Trials@uspto.gov Paper No. 7
`571-272-7822 Entered: June 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00199
`Patent 7,092,671 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822 Entered: June 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00199
`Patent 7,092,671 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2018-00199
`Patent 7,092,671 B2
`
`
`I. INTRODUCTION
`Petitioner, United Patents Inc., filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1–16 of U.S. Patent No. 7,092,671
`B2, issued on August 15, 2006 (Ex. 1001, “the ’671 patent”), pursuant to
`35 U.S.C. §§ 311–319. Patent Owner, Uniloc USA, Inc. and Uniloc
`Luxembourg, S.A., filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`Upon consideration of the parties’ briefing and supporting evidence,
`we determine that Petitioner has shown a reasonable likelihood of prevailing
`in its contention that at least one challenged claim is unpatentable.
`Accordingly, we grant Petitioner’s request and institute inter partes review
`of all challenged claims: 1–16.
`
`A. Related Matters
`Petitioner and Patent Owner identify several related litigations in the
`Eastern District of Texas involving the ʼ671 patent. Pet. 2; Paper 4, 2.
`Another Petitioner has also requested inter partes review of the
`’671 patent—IPR2018-00282.
`
`A. The ’671 Patent
`The ’671 patent is directed to a “method and system for wirelessly
`autodialing a telephone number from a record stored on a personal
`information device.” Ex. 1001, [54]. According to the ’671 patent, at the
`time of filing, personal information devices (“PIDs”) and electronic
`organizers were in widespread use. Id. at 1:35–37. The ’671 patent
`describes these devices as “physically smaller,” having “more limited
`hardware and data processing capabilities” than conventional computers, and
`including “a screen and data processor,” “substantial electronic memory,”
`
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`IPR2018-00199
`Patent 7,092,671 B2
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`and “a substantial variety of applications,” relating to, for example, contact
`information made up of addresses and telephone numbers. Id. at 1:14–33.
`In addition to PIDs, the ’671 patent describes cellphones as widely used
`handheld digital devices similar to PIDs, but with substantially fewer
`applications, less available memory for storage, and a limited capacity for
`data entry. Id. at 1:38–53.
`Because of these differences between PIDs and cellphones, the ’671
`patent observes that PIDs, and not cellphones, are used to store contact
`information. Id. at 1:54–63. This leads to a requirement for users to find
`contact numbers on their PID and then manually dial those numbers on the
`cellphone. Id. at 1:58–2:10. Thus, the ’671 patent identifies a need for “a
`method whereby a user’s handheld PID can automatically dial a telephone
`number stored in its memory” such that the user need not access controls of
`a telephone. Id. at 2:11–22.
`To solve this problem, the ’671 patent describes using the wireless
`ports of the telephone and the PID to link the two devices using a standard
`communication protocol, such as short-range radio frequency (“RF”) over
`Bluetooth or infrared signals (“IR”) over the Infrared Data Association
`(“IrDA”) specification. Id. at 4:40–5:27, 6:35–57. The ’671 patent
`describes a method in which the user chooses a phone number from the
`memory of the PID, using the appropriate application, and indicates to the
`PID that the chosen number should be dialed by a cellphone. Id. at 8:10–17.
`In response, the PID application accesses the cellphone, transmits the
`desired telephone number, and “control[s] [the cellphone] to dial the number
`and establish[] the telephone call” in a manner that is seamless and “without
`requiring any intervening steps or actions by the user” or involving direct
`
`
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`IPR2018-00199
`Patent 7,092,671 B2
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`interaction with the cellphone. Id. at 8:17–25. Figure 8, reproduced below,
`shows a flowchart of the steps in one embodiment of this autodialing
`process. Id. at 9:39–41.
`
`
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`4
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`IPR2018-00199
`Patent 7,092,671 B2
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`
`The flow chart of Figure 8, above, begins with step 801—the user
`accessing the graphical user interface (“GUI”) of a PID to initiate wireless
`autodialing of a cellphone. Id. at 9:46–47. The user chooses the desired
`contact from a list displayed by the PID in step 802, verifies the correct
`phone number in step 803, and confirms that the number should be
`autodialed by the cellphone in step 804. Id. at 9:55–59. The PID, in step
`805, transfers the chosen number to the cellphone over the wireless
`communication link. Id. at 9:62–64. Finally, in step 806, the PID “controls
`telephone 14 to dial the specific number and complete the telephone
`communication.” Id. at 9:65–67.
