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
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 7,092,671
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................ 1
`
`II. MANDATORY NOTICES .............................................................................. 1
`
`A. Real Party-in-Interest .................................................................................. 1
`
`B. Related Matters ........................................................................................... 1
`
`C. Lead and Back-up Counsel and Service Information................................. 1
`
`III. GROUNDS FOR STANDING......................................................................... 2
`
`IV. THE ’671 PATENT .......................................................................................... 2
`
`A. State of the Art before the ’671 Patent ....................................................... 2
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`1. Computer Autodialing Systems .......................................................... 2
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`2. Contact Management and Address Book Programs ........................... 3
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`B. Overview of the ’671 Patent ....................................................................... 3
`
`1. Alleged Problem ................................................................................. 3
`
`2. Summary of Alleged Invention of the ’671 Patent ............................. 4
`
`C. Prosecution History .................................................................................... 5
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`V. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF ...................................................................................................................... 6
`
`VI.
`
`IDENTIFICATION OF CHALLENGES ......................................................... 7
`
`A. Challenged Claims ...................................................................................... 7
`
`B. Statutory Ground for Challenges ................................................................ 7
`
`C. Claim Construction ..................................................................................... 7
`
`1.
`
`“wireless port” (all claims) ................................................................. 8
`
`D. The Challenges Presented in This Petition Are Neither Cumulative Nor
`Redundant ................................................................................................... 9
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`E.
`
`Page Citations and Quotations .................................................................10
`
`VII. Identification of How the Claims Are Unpatentable ......................................10
`
`A. Challenge #1: Claims 1-6 and 9-14 are invalid under 35 U.S.C § 103
`over Yun in view of Kikinis .....................................................................10
`
`1. Yun ....................................................................................................10
`
`2. Kikinis ...............................................................................................13
`
`3. Reasons to Combine Yun and Kikinis ..............................................14
`
`4. Detailed Analysis ..............................................................................17
`
`B. Challenge #2: Claims 7 and 15 are invalid under 35 U.S.C § 103 over
`Yun in view of Kikinis in further view of Inoue ......................................44
`
`1.
`
`Inoue .................................................................................................44
`
`2. Reasons to Combine Yun/Kikinis and Inoue ...................................46
`
`3. Detailed Analysis ..............................................................................47
`
`C. Challenge #3: Claims 1-7 and 9-15 are invalid under 35 U.S.C § 103
`over Harris in view of Kikinis ..................................................................50
`
`1. Harris ................................................................................................50
`
`2. Kikinis ...............................................................................................51
`
`3. Reasons to Combine Harris and Kikinis...........................................51
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`4. Detailed Analysis ..............................................................................54
`
`VIII. Conclusion ......................................................................................................78
`
`
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`ii
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
`
`I.
`
`INTRODUCTION
`
`The purported invention of U.S. Patent No. 7,092,671 (“the ’671 Patent,”
`
`APPL-1001) is “an automated telephone dialing system” which enables a computer
`
`to automatically dial a telephone number stored in its memory by interacting with a
`
`telephone through wireless communications. However, as shown in this petition,
`
`such systems were well known to persons of ordinary skill in the art long before
`
`the priority date of the ’671 Patent, and the evidence herein demonstrates that
`
`claims 1-7 and 9-15 are unpatentable under pre-AIA 35 U.S.C. § 103.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`The real party-in-interest is Apple Inc. (“Petitioner”).
`
`B. Related Matters
`As of the filing date of this petition, the ’671 Patent has been asserted in
`
`Uniloc USA, Inc. v. Apple Inc., 2:17-cv-00457 (E.D. Tex. 2017) and Uniloc USA,
`
`Inc. v. Samsung Electronics America, Inc., 2-17-cv-00562 (E.D. Tex. 2017).
`
`C. Lead and Back-up Counsel and Service Information
`Lead Counsel
`Phone: (214) 651-5116
`Andrew S. Ehmke
`Fax: (214) 200-0853
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`2323 Victory Ave. Suite 700
`USPTO Reg. No. 50,271
`Dallas, TX 75219
`Back-up Counsel
`Philip W. Woo
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`
`Phone: (650) 687-8818
`Fax: (214) 200-0853
`philip.woo.ipr@haynesboone.com
`USPTO Reg. No. 39,880
`
`
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`1
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`Dallas, TX 75219
`
`
`
`
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`Petitioner certifies that the ’671 Patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this petition.
