UNITED STATES PATENT AND TRADEMARK OFFICE ,
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS INC.
`
`PetitiOner
`
`V.
`
`UNILOC LUXEMBOURG S.A. & UN-ILOC USA
`Patent Owner
`
`US. Patent No. 7,092,671
`Claims 1~16
`
`
`
`Case IPR2018-00199
`
`
`SECOND DECLARATION OF HERBERT COHEN
`ON BEHALF OF PETITIONER
`
`Unified v Unilo‘e
`
`IPR201 8-00199
`
`Unified 1021’
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS INC.
`
`PetitiOner
`
`V.
`
`UNILOC LUXEMBOURG S.A. & UN-ILOC USA
`Patent Owner
`
`US. Patent No. 7,092,671
`Claims 1~16
`
`
`
`Case IPR2018-00199
`
`
`SECOND DECLARATION OF HERBERT COHEN
`ON BEHALF OF PETITIONER
`
`Unified v Unilo‘e
`
`IPR201 8-00199
`
`Unified 1021’
`
`
`
`TABLE OFCONTENTS
`
`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S PROPOSED CONSTRUCTION ................................. 1
`
`A.
`
`B.
`
`C.
`
`CLAIM LANGUAGE ...... i ................................. ‘..........'......................... 3
`
`THE ’671 PATENT SPECIFICATION ................................................ 5
`
`THE FILE HISTORY ........................................... . ............................... 7
`
`III.
`
`THE CHALLENGED CLAIMS ..................................................................... 7
`
`A.
`
`, THE “CONTROLLING” RECITATIONS ARE DISCLOSED BY
`
`YUN AND HARRIS ............................................................................. 7
`
`IV.
`
`THE “CONTROLLING” RECITATIONS ARE TAUGHT BY DYKES
`
`11
`
`V.
`
`AVAILABILITY FOR CROSS—EXAMINATION ...................................... 13
`
`VI.
`
`RIGHT TO SUPPLEMENT..................................... .........................'............ 13
`
`VII. IURAT .............. -....13
`
`
`
`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`1, Herbert Cohen, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Herbert Cohen.
`
`I am the same Herbert Cohen‘who signed
`
`and submitted a declaration on December 11, 2017 in this proceeding. My
`
`background and credentials are detailed in my prior declaration.
`
`2.
`
`I have reviewed the Patent Owner’s Response and other materials that
`
`were submitted with the Response. ‘Nothing expressed in any of these documents
`
`changes my opinion that the challenged claims of the ’671 patent are unpatentable.
`
`II.
`
`PATENT OWNER’S PROPOSED CONSTRUCTION
`
`3.
`
`Patent Owner contends that “controlling the telephone using a
`
`handheld computer to cause the telephone to dial the specific telephone number.”
`
`as recitedin claim 9, should be interpreted as a requirement that is separate and
`
`apart from the distinct step ”transferring the specific telephone number from the
`
`handheld computer system to the telephone using a wireless communication.”
`
`POR, 23. Patent Owner contends that claim 1 should be similarly interpreted. Id,
`
`24.
`
`4.
`
`First, I note that Patent Owner’s position should be rejected because
`
`the Patent Owner has not explained what is meant by the claimed transfer and
`
`control being “separate and apart.” The construction does not add clarity to the
`
`claim, It is not clear how “separate and apart” should be interpreted, or what
`
`1
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`
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`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`constitutes transfer and control being “separate and apart.” The “transferring” and
`
`“controlling” limitations of claim 9, and similarly in claim 1, show that there is no
`
`requirement for a control command to be issued “separate and apart” from
`
`transferring a telephone number. A person of ordinary skill in the art would have
`
`understood that these recitations, under a broadest reasonable interpretation, may
`
`indeed be performed by signals'or portionslof a signal that are not necessarily
`
`“separate and apart” to effectuate both the claimed transfer and control.
`
`5.
