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
`Michael Van Handel, Reg. No. 68,292
`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: jonathan@unifiedpatents.com
`
`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
`
`DECLARATION OF HERBERT COHEN
`U.S. PATENT NO. 7,092,671 – CLAIMS 1–16
`
`UNIFIED 1007
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`IPR2018-00199
`Patent 7,092,671
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`TABLE OF CONTENTS
`
`I.
`INTRODUCTION .............................................................................................1
`II. TECHNOLOGY BACKGROUND...................................................................4
`A. Wireless Communication.............................................................................4
`B. Device Control .............................................................................................5
`C. Handheld Device Applications ....................................................................6
`III. OVERVIEW OF THE ’671 PATENT ............................................................6
`A.
`Level of Ordinary Skill in the Art................................................................9
`B. Understanding of the Law..........................................................................10
`IV. CLAIM CONSTRUCTION ..........................................................................13
`V.
` INVALIDITY OF THE CHALLENGED CLAIMS ....................................13
`A. Ground I: Claims 1–6 and 9–14 are obvious in view of Yun, Langlois,
`and Dykes.............................................................................................................13
`1. Overview of Yun ....................................................................................13
`2.
`Claim 1 is obvious in view of Yun, Langlois, and Dykes......................16
`3.
`Claim 2 is obvious in view of Yun, Langlois, and Dykes......................31
`4.
`Claim 3 is obvious in view of Yun, Langlois, and Dykes......................32
`5.
`Claim 4 is obvious in view of Yun, Langlois, and Dykes......................33
`6.
`Claims 5 and 6 are obvious in view of Yun, Langlois, and Dykes ........35
`7.
`Claim 9 is obvious in view of Yun, Langlois, and Dykes......................39
`8.
`Claim 10 is obvious in view of Yun, Langlois, and Dykes....................44
`9.
`Claim 11 is obvious in view of Yun, Langlois, and Dykes....................45
`10. Claim 12 is obvious in view of Yun, Langlois, and Dykes....................46
`11. Claims 13 and 14 are obvious in view of Yun, Langlois, and Dykes ....47
`B. Ground II: Claims 7, 8, 15, and 16 are obvious in view of Yun, Langlois,
`Dykes, and Husemann .........................................................................................49
`1.
`Claims 7, 8, 15, and 16 are obvious in view of Yun, Langlois, Dykes,
`and Husemann..................................................................................................49
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`C. Ground III: Claims 1–7 and 9–15 are obvious over Harris, Langlois, and
`Dykes....................................................................................................................52
`1. Overview of Harris .................................................................................52
`2.
`Claim 1 is obvious in view of Harris, Langlois, and Dykes...................55
`3.
`Claim 2 is obvious in view of Harris, Langlois, and Dykes...................70
`4.
`Claim 3 is obvious in view of Harris, Langlois, and Dykes...................71
`5.
`Claim 4 is obvious in view of Harris, Langlois, and Dykes...................72
`6.
`Claims 5 and 6 are obvious in view of Harris, Langlois, and Dykes .....73
`7.
`Claim 7 is obvious in view of Harris, Langlois, and Dykes...................76
`8.
`Claim 9 is obvious in view of Harris, Langlois, and Dykes...................78
`9.
`Claim 10 is obvious in view of Harris, Langlois, and Dykes.................81
`10. Claim 11 is obvious in view of Harris, Langlois, and Dykes.................82
`11. Claim 12 is obvious in view of Harris, Langlois, and Dykes.................83
`12. Claims 13 and 14 are obvious in view of Harris, Langlois, and Dykes .84
`13. Claim 15 is obvious in view of Harris, Langlois, and Dykes.................85
`D. Ground IV: Claims 8 and 16 are obvious in view of Harris, Langlois,
`Dykes, and Husemann .........................................................................................85
`1.
`Claims 8 and 16 are obvious in view of Harris, Langlois, Dykes, and
`Husemann.........................................................................................................86
`VI. AVAILABILITY FOR CROSS–EXAMINATION......................................88
`VII. RIGHT TO SUPPLEMENT..........................................................................88
`VIII. JURAT ...........................................................................................................88
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`IPR2018-00199
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`I, Herbert Cohen, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Herbert Cohen. I received a B.S. and a M.S. from Purdue
`
`University in Electrical Engineering in 1984 and 1986, respectively. A copy of my
`
`curriculum vitae, which includes a more detailed summary of my background,
`
`experience, patents, and publications, is attached as Appendix A.