`
`B. Illustrative Claim
`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
`illustrative of the claims at issue and is reproduced below with added
`indentations and spacing for clarity:
`1. An automated telephone dialing system, comprising:
`a telephone having a wireless port for short range
`wireless data transfer; and
`a handheld computer system having a wireless port for
`communication with the wireless port on the telephone,
`wherein a specific telephone number is selectable
`from a list displayed on the handheld computer system
`and
`
`wherein the handheld computer system is operable
`to transfer the specific telephone number to the telephone
`using a wireless communication, and
`is
`system
`wherein
`the handheld computer
`configured to control the telephone via the wireless
`communication such that the telephone dials the specific
`telephone number.
`
`
`
`5
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`IPR2018-00199
`Patent 7,092,671 B2
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`Ex. 1001, 10:55–67 (emphasis added).
`
`Basis
`§ 103
`
`Challenged Claims
`1–6 and 9–14
`
`C. Grounds Asserted
`Petitioner challenges the patentability of the ʼ671 patent claims on the
`
`following grounds (Pet. 10–68):
`References
`
`Yun1, Langlois2, and Dykes3
`Yun, Langlois, Dykes, and
`Husemann4
`Harris5, Langlois, and Dykes
`Harris, Langlois, Dykes, and
`Husemann
`
`§ 103
`
`§ 103
`§ 103
`
`7, 8, 15, and 16
`1–7 and 9–15
`8 and 16
`
`Petitioner supports its position with the testimony of Herbert Cohen.
`Ex. 1007.
`
`II. ANALYSIS
`Claim Construction
`A.
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b). We presume a claim term carries its plain meaning,
`which is the meaning customarily used by those of skill in the relevant art at
`
`
`1 U.S. Patent No. 6,084,949 (issued Jul. 4, 2000). Ex. 1002 (“Yun”).
`2 U.K. Patent Application Publication No. GB 2318703. Ex. 1003
`(“Langlois”).
`3 U.S. Patent No. 5,428,671 (issued Jun. 27, 1995). EX. 1004 (“Dykes”).
`4 U.S. Patent No. 7,577,910 B1 (issued May 18, 2004). Ex. 1006
`(“Husemann”).
`5 U.S. Patent No. 6,738,643 B1 (issued Jul. 2, 2002). Ex. 1005 (“Harris”).
`6
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`IPR2018-00199
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`the time of the invention. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016).
`The parties agree that, for purposes of this Decision, no claim terms of
`the ’671 patent require an express construction. Pet. 9–10; Prelim. Resp. 4.
`We agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim
`terms that “are in controversy” need to be construed and “only to the extent
`necessary to resolve the controversy”).
`
`B. Scope of the Challenged Claims
`Although the dispute here does not implicate the construction of any
`particular claim term, the parties appear to differ in their interpretation of the
`scope of the challenged claims. Specifically, Patent Owner implies that the
`limitation “wherein the handheld computer is configured to control the
`telephone via the wireless communication such that the telephone dials the
`specific telephone number” (“the control limitation”), requires a specific
`instruction or command, other than the transmitting of the selected phone
`number, asserting such control. See Prelim. Resp. 11 (stating that the
`control limitation is not disclosed because in Harris “there is no disclosure of
`instructions or commands”), 2–3 (quoting Ex. 1015 to show that, in
`prosecution, Patent Owner distinguished the prior art by arguing that “the
`mere exchange of data” is not enough to show the control limitation).
`Petitioner, similarly, explains that “Patent Owner may argue that
`claim 1 requires that the handheld computer transfer the telephone number
`and a separate command for controlling the telephone to dial the number, or
`
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`IPR2018-00199
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`that claim 1 requires that the telephone number be sent to the telephone prior
`to the handheld computer controlling the telephone to dial the number.”
`Pet. 21, 50; see also Pet. 8–9 (citing Ex. 1010; Ex. 1012; Ex. 1014; Ex.
`1015) (summarizing the prosecution history of the ’671 patent in which
`Patent Owner addressed the control limitation). Petitioner, however, does
`not affirmatively set forth its position on this issue.
`Based on the lack of detailed discussion of this issue in the current
`record, for purposes of this Decision, we read the claim broadly, such that a
`specific command, separate from the transmission of the selected number, is
`not required to satisfy the control limitation, nor is control of the telephone
`required to occur after transmission of the telephone number. We note,
`however, that this is simply a preliminary interpretation of the claim scope,
`not a final determination of claim construction. The current record relating
`to this issue is incomplete, and we encourage the parties to address this issue
`in post-institution briefing.