`
`IV. THE ’671 PATENT
`The ’671 Patent generally describes a system and method that enables a
`
`handheld device to “automatically dial a telephone number stored in its memory by
`
`interacting with a telephone.” APPL-1001, 2:37-40; 4:11-23. As will be
`
`demonstrated in this petition, such systems and methods were known long before
`
`the filing of the ’671 Patent.
`
`A.
`
`State of the Art before the ’671 Patent
`1.
`Using computers to automate dialing on telephones was well known before
`
`Computer Autodialing Systems
`
`the ’671 Patent. Declaration of Nenad Medvidović, Ph.D. Under 37 C.F.R. § 1.68
`
`(APPL-1003), ¶ 37. For example, U.S. Patent No. 6,084,949 to Yun (“Yun”)
`
`(APPL-1005), filed more than three years before the priority date of the ’671
`
`Patent, described “[a]n automatic dialing method of a telephone system.” APPL-
`
`
`
`2
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`1005, Abstract. See also U.S. Patent No. 4,868,848 to Magnusson et al. (APPL-
`
`1008), 1:8-10; U.S. Patent No. 5,455,858 to Lin (APPL-1009), 2:32-38; U.S.
`
`Patent No. 5,457,742 to Vallillee et al. (APPL-1013); U.S. Patent No. 6,738,643 to
`
`Harris (APPL-1012).
`
`Contact Management and Address Book Programs
`
`2.
`Contact management and address book programs were also well known in
`
`the prior art to store contact information about people and organizations in
`
`electronic databases—including first name, last name, title, company, address,
`
`telephone and facsimile numbers, and e-mail addresses. APPL-1003, ¶ 41. See
`
`also APPL-1013, 1:9-13; APPL-1008, 2:9-13; APPL-1009, 1:18-21; U.S. Patent
`
`No. 5,561,705 to Allard et al. (APPL-1010), FIGS 3A-3C, 6:8-11, 4:12-14.
`
`B. Overview of the ’671 Patent
`Alleged Problem
`1.
`According to the ’671 Patent, cellphones have “more limited functionality”
`
`compared to computers, such as a personal information device (PID), and thus
`
`cellphones “are typically used for communication as opposed to personal
`
`information management (e.g., maintaining and updating appointments, contact
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`lists, addresses, telephone numbers, and the like).” APPL-1001, 1:54-58. As such,
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`“most users manage such information using other resources, such as, for example,
`
`a PID, and access cellphone (e.g., dial the correct number) once the proper
`
`telephone number is obtained.” Id., 1:58-63. “There is a problem with this
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`approach in that telephone numbers can be rather lengthy to dial, especially
`
`considering the small keypads on some cellphones,” thus potentially leading to
`
`mistakes. Id., 1:64-2:5.
`
`Summary of Alleged Invention of the ’671 Patent
`
`2.
`To address this problem, the ’671 Patent provides a system (and method)
`
`that “enables a handheld PID to automatically dial a telephone number stored [sic]
`
`its memory by interacting with a telephone.” APPL-1001, 2:37-40; 4:11-23. This
`
`system is shown in FIG. 5 of the ’671 Patent.
`
`
`
`computer
`
`telephone
`
`wireless ports
`
`
`
`APPL-1001, FIG. 5 (annotated); APPL-1003, ¶ 46.
`
`The telephone (which can be a cellphone) and the computer or PID (which
`
`can be a Palm Pilot) are each “equipped with a wireless port for short range
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`wireless data transfer” over radio frequency (RF) link (Bluetooth), or infrared link
`
`(Infrared Data Association (IrDA)). APPL-1001, 1:14-20, 2:41-44, 4:47-53. “The
`
`PID is configured to control the telephone via the wireless communications such
`
`that the telephone dials a telephone number stored on the PID.” Id., 2:45-48.
`
`The PID displays an address list, as shown in FIG. 6A, from which a user
`
`may select the telephone number to be automatically dialed. Id., 8:39-62
`
`list
`
`
`
`APPL-1001, FIG. 6A (annotated); APPL-1003, ¶ 51.
