UNITED STATES PATENT AND TRADEMARK OFFICE —
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTSINC.
`Petitioner
`
`Vv.
`
`UNILOC LUXEMBOURGS.A. & UNILOC USA
`Patent Owner
`
`U.S. Patent No. 7,092,671
`Claims 1-16
`
`
`
`Case IPR2018-00199
`
`
`SECOND DECLARATION OF HERBERT COHEN
`ON BEHALF OF PETITIONER
`
`Unified v Uniloc
`IPR2018-00199
`Unified 1021
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTSINC.
`Petitioner
`
`Vv.
`
`UNILOC LUXEMBOURGS.A. & UNILOC USA
`Patent Owner
`
`U.S. Patent No. 7,092,671
`Claims 1-16
`
`
`
`Case IPR2018-00199
`
`
`SECOND DECLARATION OF HERBERT COHEN
`ON BEHALF OF PETITIONER
`
`Unified v Uniloc
`IPR2018-00199
`Unified 1021
`
`
`
`TABLE OF CONTENTS
`
`Second Cohen Declaration
`U.S. Patent 7,092,671
`
`Page
`
`INTRODUCTION viccccccccsssesssssssssscsessesucscscsvessssavsscscscavsveseacsucacsrsavsssasaveseaesseeen 1
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`II.
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`Il.
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`PATENT OWNER’S PROPOSED CONSTRUCTION..vssessecssessesseesssseesees 1
`A.
`CLAIM LANGUAGEDeecsccccscscssssssssssssesesseceveeesvecaesvensveaavaveseasacasscavenes 3
`B.
`THE ’671 PATENT SPECIFICATION. ...ccccccsccssssscsscscsessvsessessersaeeseeees 5
`C.
`THE FILE HISTORY ..scsssstesessssseesesneesesneeeesnees sssesususauaneesseacaneessceeses 7
`THE CHALLENGED CLAIMSwvssssssssssssssssssssssesssesessseceseessessssisssnssssnseeeree 7
`
`A.
`
`. THE “CONTROLLING” RECITATIONS ARE DISCLOSED BY
`YUN AND HARRIS viccscssssesssscsscscsscsssesecsesceveressavsnsasavsusavaneavansavsueneasears 7
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`IV.
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`THE “CONTROLLING” RECITATIONS ARE TAUGHT BY DYKES te 1]
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`AVAILABILITY FOR CROSS-EXAMINATION..csscccssssssssccscsresveseaseseave 13
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`Vi.
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`RIGHT TO SUPPLEMENT....ccccsscssssssscsesesscscscarersessescsvevessseessesvereessvesuestasees 13
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`VI.
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`JURAT ceccccsscssesececsesscsusecstssssusacsssssavssessesreavssesucsesusavansavsacasacarsavareavesenseavee al
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`
`
`Second Cohen Declaration
`U.S. Patent 7,092,671
`
`I, Herbert Cohen, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.|My nameis Herbert Cohen. I am the same Herbert Cohenwho 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 claimsofthe 671 patent are unpatentable.
`
`Il.
`
`PATENT OWNER’S PROPOSED CONSTRUCTION
`
`3.
`
`Patent Ownercontendsthat “controlling the telephone using a
`
`handheld computer to cause the telephoneto dial the specific telephone number.”
`
`as recited in claim 9, should be interpreted as a requirementthat 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 contendsthat claim 1 should be similarly interpreted. /d.,
`
`24,
`
`4,
`
`First, I note that Patent Owner’s position should be rejected because
`
`the Patent Ownerhas not explained what is meant by the claimed transfer and
`
`control being “separate and apart.” The construction does not addclarity to the
`
`claim, It is not clear how “separate and apart” should beinterpreted, or what
`
`1
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`
`
`Second Cohen Declaration
`U.S. 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 thatthere is no
`requirementfor a control commandto be issued “separate and apart” from
`
`transferring a telephone number. A person ofordinary skill in the art would have
`
`understood that these recitations, under a broadest reasonable interpretation, may
`
`indeed be performed by signals or portions of a signal that are not necessarily
`
`“separate and apart”to effectuate both the claimed transfer and control.
`
`5.
`
`Whenthe 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.” ' For
`example, commondefinitions of “separate” are “to set or keep apart; disunite” and
`“existing as an independent entity.” EX1023, American Heritage College
`Dictionary, Third Edition (1993), 1242, Commondefinitions of “apa: ” are “away
`
`from another or others” and “in or into parts or pieces.” Jd., 62. Thus, one of
`
`'T understand that under the broadest reasonable interpretation standard, claim
`
`terms are given their broadest reasonable interpretation consistent with the
`
`specification. I understand that underthe Phillips standard, claim termsare given
`
`their ordinary and customary meaning, which is the meaning that the terms would
`
`have to a person ofordinary skill in the art in question at the time of the invention.
`
`
`
`Second Cohen Declaration
`U.S. 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 claimed transfer and control
`
`necessarily being separate and apart.
`
`I have not found anythingin the disclosure of
`
`the ’671 patent that would require such features or that explains how suchfeatures
`would be implemented. Nor have I seen any evidence provided by Patent Owner
`that would require such a narrow interpretation ofthe transfer and control
`
`limitations. ?
