Trials@uspto.gov Paper 8

571-272-7822 Entered: April 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

UNIFIED PATENTS INC.,

Petitioner,

v.

CRFD RESEARCH, INC.,

Patent Owner.

____________

Case IPR2015-00157

Patent 7,191,233 B2

Before JUSTIN T. ARBES, THOMAS L. GIANNETTI, and

CHARLES J. BOUDREAU, Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION

Denying Institution of Inter Partes Review

37 C.F.R. § 42.108

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Petitioner Unified Patents Inc. filed a Petition (Paper 1, “Pet.”) to

institute an inter partes review of claims 1–6, 8–11, 13–15, 23–25, 29–31,

and 34 of U.S. Patent No. 7,191,233 B2 (Ex. 1001, “the ’233 patent”)

pursuant to 35 U.S.C. §§ 311–19. Patent Owner CRFD Research, Inc. filed

a Preliminary Response (Paper 6, “Prelim. Resp.”). We have jurisdiction

under 35 U.S.C. § 314. Pursuant to 35 U.S.C. § 314(a), the Director may

not authorize an inter partes review unless the information in the petition

and preliminary response “shows that there is a reasonable likelihood that

the petitioner would prevail with respect to at least 1 of the claims

challenged in the petition.” For the reasons that follow, we have decided not

to institute an inter partes review.

I. BACKGROUND

A. The ’233 Patent1

The ’233 patent describes a system and method for “user-directed

transfer of an on-going software-based session from one device to another

device.” Ex. 1001, col. 1, ll. 8–11. A user may have a number of

communication-enabled devices (e.g., cellular telephone, wireless personal

digital assistant (PDA), laptop computer, desktop computer) through which

the user conducts software application sessions. Id. at col. 1, ll. 15–52. The

user may conduct a session on one device and then decide to switch to

another device. Id. at col. 1, ll. 53–59. For example, the user may want to

switch from a stationary device to a mobile device, or switch to a device

with a different graphical user interface. Id. According to the ’233 patent,

1 The ’233 patent also is the subject of Cases IPR2015-00055,

IPR2015-00259, and IPR2015-00627.

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conventional systems that required the user to “discontinue the current

session on the first device and reinitiate a new session on the second device”

were inadequate due to the history of the original session being lost and the

time delay in logging off and reinitiating. Id. at col. 1, ll. 59–66.

Figure 1 of the ’233 patent is reproduced below.

Figure 1 depicts wireless clients 120 (e.g., a cellular telephone or PDA) and

wired clients 125 (e.g., a desktop or laptop computer) of a user that connect

over various networks to application services network 105. Id. at col. 4,

ll. 4–11, 30–33, col. 5, ll. 3–6. Wireless clients 120 and wired clients 125

execute client programs that support session services for the respective

devices, and are “configured to have a preferred mode of interaction,

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i.e., modality,” such as a graphical user interface for transferring sessions

between devices. Id. at col. 4, ll. 33–50. Application services network 105

provides session-based services (e.g., instant messaging, database querying),

and application server 140 provides applications for those services

(e.g., instant messaging application, database querying application), to

wireless clients 120 and wired clients 125. Id. at col. 5, ll. 21–30.

The ’233 patent describes the method of session transfer as follows:

(1) a “redirect or transfer command” is sent from a first device (wireless

client 120 or wired client 125); (2) session server 145 begins intercepting

messages destined for the first device; (3) the first device transmits a

“transaction or session history” to session server 145; (4) session server 145

retrieves the previously stored “device profile” of the second device to

which the session is to be redirected, “convert[s] the messages [of the

session history] into a data format” and/or modality compatible with the

second device, and converts the “state” of the session to a state compatible

with the second device; and (5) when the user activates the second device,

session server 145 “pushes the converted session to the redirected device

over the network 100 as a normal session with the converted transaction

log.” Id. at col. 7, l. 46–col. 8, l. 58.

B. Illustrative Claim

Claim 1 of the ’233 patent recites:

1. A method for redirecting an on-going, software based

session comprising:

conducting a session with a first device;

specifying a second device;

discontinuing said session on said first device; and

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transmitting a session history of said first device from

said first device to a session transfer module after said session

is discontinued on said first device; and

resuming said session on said second device with said

session history.

