IPR2018-00199
`Patent 7,092,671
`
`DOCKET NO.: 2211726-00152US1
`Filed on behalf of Unified Patents Inc.
`By: David L. Cavanaugh, Reg. No. 36,476
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`Michael Van Handel, Reg. No. 68,292
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`Ellyar Y. Barazesh, Reg. No. 74,096
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`
`Roshan Mansinghani, Reg. No. 62,429
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (214) 945-0200
`Email: roshan@unifiedpatents.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A. & UNILOC USA
`
`IPR2018-00199
`Patent 7,092,671
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,092,671
`CHALLENGING CLAIMS 1–16
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`

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`IPR2018-00199
`Patent 7,092,671
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`TABLE OF CONTENTS
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`
`
`
`I.
`Introduction ........................................................................................................ 1
`II. Mandatory Notices ............................................................................................. 1
`A. Real Party-in-Interest .................................................................................... 1
`B. Related Matters .............................................................................................. 2
`C. Counsel .......................................................................................................... 2
`D. Service Information, Email, Hand Delivery, and Postal ............................... 3
`III. Certification of Grounds for Standing ............................................................... 3
`IV. Overview of Challenge and Relief Requested ................................................... 3
`A. Prior Art Patents and Printed Publications .................................................... 3
`B. Grounds for Challenge .................................................................................. 4
`V. Overview Of the ’671 patent.............................................................................. 4
`A. Summary of the Alleged Invention ............................................................... 4
`B. Level of Ordinary Skill in the Art ................................................................. 7
`C. Prosecution History ....................................................................................... 7
`VI. Claim Construction ............................................................................................ 9
`VII. Specific Grounds for Petition...........................................................................10
`A. Ground I: Claims 1–6 and 9–14 are obvious in view of Yun, Langlois, and
`Dykes....................................................................................................................11
`1. Overview of Yun ......................................................................................11
`2. Claim 1 is obvious in view of Yun, Langlois, and Dykes .......................13
`3. Claim 2 is obvious in view of Yun, Langlois, and Dykes .......................26
`4. Claim 3 is obvious in view of Yun, Langlois, and Dykes .......................27
`5. Claim 4 is obvious in view of Yun, Langlois, and Dykes .......................28
`6. Claims 5 and 6 are obvious in view of Yun, Langlois, and Dykes ..........28
`7. Claim 9 is obvious in view of Yun, Langlois, and Dykes .......................31
`8. Claim 10 is obvious in view of Yun, Langlois, and Dykes .....................33
`9. Claim 11 is obvious in view of Yun, Langlois, and Dykes .....................34
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`IPR2018-00199
`Patent 7,092,671
`10. Claim 12 is obvious in view of Yun, Langlois, and Dykes ..................34
`11. Claims 13 and 14 are obvious in view of Yun, Langlois, and Dykes ..35
`B. Ground II: Claims 7, 8, 15, and 16 are obvious in view of Yun, Langlois,
`Dykes, and Husemann .........................................................................................35
`1. Claims 7, 8, 15, and 16 are obvious in view of Yun, Langlois, Dykes, and
`Husemann .........................................................................................................36
`C. Ground III: Claims 1–7 and 9–15 are obvious over Harris, Langlois, and
`Dykes....................................................................................................................38
`1. The Grounds Presented In This Petition Are Not Redundant ..................38
`2. Overview of Harris ...................................................................................39
`3. Claim 1 is obvious in view of Harris, Langlois, and Dykes ....................41
`4. Claim 2 is obvious in view of Harris, Langlois, and Dykes ....................55
`5. Claim 3 is obvious in view of Harris, Langlois, and Dykes ....................56
`6. Claim 4 is obvious in view of Harris, Langlois, and Dykes ....................56
`7. Claims 5 and 6 are obvious in view of Harris, Langlois, and Dykes .......57
`8. Claim 7 is obvious in view of Harris, Langlois, and Dykes ....................60
`9. Claim 9 is obvious in view of Harris, Langlois, and Dykes ....................61
`10. Claim 10 is obvious in view of Harris, Langlois, and Dykes ...............64
`11. Claim 11 is obvious in view of Harris, Langlois, and Dykes ...............64
`12. Claim 12 is obvious in view of Harris, Langlois, and Dykes ...............64
`13. Claims 13 and 14 are obvious in view of Harris, Langlois, and Dykes
`
`65
`14. Claim 15 is obvious in view of Harris, Langlois, and Dykes ...............66
`D. Ground IV: Claims 8 and 16 are obvious in view of Harris, Langlois,
`Dykes, and Husemann .........................................................................................66
`1. Claims 8 and 16 are obvious in view of Harris, Langlois, Dykes, and
`Husemann .........................................................................................................66
`VIII. Conclusion .......................................................................................................68
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`IPR2018-00199
`Patent 7,092,671
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`I.
