UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A. 1
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`Patent Owner
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`IPR2018-00282
`PATENT 7,092,671
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A. 1
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`Patent Owner
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`IPR2018-00282
`PATENT 7,092,671
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`IPR2018-00282
`U.S. Patent 7,092,671
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`Table of Contents
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`B.
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`INTRODUCTION .................................................................................... 1
`THE ’671 PATENT .................................................................................. 1
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 2
`PETITIONER DOES NOT PROVE OBVIOSNESS OF ANY
`CHALLENGED CLAIM .......................................................................... 4
`A.
`Claim Construction ......................................................................... 4
`1.
`The “controlling” limitations ............................................... 4
`1.
`“wireless port” .................................................................... 10
`No proof of obviousness for the “controlling” claim
`language ........................................................................................ 10
`1.
`Yun’s “electronic pocketbook” fails to disclose
`and teaches away from the “controlling”
`limitations ........................................................................... 11
`Harris’ disclosure of a “PDA” transmitting a
`phone number does not render obvious the
`“controlling” claim language ............................................. 18
`APPLE FAILED TO NAME ALL REAL PARTIES IN
`INTEREST .............................................................................................. 22
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 25
`CONCLUSION ....................................................................................... 26
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`2.
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`
`I.
`II.
`III.
`IV.
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`V.
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`VI.
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`VII.
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`ii
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`IPR2018-00282
`U.S. Patent 7,092,671
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Response to Petition IPR2018-00282 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 7,092,671 (“the ’671 patent” or “EX1001”) filed by
`Apple, Inc. (“Petitioner”). The Petition should be denied as procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’671 PATENT
`The ’671 patent is titled “Method and System for Wirelessly Autodialing a
`Telephone Number From a Record Stored On a Personal Information Device.” The
`ʼ671 patent issued August 15, 2006, from U.S. Patent Application No. 09/727,727
`filed November 30, 2000 and originally assigned 3Com Corporation (3Com).
`The inventors of the ’671 patent observed that while cellphones shared many
`attributes with personal information devices, at the time of the invention, cellphones
`typically had substantially fewer applications and users found them much more
`difficult to use when entering data such as names and phone numbers than personal
`information devices. EX1001, 1:46‒53. And because of those limitations at the time,
`cellphones were more typically used just for communication rather than personal
`information management. Id., 1:54‒57. The inventors at 3Com came up with an
`innovative solution which allowed the applications executed on a user’s personal
`information device to access the user’s telephone and automatically dial numbers
`stored in the application program. Id. 2:11‒22.
`According to the preferred embodiment disclosed in the ’671 Patent, the
`telephone is equipped with a wireless port for short-range wireless data transfer.
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`Similarly, the personal information device is equipped with a wireless port for short-
`range wireless data transfer. Id., 2:41‒45. The personal information device
`establishes a wireless communication with the telephone. Id. The personal
`information device is configured to control the telephone via the wireless
`communications such that the telephone dials a telephone number stored on the
`personal information device. Id., 2:45‒48.
`The telephone number can be dialed in response to the user interacting with
`application executing on the personal information device. Id., 2:48‒54. The
`application can be a contact management or address management program. The user
`can interact with the program, select a contact, address, phone number, or the like,
`through a user interface of the personal information device, and have this number
`automatically dialed by the telephone. In this manner, the user’s personal
`information device seamlessly interacts with the user’s telephone to dial numbers
`and establish phone calls, without requiring the user to access controls of the
`telephone. Id.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`To prevail on its theory of obviousness, Petitioner has the burden to prove that
`“the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject
`matter pertains.” 35 U.S.C. § 103. Consistent with that statutory framework, and as
`reiterated by the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S.
`398 (2007) (“KSR”), the factual inquiries for determining obviousness under 35
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`U.S.C. § 103 are enunciated in Graham v. John Deere Co., 383 U.S. 1 (1966) as
`follows:
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`(A) Determining the scope and content of the prior art;
`(B) Ascertaining the differences between the claimed invention and
`the prior art; and
`(C) Resolving the level of ordinary skill in the pertinent art.
`See also MPEP § 2141 (quoting the same). Rule 42.22(a)(2) states that the petition
`itself must contain a “full statement of the reasons for the relief requested, including
`a detailed explanation of the significance of the evidence . . . .”