`C. Obviousness Grounds Based on Yun
`Petitioner contends that claims 1–6 and 9–14 would have been
`obvious over Yun, Langlois, and Dykes, and that claims 7, 8, 15, and 16
`would have been obvious over Yun, Langlois, Dykes, and Husemann.
`Pet. 11–37. We are persuaded, based on this record, that Petitioner has
`demonstrated a reasonable likelihood of prevailing on this challenge.
`1. Overview of Yun
`Yun discloses a “telephone system with automatic dialing using
`infrared transmission from [an] electronic pocket book.” Ex. 1002, [54].
`Yun’s electronic pocket book is a “conventional” device “organized to
`feature a visual display, computer linking and a host of communication
`
`
`
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`IPR2018-00199
`Patent 7,092,671 B2
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`options and expandability, including touch screen display, word processor,
`calendar, scheduler, telephone directory and the like.” Id. at 1:20–31. After
`user selection of a phone number using the electronic pocketbook, Yun
`describes the telephone as “initially analyzing the telephone number
`contained in the infrared ray signal received from the electronic pocketbook
`after receipt of an electronic dial request in an off-hook state, and
`automatically dialing the analyzed telephone number contained in the
`infrared ray signal.” Id. at 4:24–31.
`2. Analysis
`Petitioner relies on Yun as disclosing all the limitations recited by the
`challenged independent claims, except Petitioner points to Langlois as
`explicitly disclosing “wherein a specific telephone number is selectable from
`a list displayed on the handheld computer system.” Pet. 11–37.
`Specifically, Petitioner asserts that Yun discloses displaying the name and
`number of stored contacts, and that Langlois discloses displaying, for user
`selection, a variety of different types of lists containing contact information.
`Id. at 16–20 (citing Ex. 1002, 2:37–38, 4:45–50, 4:60–5:2; Ex. 1003, 21:8–
`10, 25:7–9, 25:13–14, 26:11–27:1, 29:10–20, 29:25–28, Figs. 17D, 18B,
`22C, 23C; Ex. 1007 ¶ 46). In addition, Petitioner explains that a person of
`ordinary skill would have included Langlois’s technique of displaying
`contacts in a selectable list with Yun’s system in order to “provide a more
`interactive telephone user interface that includes useful features, such as the
`viewing and selection of multiple contacts in a list.” Id. at 18 (citing
`Ex. 1007 ¶ 47). Petitioner adds that such combination would have been
`easily accomplished using conventional software techniques. Id. at 19–20
`(citing Ex. 1007 ¶ 49).
`
`
`
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`
`For the control limitation, Petitioner relies on Yun’s disclosure that it
`sends both an electronic dial request and a telephone number to the
`telephone. Pet. 20–21. In addition, under a potentially narrower reading of
`the scope of the control limitation, Petitioner relies on Dykes, which
`describes a set of commands for a computer to control a modem over a
`communication link. Id. at 21 (citing Ex. 1004, 2:52–62, 9:22–24). One
`such command instructs the modem to dial a particular phone number. Id. at
`22 (citing Ex. 1004, 3:41–44, 10:38–43; Ex. 1007 ¶ 55). Petitioner adds that
`Dykes also discloses a computer commanding a cellular phone to dial a
`phone number. Id. at 22–23 (citing Ex. 1004, 3:44–61, 4:14–33, 5:60–64,
`9:30–34, 10:43–48, 10:56–62, 11:9–13, 11:65–12:5, 13:5–14:10, 16:62–
`17:19; Ex. 1007 ¶ 56). In addition, Petitioner explains that a person of
`ordinary skill would have combined Dykes’s teaching of dial commands
`with Yun’s system of automated dialing because, among other reasons (see
`Pet. 22–26), during the relevant time period, this was a standard way of
`causing a telephone to dial a number and this functionality could easily be
`accomplished using conventional programming methods. Id. at 22–23
`(citing Ex. 1007 ¶¶ 57–58).
`Patent Owner argues that Petitioner does not sufficiently show that
`Yun discloses the control limitation. Prelim. Resp. 9–11. According to
`Patent Owner, regarding this limitation, “the Petition identifies nothing in
`Yun as specifically satisfying this limitation (other than a general allegation
`it is disclosed or rendered obvious).” Id. at 10. Patent Owner asserts that
`“Yun makes clear that control of the dialing is done from the” telephone, not
`the electronic pocket book, and “there is no indication” that the electronic
`
`
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`IPR2018-00199
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`pocket book “is involved in any way with controlling the telephone via the
`wireless communication.” Id.