`
`When the claims are interpreted under a standard based on ordinary
`
`and customary meaning, as opposed to a broader interpretation, it is my opinion
`' that the limitations would not be viewed as having to be “separate and apart.” 1 For
`
`example, common definitions of “separate” are “to set or keep apart; disunite” and
`“existing as an independent entity.” EX1023, American Heritage ”College
`
`Dictionary, Third Edition (1993), 1242. Common definitions of “apa ‘ ” are “away
`
`from another'or others” and “in or into parts or pieces.” Id, 62. Thus, one of
`
`' I understand that under the broadest reasonable interpretation standard, claim
`terms are given their broadest reasonable interpretation consistent with the
`I
`
`Specification. I understand that under the Phillips standard, claim terms are given
`
`their ordinary and customary meaning, which is the meaning that the terms would
`
`have to a person of ordinary skill in the art in question at the time of the invention.
`
`
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`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`ordinary skill would have interpreted Patent Owner’s proposed construction as
`
`requiring the claimed functions be separated and apart from each other in some
`
`way. Such a configuration would require a particular configuration and/or
`
`manipulation of signals or data that requires the claimedtransfer and control
`
`necessarily being separate and apart.
`
`I have not found anything in the disclosure of
`
`the ’67 l patent that would require such features or that explains how such features
`
`would be implemented. Nor have I seen any evidence provided by Patent Owner
`
`that would require such a narrow interpretation of the transfer and control
`
`limitations. 2
`
`6.
`
`The Patent Owner’s construction should also be rejected because it is
`
`not supported by the claim limitations, specification, or file history. The Patent
`
`Owner has not shown why its narrow claim construction should be adopted.
`
`Moreover, I note that even if the Patent Owner’s construction were adopted, the ,
`
`prior art still'renders the challenged claims obvious.
`
`A.
`
`, CLAIM LANGUAGE
`
`
`
`2 Reference herein to the terms “transfer” and “control,” which are found in claim
`
`1, is intended to also refer to the limitations in claim 9 requiring “transferring” and
`
`“controlling.”
`
`
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`Second Cohen Declaration
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`US. Patent 7,092,671
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`7.
`
`The transfer and control limitations do not lend themselves to being
`
`interpreted as requiring units or features that are separate and apart. Patent
`
`Owner’s proposed construction would require,for example, that the claimed terms
`
`are either performed in a particular order with'signals that are separate and apart in
`time or performed with signals that not part ofthe same electromagnetic wave. If
`
`the Patent Owner is interpreting “separate and apart” in a different manner, I have
`
`not seen any explanation or support of such an interpretation presented by Patent
`
`Owner.
`
`8.
`
`Claim 1 recites, in part: “. . .wherein the handheld computer system is ‘
`
`operable to transfer the specific telephone number to the telephone using a wireless
`
`communication, and wherein the handheld computer system is configured to
`control the telephone Via the wireless communication such that the telephone dials
`
`the specific telephone number.” US. Patent 7,092,671 (EXIOOl), claim 1.
`
`9.
`
`Claim 9 recites, in pa : “. ..c) transferring the specific telephone
`
`number from the handheld computer system to the telephone using a wireless
`
`communication; and d) controlling the telephone using the handheld computer
`system to cause the telephone to dial the specific telephone number.” EXlOOl,
`
`claim 9.
`
`10.
`
`Thus, the claims provide no indication that the “transfer” and I
`
`f
`
`“control” limitations must somehow be (1) separated and (2) apart, as Patent
`
`4
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`
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`Second Cohen Declaration
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`U.S. Patent 7,092,671
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`Owner contents. See POR, 25. In my opinion, a person of ordinary skill in the art
`
`(POSA) would have understood that these recitations may indeed be performed by
`
`signals or portions of a signal that are not necessarily “separate and apart” to
`
`provide both the claimed transfer and control. For example, the claimed transfer
`
`and Control may be performed by a single signal that includes both a telephone
`
`number (which is transferred to a telephone by the signal) and a dial request or
`
`other control directive (that controls the telephone receiving the signal to dial using
`
`the number).
`
`1 l.
`
`_ I understand that the Patent Owner is asserting that the application of
`
`the prior art requires an interpretation that conflates the claimed limitations. POR,
`
`25. As explained further below, it is my opinion that the prior art does disclose
`
`the claim limitations even under Patent Owner’s construction. In addition, I do not
`
`believe that the claim terms are being conflatedbased on how the prior art is being
`
`asserted, because the prior art discloses to provide both transfer and control as
`
`claimed. '
`
`B.