`
`
`INTRODUCTION
`Unified Patents, Inc. (“Petitioner”) respectfully submits this Petition for Inter
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`Partes Review of claims 1-16 of U.S. Patent No. 7,092,671 (“the ’671 patent,” or
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`“’671”) (EX1001). The ’671 patent discloses an automated telephone dialing
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`system, where a “specific telephone number is selectable from a list displayed on [a]
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`handheld computer system,” and where the handheld computer system is
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`“configured to control [a] telephone via [a] wireless communication such that the
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`telephone dials the specific telephone number.” See, e.g., ’671 patent, claim 1. But
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`there was nothing inventive about these claimed concepts when the ’671 patent was
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`filed, and such concepts had been well-known long before the ’671 patent was filed.
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`The ’671 patent’s claims would have been obvious to a person of ordinary skill in
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`the art at the time that the ’671 patent was filed.
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`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (“Unified” or
`
`“Petitioner”) certifies that Unified is the real party-in-interest, and further certifies
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`that no other party exercised control or could exercise control over Unified’s
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`participation in this proceeding, the filing of this petition, or the conduct of any
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`ensuing trial.
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`1
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`IPR2018-00199
`Patent 7,092,671
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`B. Related Matters
`U.S. Pat. No. 7,092,671 (EX1001) is owned by Uniloc Luxembourg S.A. and
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`is exclusively licensed to Uniloc USA (collectively “Uniloc”). The status of cases
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`asserting this patent is provided in the table below.
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`Case Caption
`
`Uniloc USA, Inc. et
`al. v. Samsung
`Electronics America,
`Inc. et al.
`Uniloc USA, Inc. et
`al. v. Apple Inc.
`Petition for Inter
`Partes Review by
`Apple Inc.
`
`Case
`Number
`2:17-cv-
`00562
`
`2:17-cv-
`00457
`IPR2018-
`00282
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`District
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`Case Filed
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`Status
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`EDTX August 1, 2017 Dismissed,
`August 10,
`2017
`
`EDTX May 26, 2017
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`Pending
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`PTAB
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`December 6,
`2017
`
`Pending
`
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`The Uniloc USA, Inc. et al. v. Apple Inc. case is still in its early stages. The
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`Petition for Inter Partes Review by Apple Inc. is distinct from this Petition because
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`it uses different prior art combinations that address the claims in a different way.
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`C. Counsel
`Lead Counsel: David L. Cavanaugh (Registration No. 36,476)
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`Backup Counsel: Roshan Mansinghani (Registration No. 62,429)
`
`Backup Counsel: Jonathan Stroud (Registration No. 72,518)
`
`Backup Counsel: Michael Van Handel (Registration No. 68,292)
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`Backup Counsel: Ellyar Y. Barazesh (Registration No. 74,096)
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`2
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`IPR2018-00199
`Patent 7,092,671
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`D.