`As discussed above, in Section II.B, the current state of the record
`leads us, at this time, to read the claims more broadly than Patent Owner’s
`argument implies. In keeping with this broad reading of the challenged
`claims, we agree with Petitioner that Yun discloses control by the pocket
`book when it states that the telephone analyzes the number transmitted from
`the electronic pocket book “after receipt of an electronic dial request in an
`off-hook state.” Pet. 20–21. Moreover, as noted by Petitioner (Pet. 20–21),
`Yun further explains that “[t]he optical transmission unit 138 converts data
`information provided from the control unit 130 into an infrared ray signal
`containing an electronic dial request and telephone number of an interested
`person selected for an automatic dialing function.” Ex. 1005, 4:10–19
`(emphasis added). Petitioner explains that such a request was “a common
`manner of implementing ‘control’ in computer systems.” Pet. 21 (citing Ex.
`1007 ¶ 53). We are persuaded, on this record, that Yun’s disclosure
`indicates that the electronic pocket book “controls” the telephone’s
`autodialing by sending a dial request in addition to the telephone number.
`Our understanding is also supported by Dykes. We do not agree with
`Patent Owner that “Dykes teaches away from the wireless communication in
`the claims.” Prelim. Resp. 14. Patent Owner points, for support of this
`position, to Dykes’s statement that the disclosed commands “were designed
`with land line connection in mind, and certain aspects of cellular telephone
`systems do not lend themselves toward activation or use through these AT
`commands.” Prelim. Resp. 13 (quoting Ex. 1004, 2:64–67). However, in
`the very next sentence, Dykes makes clear that the commands it is referring
`
`
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`11
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`IPR2018-00199
`Patent 7,092,671 B2
`
`to as not being useful for cellphones are those that “make little sense in the
`cellular world,” such as the command “take the phone off the hook” because
`“the cellular phone is either attempting to access its network or it is not–it
`does not go ‘off hook’ before it does.” Ex. 1004, 2:68–3:3. Thus, we read
`Dykes as simply disclosing that certain commands may not make sense with
`cellular phones. We do not read this language in Dykes as indicating that
`the dial command would not work with cellular phones. Moreover, we read
`Petitioner’s argument to be that a person of ordinary skill would understand
`from Dykes that a dial command, separate from the telephone number,
`would be a standard method for implementing the automatic dialing
`described by Yun. This broad understanding is not affected by the specific
`implementation details disclosed by Dykes.
`Accordingly, we determine that Petitioner has shown a reasonable
`likelihood of prevailing with respect to its challenge to claims 1–6 and 9–14
`as obvious over Yun, Langlois, and Dykes, as well as its challenge to claims
`7, 8, 15, and 16 as obvious over Yun, Langlois, Dykes, and Husemann, for
`which Patent Owner does not provide any separate arguments.
`
`D. Obviousness Grounds Based on Harris
`Petitioner contends claims 1–7 and 9–15 would have been obvious
`over the combination of Harris, Langlois, and Dykes and claims 8 and 16
`would have been obvious over the combination of Harris, Langlois, Dykes,
`and Husemann. Pet. 38–68. We are persuaded, based on this record, that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`challenge.
`
`
`
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`
`1. Overview of Harris
`Harris discloses a PDA that can automatically dial a telephone.
`Ex. 1012, Abstract, 1:41–46. Harris’s PDA “stores a plurality of contacts”
`and displays “the person’s name and phone number as conventional” with
`“an icon or spot on the screen 112, which commands dialing the displayed
`number” when selected by a user. Id. at 1:47–53.
`2. Analysis
`Petitioner relies on Harris as disclosing all the limitations recited by
`the challenged independent claims, except Petitioner points to Langlois as
`disclosing “wherein a specific telephone number is selectable from a list
`displayed on the handheld computer system.” Pet. 41–66. Specifically,
`Petitioner asserts that Harris discloses displaying the name and number of
`stored contacts and that Langlois discloses displaying, for user selection, a
`variety of different types of lists containing contact information. Id. at 44–
`48 (citing Ex. 1005, 21:47–60; Ex. 1003, 21:8–10, 25:7–9, 25:13–14, 26:11–
`27:1, 2910–20, 29:25–28, Figs. 17D, 18B, 22C, 23C; Ex. 1007 ¶¶ 149–151).
