Trials@uspto.gov
`571-272-7822
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`Paper No. 7
`Date: June 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00282
`Patent 7,092,671 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`571-272-7822
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`Paper No. 7
`Date: June 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00282
`Patent 7,092,671 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`
`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–7 and 9–15 of U.S. Patent No. 7,092,671 B2,
`issued on August 15, 2006 (Ex. 1001, “the ’671 patent”), pursuant to
`35 U.S.C. §§ 311–319. Patent Owner, Uniloc USA, Inc. and Uniloc
`Luxembourg, S.A., filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`Upon consideration of the parties’ briefing and supporting evidence,
`we determine that Petitioner has shown a reasonable likelihood of prevailing
`in its contention that at least one challenged claim is unpatentable.
`Accordingly, we grant Petitioner’s request and institute inter partes review
`of all challenged claims: 1–7 and 9–15.
`
`A. Related Matters
`Petitioner and Patent Owner identify several related litigations in the
`Eastern District of Texas involving the ʼ671 patent. Pet. 1; Paper 4, 2.
`Another Petitioner has also requested inter partes review of the ’671
`patent—IPR2018-00199.
`
`A. The ’671 Patent
`The ’671 patent is directed to a “method and system for wirelessly
`autodialing a telephone number from a record stored on a personal
`information device.” Ex. 1001, [54]. According to the ’671 patent, at the
`time of filing, personal information devices (“PIDs”) and electronic
`organizers were in widespread use. Id. at 1:35–37. The ’671 patent
`describes these devices as “physically smaller,” having “more limited
`hardware and data processing capabilities” than conventional computers, and
`including “a screen and data processor,” “substantial electronic memory,”
`
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`IPR2018-00282
`Patent 7,092,671 B2
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`and “a substantial variety of applications,” relating to, for example, contact
`information made up of addresses and telephone numbers. Id. at 1:14–33.
`In addition to PIDs, the ’671 patent describes cellphones as widely used
`handheld digital devices similar to PIDs, but with substantially fewer
`applications, less available memory for storage, and a limited capacity for
`data entry. Id. at 1:38–53.
`Because of these differences between PIDs and cellphones, the ’671
`patent observes that PIDs, and not cellphones, are used to store contact
`information. Id. at 1:54–63. This leads to a requirement for users to find
`contact numbers on their PID and then manually dial those numbers on the
`cellphone. Id. at 1:58–2:10. Thus, the ’671 patent identifies a need for “a
`method whereby a user’s handheld PID can automatically dial a telephone
`number stored in its memory” such that the user need not access controls of
`a telephone. Id. at 2:11–22.
`To solve this problem, the ’671 patent describes using the wireless
`ports of the telephone and the PID to link the two devices using a standard
`communication protocol, such as short-range radio frequency (“RF”) over
`Bluetooth or infrared signals (“IR”) over the Infrared Data Association
`(“IrDA”) specification. Id. at 4:40–5:27, 6:35–57. The ’671 patent
`describes a method in which the user chooses a phone number from the
`memory of the PID, using the appropriate application, and indicates to the
`PID that the chosen number should be dialed by a cellphone. Id. at 8:10–17.
`In response, the PID application accesses the cellphone, transmits the
`desired telephone number, and “control[s] [the cellphone] to dial the number
`and establish[] the telephone call” in a manner that is seamless and “without
`requiring any intervening steps or actions by the user” or involving direct
`
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`IPR2018-00282
`Patent 7,092,671 B2
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`interaction with the cellphone. Id. at 8:17–25. Figure 8, reproduced below,
`shows a flowchart of the steps in one embodiment of this autodialing
`process. Id. at 9:39–41.
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`IPR2018-00282
`Patent 7,092,671 B2
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`
`The flow chart of Figure 8, above, begins with step 801—the user
`accessing the graphical user interface (“GUI”) of a PID to initiate wireless
`autodialing of a cellphone. Id. at 9:46–47. The user chooses the desired
`contact from a list displayed by the PID in step 802, verifies the correct
`phone number in step 803, and confirms that the number should be
`autodialed by the cellphone in step 804. Id. at 9:55–59. The PID, in step
`805, transfers the chosen number to the cellphone over the wireless
`communication link. Id. at 9:62–64. Finally, in step 806, the PID “controls
`telephone 14 to dial the specific number and complete the telephone
`communication.” Id. at 9:65–67.