`Under this controlling authority, the Petition does not set forth the requisite
`analysis necessary to prove obviousness at least because (among other deficiencies)
`it fails to provide or expressly rely upon any definition for the level of ordinary skill
`in the pertinent art. Further, the Petition fails to explain how its analysis conforms to
`that required perspective (i.e., a perspective that the Petition itself fails to define).
`This fatal deficiency is not something that the Board can cure sua sponte. The
`Federal Circuit has repeatedly admonished the Board against adopting arguments
`not raised in the Petition itself. See, e.g., Rovalma, S.A. v. Bohler-Edelstahl GmbH
`& Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017) (citing In re Magnum Oil Tools
`Int’l, Ltd, 829 F.3d 1364, 1377, 1380 (Fed. Cir. 2016) and SAS Inst., Inc. v.
`ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). This is true even
`where the argument “‘could have been included in a properly-drafted petition.’”
`Rovalma, 856 F.3d at 1027 (quoting and discussing Magnum Oil, 928 F.3d at 1377).
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`IPR2018-00282
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`US. Patent 7,092,671
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`IV.
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`PETITIONER DOES NOT PROVE OBVIOSNESS OF ANY
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`CHALLENGED CLAINI
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C .F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. there is a reasonable likelihood that at least one of the claims challenged .
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`.
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`. is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The Petition raises the following obviousness challenges:
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`1—6 and 9—14
`- 7 and 15
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`Ylm2 and Kikinis3
`Yun and Kikinis and in further View of[none4
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`-A1_7and9—15
`Harris5andKikinis
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`Claim Construction
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`1.
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`The “controlling” limitations
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`In its Institution Decision the Board correctly observed that the parties dispute
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`whether the claimed step “controlling the telephone using a handheld computer to
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`cause the telephone to dial the specific telephone number” (as recited in claim 9)
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`should be interpreted as a requirement that is separate and apart from the distinct
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`step “transferring the specific telephone number from the handheld computer system
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`to the telephone using a wireless communication-” See Paper 7 at 7—8 (citing Prelim.
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`Resp. 10 and Pet. 63). The Board offered a “preliminary interpretation” based on
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`2 EX1005, US. Patent 6,084,949 (“Yun”).
`3 EX1006, US. Patent 5,790,644 (“Kikinis”).
`4 EX1007, US. Patent 7,080,154 (“Inoue”).
`5 EX1012, US. Patent 6,738,643 (“Harris”).
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`what the Board referred to as “the lack of detailed discussion on this issue in the
`current record” that “a specific command, separate from the transmission of the
`selected number, is not required to satisfy the control limitation.” Id. at 8.
`Recognizing that the “current state of the record relating to the scope of the
`control limitation is incomplete,” the Board “encourage[d] the parties to address this
`issue in post-institution briefing.” Id. Given Petitioner has the burden of proof here,
`the Petition should be denied in its entirety as failing to establish that the
`“controlling” step requires no controlling command from the handheld computer
`that is separate and apart from the distinct step of “transferring the specific telephone
`number . . . .”
`This claim construction dispute is readily resolved by examining the explicit
`claim language recited in the challenged independent claims 1 and 9. For example,
`as shown by the excerpted and highlighted portion of claim 9 below, the claim
`language expressly recites the step of “d) controlling the telephone using the
`handheld computer system . . .” as a requirement separate and apart from the distinct
`step of “c) transferring the specific telephone number from the handheld computer
`system to the telephone using a wireless communication.”6
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` 6
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` Claim 1 similarly distinguishes as separate features of the claimed “handheld
`computer system” the recitation “transfer the specific telephone number to the
`telephone . . .” and the distinct and separate recitation “control the telephone via the
`wireless communication . . . .”
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`EX1001, 12:1‒6 (highlighting added).
`There can be no question, therefore, that the claimed “controlling” requires
`the handheld computer to issue a control command that is separate and apart from
`“transferring the specific telephone number” itself. To conclude otherwise would
`impermissibly conflate together what the claim language expressly distinguishes as
`separate steps, thereby rendering the “controlling” step superfluous. Digital-
`Vending Services Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed.
`Cir. 2012) (explaining that courts should construe “claim terms in light of the
`surrounding claim language, such that words in a claim are not rendered
`superfluous.”). In addition, a plain reading of the claim language confirms it is the
`separately-claimed “controlling” of the “handheld computer” itself (as opposed to
`merely transferring the telephone number) that must “cause the telephone to dial the
`specific telephone number.”