C. The Prior Art

Petitioner relies on the following prior art:

U.S. Patent No. 5,008,930, issued April 16, 1991

(Ex. 1002, “Gawrys”);

U.S. Patent No. 5,550,906, issued August 27, 1996

(Ex. 1006, “Chau”);

U.S. Patent No. 5,737,592, issued April 7, 1998

(Ex. 1007, “Nguyen”); and

U.S. Patent No. 5,796,812, issued August 18, 1998

(Ex. 1003, “Hanlon”).

D. The Asserted Grounds

Petitioner challenges claims 1–6, 8–11, 13–15, 23–25, 29–31, and 34

of the ’233 patent on the following grounds:

References Basis Claims Challenged

Gawrys and

Hanlon

35 U.S.C. § 103(a) 1–3, 13, 14, 23, and

24

Gawrys,

Hanlon, Chau,

and Nguyen

35 U.S.C. § 103(a) 4–6, 8–11, 15, 25,

29–31, and 34

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E. Claim Interpretation

The Board interprets claims using the “broadest reasonable

construction in light of the specification of the patent in which [they]

appear[].” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide,

77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs.,

LLC, 778 F.3d 1271, 1278–82 (Fed. Cir. 2015). Under this standard, we

interpret claim terms using “the broadest reasonable meaning of the words in

their ordinary usage as they would be understood by one of ordinary skill in

the art, taking into account whatever enlightenment by way of definitions or

otherwise that may be afforded by the written description contained in the

applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.

1997). We presume that claim terms have their ordinary and customary

meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.

2007) (“The ordinary and customary meaning is the meaning that the term

would have to a person of ordinary skill in the art in question.”) (internal

quotation marks omitted). However, a patentee may rebut this presumption

by acting as his own lexicographer, providing a definition of the term in the

specification with “reasonable clarity, deliberateness, and precision.” In re

Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).

The ’233 patent also is challenged in Case IPR2015-00055. For the

reasons stated in the Decision on Institution in that proceeding, we interpret

three claim terms as follows:

Claim Term Interpretation

“modality” a preferred mode of interaction

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Claim Term Interpretation

“device profile” information pertaining to the operation of a

device, such as the data format or modality of

the device

“in response to . . .

activation of said

second device”

in response to the second device being made

active, such as by a user logging on to the

second device

See Iron Dome LLC v. CRFD Research, Inc., IPR2015-00055, slip op. at

6–10 (PTAB Apr. 27, 2015) (Paper 10).

We also interpret the term “session.” Petitioner argues that “session”

should be interpreted to mean “information exchange between two

communicating devices.” Pet. 14. Petitioner contends that the Specification

of the ’233 patent uses the term broadly, as shown in the following portion

of the Specification:

The application services network 105 may be configured

to provide a variety of services to the wireless and wired clients,

120 and 125, respectively. These services may include

session-based services such [as] instant messaging, database

querying, and other similar services. The supporting

applications of these session based-services may be provided by

an application server 140. The application server 140 may be

configured to provide an application such as [an] instant

messaging application, a web application, a database querying

application, and other similar applications. The application

server 140 may be implemented by any number of

commercially available servers or high performance computers.

Because the specific type of session to be used in the present

invention will vary according to individual needs, the present

invention is not limited to any specific type of session and may

thus utilize any type of session that may be provided to a user

which may reasonably accomplish the goals of the present

invention.

. . .

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The session server 145 may be configured to provide

session-based services to the users of the wireless and wired

clients, 120 and 125. A session-based service may be an instant

messaging service, messaging service, a database query, a Web

browsing session, and the like.

Ex. 1001, col. 5, ll. 21–38, 44–48 (emphasis added); see Pet. 14. Patent

Owner does not dispute Petitioner’s proposed interpretation in its

Preliminary Response.

The ordinary meaning of “session” is “[t]he time during which a

program is running” or, “[i]n communications, the time during which two

computers maintain a connection.” MICROSOFT COMPUTER DICTIONARY 405

(4th ed. 1999) (Ex. 3001).2 As used in the claims, however, “session” does

not refer merely to the time period when something occurs, but rather to

what occurs during that time period. For example, claims 1 and 2 specify

that the “session” must be something capable of being “conduct[ed]” with a

first device, “discontinu[ed]” on the first device, “push[ed]” to a second

device, and “resum[ed]” on the second device; claim 7 recites blocking,

storing, and reformatting messages “of” the session; and claim 13 recites

providing a “session service.”