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`Service Information, Email, Hand Delivery, and Postal
`Unified consents to electronic service at david.cavanaugh@wilmerhale.com
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`and roshan@unifiedpatents.com. Petitioner can be reached at Wilmer, Cutler,
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`Pickering, Hale and Dorr, LLP, 1875 Pennsylvania Ave., NW Washington, DC
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`20006 and (202) 663-6000, Fax: 202-663-6363 and Unified Patents Inc., 1875
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`Connecticut Ave. NW, Floor 10, Washington, D.C., 20009, (650) 999-0899.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which review
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`is sought is available for inter partes review and that Petitioner is not barred or
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`estopped from requesting an inter partes review challenging the patent claims on the
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`grounds identified in this Petition.
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`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1–16 of the ’671 patent.
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`A.
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`Prior Art Patents and Printed Publications
`The following references are pertinent to the grounds of unpatentability
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`explained below: 1
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`1 The ’671 patent issued from an application filed prior to enactment of the America
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`Invents Act (“AIA”). Accordingly, pre-AIA statutory framework applies.
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`IPR2018-00199
`Patent 7,092,671
`1. U.S. Patent No. 6,084,949 (filed June 5, 1997; published July 4, 2000) (“Yun”
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`(EX1002)), which is prior art under 35 U.S.C. §§ 102(e) and 102(a).
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`2. U.K. Patent Application Publication No. GB 2318703 (published April 29,
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`1998) (“Langlois” (EX1003)), which is prior art under 35 U.S.C. §§ 102(b)
`
`and 102(a).
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`3. U.S. Patent No. 5,428,671 (filed November 9, 1992; published June 27, 1995)
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`(“Dykes” (EX1004)), which is prior art under 35 U.S.C. §§ 102(b), 102(e),
`
`and 102(a).
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`4. U.S. Patent No. 6,738,643 (filed October 31, 2000; published May 18, 2004)
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`(“Harris” (EX1005)), which is prior art under 35 U.S.C. § 102(e).
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`5. U.S. Patent No. 7,577,910 (filed July 10, 2000; published August 18, 2009)
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`(“Husemann” (EX1006)), which is prior art under 35 U.S.C. § 102(e).
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`B. Grounds for Challenge
`This Petition, supported by the declaration of Herbert Cohen (“Cohen
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`Declaration” or “Cohen” (EX1007)), requests cancellation of challenged claims 1–
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`16 as unpatentable under 35 U.S.C. § 103. See 35 U.S.C. § 314(a).
`
`V. OVERVIEW OF THE ’671 PATENT
`Summary of the Alleged Invention
`A.
`The ’671 patent acknowledges that, prior to its filing date, handheld computer
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`systems (e.g., personal information devices (PIDs)), such as personal digital
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`assistants (PDAs) and electronic organizers, were known. ’671 patent, 1:14–24
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`IPR2018-00199
`Patent 7,092,671
`(EX1001). These handheld computers were known to include a variety of
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`applications, such as electronic mail, calendar, appointment, contacts (such as
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`address and telephone numbers), and to do list applications. ’671 patent, 1:28–33
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`(EX1001). The ’671 patent also acknowledges that, at the time of its filing date,
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`telephones were known to share attributes with PIDs, but often had fewer
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`applications and less memory than the PIDs, and were more difficult to use in
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`entering data than the PIDs. ’671 patent, 1:38–53 (EX1001); Cohen ¶18 (EX1007).
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`The ’671 patent notes that, because of the more limited functionality of
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`telephones, users typically used handheld computers instead of telephones for
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`managing their contact lists and telephone numbers. ’671 patent, 1:54–58 (EX1001).
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`Typically, a user would obtain a telephone number from the handheld computer, and
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`would then manually dial the number on the telephone. ’671 patent, 1:58–63
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`(EX1001). The ’671 patent alleges two problems with this approach: first, a user
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`could make a mistake when manually dialing the telephone number; second, the user
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`would have to devote attention to the handheld computer and the telephone to ensure
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`the correct number is retrieved from the handheld computer and dialed in the
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`telephone. ’671 patent, 1:64–2:5 (EX1001); Cohen ¶19 (EX1007).