`While the explicit and unambiguous claim language is itself sufficient to
`resolve the dispute, it is also significant that this plain reading of the claim language
`reflects descriptions of preferred embodiments set forth in the specification of the
`’671 patent. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005)
`(en banc) (claims are to be “construed so as to be consistent with the specification,
`of which they are a part.”) (quoting Merck & Co. v. Tea Pharms. USA, Inc., 347
`F.3d 1367, 1371 (Fed. Cir. 2003)); Renishaw PLC v. Marposs Societa’ per Azioni,
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`158 F.3d 1243, 1250 (Fed. Cir. 1998) (“The construction that stays true to the claim
`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.”).
`In describing a preferred embodiment, for example, the ’671 patent
`specification uses the conjunctive “and” to distinguish between transmitting a
`telephone number and controlling the telephone: “The wireless link 20 enables an
`application executing on PID 12 to access telephone 14, communicate the desired
`telephone number, and control telephone 14 to dial the number . . . .” EX1001,
`8:17‒21 (emphasis and underlining added).
`The specification consistently confirms in other passages that the control
`necessary for a handheld device to cause a wireless-connected telephone to dial a
`specific number refers to something other than the transmitted telephone digits
`themselves. For example, as shown in the highlighted block quotation below, the
`specification elsewhere describes a “Personal Information Device” or “PID” that
`communicates control commands using a “control protocol” that is negotiated based
`at least in part on the type of telephone being controlled and whether the PID has
`interfaced with that telephone before:
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`EX1001, 9:7‒21 (highlighting added). As set forth in the block-quotation above, the
`PID must “load[] the controls of each device” such that if the PID had not interfaced
`with a specific telephone in the past, the PID “connects with the telephone 14 and
`negotiates and control protocol.” This description further confirms that the claimed
`“controlling” refers to commands that are distinct from merely “transferring the
`specific telephone number” itself. Phillips, 415 F.3d at 1316; Merck, 347 F.3d at
`1371; Renishaw, 158 F.3d at 1250.
`This interpretation is consistent with certain portions of the prosecution
`history that the Petition selectively ignores.7 For example, during prosecution the
`applicant emphasized the “configured to control” claim language as one of several
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` 7
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` It is telling that the instant Petition closely tracks the related petition (filed one
`week earlier in in IPR2018-00199), with the exception that the instant Petition omits
`certain facts identified in the related matter concerning the prosecution history. See
`Unified Patents v. Uniloc, IPR2018-00199, Petition (Paper 2) at 7‒9.
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`example points of distinction over the art of record. See, e.g., EX1002, p. 241.
`Applicant successfully argued, for example, that “the mere exchange of data” (e.g.,
`a telephone number) “is separate and distinct from one wireless station controlling
`another” in the particular manner claimed. Id. at 243.
`Citing the specification, the applicant further explained that “[a]s shown in
`blocks 805 and 806 of Figure 8 in the present application, the phone 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.” Id.
`The applicant also argued that certain art of record teaches away from the
`claimed “control” configuration at least because the transmitting station cannot
`“unilaterally control a receiving wireless station” and “force” it to receive
`information and dial a telephone number accordingly. Id. at 243‒44. Rather, the
`applicant characterized the cited art as disclosing that the receiving wireless station
`must execute a process (involving a locally entered “PIN-code”) that unilaterally
`determines whether or not it will receive and act upon communications from the
`transmitting station. Id.
`The above-cited portions of prosecution history (which the Petition ignores)
`confirm that the claimed “controlling” requires the handheld computer itself to issue
`the command, separate and apart from “transferring the specific telephone number”
`itself, that controls the telephone’s dialing of the transferred telephone number.
`For the foregoing reasons, the Petition should be denied as applying an
`unsupported and insupportable claim construction that fails to comprehend the
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`express distinction between the “controlling” and “transferring” steps. Mentor
`Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31)
`at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics
`Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying the petition as tainted by
`reliance on an incorrect claim construction); see also Paper 7 (Institution Decision)
`at 7‒8 (citing Prelim. Resp. 10 and Pet. 63 as offering differing claim
`interpretations).
`1.