`
`B. Illustrative Claim
`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
`illustrative of the claims at issue and is reproduced below with added
`indentations and spacing for clarity:
`1. An automated telephone dialing system, comprising:
`a telephone having a wireless port for short range
`wireless data transfer; and
`a handheld computer system having a wireless port for
`communication with the wireless port on the telephone,
`wherein a specific telephone number is selectable
`from a list displayed on the handheld computer system
`and
`
`wherein the handheld computer system is operable
`to transfer the specific telephone number to the telephone
`using a wireless communication, and
`is
`system
`wherein
`the handheld computer
`configured to control the telephone via the wireless
`communication such that the telephone dials the specific
`telephone number.
`
`
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`5
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`IPR2018-00282
`Patent 7,092,671 B2
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`Ex. 1001, 10:55–67 (emphasis added).
`
`C. Grounds Asserted
`Petitioner challenges the patentability of the challenged claims on the
`
`following grounds (Pet. 7):
`References
`
`Yun1 and Kikinis2
`Yun, Kikinis, and Inoue3
`Harris4 and Kikinis
`
`Challenged Claims
`1–6 and 9–14
`7 and 15
`1–7 and 9–15
`
`Basis
`§ 103
`
`§ 103
`§ 103
`
`Petitioner supports its position with the testimony of Nenad
`Medvidović, PhD. Ex. 1003.5
`
`II. ANALYSIS
`Claim Construction
`A.
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b). We presume a claim term carries its plain meaning,
`
`
`1 U.S. Patent No. 6,084,949 (issued Jul. 4, 2000). Ex. 1005 (“Yun”).
`2 U.S. Patent No. 5,790,644 (issued Aug. 4, 1998). EX. 1006 (“Kikinis”).
`3 U.S. Patent No. 7,080,154 B1 (issued Jul. 18, 2006). Ex. 1007 (“Inoue”).
`4 U.S. Patent No. 6,738,643 B1 (issued Jul. 2, 2002). Ex. 1012 (“Harris”).
`5 Exhibit 1003 contains numbered paragraphs as well as two different sets of
`page numberings—one in the bottom middle of each page and the other on
`the right of the footer of each page. See Ex. 1003. It appears that Petitioner
`uses paragraph numbers when referring to standard paragraphs (see e.g., Pet.
`16), but refers, instead, to the page numbers contained in the footer when
`referencing to paragraphs containing claims charts spanning several pages
`(see e.g., Pet. 59). In this Decision we refer to Exhibit 1003 using this same
`method.
`
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`IPR2018-00282
`Patent 7,092,671 B2
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`which is the meaning customarily used by those of skill in the relevant art at
`the time of the invention. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016).
`Petitioner proposes we construe the term “wireless port” as including
`“some combination of wireless receiver and/or transmitter.” Pet. 8–9.
`Patent Owner does not provide a competing construction, instead asserting
`that “the Petition fails to show any of the challenged claims are unpatentable
`regardless of Petitioner’s proposed construction” of the term. Prelim. Resp.
`3.
`
`We need not address the construction of the term “wireless port” to
`resolve the issues related to institution. Thus, we conclude, for purposes of
`this Decision, that no claim terms of the ’671 patent require express
`construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim
`terms that “are in controversy” need to be construed and “only to the extent
`necessary to resolve the controversy”).
`B. Scope of the Challenged Claims
`Although the dispute here does not implicate the construction of any
`particular claim term, the parties appear to disagree over the scope of the
`challenged claims. Specifically, Patent Owner implies that the limitation
`“wherein the handheld computer is configured to control the telephone via
`the wireless communication such that the telephone dials the specific
`telephone number” (“the control limitation”) requires a specific instruction
`or command that asserts such control, separate and apart from the
`transmitting of the selected phone number. See Prelim. Resp. 10 (stating
`
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`IPR2018-00282
`Patent 7,092,671 B2
`
`that the control limitation is not disclosed by Harris because “there is no
`disclosure of instructions or commands”). Petitioner appears to disagree that
`the scope of the claims is so limited. See, e.g., Pet. 63 (asserting, without
`more detail, that Harris discloses the control limitation by stating that the
`PDA “commands dialing the displayed number.”)