`
`2.
`
`I have been retained by Unified Patents Inc. (“Unified”) as an
`
`independent expert consultant in the field of computer networks and telephone
`
`systems. I am being compensated for the time I spend on this matter, but my
`
`compensation is not dependent on and in no way affects the substance of my
`
`statements in this declaration.
`
`3.
`
`I am currently a professional patent analyst and consultant employed
`
`by TechPats, a patent consulting firm. At TechPats, I analyze patent portfolios to
`
`determine the quality of patents and perform patent infringement and/or validity
`
`investigations on many patents. Such investigations often involve testing,
`
`performing reverse engineering, reviewing specifications, standards, manuals, and
`
`other prior art. Prior to this, I worked in the field of telecommunications for more
`
`than 25 years, with companies such as AT&T Bell Laboratories, Lucent
`
`Technologies, Agere Systems, and LSI Corporation.
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`Patent 7,092,671
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`4.
`
`I have led DSP, software, and system test teams in the development of
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`numerous commercially successful embedded communication products in the areas
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`of telephony, wireless, POS, FAX, and VoIP.
`
`5.
`
`Specifically, from 1985-2013, I developed software and managed
`
`development and testing efforts to deliver wired and wireless communication sub-
`
`systems to major equipment providers, including HP, Toshiba, USR, and Chinese
`
`POS vendors.
`
`6.
`
`I have a deep understanding of wireline protocols and standards,
`
`embedded systems and firmware, wireless communications protocols and
`
`standards, point-of-sale (POS) functions, consumer transaction software and
`
`devices, signal processing, algorithms, and DSP programming. My primary focus
`
`today is in telecom, wireless, multimedia, and networking technologies.
`
`7.
`
`My work has been published in EE Times, and I am a recipient of the
`
`AT&T Bell Laboratories “President’s Quality Award.” Additionally, in 2004, I
`
`was awarded the Agere Systems “Outstanding Innovation Award” for “Top Patent
`
`of the Year.” I am an inventor, and I have been awarded seven patents in the field
`
`of data and facsimile communications: U.S. Patent Nos. 8,717,873 (“Modem
`
`Adaptation Control for Facsimile over Internet Protocol”), 8,365,046 (“Method
`
`and Apparatus for Non-Uniform Redundancy Packet Error Correction”), 5,831,561
`
`(“System and Method for Dynamically Optimizing a Symbol Table and Modem
`2
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`Employing the Same”), 6,078,645 (“Apparatus and Method for Monitoring Full
`
`Duplex Data Communications”), 5,887,027 (“Method of Upstream Channel
`
`Modeling for a PCM Modem”), 9,380,176 (“Voice Band Data Mode in a Universal
`
`Facsimile Engine”), and 9,055,011 (“Methods and Apparatus for Linked-List
`
`Circular Buffer Management”).
`
`8.
`
`I am not an attorney and offer no legal opinions, but in my work I
`
`have had experience studying and analyzing patents and patent claims from the
`
`perspective of a person skilled in the art.
`
`9.
`
`I have reviewed the specification and claims of U.S. Patent No.
`
`7,092,671 to E. Michael Lunsford, Steve Parker, David Kammer, and David Moore
`
`(the “’671 patent”).
`
`10.
`
`I have reviewed and understand the following references:
`
`i.
`
`ii.
`
`U.S. Patent No. 6,084,949 (“Yun”) (EX1002);
`
`U.K. Patent Application Publication No. GB 2318703 (“Langlois”)
`
`(EX1003);
`
`iii. U.S. Patent No. 5,428,671 (“Dykes”) (EX1004);
`
`iv. U.S. Patent No. 6,738,643 (“Harris”) (EX1005);
`
`v. U.S. Patent No. 7,577,910 (“Husemann”) (EX1006);
`
`11.