`
`6.
`
`The Patent Owner’s construction should also be rejected becauseit is
`
`not supported by the claim limitations, specification,orfile history. The Patent
`
`Ownerhas not shown why its narrow claim construction should be adopted.
`
`Moreover, I note that even if the Patent Owner’s construction were adopted, the.
`
`priorart 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 intendedto also refer to the limitations in claim 9 requiring “transferring” and
`
`“controlling.”
`
`
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`Second Cohen Declaration
`U.S. Patent 7,092,671
`
`7.
`
`The transfer and control limitations do not lend themselvesto 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 ina 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 Owneris interpreting “separate and apart” in a different manner, I have
`
`not seen any explanation or support of such an interpretation presented by Patent
`
`Owner.
`
`Claim 1 recites, in part: “... wherein the handheld computersystem is |
`8.
`operable to transfer the specific telephone numberto the telephone using a wireless
`
`communication, and wherein the handheld computer system is configured to
`control the telephonevia the wireless communication such that the telephonedials
`
`the specific telephone number.” U.S, Patent 7,092,671 (EX1001), claim 1.
`
`9,
`
`Claim 9 recites, in part: “...c) transferring the specific telephone
`
`numberfrom 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.” EX1001,
`
`claim 9,
`
`10.
`
`Thus, the claims provide no indication that the “transfer” and —
`
`:
`
`“control” limitations must somehow be(1) separated and (2) apart, as Patent
`
`4
`
`
`
`Second Cohen Declaration
`U.S, Patent 7,092,671
`
`Ownercontents. See POR, 25. In my opinion, a person ofordinary 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 performedbya single signal that includes both a telephone
`
`number(whichis 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).
`a a |
`11.
`IT understand that the Patent Owneris 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 thattheprior 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 thepriorart is being
`
`asserted, because the prior art discloses to provide both transfer and control as
`claimed.
`
`B.
`
`THE ’671 PATENT SPECIFICATION
`
`12.
`
`In myopinion,the specification does not require that the claimed
`
`“transfer” and “control” be separate and apart. The specification notes that “[t]he
`
`PID is configured to control the telephone via the wireless communications such
`
`that the telephone dials a telephone numberstored on the PID” and “[t]he present
`
`5
`
`
`
`Second Cohen Declaration
`USS.Patent 7,092,671
`invention further provides a solution which enablesa user’s PIR to seamlessly
`interact with the user’s. telephone to dial members andestablish phone calls, ee
`
`EX1001, 2:45-48, 4:17-32.
`
`I do not see any requirementfor the claimed “transfer”
`
`~ and “control”to be separate and apart based on theseportionsofthe specification.
`
`The specification further explains that PID 12 communicates a telephone number
`
`to telephone 14 and controls the telephone so the numberis dialed. /d., 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 Ownerrelies on “the conjunctive ‘and’ to
`distinguish between transmitting a telephone numberand controlling the
`telephone,” contending that “wireless link 20, _communicatefs] the desired
`telephone number, and 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 disclosesthat its wireless infrared signal
`
`communicates a “telephone number” and an “electronic dial request,” and that the
`
`request controls a telephoneby causing it to automatically dial the telephone
`
`number. Yun, 4:11-16, 54-59, 5:8-15 (EX1002).
`
`In my opinion, a POSA would have understood that the claimed
`14.
`“transfer” and “control” functions provided by the handheld computer, when read
`
`in view of the ’671 patent specification, do not require low level details about how
`
`6
`
`
`
`Second Cohen Declaration
`U.S. Patent 7,092,671
`
`commandsor data are transmitted, e.g., whether they are separate and apart.
`
`In -
`
`view ofthe ’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
`
`In my opinion,the file history does not support Patent Owner’s
`15.
`proposed construction. During prosecution, the applicant stated that: “As shown in
`blocks 805 and 806 ofFigure 8...thephone numberto bedialedis transferred
`before the receiving wireless telephoneis controlled or instructed to dial the
`
`telephone number. Accordingly, Claim 19 recites the data exchange and control
`elements as separate limitations.” EX1015, 8.
`I understandthis section ofthefile
`history as explaining that in order to control by dialing a particular phone number,
`the number must be known.
`-
`
`Il. THE CHALLENGED CLAIMS
`
`16.
`
`Regardless of whether Patent Owner’s construction is adopted ornot,
`
`it is my opinion that claims 1-16 are rendered invalid by the priorart.
`
`A.
`
`THE “CONTROLLING” RECITATIONS ARE DISCLOSED> BY
`
`YUN AND HARRIS
`
`17.|Theprimary 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
`USS. Patent 7,092,671
`4:11-20 (EX1002); 7d.at 3:51-57 (BX1002), Data provided from control unit 130
`is converted by optical transmission unit 138 into the infrared ray signal. Id.,4:11-
`
`16. Theinfrared 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 numberincluded in the infrared
`signal. Yun, 4:41-59 (EX1002); 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.” Jd, 4:25-31 (EX1002).
`18.