`Based on the lack of detailed discussion of this issue in the current
`record, for the purposes of this Decision, we read the claim broadly, such
`that a specific command, separate from the transmission of the selected
`number, is not required to satisfy the control limitation. We note that this is
`simply a preliminary interpretation of the claim scope, not a final
`determination of claim construction. The current state of the record relating
`to the scope of the control limitation is incomplete, and we encourage the
`parties to address this issue in post-institution briefing.
`C. Obviousness Grounds Based on Yun
`Petitioner contends that claims 1–6 and 9–14 would have been
`obvious over Yun and Kikinis, and that claims 7 and 15 would have been
`obvious over Yun, Kikinis, and Inoue. Pet. 10–50. We are persuaded, based
`on this record, that Petitioner has demonstrated a reasonable likelihood of
`prevailing on this challenge.
`1. Overview of Yun
`Yun discloses a “telephone system with automatic dialing using
`infrared transmission from [an] electronic pocket book.” Ex. 1005, [54].
`Yun’s electronic pocket book is a “conventional” device “organized to
`feature a visual display, computer linking and a host of communication
`options and expandability, including touch screen display, word processor,
`calendar, scheduler, telephone directory and the like.” Id. at 1:20–31. After
`
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`IPR2018-00282
`Patent 7,092,671 B2
`
`user selection of a phone number using the electronic pocketbook, Yun
`describes the telephone as “initially analyzing the telephone number
`contained in the infrared ray signal received from the electronic pocketbook
`after receipt of an electronic dial request in an off-hook state, and
`automatically dialing the analyzed telephone number contained in the
`infrared ray signal.” Id. at 4:24–31.
`2. Analysis
`Petitioner relies on Yun as disclosing all the limitations recited by the
`challenged independent claims, except Petitioner points to Kikinis as
`disclosing “wherein a specific telephone number is selectable from a list
`displayed on the handheld computer system.” Pet. 10–50. Specifically,
`Petitioner asserts that Yun discloses displaying the name and number of
`stored contacts, and that Kikinis discloses displaying, for user selection, a
`plurality of stored telephone numbers. Id. at 23 (citing Ex. 1005, 2:29–41;
`Ex. 1006, Fig. 2C; Ex. 1003, 43–44). In addition, Petitioner explains that a
`person of ordinary skill would have included Kikinis’s technique of
`displaying contacts in a selectable list with Yun’s display of contact
`information in order to improve efficiency and usability. Id. at 14–17. As
`support for this reasoning, Petitioner points to Kikinis’s own disclosure that
`“[a]n important feature of the embodiment shown by FIG. 1 is user interface
`display 16, which provides a flexible interface to easily operate and edit
`variable information for the dialer.” Id. at 16 (quoting Ex. 1006, 4:21–25;
`Ex. 1003, ¶ 78).
`Patent Owner argues that Petitioner does not sufficiently show that
`Yun discloses the control limitation. Prelim. Resp. 6–8. According to
`Patent Owner, regarding this limitation, “[t]he Petition expressly concedes
`
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`IPR2018-00282
`Patent 7,092,671 B2
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`that Yun fails to disclose” the control limitation by asserting that “Yun’s
`electronic pocketbook with a control unit, work[s] in conjunction with the
`telephone’s control unit and dial unit, to automatically dial the telephone
`number transferred via infrared signal.” Id. at 8. Patent Owner asserts that
`Yun only discloses that the electronic pocket book transmits the phone
`number, but has no further role, and that the telephone system itself, through
`its control unit 110 and dial unit 116, actually dials the transmitted number.
`Id. at 7–8.
`As discussed above, in Section II.B, the current state of the record
`leads us, for purposes of this Decision, to read the claims more broadly than
`Patent Owner’s argument implies. In keeping with this broad reading of the
`challenged claims, we note that Yun states that the telephone analyzes the
`number transmitted from the electronic pocket book “after receipt of an
`electronic dial request in an off-hook state.” Ex. 1005, 4:28–29. Moreover,
`as pointed to by Dr. Medvidović (Ex. 1003, 41), Yun further explains that
`“[t]he optical transmission unit 138 converts data information provided from
`the control unit 130 into an infrared ray signal containing an electronic dial
`request and telephone number of an interested person selected for an
`automatic dialing function.” Ex. 1005, 4:11–20 (emphasis added). We are
`persuaded, on this record, that this language at least suggests that the
`electronic pocket book “controls” the telephone’s autodialing by sending a
`dial request in addition to the telephone number.