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`To address these problems, the ’671 patent describes a system where a user’s
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`handheld computer could automatically dial a telephone number stored in its
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`memory by interacting with a telephone. ’671 patent, 2:26–40 (EX1001). The
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`IPR2018-00199
`Patent 7,092,671
`system would allegedly allow an application stored on the handheld computer to
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`cause a telephone to dial a telephone number without requiring the user to access
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`controls of the telephone. ’671 patent at 2:13–20 (EX1001); Cohen ¶20 (EX1007).
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`One example of the system is illustrated in annotated FIG. 5 below. The ’671
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`patent discloses a handheld computer (e.g., PID) (outlined in green), a wireless
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`network (outlined in blue), and a telephone (e.g., mobile telephone) (outlined in red).
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`
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`’671 patent, FIG. 5 (EX1001) (Annotated).
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`
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`The handheld computer can store applications, such as a contact management
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`program for managing contact information or an address book program for
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`managing address and telephone number information. ’671 patent, 8:1–9 (EX1001).
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`A user can select a contact or telephone number from a list displayed by one of the
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`IPR2018-00199
`Patent 7,092,671
`applications to cause the telephone to automatically dial the telephone number. ’671
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`patent, 8:10–14 (EX1001). Cohen ¶¶21-22 (EX1007).
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`
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`But well before the ’671 patent was filed, the problem of dialing a telephone
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`number stored on a handheld computer had multiple solutions. Cohen ¶23 (EX1007).
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`Indeed, Yun and Harris describe exemplary solutions. Id. As the discussion below
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`demonstrates, all of the ’671 patent’s claims were obvious. Id.
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`B.
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`Level of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSA”) for the ’671 patent would have
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`had at least a Master’s Degree in electrical engineering, computer science, or a
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`related subject or the equivalent, or at least a Bachelor’s Degree in electrical
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`engineering, computer science, or a related subject or the equivalent and two years
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`of experience working with wireless networks and telephone systems. Cohen ¶24
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`(EX1007).
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`C.
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`Prosecution History
`The ’671 patent includes 16 claims, and was filed as U.S. Patent Application
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`No. 09/727,727 (“’727 application”) on November 30, 2000. During prosecution,
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`the Patent Office initially rejected all 16 claims under 35 U.S.C. § 103(a). File
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`History (“FH”) of ’727 application, Office Action (“OA”) of 10/09/2003, 2–6
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`(EX1008). In response, the applicant highlighted that independent claim 19 required
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`that “the personal information device [be] configured to control the telephone via a
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`IPR2018-00199
`Patent 7,092,671
`wireless communication such that the telephone dials a telephone number stored
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`on the personal information device” and argued that the cited prior art did not teach
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`this feature. FH of ’727 application, Response of 12/18/2003, 2–6 (EX1009)
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`(emphasis added).
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`The Patent Office then issued two new Non-Final OAs and a Final Office
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`Action, each of which rejected all 16 claims under 35 U.S.C. § 103(a). FH of ’727
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`application, OA of 03/12/2004, 2–7 (EX1010); Id. at OA of 11/26/2004, 2–7
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`(EX1012), OA of 08/12/2005, 2–7 (EX1014). In response to each of these OAs, the
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`applicant again argued that the references did not teach or suggest a device/handheld
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`computer system “configured to control” a telephone via a wireless communication
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`“such that the telephone dials” a telephone number. FH of ’727 application,
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`Response of 06/17/2004, 2–4 (EX1011)(emphasis removed and emphasis added);
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`Id. at Response of 05/27/2005, 2–6 (EX1013), Response of 02/21/2006, 6–11
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`(EX1015). In the Response of 02/21/2006, the applicant further argued that “the
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`mere exchange of data” as described in the prior art reference “is distinguishable
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`from one wireless handset controlling another as claimed.” Response of 02/21/2006,
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`10 (EX1015). The applicant noted that “in blocks 805 and 806 of Figure 8 in the
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`present application, the phone number to be dialed is transferred before the receiving
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`wireless telephone is controlled or instructed to dial the telephone number,” and
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`“[a]ccordingly, [c]laim 19 recites the data exchange and control elements as separate
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`IPR2018-00199
`Patent 7,092,671
`limitations.” Response of 02/21/2006, 10 (EX1015). The applicant also argued that
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`the references did not teach or suggest a handheld computer system that “displays a
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`list of phone numbers, from which the user may select one to dial.” FH of ’727
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`application, Response of 02/21/2006, 7–10 (EX1015) (emphases removed).