`
`I have been asked to consider whether the references listed above in
`
`paragraph 10 disclose or suggest the features recited in the claims of the ’671
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`patent.
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`I have also been asked to consider the state of the art and the prior art
`
`available before time of the alleged invention. My opinions are provided in this
`
`declaration.
`
`12.
`
`To the best of my knowledge, I have no financial interest in Petitioner.
`
`Petitioner’s counsel has informed me that Uniloc Luxembourg S.A. purports to
`
`own the ’671 patent, and Uniloc USA is the exclusive licensee of the ’671 patent.
`
`To the best of my knowledge, I have no financial interest in Uniloc Luxembourg
`
`S.A. or Uniloc S.A., and I have had no contact with Uniloc Luxembourg S.A.,
`
`Uniloc USA, or the named inventors of the patent, E. Michael Lunsford, Steve
`
`Parker, David Kammer, or David Moore. To the best of my knowledge, I similarly
`
`have no financial interest in the ’671 patent. To the extent any mutual funds or
`
`other investments I own have a financial interest in the Petitioner, Unified Patents
`
`Inc., or the ’671 patent, I am not aware of, nor do I have control over, any financial
`
`interest that would affect or bias my judgment.
`
`TECHNOLOGY BACKGROUND
`II.
`A. Wireless Communication
`13.
`Personal, portable, handheld computing devices have been prevalent
`
`for years. These devices have been known to perform numerous operations that
`
`involve wireless communication, such as interfacing with each other.
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`14.
`
`To accomplish these operations, wireless capability was needed.
`
`Many of these early portable devices included some sort of short-range wireless
`
`interface. These interfaces included, for example, near field communication
`
`(NFC), Bluetooth, and infrared (IR) technology. Short-range wireless technology
`
`allowed for connecting to a variety of peripherals and devices, such as external
`
`computing devices, printers, keyboards, and audio devices, for example. The
`
`Infrared Data Association (IrDA), which was formed in 1993, defined protocols for
`
`using light waves such as infrared for transferring data. The Newton MessagePad
`
`2100, introduced in the 1990’s, is an example of a portable, handheld device that
`
`included IrDA capabilities. Bluetooth was another known wireless communication
`
`medium.
`
`15.
`
`Portable computing devices communicated with each other using
`
`short-range wireless interfaces, such as infrared and Bluetooth, well before the
`
`filing date of the ’671 patent.
`
`B.
`
`Device Control
`
`16. Many of these early portable devices interfaced with external
`
`computer devices. See e.g., Yun (EX1002); Dykes (EX1004). For example, the
`
`V32Cell chipset, which was developed by my team in the 1990’s, was used by
`
`many device manufactures to interface with many popular cellular phones at that
`
`time. Portable devices also often received control commands from external
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`computer devices to perform actions such as dialing. See e.g., Yun (EX); Dykes
`
`(EX1004).
`
`C.
`
`Handheld Device Applications
`
`17. Many computing devices, such as PDAs and other handheld
`
`organizers we known prior to the ’671 patent’s filing date. These computing
`
`devices typically included software applications that had contact information such
`
`as contact lists with lists of telephone numbers from which a user could select to
`
`perform certain functions. For example, a user could edit contact information and
`
`send contact information to other computing devices, including portable devices
`
`such as cellular phones.
`
`III. OVERVIEW OF THE ’671 PATENT
`18.
`The ’671 patent acknowledges that, prior to its filing date, handheld
`
`computer systems (e.g., personal information devices (PIDs)), such as personal
`
`digital assistants (PDAs) and electronic organizers, were known. ’671 patent,
`
`1:14–24 (EX1001). These handheld computers were known to include a variety of
`
`applications, such as electronic mail, calendar, appointment, contacts (such as
`
`address and telephone numbers), and to do list applications. ’671 patent, 1:28–33
`
`(EX1001). The ’671 patent also acknowledges that, at the time of its filing date,
`
`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
`
`entering data than the PIDs. ’671 patent, 1:38–53 (EX1001).
`
`19.