`Accordingly, we determine Petitioner has shown a reasonable
`likelihood of prevailing with respect to its challenge to claims 1–6 and 9–14
`as obvious over Yun and Kikinis, as well as its challenge to claims 7 and 15
`
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`IPR2018-00282
`Patent 7,092,671 B2
`
`as obvious over Yun, Kikinis, and Inoue, for which Patent Owner does not
`provide any separate arguments.
`
`D. Obviousness Grounds Based on Harris
`Petitioner contends claims 1–7 and 9–15 would have been obvious
`over the combination of Harris and Kikinis. Pet. 50–78. We are persuaded,
`based on this record, that Petitioner has demonstrated a reasonable
`likelihood of prevailing on this challenge.
`3. Overview of Harris
`Harris discloses a PDA that can automatically dial a telephone. Ex.
`1012, Abstract, 1:41–46. Harris’s PDA “stores a plurality of contacts” and
`displays “the person’s name and phone number as conventional” with “an
`icon or spot on the screen 112, which commands dialing the displayed
`number” when selected by a user. Id. at 1:47–53.
`4. Analysis
`Petitioner relies on Harris as disclosing all the limitations recited by
`the challenged independent claims, except Petitioner points to Kikinis as
`disclosing “wherein a specific telephone number is selectable from a list
`displayed on the handheld computer system.” Pet. 50–78. Specifically,
`Petitioner asserts that Harris discloses displaying the name and number of
`stored contacts and that Kikinis discloses a list of those numbers displayed
`on a handheld computer system. Id. at 59 (citing Ex. 1012, 1:46–49; Ex.
`1006, Fig. 2C; Ex. 1003, 84–85). In addition, Petitioner explains that a
`person of ordinary skill would have included Kikinis’s technique of
`displaying contacts in a selectable list with Harris’s display of the contacts in
`order to improve efficiency and usability. Id. at 53–54. As support for this
`
`
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`IPR2018-00282
`Patent 7,092,671 B2
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`reasoning, Petitioner points to Kikinis’s own disclosure that “[a]n important
`feature of the embodiment shown by FIG. 1 is user interface display 16,
`which provides a flexible interface to easily operate and edit variable
`information for the dialer.” Id. at 53 (quoting Ex. 1006, 4:21–25; Ex. 1003,
`97).
`
`Patent Owner argues that Petitioner does not sufficiently show that
`Harris discloses the control limitation. Prelim. Resp. 9–10. According to
`Patent Owner, regarding this limitation “[t]he Petition provides no
`substantive analysis, and Harris is equally lacking.” Id. at 9. Patent Owner
`asserts that “[t]here is no disclosure in Harris that in ‘automatically’ dialing,
`it is the ‘PDA’ that is controlling the cell phone . . . [A]ll that is disclosed is
`that the cell phone receives ‘bluetooth information,’ there is no disclosure of
`instructions or commands.” Id. at 10. As discussed above, in Section II.B,
`the current state of the record leads us, at this time, to read the claims more
`broadly than Patent Owner’s argument implies. Thus, for purposes of this
`Decision, we are persuaded that Harris’s disclosure of a PDA that includes
`an icon on its display “which commands dialing the displayed number” is
`enough to satisfy the control limitation.
`Accordingly, we determine Petitioner has shown a reasonable
`likelihood of prevailing with respect to its challenge to claims 1–7 and 9–15
`as obvious over Harris and Kikinis.
`
`III. ORDER
`
`It is, therefore,
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of the ʼ671 patent is hereby instituted on the following grounds:
`A. Obviousness of claims 1–6 and 9–14 over Yun and Kikinis;
`12
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`IPR2018-00282
`Patent 7,092,671 B2
`
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`B. Obviousness of claims 7 and 15 over Yun, Kikinis, and Inoue;
`C. Obviousness of claims 1–7 and 9–15 over Harris and Kikinis; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this decision.
`
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`13
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`IPR2018-00282
`Patent 7,092,671 B2
`
`PETITIONER:
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Philip W. Woo
`philip.woo.ipr@haynesboone.com
`
`
`PATENT OWNER:
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Sean Burdick
`sean.burdick@unilocusa.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`James Etheridge
`jim@etheridgelaw.com
`
`
`Jeffrey Huang
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`
`
`
`
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`
`14
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