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`The Patent Office issued a Notice of Allowance on March 23, 2006, indicating
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`that the prior art “failed to teach the claimed limitations for the reasons set forth in
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`the Applicant’s remark[s] filed on February 14, 2006.” FH of ’727 application,
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`Notice of Allowance of 03/23/2006 at 2 (EX1016). However, as further described
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`herein, the features argued as distinct (“the handheld computer system is configured
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`to control the telephone via the wireless communication such that the telephone dials
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`the specific telephone number” and “a specific telephone number is selectable from
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`a list displayed on the handheld computer system”) were well-known at the time of
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`the alleged invention. This petition presents prior art not cited or applied by the
`
`examiner when the application was allowed.
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`VI. CLAIM CONSTRUCTION
`
`Claim terms of an unexpired patent in inter partes review are given the
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`“broadest reasonable construction in light of the specification.” 37 C.F.R. §
`
`42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279–81 (Fed. Cir.
`
`2015), aff’d sub nom. Cuozzo Speed Techs., LLC v. Lee, No. 15–446, slip op. 20
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`(U.S. June 20, 2016). Any claim that lacks a definition in the specification is
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`IPR2018-00199
`Patent 7,092,671
`therefore given a broad interpretation.2 In re ICON Health & Fitness, Inc., 496 F.3d
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`1374, 1379 (Fed. Cir. 2007). Under the broadest reasonable interpretation standard,
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`claim terms are given their ordinary and customary meaning, as they would be
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`understood by one of ordinary skill in the art, in the context of the disclosure. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition
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`for a claim term must be set forth in the specification with “reasonable clarity,
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`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`
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`Petitioner does not believe that any claim terms need to be construed. Any
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`claim terms should be given their broadest reasonable interpretation in light of the
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`specification, as commonly understood by those of ordinary skill in the art. Should
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`the Patent Owner, to avoid the prior art, contend that a claim term has a construction
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`different from its broadest reasonable interpretation, the appropriate course is for the
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`Patent Owner to seek to amend the claim to expressly correspond to its contentions
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`in this proceeding. 77 Fed. Reg. 48764 (Aug. 14, 2012).
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`VII. SPECIFIC GROUNDS FOR PETITION
`Pursuant to Rule 42.104(b)(4)-(5), the following sections (as confirmed in
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`Cohen ¶¶32-244 (EX1007)) detail the grounds of unpatentability, the limitations of
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`2 Petitioner applies the “broadest reasonable interpretation” standard as required by
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`the governing regulations. 37 C.F.R. § 42.100(b).
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`IPR2018-00199
`Patent 7,092,671
`the challenged claims of the ’671 patent, and how these claims were therefore
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`obvious in view of the prior art.
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`A. Ground I: Claims 1–6 and 9–14 are obvious in view of Yun, Langlois,
`and Dykes
`Yun was not considered in the prosecution of the ’727 application that led to
`
`the ’671 patent. However, as further discussed below, the disclosure of Yun is highly
`
`relevant to the claims of the ’671 patent.
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`1. Overview of Yun
`As depicted in annotated Figures 1 and 2 below, Yun discloses a system with
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`an electronic pocketbook (outlined in green), a wireless network (outlined in blue),
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`and a telephone (outlined in red).