The Specification of the ’233 patent reflects that usage of “session”

as well. The Specification discloses that a “typical user may have a desktop

computer system to perform information transactions (or sessions) such as

sending/receiving electronic mail, . . . browsing the Internet for information

and communicating via instant messaging.” Ex. 1001, col. 1, ll. 19–23

(emphasis added); see also id. at col. 1, ll. 15–52 (describing a series of

2 The dictionary definition cited herein was provided as Exhibit 1009 in

related Cases IPR2015-00259 and IPR2015-00627. We express no opinion

at this time on the merits of the petitions in those proceedings.

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“information transactions”), col. 5, l. 3–col. 7, l. 61 (describing a series of

“messages of the session” transmitted between communicating devices

“during a session”). Session server 145 provides “session-based services,”

such as “an instant messaging service, messaging service, a database query,

a Web browsing session, and the like,” to wireless clients 120 and wired

clients 125, and application server 140 provides applications for those

services. Id. at col. 5, ll. 21–30, 44–48. Session server 145 includes session

manager 205, which “determin[es] the type of services available to a user,

the number of sessions, [and] load-balancing of the sessions,” and session

handler module 210, which authenticates and acknowledges the “messages

transmitted . . . during a session.” Id. at col. 6, ll. 34–45. On this record,

applying the broadest reasonable interpretation of the claims in light of the

Specification, we interpret “session” to mean a series of information

transactions between communicating devices during a particular time period.

II. DISCUSSION

A. Obviousness Ground Based on Gawrys and Hanlon

Petitioner contends that claims 1–3, 13, 14, 23, and 24 are

unpatentable over Gawrys and Hanlon under 35 U.S.C. § 103(a).

Pet. 17–22, 32–49. We are not persuaded that Petitioner has established a

reasonable likelihood of prevailing on the asserted ground for the reasons

explained below.

1. Gawrys

Gawrys describes an “automated integrated voice/data call transfer

technique” for an Integrated Services Digital Network (ISDN) system that

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allows “an agent answering a call to obtain caller related information from a

communication system, automatically send it to a host database computer

system application software, retrieve caller records [from the host database]

. . . and then transfer the voice and collected data information to a preferred

agent terminal for continuing the call.” Ex. 1002, col. 1, ll. 7–16. For

example, an agent handling a 1-800 call from a customer may want to

transfer the call to a supervisor, and have the call continue such that the

supervisor sees the same information as was displayed to the original agent.

Id. at col. 1, ll. 53–56, col. 2, ll. 28–40.

Figure 1 of Gawrys is reproduced below.

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As shown in Figure 1, caller 12 communicates via communications network

11 and private branch exchange (PBX) 13 with agent terminal 14, which

comprises telephone 22 and terminal screen 23. Id. at col. 3, l. 49–col. 4,

l. 66. Agent terminal 14 retrieves customer records and other information

from host computer systems 18/19 (automatically or upon agent input to

terminal screen 23 during the call) and displays the information on terminal

screen 23. Id. at col. 4, l. 67–col. 5, l. 41. Gawrys describes a process for

transferring a call from one agent to another whereby the first agent terminal

sends User-To-User Information (UUI) comprising, among other things, an

index number reflecting the current state of the call. Id. at col. 9,

l. 60–col. 10, l. 11. PBX 13 then transmits the UUI to the second agent

terminal, which retrieves information from host computer systems 18/19

using the index number and continues the call. Id. at col. 10, ll. 12–30.

2. Hanlon

Similar to Gawrys, Hanlon describes a method of transferring a call

from one party to another, while maintaining information about the call, so

that information the caller provided to the first party does not need to be

repeated to the second party. See Ex. 1003, col. 1, ll. 13–40.

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Figure 1 of Hanlon is reproduced below.