`
`Prosecution History
`
`C.
`The ’671 Patent issued from an application filed on November 30, 2000, the
`
`earliest possible priority date to which the patent is entitled.
`
`During prosecution, the PTO examiner rejected the claims of the application
`
`based on various references. See generally APPL-1002, at 142-150, 161-169, 180-
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`188, 202-213. In an amendment dated February 14, 2006, the Applicants
`
`distinguished the claimed invention from the cited references, arguing inter alia,
`
`with respect to a representative claim:
`
`“Claim 19 recites a system that comprises at least two devices: a
`
`telephone and a handheld computer system. The handheld computer
`
`system displays a list of phone numbers, from which the user may
`
`select one to dial. Claim 19 further recites that the handheld computer
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`system is able to control the telephone, thus causing the telephone to
`
`dial the selected telephone number transferred to the telephone from
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`the handheld computer system. Applicants respectfully assert that the
`
`[sic] neither Bell nor Mauney [sic] teach or suggest these limitations
`
`of Claim 19, alone or in combination, for the following rationale.”
`
`Id., 241-42 (emphases original).
`
`After that, the Examiner allowed the claims, stating that the reasons for
`
`allowance are “the cited prior arts failed to teach the claimed limitations for the
`
`reasons set forth in the Applicant’s remark filed on February 14, 2006.” Id., 253.
`
`V. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Patent Trial and Appeal Board (“the Board”) review
`
`the accompanying prior art and analysis, institute a trial for inter partes review of
`
`claims 1-7 and 9-15 of the ’671 Patent, and cancel those claims as unpatentable.
`
`
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
`
`This petition, along with the declaration of Petitioner’s expert, Dr. Nenad
`
`Medvidović, explains where each element of claims 1-7 and 9-15 is found in the
`
`prior art and why the claims would have been obvious to a person of ordinary skill
`
`in the art (“POSITA”) before the earliest claimed priority date of the ’671 Patent.
`
`VI.
`
`IDENTIFICATION OF CHALLENGES
`A. Challenged Claims
`Claims 1-7 and 9-15 of the ’671 Patent are challenged in this petition.
`
`Statutory Ground for Challenges
`B.
`Challenge #1: Claims 1-6 and 9-14 are obvious under 35 U.S.C. § 103 over
`
`U.S. Patent No. 6,084,949 to Yun (APPL-1005, “Yun”) in view of U.S. Patent No.
`
`5,790,644 to Kikinis (APPL-1006, “Kikinis”).
`
`Challenge #2: Claims 7 and 15 are obvious under 35 U.S.C. § 103 over
`
`Yun in view of Kikinis and in further view of U.S. Patent No. 7,080,154 to Inoue
`
`et al. (APPL-1007, “Inoue”).
`
`Challenge #3: Claims 1-7 and 9-15 are obvious under 35 U.S.C. § 103 over
`
`U.S. Patent No. 6,738,643 to Harris (APPL-1012, “Harris”) in view of Kikinis.
`
`C. Claim Construction
`This petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable construction in light of the specification. See 37 C.F.R. §
`
`42.100(b). Under the broadest reasonable construction, claim terms are given their
`
`ordinary and accustomed meaning as would be understood by one of ordinary skill
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). Also, because the claim constructions used
`
`herein are based on the broadest reasonable construction, they do not necessarily
`
`apply to other proceedings that use different claim construction standards. See
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`Samsung Elecs. Co. v. Virginia Innovation Sci., Inc., IPR2013-00569, Paper 9 at 2
`
`(PTAB 2013). Petitioner reserves the right to advocate a different claim
`
`interpretation in forums applying a different standard. For terms not addressed
`
`below, Petitioner submits that no specific construction is necessary for this
`
`proceeding.1
`
`“wireless port” (all claims)
`1.
`The ’671 Patent recites the term “wireless port” in claim 1, which recites in
`
`pertinent part, “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.” The ’671 Patent does not
`
`specially define the term “wireless port.” But discloses: “the PID 12 of the present
`
`system 10 includes a wireless port, or transceiver, 16 (used herein to mean some
`
`combination of a receiver and/or transmitter). The telephone 14 has a
`
`1Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112, or that the challenged claims recite patentable
`
`subject matter under 35 U.S.C. § 101.