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`IPR2018-00199
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`
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`Yun, FIG. 1 (EX1002), (Annotated)
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`Yun, FIG. 2 (EX1002), (Annotated)
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`The electronic pocketbook includes an optical transmission unit, and the telephone
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`includes an optical reception unit. Yun, 3:13–18, 3:45–47 (EX1002); Id. at Abstract,
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`2:1–55, 3:37–42, 3:51–57 (EX1002); Cohen ¶33 (EX1007).
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`
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`A telephone directory stored on the electronic pocketbook contains telephone
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`numbers of individuals, and information of the pocketbook is displayed. Yun, 2:1–
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`3, 4:3–9, 4:60–5:2 (EX1002). When a user selects a phone number from the
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`directory for dialing, an infrared signal containing an electronic dial request and the
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`telephone number is sent from the electronic pocketbook to the telephone. Yun,
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`4:11–20 (EX1002); Id. at 2:1–55, 3:53–57, 4:60–5:7 (EX1002). When the telephone
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`receives the infrared signal, the telephone performs an automatic dialing function.
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`Yun, 3:37–42 (EX1002); Id. at 4:41–50, 2:1–55, 5:8–15 (EX1002). Cohen ¶¶34-35
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`(EX1007).
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`2.
`a)
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`Claim 1 is obvious in view of Yun, Langlois, and Dykes
`“[a]n automated telephone dialing system”
`Yun discloses a “telephone system with automatic dialing using infrared
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`transmission from [an] electronic pocket book.” Yun, Title (EX1002); Id. at
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`Abstract, 2:1–55, 3:37–42, 4:11–16, 4:54–59, 5:5–7, 5:16–23 (EX1002). A user can
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`select a telephone number from a telephone directory stored on the electronic
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`pocketbook for automatic dialing. Yun, 2:1–6 (EX1002). Once the user selects the
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`telephone number and a dial key, an infrared signal including an electronic dial
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`request and the telephone number is transmitted from the electronic pocketbook to
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`the telephone. Yun, 3:53–57 (EX1002); Id. at 4:11–16, 4:45–50, 2:1–55 (EX1002).
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`When the telephone receives the infrared signal, it automatically dials the telephone
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`number. Yun, 3:37–42 (EX1002); Id. at 4:54–59, Abstract, 2:1–55 (EX1002). In
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`doing so, a user can cause a telephone to dial a telephone number registered in the
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`IPR2018-00199
`Patent 7,092,671
`electronic pocketbook directly from the electronic pocketbook without having to
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`manually dial the telephone number at the telephone. Yun, 5:16–23 (EX1002);
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`Cohen ¶38 (EX1007).
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`b)
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`“a telephone having a wireless port for short range wireless data transfer”
`Yun discloses that the system includes a telephone system, and provides an
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`example block diagram of the telephone system in Figure 1. Yun, 3:11–17, Fig. 1
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`(EX1002). The telephone system can include, for example, a telephone handset.
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`Yun, 2:47–49 (EX1002); Id. at Abstract (EX1002). The telephone system includes
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`an optical reception unit (wireless port), which is outlined in orange in annotated
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`Figure 1 below. Yun, 3:11–18 (EX1002); Cohen ¶40 (EX1007).
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`Yun, FIG. 1 (EX1002), (Annotated)
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`
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`The optical reception unit allows the telephone system to receive infrared
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`transmissions (short range wireless transmissions). Yun, 3:37–42 (EX1002); Id. at
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`Abstract, 2:7–23, 2:47–55 (EX1002); Cohen ¶40 (EX1007). Thus, Yun discloses a
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`IPR2018-00199
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`telephone system (“telephone”) having an optical reception unit (“having a wireless
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`port”) for receiving infrared transmissions (“for short range wireless data transfer”).