As shown in Figure 1, calling party 12 initiates a call to re-directing party 14

that is routed through Local Exchange Carrier (LEC) 18, originating switch

(OS) 20, adjunct processor 28, terminating switch (TS) 26, and TS 24. Id. at

col. 2, ll. 14–43. Re-directing party 14 and target party 16 have ISDN links

to adjunct processor 28. Id. at col. 2, ll. 48–49, col. 3, ll. 20–24. When

re-directing party 14 decides to re-direct the call to target party 16, it sends

an “out-of band signal” to TS 26 (via TS 24). Id. at col. 2, ll. 44–54. The

out-of band signal comprises a User-To-User Interface Information Element

(UUI IE) containing “call-specific data,” such as information received by

re-directing party 24 during the call (e.g., the caller’s address or account

number). Id. at col. 3, ll. 20–36. Adjunct processor 28 then “causes the TS

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26 to set-up a call to the target party 16 via the TS 29 while placing the

calling party on hold,” and “[o]nce the target party 16 has answered, the

re-directing party 14 may wish to engage in a conversation before signaling

the TS 26 to remove the caller from hold and merge the call paths to

re-direct the call to the target party.” Id. at col. 3, ll. 6–14. Hanlon describes

various scenarios by which target party 16 receives the call-specific data

from TS 26 and continues the call. Id. at col. 3, l. 44–col. 4, l. 21.

3. Analysis

Petitioner relies on Gawrys as teaching all of the limitations of claim 1

other than the limitation that the session history is transmitted from the first

device “after said session is discontinued on said first device” (the “after

discontinuing” limitation). Pet. 17. With respect to that limitation,

Petitioner asserts that the call-specific data in Hanlon “may be transmitted

by the re-directing party to effect data transfer after the call is re-directed,”

citing the statement at column 4, lines 8–15 of Hanlon that the call-specific

data can be sent by the re-directing party “after call re-direction.” Id. at 42.3

Petitioner further asserts that in Hanlon, “[u]pon requesting a call transfer,

the call is redirected, discontinuing the session, and the call-specific data is

then transferred.” Id. at 19–20. Thus, Petitioner’s position appears to be

that re-direction of a call in Hanlon amounts to discontinuing a “session,”

3 Petitioner cites the Declaration of John D. Day (Ex. 1005) in support of its

contentions. Mr. Day’s analysis regarding the “after discontinuing”

limitation, however, appears to be identical to the discussion in the Petition.

Compare Ex. 1005, 21–22, 37–39, with Pet. 19–20, 40–42; see also Pet. 32

(acknowledging that Mr. Day’s claim charts are “substantially the same” as

what is asserted in the Petition).

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and that transmission of the call-specific data from the re-directing party

“after call re-direction,” therefore, satisfies the limitation of claim 1.

We do not agree with Petitioner’s reading of Hanlon. As Patent

Owner points out, Hanlon describes—at multiple places in its written

description and claims—three distinct scenarios by which the re-directing

party transmits the call-specific data. See Prelim. Resp. 7–13. First, the

call-specific data may be sent “as part of call set up to the target party,”

whereby the re-directing party requests that the call be set up with the target

party and “wish[es] to remain on the call following call re-direction.” See

Ex. 1003, col. 1, ll. 65–66, col. 3, l. 63–col. 4, l. 10, claims 2, 6. Second, the

call-specific data may be sent as part of a message requesting that the

portion of the call path between the re-directing party and caller be

terminated. See id. at col. 1, l. 66–col. 2, l. 1, col. 3, ll. 49–62, col. 4, l. 10,

claims 3, 7. Third, the call-specific data may be sent “as part of a message

generated by the re-directing party 14 to effect data transfer after call

re-direction.” See id. at col. 2, ll. 2–5, col. 4, ll. 10–21, claims 4, 8.

Petitioner relies on the third scenario where transmission occurs “after

call re-direction.” Pet. 42. In that scenario, however, the call-specific data

are “sent during such time that the call paths between the caller and the

re-directing party 14 and between the re-directing party and the target party

remain connected.” Ex. 1003, col. 2, ll. 2–5 (emphasis added); see also id.,

claims 4 (“the out-of-band call-specific data-containing message is a

message for effecting transfer of data from the re-directing party to the target

party after call set-up to the target party but prior to call disconnection from

the re-directing party”) (emphasis added), 8. Thus, after a call is re-directed

in Hanlon, the calling party, re-directing party, and target party remain

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connected in a three-way call, and the re-directing party may send

call-specific data to the TS for relaying to the target party so that the target

party has the information as well. The re-directing party may stay on the

three-way call or “drop off after effecting call re-direction.” Id. at col. 3,

ll. 6–198, 63–64, col. 4, ll. 10–21.