`Inote that PatentOwner appears toconcede that “control” is being
`
`providedto dial the numberbut contendsthat this control is provided by “control
`unit 110”in the telephone of Yun. POR, 32. Patent Owner appears to argue that
`
`since componentsof the telephoneassist with the call, the telephone of Yunis
`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).
`also note that Patent Owner’s characterization that Yun’s“dial
`19,
`request”is a “couplet that is mentioned in passing only a few timesin that
`
`8
`
`
`
`Second Cohen Declaration
`USS. 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 ofthe reference that is “mentioned in
`
`passing.” It is described throughoutthe referenceas.a part of the infrared signal
`transmitted from Yun’s pocketbook to a telephone system to control the telephone
`system ofYun. See, e.g., Yun, 4:11-16, 24-31, 41-50, 51-54, 55-59, FIG. 3
`(EX1002).
`|
`|
`20.
`Patent Ownerfurther points to the “on hook” and “offhook”
`functionality ofYun. POR, 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 numberreceived from the electronicpocketbook after receipt of an
`
`electronic dial request in an off-hook state, and automatically dialing the analyzed
`telephone number contained in the infrared ray signal.” 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 Grounds3 and 4, also discloses the claimed
`
`“control.” Harris discloses that when a userselects an icon or spot on a PDA
`
`9
`
`
`
` | i '
`
`i
`
`i | iI
`
`-Second Cohen Declaration
`U.S. 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 overthe
`
`wireless network. Harris, 1:47-53, 1:66—2:6, 3:33-35 (EX1005). The information
`sent via the wireless network commandsthe telephoneto dial the telephone
`number, Id. at 1:50-51. See also 1:58-60, 2:43-47, 3:33-35 (EX1005). This
`disclosure shows how the PDAin Harris “control[s] the telephone via the wireless
`
`communication such that the telephonedials 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 mannerof -
`
`implementing “control” in computer systems. For example, standardization
`documents regarding data communication over telephone networks routinely
`
`referredto “requests” and “commands”as providing control. See, e.g.,
`_ International Telecommunication Union (ITU), ITU-T Telecommunication
`Standardization Sector ofITU, V.250 (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 commandsetfor 3GPP
`
`User Equipment (UE) (3G TS 27.007 version 3.1.0) (1999-07), 8, 13-24, 36, 37,
`
`10
`
`
`
`Second Cohen Declaration
`U.S. Patent 7,092,671
`
`(EX1025) (describing a “commandprofile” used for control, and “commands” and
`
`“requests” that provide control). Thus, one of ordinary skill would have
`
`understoodthat 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 ofthe claimsarealso 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, e.g., Petition, 20-21, 33, 49, 63-64; EX1007, 9953, 99, 156, 208..
`
`|
`
`IV.
`
`THE “CONTROLLING” RECITATIONS ARE TAUGHT BY DYKES
`24.
`Patent Owneris incorrectin its contention that Dykes allegedly “only
`sends its commandsover 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.
`
`Dykesis 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
`
`
`
`Second Cohen Declaration
`U.S. 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); /d. at 16:62—
`17:19 (EX1004), Whenthe software issues the dial command, a modem in the
`
`computer“first directs the cellular phone to receive the numbers”ofthe telephone
`
`numberspecified by the dial command and“instructs the cellular phoneto store
`
`these numbers.” Dykes, 3:44—-56 (EX1004). After the phone numberto be dialed
`
`has been transmitted to the cellular phone, the modem “then sends a SEND
`commandto the cellular phone,” which “instructs the cellular phone to dial the
`
`previously entered number.” Dykes, 3:56—-61 (EX1004); Zd. at 9:30-34, 10:43-48,
`
`10:56-62, 11:9-13, 11:65-12:5 (EX1004). Dykes also discloses that different
`
`commandscanbesentto the cellular phonefor a variety ofother functions, such as
`storing a phone numberin a particularmemory location in the cellular phone and
`dialing a phone numberstored in a particular memory locationin the cellular
`
`phone. Dykes, 13:57-14:10 (EX1004); Id. at4:14~33, 13:5-56 (EX1004).
`27.
`The issues ofwhether Dykes explicitly refers to wireless
`
`communication is not at issue. Dykesis not relied on for this feature. The petition
`
`and my previous declaration clearly explained how the teachings of Dykes apply to
`
`12
`
`
`
`Second Cohen Declaration
`U.S. Patent 7,092,671
`
`the claims, as well as motivations to combine. See, e.g., Petition, 21-26, 33, 50—
`
`55, 63-64; EX1007, 9955-62, 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,
`
`TT reserve the right to supplement my opinionsin the future to respond
`
`to any arguments that the Patent Ownerraises andto take into account new
`
`information as it becomesavailable to me.
`
`VU.
`
`JURAT
`
`30.
`
`I declare that all statements made herein of my own knowledgeare
`
`true and that all statements made on information andbeliefare believed to be true;
`and further that these statements were made with the knowledge that willful false
`
`statements and thelike so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`13
`
`
`
`Dated: December tl 2018
`
`Second Cohen Declaration
`U.S. Patent 7,092,671
`
`N gbaGl—§
`
`Herbert Cohen.
`
`
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