`
`THE ’671 PATENT SPECIFICATION
`
`12.
`
`In my opinion, the specification does not require that the claimed
`
`“transfer” and “control” be separate and apart. The specification notes that “[t]he
`
`PID is configuredto control the telephone via the wireless communications such
`
`that the telephone dials a telephone number stored on the PID” and “[t]he present
`
`5
`
`
`
`Second Cohen Declaration
`
`US. Patent 7,092,671;
`
`invention further provides a solution which enables a user’s PIR to seamlessly
`
`interact with the user’s. telephone to dial members and establish phone calls. . . .”
`
`EXIOOI, 2:45—48, 4:17-32.
`
`I do not see any requirement for the claimed “transfer”
`
`and “control” to be separate and apart based on these portions of the specification.
`
`The specification further explains that PID 12 communicates a telephone number
`
`to telephOne 14 and controls the telephone so the number is dialed. Id, 8:17—21.
`
`Again, however, the specification, does not define any particular separate and apart
`processes that must Occur with respect to transferring and controlling.
`
`13. Moreover, the Patent Owner relies on “the conjunctive ‘and’ to
`
`distinguish between transmitting a telephone number and controlling the
`
`telephone,” contending that “’wireless link 20. ..communicate[s] the desired
`
`telephone number, gag] control[s] telephone 14 to dial the number... . ’” POR, 26
`
`(underline and italics added by Patent Owner). In my opinion, Yun provides a
`
`similar conjunctive disclosure. Yun discloses that its wireless infrared signal
`
`communicates a “telephone number” 911161 an “electronic dial request,” and that the
`
`request controls a telephone by causing it to automatically dial the telephone
`
`number. Yun, 4:11-16, 54—59, 5:8-15 (EXIOOZ).
`
`14.
`
`In my opinion, a POSA would have understood that the claimed
`
`“transfer” and “control” functions provided by the handheld c0mputer, when read
`
`in view of the ’671 patent specification, do not require low level details about how
`
`6
`
`
`
`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`commands or data are transmitted, e.g., whether they are separate and apart.
`
`In ‘
`
`View of the ’671 patent specification, a POSA would not have understood that the
`
`transfer and control limitations of the claims must be separate and apart.
`
`C.
`
`THE FILE HISTORY
`
`15.
`In my opinion, the file history does not support Patent Owner’s
`proposed construction. During prosecution, the applicant stated that: “As shown in
`
`blocks 805 and 806 of Figure 8...thephone number to be dialed is transferred
`
`before the receiving wireless telephone is controlled or instructed to dial the
`
`telephone number. Accordingly, Claim 19 recites the data exchange and control
`elements as separate limitations.” EX1015, 8.
`I understand this section ofthe file
`
`history as explaining that in order to control by dialing a particular phone number,
`
`the number must be known.
`
`III. THE CHALLENGED CLAIMS
`
`16.
`
`Regardless of whether Patent Owner’s constructionis adopted or not,
`
`it is my opinion that claims 1-16 are rendered invalid by the prior art
`
`A.
`
`THE “CONTROLLING” RECITATIONS ARE DISCLOSED BY}
`YUN AND HARRIS
`
`17.
`
`The primary references Yun (Grounds 1 and 2) and Harris (Grounds 3
`
`and 4) do not merely describe control by “transferring” or “transmitting” a
`
`“telephone number.” The electronic pocketbook of Yun transmits an infrared
`
`signal that includes both an electronic dial request and the telephone number. Yun,
`
`7
`
`
`
`Second Cohen Declaration
`
`U.S. Patent 7,092,671
`
`4:11w20 (EXIOOZ); Id. at 3:51—57 (EXIOOZ). Data provided from control unit 130
`
`is converted by optical transmission unit 138 into the infrared ray signal. Id.,4:11-
`
`16. The infrared signal, which includes the electronic dial request and telephone
`
`
`number, is received by the telephone system, subsequently resulting in the
`
`telephone automatically dialing the telephone number included in the infrared
`signal. Yun, 4:41—59 (EXIOOZ); See. also id. at 5:16—23, Abstract, 1:64—2:55,
`
`3 :37—42, 4:12~19, 5:5—15. As explained in Yun, the telephone system “analyz[es]
`
`the telephone number contained in the infrared ray signal. . .after receipt of an
`
`electronic dial request. ..and automatically dial[s] the analyzed telephone number
`
`contained in the infrared ray signal.” 1d,, 4:25—31 (EX1002).