`
`The ’671 patent notes that, because of the more limited functionality
`
`of telephones, users typically used handheld computers instead of telephones for
`
`managing their contact lists and telephone numbers. ’671 patent, 1:54–58
`
`(EX1001). Typically, a user would obtain a telephone number from the handheld
`
`computer, and would then manually dial the number on the telephone. ’671 patent,
`
`1:58–63 (EX1001). The ’671 patent alleges two problems with this approach.
`
`‘671 patent, 1:64–2:5 (EX1001). First, a user could make a mistake when
`
`manually dialing the telephone number. ’671 patent, 1:64–2:2 (EX1001). Second,
`
`the user would have to devote attention to the handheld computer and the
`
`telephone to ensure the correct number is retrieved from the handheld computer
`
`and dialed in the telephone. ’671 patent, 2:2–5 (EX1001).
`
`20.
`
`To address these problems, the ’671 patent describes a system where a
`
`user’s handheld computer could automatically dial a telephone number stored in its
`
`memory by interacting with a telephone. ’671 patent, 2:26–40 (EX1001). The
`
`system would allegedly allow an application stored on the handheld computer to
`
`cause a telephone to dial a telephone number without requiring the user to access
`
`controls of the telephone. ’671 patent at 2:13–20 (EX1001).
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`21. As one example of the system, illustrated in annotated FIG. 5 below,
`
`the ’671 patent discloses a handheld computer (e.g., PID) (outlined in green), a
`
`wireless network (outlined in blue), and a telephone (e.g., mobile telephone)
`
`(outlined in red).
`
`’671 patent, FIG. 5 (EX1001) (Annotated).
`
`The handheld computer and telephone can each include a wireless port, such that a
`
`wireless link can be established between them. ’671 patent, 40–45 (EX1001). The
`
`wireless link can be a short-range radio frequency (RF) link (e.g., a link as defined
`
`by the Bluetooth communications specification) or an infrared communication link
`
`(e.g., a link as defined by the Infrared Data Association (IrDA)). ’671 patent,
`
`4:47–53 (EX1001).
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`22.
`
`The handheld computer can store applications, such as a contact
`
`management program for managing contact information or an address book
`
`program for managing address and telephone number information. ’671 patent,
`
`8:1–9 (EX1001). A user can select a contact or telephone number from a list
`
`displayed by one of the applications to cause the telephone to automatically dial
`
`the telephone number. ’671 patent, 8:10–14 (EX1001). For example, the
`
`application can cause the selected telephone number to be communicated over the
`
`wireless link to the telephone, and can control the telephone to dial the telephone
`
`number. ’671 patent, 8:17–31 (EX1001).
`
`23. But well before the ’671 patent was filed, the problem of dialing a
`
`telephone number stored on a handheld computer had multiple solutions. For
`
`example, Yun (EX1002) taught an automatic dialing system where a telephone
`
`number is transmitted over infrared from an electronic pocketbook to a telephone
`
`system for automatic dialing, while Harris (EX1005) taught that a PDA can send a
`
`telephone number over infrared or Bluetooth to a telephone and can command the
`
`telephone to dial the number. Hence, as the discussion below demonstrates, all the
`
`claims were obvious.
`
`A.
`
`Level of Ordinary Skill in the Art
`24.
`I have considered certain issues from the perspective of a person of
`
`ordinary skill in the art (“POSA”) at the time of the alleged invention. In my
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`opinion, a person of ordinary skill in the art for the ’671 patent would have had at
`
`least a Master’s Degree in electrical engineering, computer science, or a related
`
`subject or the equivalent, or at least a Bachelor’s Degree in electrical engineering,
`
`computer science, or a related subject or the equivalent and two years of
`
`experience working with wireless networks and telephone systems.
`
`B.
`
`Understanding of the Law
`25.
`I am not an attorney. For the purposes of this declaration, Petitioner’s
`
`counsel has informed me about certain aspects of the law that are relevant to my
`
`opinions.
`
`26.
`
`Petitioner’s counsel have informed me that a patent claim may be
`
`“anticipated” if each element of that claim is present either explicitly or inherently
`
`in a single prior art reference. Petitioner’s counsel have informed me that to be
`
`inherently present, the prior art reference must necessarily disclose the limitation,
`
`and the fact that the reference might possibly practice or contain a claimed
`
`limitation is insufficient to establish that the reference inherently teaches the
`
`limitation.