`In addition, Petitioner explains that a person of ordinary skill would have
`included Langlois’s technique of displaying contacts in a selectable list with
`Harris’s system in order to “allow[] a user to more easily view and select
`telephone information of different contacts.” Id. at 47 (citing Ex. 1007
`¶ 153). Petitioner adds that such combination would have been easily
`accomplished using conventional software techniques. Id. at 48 (citing Ex.
`1007 ¶ 154).
`For the control limitation, Petitioner relies on Harris’s disclosure that
`when a user selects an icon, the PDA commands the telephone to dial the
`selected number. Pet. 49–50. In addition, under a potentially narrower
`
`
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`reading of the scope of the control limitation, Petitioner relies on Dykes,
`which describes a set of commands for a computer to control a modem over
`a communication link. Id. at 50 (citing Ex. 1004, 2:52–62, 9:22–24). One
`such command instructs the modem to dial a particular phone number. Id.
`(citing Ex. 1004, 3:41–44, 10:38–43; Ex. 1007 ¶ 160). Petitioner adds that
`Dykes also discloses a computer commanding a cellular phone to dial a
`phone number. Id. at 50–52 (citing Ex. 1004, 3:44–61, 4:14–33, 5:60–64,
`9:30–34, 10:43–48, 10:56–62, 11: 9–13, 11:65–12:5, 13:5–14:10, 16:62–
`17:19; Ex. 1007 ¶¶ 161–162). In addition, Petitioner explains that a person
`of ordinary skill would have combined Dykes’s teaching of dial commands
`with Harris’s system of automated dialing because, among other reasons (see
`Pet. 52–55), during the relevant time period, this was a standard way of
`causing a telephone to dial a number and this functionality could easily be
`accomplished using conventional programming methods. Id. at 54–55
`(citing Ex. 1007 ¶¶ 167–168).
`Patent Owner argues that Petitioner does not sufficiently show that
`Harris discloses the control limitation. Prelim. Resp. 11–12. According to
`Patent Owner, regarding this limitation “[t]he Petition provides no
`substantive analysis, and Harris is equally lacking.” Id. at 11. Patent Owner
`asserts that “[t]here is no disclosure in Harris that in ‘automatically’ dialing,
`it is the ‘PDA’ that is controlling the cell phone . . . all that is disclosed is
`that the cell phone receives ‘bluetooth information,’ there is no disclosure of
`instructions or commands.” Id. at 11–12. As we discussed above, in Section
`II.B, the current state of the record leads us to, at this time, read the claims
`more broadly than Patent Owner’s argument implies. Thus, for purposes of
`this Decision, we are persuaded that Harris’s disclosure that the PDA
`
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`includes an icon on its display “which commands dialing the displayed
`number” is enough to satisfy the control limitation.
`Our understanding is also supported by Dykes. For the reasons
`discussed above in our analysis of the Yun-based grounds, Section II.C.2,
`we do not agree with Patent Owner that “Dykes teaches away from the
`wireless communication in the claims.” Prelim. Resp. 14.
`Accordingly, we determine Petitioner has shown a reasonable
`likelihood of prevailing with respect to its challenge to claims 1–7 and 9–15
`as obvious over Harris, Langlois, and Dykes, as well as its challenge to
`claims 8 and 16 as obvious over Harris, Langlois, Dykes, and Husemann, for
`which Patent Owner does not provide any separate argument.
`
`III. ORDER
`
`It is, therefore,
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of the ʼ671 patent is hereby instituted on the following grounds:
`A. Obviousness of claims 1–6 and 9–14 over Yun, Langlois, and
`Dykes;
`B. Obviousness of claim 7, 8, 15, and 16 over Yun, Langlois, Dykes,
`and Husemann;
`C. Obviousness of claims 1–7 and 9–15 over Harris, Langlois, and
`Dykes; and
`D. Obviousness of claims 8 and 16 over Harris, Langlois, Dykes, and
`Husemann; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this decision.
`15
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`IPR2018-00199
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`PETITIONER:
`
`David Cavanaugh
`David.cavanaugh@wilmerhale.com
`
`Roshan Mansinghani
`roshan@unifiedpatents.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`Michael Van Handel
`Michael.vanhandel@wilmerhale.com
`
`Ellyar Barazesh
`Ellyar.barazesh@wilmerhale.com
`
`
`PATENT OWNER:
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Sean Burdick
`Sean.burdick@unilocusa.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`James Etheridge
`jim@etheridgelaw.com
`
`Jeffrey Huang
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`
`16
`
`
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