`18.
`I note that PatentOwner appears toconcede that “control” is being
`
`provided to dial the number but contends that this control is provided by “contrOl
`
`unit 110” in the telephone of Yun. POR, 32'. Patent Owner appears to argue that
`
`since components of the telephone assist with the call, the telephone of Yun is
`
`controlling the call instead ofthe electrOnic pocketbook. Id. Patent Owner,
`
`however, fails to acknowledge that it is Yun’s electronic dial request that causes or
`
`“controls” the unit 110 to perform the dialing function. Yun, 4:54-59, 5:8-16
`
`-(1002)
`
`19.
`
`I also note that Patent Owner’s characterization that Yun’s “dial
`
`request” is a “couplet that is mentioned in passing only a few times in that
`
`' 8
`
`
`
`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`reference” is misleading. As I have explained above, the dial request of Yun
`controls the telephone system so that it automatically dials thetelephone number
`included in the infrared signal.
`in contrast to the Patent Owner’s representation,
`
`the dial request is not just some aspect of the reference that is “mentioned in
`
`passing.” It is described throughout the reference as. a part of the infrared‘signal
`
`transmitted from Yun’s pocketbook to a telephone system to control the telephone
`
`system onun. See, eg, Yun, 4:11-16, 24—3l, 41-50, 51-54, 55—59, FIG. 3
`
`‘(EX1002).
`
`I
`
`Patent Owner further points to the “on hook” and “off hook” ,
`20.
`functionality of Yun. fOR, 30, 32—33, 35. For example, Yun describes that when
`
`the unit is on hook, with respect to Figure 3, a “process of dialing a telephone
`
`number. . .using the electronic pocketbook includes initially analyzing the
`
`telephone number received from the electronic'pocketbook after receipt of Q
`
`electronic dial request in an off—hook state, and automatically dialing the analyzed
`
`telephone number contained in the infrared ray signal.” Yun, 4:24-31 (EX1002).
`
`Thus, Yun’s separately described functionality with respect to when the telephone
`
`headset is “on hook” is of no consequence because the “off hook” disclosure
`
`provides the control related features of the claims.
`
`21.
`
`Harris, which is used in Grounds 3 and 4, also discloses the claimed
`
`“control.” Harris discloses that whena user selects an icon or spot on a FDA
`
`9
`
`
`
` i
`
`i ii i i
`
`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`associated with a person’s contact information, the telephone phone number
`
`information associated with that contact information is sent to a telephone over the
`
`wireless network. Harris, 1:47—53, 1:66—2z6, 3:33~35 (EX1005). The information
`
`sent via the wireless network commands the telephone to dial the telephone
`
`number. Id. at 1:50—51. See alSo l:58—~60, 2:43—47, 3:33—35 (EXlOOS). This
`
`disclosure shows how the FDA in Harris “control[s] the telephone via the wireless
`
`communication such that the telephone dials the specific telephone number,” as
`
`claimed. .
`
`22.
`
`Sending a “request” or “command” or other instruction that instructs
`
`another device to automatically perform a certain function is a common manner of -
`
`implementing “control” in computer systems. For example, standardization
`documents regarding data communication over telephone networks routinely
`
`referred to “requests” and “commands” as providing control. See, e.g.,
`
`, International Telecommunication Union (ITU), ITU-T Telecommunication
`
`Standardization Sector of ITU, V250 (05/1999), Series V:\Data Communication
`Over the Telephone Network, Control Procedures, Serial Asynchronous Automatic
`Dialing and Control, i, 6, 19-24, 29, 37-42, 72, 83, 113 (EX1024) (explaining
`
`“commands” and “requests” used to control); See, e. g, 3rd Generation Partnership
`
`Project; Technical SpecificatiOn Group Terminals; AT command set for 3GPP
`
`User Equipment (UE) (3G TS 27.007 version 3.1.0) (1999-07), 8, 13—24, 36, 37,
`
`10
`
`
`
`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`(EX1025) (describing a “command profile” used for control, and “commands” and
`
`“requests” that provide control). Thus, one of ordinary skill would have
`
`understood that the “request” of Yun and “command” of Harris are forms of
`
`“control” as claimed.