`
`27.
`
`Petitioner’s counsel have informed me that a patent claim can be
`
`considered to have been obvious to a person of ordinary skill in the art at the time
`
`of the alleged invention. This means that, even if all of the requirements of a claim
`
`are not found in a single prior art reference, the claim is not patentable if the
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`differences between the subject matter in the prior art and the subject matter in the
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`claim would have been obvious to a person of ordinary skill in the art at the time of
`
`the alleged invention.
`
`28.
`
`Petitioner’s counsel have informed me that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including,
`
`among others:
`
`(cid:120) the level of ordinary skill in the art at the time of the alleged invention;
`
`(cid:120) the scope and content of the prior art;
`
`(cid:120) what differences, if any, existed between the claimed invention and the
`
`prior art.
`
`29.
`
`Petitioner’s counsel have informed me that a single reference can
`
`render a patent claim obvious if any differences between that reference and the
`
`claims would have been obvious to a person of ordinary skill in the art.
`
`Alternatively, the teachings of two or more references may be combined in the
`
`same way as disclosed in the claims, if such a combination would have been
`
`obvious to one having ordinary skill in the art. In determining whether a
`
`combination based on either a single reference or multiple references would have
`
`been obvious, it is appropriate to consider, among other factors:
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`(cid:120) whether the teachings of the prior art references disclose known concepts
`
`combined in familiar ways, and when combined, would yield predictable
`
`results;
`
`(cid:120) whether a person of ordinary skill in the art could implement a
`
`predictable variation, and would see the benefit of doing so;
`
`(cid:120) whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of
`
`success by those skilled in the art;
`
`(cid:120) whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
`
`(cid:120) whether there is some teaching or suggestion in the prior art to make the
`
`modification or combination of elements claimed in the patent; and
`
`(cid:120) whether the innovation applies a known technique that had been used to
`
`improve a similar device or method in a similar way.
`
`30.
`
`Petitioner’s counsel have informed me that one of ordinary skill in the
`
`art has ordinary creativity, and is not an automaton. Petitioner’s counsel have
`
`informed me that in considering obviousness, it is important not to determine
`
`obviousness using the benefit of hindsight derived from the patent being
`
`considered.
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`IV. CLAIM CONSTRUCTION
`
`31.
`
`In my analysis I have given the claim terms their broadest reasonable
`
`interpretation in light of the specification. I have considered whether any claim
`
`term has been defined in the specification, and for those terms which lack a
`
`definition in the specification, I have similarly applied the broadest reasonable
`
`interpretation that is consistent with the interpretation that one skilled in the art
`
`would have applied at the time of the alleged invention.
`
`V.
`
`A.
`
`INVALIDITY OF THE CHALLENGED CLAIMS
`
`Ground I: Claims 1–6 and 9–14 are obvious in view of Yun, Langlois,
`and Dykes
`32.
`In this section, I explain why every element of claims 1–6 and 9–14 of
`
`the ’671 patent would have been obvious to a POSA in view of Yun, Langlois, and
`
`Dykes, arranged as in the claims.
`
`1.
`
`Overview of Yun
`33. As depicted in annotated Figures 1 and 2 below, Yun discloses a
`
`system with an electronic pocketbook (outlined in green), a wireless network
`
`(outlined in blue), and a telephone (outlined in red).
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`Yun, FIG. 1 (EX1002), (Annotated)
`
`Yun, FIG. 2 (EX1002), (Annotated)
`
`The electronic pocketbook includes an optical transmission unit, and the telephone
`
`includes an optical reception unit. See Yun, 3:13–18, 3:45–47 (EX1002); see also
`
`id. at Abstract, 2:1–55, 3:37–42, 3:51–57 (EX1002).
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`34.
`
`The electronic pocketbook includes various functions, such as a
`
`calendar function and a phone mode for an electronic phone book. Yun, 3:47–51
`
`(EX1002). A telephone directory stored on the electronic pocketbook contains
`
`telephone numbers of individuals. Yun, 2:1–3 (EX1002). The electronic
`
`pocketbook provides for visual display of information stored in the pocketbook in
`
`response to user input. See Yun, 4:3–9, 4:60–5:2 (EX1002). Yun also discloses
`
`that a program stored in the electronic pocketbook provides for automatically
`
`transmitting a telephone number in the form of an infrared signal. Yun, 3:67–4:6
`
`(EX1002).
