`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC. and INSTAGRAM, LLC,
`Petitioner
`v.
`TLI COMMUNICATIONS LLC,
`Patent Owner
`
`Case IPR2015-00778
`Patent 6,038,295
`
`
`PATENT OWNER’S SUBMISSION RE:
`JULY 23, 2015 ORDER (PAPER NO. 14)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`COMMENTS REGARDING “TELEPHONE UNIT”
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`The Board sought additional briefing from the parties regarding whether, in
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`view of Williamson v. Citrix Online, LLC,(cid:1)No. 2013-1130, 2015 WL 3687459
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`(Fed. Cir. June 16, 2015), the term “telephone unit” in claim 17 should be
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`interpreted as a means-plus-function element. Paper 14 at 2.
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`Patent Owner agrees with Petitioner that “telephone unit” is not a means-
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`plus-function element. See Paper 15 at 1.
`
`Williamson rolls back the rule from Lighting World, Inc. v. Birchwood
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`Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004), which held that “the
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`presumption flowing from the absence of the term ‘means’ is a strong one that is
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`not readily overcome.” Williamson, 2015 WL 3687459, at *6. But Williamson
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`clarified that
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`The standard is whether the words of the claim are
`understood by persons of ordinary skill in the art to have
`a sufficiently definite meaning as the name for structure.
`When a claim term lacks the word “means,” the
`presumption can be overcome and § 112, para. 6 will
`apply if the challenger demonstrates that the claim term
`fails to “recite sufficiently definite structure” or else
`recites “function without reciting sufficient structure for
`performing that function.” The converse presumption
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`
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`1
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`
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`remains unaffected: “use of the word ‘means’ creates a
`presumption that § 112, ¶ 6 applies.”
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`Id. at *7 (internal citations removed). Here, in the case of claim 17, “telephone
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`unit” lacks the word “means,” and a person of ordinary skill in the art would
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`understand that “a telephone unit” is a sufficiently definite name for particular
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`structural devices. See, e.g., Preliminary Response at 5-6. Thus “telephone unit”
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`should not be construed as a means-plus-function term.
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/
`
`
`
`Tarek N. Fahmi, Reg. No. 41,402
`
`
`
`
`Date: August 7, 2015
`
`
`
`
`
`by:
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`1 866 877 4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`2
`
`
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PATENT OWNER’S SUBMISSION RE:
`
`JULY 23, 2015 ORDER (PAPER NO. 14)
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`were served on August 7, 2015, by filing these document though the Patent Review
`
`Processing System as well as delivering a copy via email directed to the attorneys
`
`of record for the Petitioner at the following address:
`
`Heidi L. Keefe
`Andrew C. Mace
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`hkeefe@cooley.com
`amace@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`/Tarek N. Fahmi/
`
`
`
`Tarek N. Fahmi, Reg. No. 41,402
`
`Date: August 7, 2015
`
`
`
`by:
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`1 866 877 4883
`Email: patents@ascendalaw.com
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