`
`23. Moreover, Patent Owner’s assertions that Yun and Harris “teach[]
`
`away” from the Controlling limitations of the claims are also incorrect. POR, 33,
`
`35. As explained above and in my preVious declaration, Yun and Harris each
`
`clearly disclose the controlling limitations and a POSA would not have understood
`
`that the references teach away from providing the claimed transfer and control
`
`functions. See, 6g, Petition, 20—21, 33, 49, 63~64; EX1007, W53, 99, 156, 208..
`
`I
`
`IV.
`
`THE “CONTROLLING” RECITATIONS ARE TAUGHT BY DYKES
`
`24.
`Patent Owner is incorrect in its contention that Dykes allegedly “only
`sends its commands over a hardwired interface cable 20” and therefore would
`
`“lead a person of ordinary skill in the art away from attempting to apply that
`
`hardwired system, instead, in a wireless context, much less in the manner
`
`claimed.” POR, 38.
`
`25.
`
`Dykes is utilized in the petition and my previous declaration to show
`
`how a POSA would have understood that a dial command, separate from a
`
`telephone number, would have been a standard method for implementing the
`
`11
`
`
`
`Second Cohen Declaration
`
`US. Patent 7,092,671
`
`automatic dialing described by Yun. See, e.g., Dykes, 3:44——59 (EX1004); Petition,
`
`21——26, 33, 49—55, 63—64; EX1007, “55-62, 99-100, 160-172, 208—209.
`
`.
`
`26.
`
`Indeed, Dykes discloses that software on the computer can command
`
`the cellular phone to dial a phone number. Dykes, 3:44—59 (EX1004); Id. at 16:62——
`
`17:19 (EX1004). When the software issues the dial command, a modem in the
`
`computer“first directs the cellular phone to receive the numbers” of the telephone
`
`number specified by the dial command and “instructs the cellular phone to store
`
`these numbers.” Dykes, 3:44—56 (EX1004). After the phone number to be dialed
`
`has been transmitted. to the cellular phone, the modem “then sends a SEND
`command to the cellular phone]; which “instructs the cellular phone to dial the
`
`previously entered number.” Dykes, 3:56—61 (EX1004); Id. at 9:30—34, 10:43—48,
`
`10:56—62,
`
`1 1:9413, 11:65—12:45 (EX1004). Dykes also discloses that different
`
`commands can be sent to the cellular phone for a variety of other functions, such as
`storing a phone number in a particularmemory location in the cellular phone and
`
`dialing a phone number stored in a particular memory location in the cellular
`
`phone. Dykes, 13:57—14:10 (EX1004); Id. at4:14——33, 1325—56 (EX1004).
`27.
`The issues ofwhether Dykes explicitly refers to wireless
`
`communication is not at issue. Dykes is not relied on for this feature. The petition
`
`and my previous declaration clearly explained how the teachings of Dykes apply to
`
`12
`
`
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`Second Cohen Declaration
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`US. Patent 7,092,671
`
`the claims, as well as motivations to combine. See, e.g., Petition, 21—26, 33, 50—
`
`55, 63—64; EX1007, 111155—62, 99-100, 160—172, 208—209.
`
`V.
`
`AVAILABILITY FOR CROSS—EXAMINATION
`
`28.
`
`In signing this declaration, I recognize that the declaration will be '
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office.
`
`I also recognize that I may be
`
`subject to cross examination in the case and that cross examination will take place
`
`within the United States. If cross examination is required of me, I will appear for
`
`, cross examination within the United States during the time allotted for cross
`
`examination.
`
`VI. RIGHT TO SUPPLEMENT
`
`29.
`
`I reserve the right to supplement my opinions in the future to respond
`
`to any arguments that the Patent Owner raises and to take into account new
`
`information as it becomes available to me.
`
`VII. JURAT
`
`30.
`
`I declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`13
`
`
`
`Semnd Cuiim Declaration
`[1.3. Patmt 7,092,672
`
`02:1ch Dacember3&2038
`
`M W ;
`
`E
`
`Herbert Cohen ,
`
`l4
`
`
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