition to a conference call.
`And the patent, the patent teaches that that transition does not
`necessarily require all members of the IM session to be registered for a
`conference call service. And the description of that where there is a
`requirement for the first, the requesting user to be registered is in -- the
`portion of the prosecution incident was described earlier by Petitioner, and
`talked about in the paper.
`JUDGE EASTHOM: Okay. So, can I -- can I just -- I'm trying to
`be clear on this. In other words, your claim requires implicitly some type
`of registration to occur prior to the ongoing display with the IM session in
`order to make the call. I don't know if that was that clear. Let me say it
`again. I'm sorry.
`Your claim does not preclude prior registration in the conference call
`server. Is that correct?
`MR. MANGRUM: It doesn't -- it doesn't preclude prior
`registration to commence an IM session. That is correct, but what is
`20
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`precluded by the claim -- and, actually, a specific embodiment, embodiment
`in the spec is this claim is requiring the -- requires registration with the
`conference call service by subscriber A, for example, the example given.
`There's a check to see if subscriber A is registered to serve.
`Now, I want to point out, I'm doing my best to answer this question,
`but for the purposes of this proceeding, there is not a dispute. It wasn't
`raised in the papers that Lamb requires a form of registration. That is
`undisputed. The question is whether or not the registration in Lamb is with
`the conference call server, so --
`JUDGE SMITH: Sorry to interrupt. I thought there was a dispute
`as to whether Lamb requires a registration. At least in the reply, Petitioner
`brought up the point that Lamb, the registration is optional in Lamb, and
`then they pointed to Figure 7 of Lamb that said, "Registration is not
`required."
`MR. MANGRUM: Well, I will accept that, but my point is, it's not
`that -- whatever it is, whether it's optional or not, isn't a registration within
`the meaning of the claim. That's my point.
`JUDGE SMITH: And then, you talked about User A. I'm sorry, I
`just want to understand your example about the User A, determining is User
`A registered. I didn't --
`MR. MANGRUM: Yes.
`JUDGE SMITH: -- quite understand what you were saying with
`that. Could you --
`MR. MANGRUM: Yes. I have --
`21
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2017-00597
`Patent 8,571,194 B2
`
`
`JUDGE SMITH: Well, you were saying -- you were saying that
`was an example of registration that is allowed or is not allowed?
`MR. MANGRUM: It was an example of -- it's the example the
`examiner pointed to in saying, "Wait a minute, it appears as if your
`specification requires registration, because I see here where you checked to
`see if User A is a subscriber to conference call service." And the response
`by the Applicant is that's an alternative embodiment, and it is, it is
`disclaimed, that alternative embodiment is disclaim
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