`
`Cohen ¶40 (EX1007). To the extent that the claimed “wireless port” is interpreted to
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`be a wireless receiver, Yun discloses this element. Cohen ¶40 (EX1007). As noted,
`
`Yun discloses that its telephone includes an optical reception unit, which is a type of
`
`wireless receiver. Yun, 3:37–42 (EX1002); Cohen ¶40 (EX1007).
`
` “a handheld computer system having a wireless port for communication
`c)
`with the wireless port on the telephone”
`Yun discloses that the system includes an electronic pocketbook, and provides
`
`an example block diagram of the electronic pocketbook in Figure 2. Yun, 3:43–47
`
`(EX1002). The electronic pocketbook includes an optical transmission unit
`
`(wireless port), which is outlined in orange in annotated Figure 2 below. Cohen ¶42
`
`(EX1007).
`
`Yun, FIG. 1 (EX1002), (Annotated)
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`The optical transmission unit allows the electronic pocketbook to send infrared
`
`transmissions to the optical reception unit in the telephone. Yun, 3:51–57
`
`(EX1002); Id. at Abstract, 1:64–2:55, 4:11–20, 4:45–59, 5:16–23 (EX1002). Thus,
`
`Yun discloses an electronic pocketbook (“handheld computer system”) that has an
`
`optical transmission unit (“having a wireless port”) for sending infrared
`
`transmissions to the optical reception unit in the telephone (“for communication
`
`with the wireless port on the telephone”). Cohen ¶42 (EX1007). To the extent that
`
`the claimed “wireless port” is interpreted to be a wireless transmitter, Yun discloses
`
`this element. Cohen ¶42 (EX1007). As noted, Yun discloses that its electronic
`
`pocketbook includes an optical transmission unit, which is a type of wireless
`
`transmitter. Yun, 3:51–57 (EX1002); Cohen ¶42 (EX1007).
`
` “wherein a specific telephone number is selectable from a list displayed on
`d)
`the handheld computer system”
`Yun discloses that the electronic pocketbook includes a telephone directory
`
`containing a plurality of telephone numbers of individuals, and that a user can select
`
`a telephone number for sending to the telephone system for automatic dialing. Yun,
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`2:1–6 (EX1002); Id. at Abstract (EX1002). Yun also discloses that the electronic
`
`pocketbook includes a display for providing a visual display of telephone numbers.
`
`Yun, 2:37–38 (EX1002); Id. at 4:60–5:2 (EX1002). Yun discloses that a user can
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`select a dial key for sending a selected telephone number to the telephone for
`
`automatic dialing. Yun, 3:51–57 (EX1002); Id. at 4:45–50, 4:66–5:2 (EX1002);
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`Cohen ¶44 (EX1007). Yun therefore discloses “wherein a specific telephone number
`
`is selectable from a list displayed on the handheld computer system.” Cohen ¶44
`
`(EX1007).
`
`Patent Owner may argue that Yun does not disclose displaying a list from
`
`which a specific telephone number can be selected by a user. This element, however,
`
`was well-known at the time of the alleged invention. Cohen ¶45 (EX1007).
`
`Computing devices that included applications for managing contact information,
`
`such as telephone directory or phonebook applications, typically displayed contact
`
`information in the form of a list, and allowed users to select a contact from the list,
`
`at the time the ’671 patent was filed. Cohen ¶45 (EX1007).
`
`For example, Langlois discloses a system where a computer and a telephone
`
`function cooperatively over a serial connection, such as a Universal Serial Bus
`
`(USB) or RS-232 connection. Langlois, 2:15–17 (EX1003); Id. at 2:26–27
`
`(EX1003). Langlois discloses that the computer executes a software application for
`
`communicating with the telephone for implementing various telephony functions.