`
`
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`corresponding wireless port, or transceiver, 18….” APPL-1001, 4:40-42
`
`(emphases added). A POSITA would understand that the broadest reasonable
`
`construction of the claim term “wireless port,” in view of the ’671 Patent
`
`specification, includes “some combination of a wireless receiver and/or
`
`transmitter.” APPL-1003, ¶ 59.
`
`D. The Challenges Presented in This Petition Are Neither
`Cumulative Nor Redundant
`
`First, this petition is Petitioner’s first challenge, of any kind, raised against
`
`the ’671 Patent at the Patent Office.
`
`Second, none of Challenges #1-3 are redundant as to rejections made by the
`
`Examiner during prosecution of the ’671 Patent. These challenges rely on different
`
`prior art (and combinations thereof) and arguments than those previously
`
`considered by the Examiner, and are supported by new evidence in the form of Dr.
`
`Medvidović’s declaration which was not available to the Examiner during
`
`prosecution.
`
`Third, Challenges #1 and #2 (based on Yun as the primary reference)
`
`challenge the same claims as Challenge #3 (based on Harris as the primary
`
`reference), but are not redundant as to each other. Yun, which was filed more than
`
`three years before the priority date of ’671 Patent, is combined with another
`
`reference to render obvious the “Bluetooth” limitation of the claims. Harris, on the
`
`
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`other hand, discloses “Bluetooth,” but was filed only a month before the priority
`
`date of ’671 Patent.
`
`Accordingly, Petitioner respectfully requests that the Board institute on all
`
`challenges.
`
`Page Citations and Quotations
`
`E.
`Petitioner cites to exhibits’ original page numbers where possible. Unless
`
`otherwise indicated, bold italic emphasis in quoted material has been added.
`
`Claim language is quoted in italics throughout this petition to distinguish it from
`
`other quoted material.
`
`VII. Identification of How the Claims Are Unpatentable
`A. Challenge #1: Claims 1-6 and 9-14 are invalid under 35 U.S.C §
`103 over Yun in view of Kikinis
`1.
`Yun issued on July 4, 2000 from an application filed on June 5, 1997, and is
`
`Yun
`
`thus prior art at least under pre-AIA 35 U.S.C. § 102(a) and (e).
`
`Yun relates to a telephone system with automatic dialing using infrared
`
`transmission from an electronic pocket book. APPL-1005, Title. Yun concerns
`
`the same problem as identified in the ’671 Patent: “[T]here is no convenient and
`
`effective way to link the electronic pocketbook with the telephone system which
`
`allows the user to automatically dial a telephone number at the telephone system
`
`
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`10
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`under control of operation from the electronic pocketbook.” APPL-1005, 1:58-62;
`
`APPL-1003, ¶ 61.
`
`Yun provides the same solution as the ’671 Patent: “An automatic dialing
`
`method of a telephone system including an optical reception unit sensitive to
`
`infrared reception from an electronic pocketbook including an optical transmission
`
`unit for infrared transmission of a telephone number of an interested person
`
`registered in the electronic pocketbook.” APPL-1005, Abstract; APPL-1003, ¶
`
`62.
`
`Yun’s telephone system, including optical reception unit, is shown in FIG. 1:
`
`telephone
`
`
`
`APPL-1005, FIG. 1 (annotated); APPL-1003, ¶ 63.
`
`
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`“The optical reception unit 122 receives an infrared ray signal containing
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`a telephone number of an interested person transmitted from the electronic
`
`pocketbook and provides the same to the control unit 110 for enabling the dial unit
`
`116 to perform an automatic dialing function.” APPL-1005, 3:36-41.
`
`Yun’s electronic pocketbook, including optical transmission unit, is shown
`
`in FIG. 2:
`
`Electronic
`pocketbook
`
`
`
`APPL-1005, FIG. 2 (annotated); APPL-1003, ¶ 65.