` “wireless port”
`While the Petition purports to construe the term “wireless port”, in the
`Institution Decision, the Board found that the term required no construction; and the
`Board did not similarly encourage the parties to further address this limitation. See
`Paper 7 at 6‒7.
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`B. No proof of obviousness for the “controlling” claim language
`Among other deficiencies, the Petition fails to prove obviousness of the
`“controlling” claim language addressed in the claim construction discussion above.
`See §IV.A.1, supra. This deficiency arises, at least in part, from the failure in the
`Petition to recognize that the claimed “controlling of the telephone using the
`handheld computer” must be (1) separate and apart from the distinct step of
`“transferring the specific telephone number from the handheld computer system to
`the telephone using a wireless communication” and (2) must itself “cause the
`telephone to dial the specific telephone number.” See, e.g., EX1001, 12:1‒6 (claim
`9); id. at 10:64‒67 (claim 1).
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`The Petition does not offer claim-specific arguments for independent claim 9
`and, instead, it only references its arguments addressing independent claim 1. In
`addressing the “control” limitations of independent claim 1, the Petition presents
`two alternative theories that each rely on only a single reference: either Yun (Ground
`1) or Harris (Ground 3).8 The Petition fails to prove obviousness under either theory,
`as shown by the example deficiencies set forth below.
`1.
`
`Yun’s “electronic pocketbook” fails to disclose and teaches
`away from the “controlling” limitations
`The Petition argues that “Yun’s electronic pocketbook with a control unit,
`working in conjunction with the telephone’s control unit and dial unit, to
`automatically dial the telephone number transferred via infrared signal discloses.”
`Pet. 28. Petitioner’s reliance on the telephone’s control unit for the claimed
`“controlling” is inconsistent with the claim language. As detailed above in
`addressing claim construction (§IV.A.1), the claim language explicitly and
`unambiguously attributes the claimed “controlling” only to the handheld computer
`system and not to the expressly-distinguished telephone.
`Petitioner’s citations to Yun reveal clear distinctions between the claim
`language and the erroneous theory advanced in the Petition. Pet. 27 (citing EX1005
`
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` 8
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` While the instant Petition is largely duplicative of the related petition filed in
`IPR2018-00119 (which is itself evidence of coordination and privity between the
`petitioners), the instant Petition differs somewhat in that, in addressing the “control”
`limitation of claim 1, it opted not to offer additional and alternative arguments that
`rely on the Dykes reference in combination with either Yun or Harris.
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`at 3:13‒17 and 3:45‒51). The cited portions of Yun confirm that the telephone and
`the electronic pocketbook each has its own respective control unit (identified by
`reference nos. 110 and 130, respectively). Id.
`Yun states the telephone’s control unit 110 is purposefully designed for
`“controlling the overall operation of the telephone system.” EX1005, 3:18‒20
`(emphasis added). For example, Yun states that the telephone’s “dial unit 116 dials
`a telephone number under control of the [telephone’s] control unit 110.” Id.
`3:32‒33 (emphasis added); see also id. at 3:30‒31 (“. . . for performing a call under
`control of the control unit 110.”) (emphasis added); 5:13‒16 (“the [telephone’s]
`control unit 110 proceeds to control the dial unit 116 to automatically dial the
`telephone number”). Yun further states, for example, that it is the telephone’s
`control unit 110 that determines whether or not to make a phone call (based on a
`“off-hook” status of the telephone). Id. 4:36‒38. The specific “control” that Yun
`expressly attributes to the telephone’s control unit 110 cannot be attributed, instead,
`to the distinct control unit 130 of the electronic pocketbook.
`Yun further emphasizes the dedicated and distinct roles of control units 110
`and 130 by stating that the electronic pocketbook’s control unit 130, by intended
`design, only controls other components of the electronic pocketbook: “[c]ontrol unit
`130 controls overall functions of the electronic pocketbook.” Id. 3:32‒33 (emphasis
`added). This is evidently undisputed. See Pet. 27 (quoting the same). The Petition
`itself articulates no specific theory as to whether and how the electronic
`pocketbook’s control unit 130, which is purposefully designed only to control the
`functions of the electronic pocketbook itself, somehow also controls a distinct
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`telephone in the specific manner claimed. See id. at 26‒28. On the contrary, the
`Petition equivocates that the electronic pocketbook’s control unit 130 only “works
`in conjunction with” (i.e., does not control) the telephone’s control unit 110. Id. at
`27. That is not what the claim language recites. Thus, the theory set forth in the
`Petition is deficient on its face and should be denied.