`
`Langlois, 8:10–12 (EX1003). The application can store and display information
`
`relating to a user’s contacts. Langlois, 15:32–16:2 (EX1003). The application
`
`stores, for example, phone numbers associated with contacts. Langlois, 16:2–11
`
`(EX1003). The user can select a telephone number from any one of a variety of
`
`different types of lists, such as a Phonebook list, a Last Number Redial list, and a
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`Speed Dial list, to cause the computer to send a request over the serial connection to
`
`the telephone requesting that the telephone dial the selected number. Langlois, 21:8–
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`10 (EX1003); Id. at 25:7–9, 25:13–14, 26:11–27:1, 29:10–20, 29:25–28, Figs. 17D,
`
`18B, 22C, 23C (EX1003); Cohen ¶46 (EX1007). For example, a user can select a
`
`contact from a displayed speed dial list of contacts as shown in Fig. 18B. Langlois,
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`26:26–30; Fig. 18B. Cohen ¶46 (EX1007). Moreover, a user can select a contact’s
`
`office, home, or cellular phone number for dialing from a displayed drop-down list
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`157. Langlois, 26:18–32; Figs. 17D, 18B. Cohen ¶46 (EX1007).
`
`Yun and Langlois are each directed to systems where a computing device
`
`stores telephone numbers for contacts, and causes a telephone to dial a selected
`
`telephone number. Cohen ¶47 (EX1007). In light of the teachings of Langlois, it
`
`would have been obvious to a POSA at the time of the alleged invention to modify
`
`Yun so that the electronic pocketbook displays its contact information in the form of
`
`a list, where the user is able to select a telephone number from the list for dialing.
`
`Cohen ¶47 (EX1007). A POSA would have been motivated to make this
`
`modification to provide a more interactive telephone user interface that includes
`
`useful features, such as the viewing and selection of multiple contacts in a list, as
`
`well as different numbers by which a contact should be called. Langlois, 2:9-10,
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`3:7-8; Cohen ¶47 (EX1007).
`
`For example, such a modified system would have provided a list interface that
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`allows a user to more easily view and select telephone information of different
`
`contacts. Langlois, 26:18–24, Fig. 17D; Cohen ¶48 (EX1007). The modification
`
`would have made it easier for a user to view different contacts in a phonebook, as
`
`well as discern the number by which a contact should be called. Cohen ¶48
`
`(EX1007). The list interface would allow for the display a contact’s home, office,
`
`and cellular numbers, and allow a user to select which number to call. Langlois,
`
`26:18–24, Fig. 17D; Cohen ¶48 (EX1007). Moreover, given the similarities in
`
`structure, objectives, and operation between Yun and Langlois, a POSA would have
`
`been motivated to implement Langlois’ technique of displaying telephone directory
`
`information in the form of a list from which a user is able to select a telephone
`
`number for dialing to provide a user-friendly interface for identifying and selecting
`
`the particular information of which a user is interested. Cohen ¶48 (EX1007).
`
`Applications for managing contact information typically displayed the
`
`information in the form of a list from which a user could select. Cohen ¶49
`
`(EX1007). As a result, modifying Yun to display its telephone directory in the form
`
`of a list from which the user can select a number for dialing, as was conventionally
`
`done, would have been well within the abilities of a POSA and could be easily
`
`accomplished with a high chance of success. Cohen ¶49 (EX1007). Only
`
`conventional software techniques would have been necessary to provide a user
`
`interface that displays information such as a contact list or a list of telephone
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`numbers. Cohen ¶49 (EX1007).
`
` “wherein the handheld computer system is operable to transfer the specific
`e)
`telephone number to the telephone using a wireless communication”
`
`Yun discloses that when a user selects a telephone number and a dial key in
`
`the electronic pocketbook, the electronic pocketbook transmits an infrared signal
`
`that includes the telephone number to the telephone system. Yun, 3:51–57
`
`(EX1002); Id. at Abstract, 2:1–55, 3:37–42, 4:3–20, 4:54–59, 4:66–5:7 (EX1002).
`
`Thus, Yun discloses that the electronic pocketbook (“handheld computer system”)
`
`transmits a telephone number (“is operable to transfe