Petitioner’s argument equating call re-direction with discontinuation

of a session is not persuasive. As explained above, we interpret “session” to

mean a series of information transactions between communicating devices

during a particular time period. See supra Section I.E. After a call is

re-directed in Hanlon, re-directing party 14 remains on the call and may

continue communicating data to and from TS 26 (i.e., may continue its series

of information transactions), at least until re-directing party 14 affirmatively

drops off the call and ends its connection to TS 26. Thus, we are not

persuaded by Petitioner’s argument that because Hanlon discloses

transmission “after call re-direction,” the transmission occurs after a session

on the re-directing party device has been discontinued.

We also have considered Petitioner’s arguments as to why a person of

ordinary skill in the art allegedly would have had reason to combine

Hanlon’s teachings with those of Gawrys. Pet. 20–21 (citing Ex. 1005

¶¶ 24–25). Specifically, Petitioner argues that the references disclose similar

systems designed to solve the same problem, and that a person of ordinary

skill in the art would have been motivated to combine the two references to

“ensure session integrity.” Id. Petitioner asserts:

If the session with the first device continued after the session

history were transferred to the second device, then when the

session resumed on the second device, the session history

would not reflect the latest state of the session on the first

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device, resulting in a resumption of the session that may not

behave properly. A more robust session transfer system would

discontinue the session on the first device before transmitting

the session history to the second device, thus ensuring a smooth

transfer. The benefits and need to discontinue the session on

the first device before transmitting the session history to the

second device would be readily apparent to one of ordinary skill

in the art.

Id. at 21. These arguments also are not persuasive. We do not agree that

Hanlon teaches the “after discontinuing” limitation; therefore, Petitioner’s

asserted combination of the two references would not yield the method of

claim 1. Further, Petitioner does not point to any evidence supporting its

assertions (other than the Declaration of Mr. Day, which mirrors the

Petition) that a person of ordinary skill would have had reason to make the

combination, or explain in any detail why the disclosures of Gawrys and

Hanlon would have suggested the “after discontinuing” limitation. See id.

at 21; Ex. 1005 ¶ 25. Thus, we are not persuaded that Petitioner has shown a

reasonable likelihood of prevailing as to claim 1.

Similar to claim 1, independent claims 13 and 23 recite transmitting a

session history from a first device “after said session is discontinued on said

first device.” For the reasons explained above, we are not persuaded that the

limitation is taught by the combination of Gawrys and Hanlon. Thus,

Petitioner has not demonstrated a reasonable likelihood of prevailing on its

assertion that claims 1, 13, and 23, as well as claims 2, 3, 14, and 24

depending therefrom, are unpatentable over Gawrys and Hanlon.

B. Obviousness Ground Based on Gawrys, Hanlon, Chau, and Nguyen

Petitioner contends that claims 4–6, 8–11, 15, 25, 29–31, and 34 are

unpatentable over Gawrys, Hanlon, Chau, and Nguyen under 35 U.S.C.

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§ 103(a). Pet. 22–32, 49–60. Claims 4–6, 8–11, 15, 25, and 29–31 depend,

directly or indirectly, from independent claims 1, 13, or 23. As explained

above, Petitioner has not shown sufficiently that Gawrys and Hanlon teach

transmitting a session history from a first device “after said session is

discontinued on said first device.” See supra Section II.A. With respect to

claim 34, which includes the same limitation, Petitioner relies on its

assertions as to Hanlon and claim 13. Pet. 60. Thus, Petitioner has not

demonstrated a reasonable likelihood of prevailing on its assertion that

claims 4–6, 8–11, 15, 25, 29–31, and 34 are unpatentable over Gawrys,

Hanlon, Chau, and Nguyen.

C. Conclusion

We conclude that Petitioner has not demonstrated a reasonable

likelihood that at least one of the challenged claims of the ’233 patent is

unpatentable based on the asserted grounds. Therefore, we do not institute

an inter partes review on any of the asserted grounds as to any of the

challenged claims.

III. ORDER

In consideration of the foregoing, it is hereby:

ORDERED that the Petition is denied as to all challenged claims of

the ’233 patent.

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PETITIONER:

Michael L. Kiklis

Scott A. McKeown

OBLON, McCLELLAND, MAIER & NEUSTADT, L.L.P.

CPdocketkiklis@oblon.com

cpdocketmckeown@oblon.com

PATENT OWNER:

Tarek N. Fahmi

ASCENDA LAW GROUP, PC

tarek.fahmi@ascendalaw.com