`It is also significant that Yun expressly discloses that, for automatic dialing
`purposes, the only involvement of the electronic pocketbook is the transfer of a
`single infrared ray signal containing a telephone number. See, e.g., EX1005 at
`3:37‒42; 5:5‒16. This is readily distinguishable from the claim language which
`recites as two separate and distinct steps: “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.” Further, as
`detailed above, this claim language explicitly and unambiguously attributes the
`claimed “controlling” only to the handheld computer system and not to the
`expressly-distinguished telephone. See §IV.A.1, supra.
`In its Institution Decision, the Board offered certain citations—not relied
`upon in the Petition in addressing the “controlling” limitations—as allegedly
`suggesting the new argument “that the electronic pocket book ‘controls’ the
`telephone’s autodialing by sending a dial request in addition to the telephone
`number.” Compare Paper 7 at 8 (citing EX1005, 4:11‒20 and EX1003 ¶ 41) with
`Pet. 26‒28. This new argument should not be considered part of the record because
`the Petition itself does not raise the same argument and evidence when addressing
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`the “controlling” claim language. In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364,
`1381 (Fed. Cir. 2016) (“[W]e find no support for the PTO’s position that the Board
`is free to adopt arguments on behalf of petitioners that could have been, but were
`not, raised by the petitioner during an IPR.”).
`Indeed, the section of the Petition addressing the “controlling” claim language
`makes no mention of the so-called “dial request” in Yun. The record reveals this
`omission was intentional. That section of the Petition offers a boldfaced and
`italicized quotation of Yun (copied below) that uses ellipses in place of the passing
`reference to a “dial request” in that passage.
`
`
`Pet. 28 (highlighting added).9 The Petition confirms, by offering a quotation that
`purposefully omits the passing reference to a “dial request,” that the “dial request”
`in Yun has no bearing on the argument advanced in the Petition. In addition,
`
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` 9
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` That Yun generally describes its “process” as “using the electronic playbook” does
`not mean that the dialing of the telephone number is under control of the electronic
`playbook itself. Rather, that statement must be understood in the context of Yun as
`a whole, which repeatedly discloses that the dialing is under the sole control of the
`telephone’s control unit 110. See, e.g., EX1005, 3:30‒33; 4:36‒38; 5:13‒16.
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`Petitioner opted not to cite and rely upon paragraph 41 of its declarant’s testimony
`(i.e., the paragraph cited by the Board as alleged support for this new “dial request”
`argument). The Board’s suggestion that the “dial request” argument is somehow
`part of the record is not consistent with what Petitioner chose to argue (and to not
`argue) in the Petition itself.
`Patent Owner should not be expected to rebut a new (and hence waived)
`argument raised sua sponte by the Board on behalf of the Petitioner, especially given
`that Patent Owner can only guess as to what Petitioner may untimely argue in its
`Reply in an attempt to adopt the Board’s argument as its own.10 See Magnum Oil,
`829 F.3d at 1381. Moreover, the Board suggested that this new argument relies upon
`what Patent Owner has shown to be an unreasonably broad interpretation of the
`“controlling” claim language. Paper 7 (Institution Decision) at 10 (“In keeping with
`this broad reading of the claims . . . .”); see also §IV.A.1, supra (explaining why
`such a reading is overly broad and untethered to the explicit claim language).
`Even if the Petition itself had raised the same argument and had provided the
`same citations when addressing the “controlling” claim language (and it did not),
`this argument would have been properly rejected as (1) reliant upon an unreasonably
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`10 Patent Owner expressly reserves the right to object to, and to move to strike, any
`attempt by Petition to modify its theory based on the new argument raised sua sponte
`by the Board. Nevertheless, in the event the Board is willing to allow Petition to
`advance this “dial request” theory for the first time in its Reply, Patent Owner
`respectfully requests the ability to respond to such a theory in a sur-reply, consistent
`with the Board’s Office Patent Trial Practice Guide, August 2018 Update.
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`broad claim construction (see §IV.A.1, supra) and (2) factually flawed at least
`because Yun does not state the “dial request” is itself the control command that
`“cause[s] the telephone to dial the specific telephone number,” as recited in claim 9.