`
`35. When a user selects a phone number from the directory for dialing, an
`
`infrared signal containing an electronic dial request and the telephone number is
`
`sent from the electronic pocketbook to the telephone. See Yun, 4:11–20 (EX1002);
`
`see also id. at 2:1–55, 3:53–57, 4:60–5:7 (EX1002). When the telephone receives
`
`the infrared signal, the telephone performs an automatic dialing function. See Yun,
`
`3:37–42 (EX1002); see also id. at 4:41–50, 2:1–55, 5:8–15 (EX1002). Thus, a
`
`user can automatically dial a telephone number registered in the electronic
`
`pocketbook directly from the electronic pocketbook via an infrared transmission
`
`without having to manually dial the telephone number in the telephone. See Yun,
`
`5:17–23 (EX1002).
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`2.
`
`Claim 1 is obvious in view of Yun, Langlois, and Dykes
`36. Claim 1 recites: 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 wherein the handheld computer
`
`system is configured to control the telephone via the wireless communication such
`
`that the telephone dials the specific telephone number.
`
`a)
`
`“[a]n automated telephone dialing system”
`37.
`In my opinion, Yun discloses this limitation.
`
`38.
`
`Yun discloses a “telephone system with automatic dialing using
`
`infrared transmission from [an] electronic pocket book.” Yun, Title (EX1002); see
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`also id. at Abstract, 2:1–55, 3:37–42, 4:11–16, 4:54–59, 5:5–7, 5:16–23 (EX1002).
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`A user can select a telephone number from a telephone directory stored on the
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`electronic pocketbook for automatic dialing. See Yun, 2:1–6 (EX1002). Once the
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`user selects the telephone number and a dial key, an infrared signal including an
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`electronic dial request and the telephone number is transmitted from the electronic
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`pocketbook to the telephone. See Yun, 3:53–57 (EX1002); see also id. at 4:11–16,
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`4:45–50, 2:1–55 (EX1002). When the telephone receives the infrared signal, it
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`automatically dials the telephone number. See Yun, 3:37–42 (EX1002); see also
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`id. at 4:54–59, Abstract, 2:1–55 (EX1002). In doing so, a user can cause a
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`telephone to dial a telephone number registered in the electronic pocketbook
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`directly from the electronic pocketbook without having to manually dial the
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`telephone number at the telephone. See Yun, 5:16–23 (EX1002).
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`
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`b)
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`“a telephone having a wireless port for short range wireless data transfer”
`39.
`In my opinion, Yun discloses this limitation.
`
`40.
`
`Yun discloses that the system includes a telephone system, and
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`provides an example block diagram of the telephone system in Figure 1. Yun,
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`3:11–17, Fig. 1 (EX1002). The telephone system can include, for example, a
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`telephone handset. Yun, 2:47–49 (EX1002); see also id. at Abstract (EX1002).
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`The telephone system includes an optical reception unit, which is outlined in
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`orange in annotated Figure 1 below. See Yun, 3:11–18 (EX1002).
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`Yun, FIG. 1 (EX1002), (Annotated)
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`The optical reception unit allows the telephone system to receive infrared
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`transmissions (short range wireless transmissions). See Yun, 3:37–42 (EX1002);
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`see also id. at Abstract, 2:7–23, 2:47–55 (EX1002). The Infrared Data Association
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`(IrDA), which was formed in 1993, defined protocols for using light waves such as
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`infrared for transferring data wirelessly. Moreover, infrared was a known wireless
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`communication medium prior to the time of the alleged invention.