`
`“The 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. After the conversion, the optical transmission unit 138
`
`transmits the infrared ray signal containing the telephone number of the
`
`
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`interested person to the telephone system as shown in FIG. 1 for performing an
`
`automatic dialing function.” APPL-1005, 4:10-19.
`
`2. Kikinis
`Kikinis issued on August 4, 1998 from an application filed on October 1,
`
`1996, with a claim of priority back to May 7, 1993, and is thus prior art at least
`
`under 35 U.S.C. § 102(b).
`
`Kikinis relates to a computer-to-telephone interface. APPL-1006, Title.
`
`Like the system of the ’671 Patent, the computer of Kikinis can be “in the form of
`
`a … palmtop computer.” Id., 3:47-52; APPL-1003, ¶ 68.
`
`Kikinis discloses 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.” APPL-1006, 4:21-24.
`
`Kikinis discloses various menus for the interface, including a “Dial List” which is
`
`shown in FIG. 2C. Id., 4:24-26; APPL-1003, ¶ 70.
`
`
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`display
`
`list
`
`
`
`APPL-1006, FIG. 2C (annotated); APPL-1003, ¶ 70.
`
`“This [Dial List] menu allows the user to display the list of phone numbers
`
`currently stored in computer memory and select a number to be called.” APPL-
`
`1006, 5:11-13.
`
`Reasons to Combine Yun and Kikinis
`
`3.
`A POSITA would have found it obvious, and indeed been motivated, to
`
`combine the teachings of Yun and Kikinis. APPL-1003, ¶ 74.
`
`First, Kikinis is in same field of endeavor as Yun—i.e., communicating
`
`between computer and telephone. APPL-1003, ¶ 75. Yun discloses, for example,
`
`“Telephone system with automatic dialing using infrared transmission from
`
`electronic pocket book.” APPL-1005, Title. Similarly, Kikinis discloses a
`
`
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`“computer-to-telephone interface” that allows a computer to dial a telephone
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`without a wired connection. APPL-1006, Title; Abstract; 1:9-12; 3:13-17.
`
`Second, a POSITA would have looked to other documentation in the same
`
`field of endeavor of Yun to supplement its teachings. APPL-1003, ¶ 76. For
`
`example, Yun discloses that its electronic pocketbook includes a display unit that
`
`“provides a visual display of data information input from” the key input unit
`
`under control of the control unit. APPL-1005, FIG. 2, 3:64-67. To further
`
`understand the endeavor of Yun, a POSITA would have looked to other
`
`documentation in the same field of endeavor for guidance as to how to accomplish
`
`this. APPL-1003, ¶ 76.
`
`Third, Kikinis expressly describes an example of what such a visual display
`
`looks like, and how a user would interact with it. APPL-1003, ¶ 77. In particular,
`
`Kikinis discloses an improved approach for accessing information from a contact
`
`data base—it presents contact information, including telephone numbers, as a
`
`selectable list on the display of a computer, as seen in FIG. 2C. See e.g., APPL-
`
`1006, FIG. 2C, 5:11-13; APPL-1003, ¶ 77. As such, Kikinis would have taught a
`
`POSITA to configure Yun’s electronic pocketbook so as to present the stored
`
`contact information, including telephone numbers, visually as a list on the
`
`computer display and to allow a user to select a telephone number from the list
`
`using a graphical user interface. APPL-1003, ¶ 77.
`
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`15
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`Fourth, this combination would have been a predictable use of known
`
`elements, and indeed been desirable. APPL-1003, ¶ 78. Specifically, a query by a
`
`user for a particular person or company by name could return multiple results (e.g.,
`
`for people with same last name or people working at same company). Id. Rather
`
`than presenting the results one-by-one sequentially, it would be simpler from a
`
`user’s perspective to have the results presented in list form, such as taught by
`
`Kikinis. Id. Kikinis itself touts: “An 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. The interface is provided in
`
`this embodiment through menus as presented in FIGS. 2A, 2B, 2C, 2D, and 2E.”