`While Yun provides no detail concerning the “dial request” itself, a couplet
`that is mentioned in passing only a few times in that reference, it is significant that
`Yun refers to it as a “request” and not a command. This choice in wording reflects
`the disclosure in Yun that it is the telephone’s control unit 110 that controls the
`operations of the telephone. See, e.g., EX1005, 3:30‒33; 4:36‒38; 5:5‒16. Further,
`Yun states that the only portion of the received infrared ray signal that is provided
`by the telephone’s control unit 110 to the dial unit 116 is the telephone number itself.
`Id. 3:37‒42; 5:5‒16. To be clear, Yun does not state that the received “dial request”
`is itself a separate command that is also provided to the dial unit 116 for dialing
`purposes.
`It is also independently significant that Yun illustrates and describes, with
`reference to the “control flow chart” of Figure 3, that control unit 110 is specifically
`designed to ignore a received “dial request” while the handset unit 118 is not in an
`off-hook state. See id. at Fig. 3, step 310 and accompanying description. Yun
`unmistakably discloses, therefore, that it is the telephone’s control unit 110 that
`controls the telephone itself, including determining whether or not to make a
`requested phone call. Id.
`These characteristic features of the Yun system are similar to and cumulative
`with certain art successfully distinguished during prosecution. As detailed above,
`among other patentable distinctions, the applicant successfully argued certain art not
`
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`only fails to disclose, but also teaches away from the “controlling” claim language
`because that art discloses the transmitting station could not “force” the receiving
`station to dial; and, instead, the receiving station applies its own process to
`unilaterally determine whether or not it will receive and act upon communications
`from the transmitting station. See §IV.A.1, supra (citing EX1002, pp. 243‒44).
`Yun teaches away from the “controlling” limitations for analogous reasons.
`Yun similarly states the telephone can and will ignore a “dial request” received from
`the electronic pocketbook while the telephone is not in an off-hook state; and the
`telephone itself unliterally applies its own process to determine and control whether
`it is in an off-hook state. See, e.g., EX1005 at Fig. 3, step 310 and accompanying
`description. Because Yun teaches away from the “controlling” claim language, it
`would be improper to attempt to cure this deficiency by combing Yun with another
`cited reference. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“It is improper
`to combine references where the references teach away from their combination.”).
`For the foregoing reasons, even if the Petition itself had expressly mapped the
`“dial request” of Yun onto the “controlling” claim language and had provided
`citations to alleged evidence accompanied with some rational underpinning for such
`a mapping (and it did not), such a mapping would have nevertheless failed to prove
`obviousness.
`Accordingly, the Petition fails to prove that Yun renders obvious there
`separately-claimed step of “d) controlling the telephone using the handheld
`computer system to cause the telephone to dial the specific telephone number,” as
`recited in independent claim 9. For analogous reasons, the Petition is deficient in
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`IPR2018-00282
`U.S. Patent 7,092,671
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`its challenge of the claim language “wherein the handheld computer system is
`configured to control the telephone via the wireless communication such that the
`telephone dials the specific telephone number,” as recited in independent claim 1. It
`follows that all challenges relying upon Yun (presented as Grounds 1 and 2) should
`be denied. In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) (“Dependent claims are
`nonobvious under section 103 if the independent claims from which they depend
`are nonobvious.”).
`2. Harris’ disclosure of a “PDA” transmitting a phone number
`does not render obvious the “controlling” claim language
`In presenting its redundant challenge of the “controlling” claim language
`under Ground 3, the Petition alleges that “the PDA [in Harris] can automatically dial
`the telephone.” Pet. 62‒63. This theory fails to prove obviousness for several
`independent reasons.
`First, this theory relies on an undefended and indefensible claim interpretation
`that fails to comprehend the express distinction between the “controlling” and
`“transferring” steps, as explained above in addressing claim construction. See
`§IV.A.1, supra. The Board stated in its Institution Decision that it granted trial on
`Ground 3 based on the state of the record at that time.11 A more fully developed
`record, including the arguments set forth herein, reveals that the implicit and
`
`
`
`11 See Paper 7 at 12 (“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, . . . .”).
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`undefended interpretation applied in the Petition is unreasonably broad and
`untethered to the explicit claim language. See §IV.A.1, supra.
`Second, the Petition fails to prove (and indeed makes no attempt to prove)
`that Harris’ PDA provides the required control that is separate and
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