`
`See e.g.,
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`Husemann, 2:22-25 (“…it becomes desirable to replace…physical connections
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`with wireless connections (e.g.,…infrared connections)….”) (EX1006); Harris,
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`1:50-60 (“…information of the displayed number is sent over the infrared link
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`115….”) (EX1005). Therefore, one of ordinary skill in the art would have
`
`understood that the optical reception unit of Yun would have received the infrared
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`ray signal via a short-range wireless infrared communication protocol. Thus, Yun
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`discloses a telephone system (“telephone”) having an optical reception unit
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`(“having a wireless port”) for receiving infrared transmissions (“for short range
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`wireless data transfer”). To the extent that the claimed “wireless port” is
`
`interpreted to be a wireless receiver, Yun discloses this element. As noted, Yun
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`discloses that its telephone includes an optical reception unit, which is a type of
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`wireless receiver. Yun, 3:37–42 (EX1002);
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`“a handheld computer system having a wireless port for communication
`c)
`with the wireless port on the telephone”
`41.
`In my opinion, Yun discloses this limitation.
`
`42.
`
`Yun discloses that the system includes an electronic pocketbook, and
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`provides an example block diagram of the electronic pocketbook in Figure 2. See
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`Yun, 3:43–47 (EX1002). The electronic pocketbook includes an optical
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`transmission unit, which is outlined in orange in annotated Figure 2 below.
`
`Yun, FIG. 1 (EX1002), (Annotated)
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`The optical transmission unit allows the electronic pocketbook to send infrared
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`transmissions to the optical reception unit in the telephone. See Yun, 3:51–57
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`(EX1002); see also id. at Abstract, 1:64–2:55, 4:11–20, 4:45–59, 5:16–23
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`(EX1002). Thus, Yun discloses an electronic pocketbook (“handheld computer
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`system”) that has an optical transmission unit (“having a wireless port”) for
`
`sending infrared transmissions to the optical reception unit in the telephone (“for
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`communication with the wireless port on the telephone”). To the extent that the
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`claimed “wireless port” is interpreted to be a wireless transmitter, Yun discloses
`
`this element. As noted, Yun discloses that its electronic pocketbook includes an
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`optical transmission unit, which is a type of wireless transmitter. Yun, 3:51–57
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`(EX1002).
`
`“wherein a specific telephone number is selectable from a list displayed on
`d)
`the handheld computer system”
`43.
`In my opinion, Yun discloses this limitation. However, to the extent
`
`one might argue that Yun does not disclose this limitation, then in my opinion this
`
`limitation would have been obvious to a POSA in view of Yun and Langlois at the
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`time of the alleged invention.
`
`44.
`
`Yun discloses that the electronic pocketbook includes a telephone
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`directory containing a plurality of telephone numbers of individuals, and that a user
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`can select a telephone number for sending to the telephone system for automatic
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`dialing. See Yun, 2:1–6 (EX1002); see also id. at Abstract (EX1002). Yun also
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`discloses that the electronic pocketbook includes a display for providing a visual
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`display of telephone numbers. See Yun, 2:37–38 (EX1002); see also id. at 4:60–
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`5:2 (EX1002). Yun discloses that a user can select a dial key for sending a selected
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`telephone number to the telephone for automatic dialing. See Yun, 3:51–57
`
`(EX1002); see also id. at 4:45–50, 4:66–5:2 (EX1002).
`
`45.
`
`To the extent that Patent Owner argues that Yun does not disclose
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`displaying a list from which a specific telephone number can be selected by a user,
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`this element was well-known at the time of the alleged invention. In fact,
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`computing devices that included applications for managing contact information,
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`such as telephone directory or phonebook applications, typically displayed contact
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`information in the form of a list, and allowed users to select a contact from the list,
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`at the time the ’671 patent was filed.
`
`46.
`
`For example, Langlois discloses a system where a computer and a
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`telephone function cooperatively over a serial connection, such as a Universal
`
`Serial Bus (USB) or RS-232 connection. Langlois, 2:15–17 (EX1003); see also id.
`
`at 2:26–27 (EX1003). Langlois discloses that the computer executes a software
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`application for communicating with the telephone for implementing various
`
`telephony functions. Langlois, 8:10–12 (EX1003). The application can store and
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`display information relating to a user’s contacts, in an analogous manner to that
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`implemented in PIMs. Langlois, 15:32–16:2 (EX1003). The application stores,
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`for example, phone numbers associated with contacts. Langlois, 16:2–11
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`(EX1003). The user can select a telephone number from any one of a variety of
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`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 th