`
`APPL-1006, 4:21-26. The menus of Kikinis are also configurable: “Five phone
`
`number-name pairs are displayed numerically in order at a time. The name can be
`
`that of an individual (last name, first name), company, or a code identifier—
`
`whatever the user chooses to identify the party to be called.” APPL-1006, 4:21-
`
`25; APPL-1003, ¶ 78. And the menus also allow a user to readily navigate through
`
`the contact information: “The user scrolls through the list by moving the up/down
`
`scroll arrows with pointer device or keyboard.” Id., 4:26-27; APPL-1003, ¶ 78.
`
`Accordingly, the application of Kikinis’s display of a list of telephone numbers to
`
`Yun’s automatic telephone dialing system would have been the mere application of
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`a known technique to a piece of prior art ready for improvement. See KSR Int’l
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`Co. v. Teleflex Inc., 550 U.S. 398, 419, 127 S.Ct. 1727, 1740 (2007); APPL-1003,
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`¶ 78.
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`Detailed Analysis
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`4.
`The following analysis describes how Yun in view of Kikinis renders
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`obvious each and every element of at least claims 1-6 and 9-14 of the ’671 Patent.
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`A corresponding claim chart is contained in Dr. Medvidović’s expert declaration.
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`See APPL-1003, pp. 37-64.
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`Claim 1
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`[1.0] “An automated telephone dialing system, comprising:”
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`Yun discloses “an automated telephone dialing system”: “The present
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`invention relates to a telephone system, and more particularly, relates to a
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`telephone system with automatic dialing using infrared transmission from an
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`electronic pocketbook.” APPL-1005, 1:16-19; see also id., Abstract; APPL-1003,
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`pp. 37-38. . Yun’s system includes a telephone and an electronic pocketbook, as
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`shown in FIGS. 1 and 2 reproduced and annotated below:
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`telephone
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`Electronic
`pocketbook
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`
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`
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`APPL-1005, FIGS. 1 and 2 (annotated); APPL-1003, p. 38.
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`[1.1] “a telephone having a wireless port for short range wireless data
`transfer; and”
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`First, Yun discloses “a telephone” as shown and described with reference to
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`FIG. 1. APPL-1005, 3:11-41 (“FIG. 1…illustrates a telephone system”); see also
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`id., Abstract; APPL-1003, p. 39.
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`telephone
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`wireless port
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`
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`APPL-1005, FIG. 1 (annotated); APPL-1003, p. 39.
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`Second, Yun discloses the telephone of its system has a “wireless port” in
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`the form of the “optical reception unit 122 [that] receives an infrared ray
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`signal….” APPL-1005, 3:36-37, FIG. 1; see also id., Abstract; APPL-1003, pp.
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`39-40. As such, under the ’671 Patent’s meaning of “wireless port” as including
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`“some combination of a wireless receiver and/or transmitter” (APPL-1001, 4:40-
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`45), the optical reception unit 122 of Yun capable of communicating wirelessly, is
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`a “wireless port.” APPL-1003, p. 40.
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`Third, to the extent that the claim language “for short range wireless data
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`transfer” is limiting, a POSITA would understand that an infrared link is a “short
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`range wireless” link. APPL-1003, p. 40; APPL-1011, 1:9-11 (“short-range
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`wireless links such as radio links, infra-red links, or any other suitable wireless
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`links”), 2:26-29 (“other short-range links such as an infra-red link are known,
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`e.g., the IrDA Standard”). Yun further discloses the infrared ray signal received
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`by the telephone’s optical reception unit (“wireless port”) is for “data transfer” in
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`that it “contain[s] a telephone number of an interested person transmitted from
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`the electronic pocketbook.” APPL-1005, 3:36-39, FIG. 1; APPL-1003, p. 40.
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`Thus, the telephone of Yun that has an optical reception unit for receiving a
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`wireless infrared signal containing a telephone number discloses “a telephone
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`having a wireless port for short range wireless data transfer,” as recited in [1.1].
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`APPL-1003, p. 40.
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`[1.2] “a handheld computer system having a wireless port for communication
`with the wireless port on the telephone,”
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`First, Yun discloses a “handheld computer system” in the form of an
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`electronic pocketbook as shown and described with reference to FIG. 2. APPL-
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`1005, 3:42-44 (“FIG. 2 is a block diagram of an electronic pocketbook …”); see
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`also id., Abstract; APPL-1003, p. 41.
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`Wireless
`port
`
`Electronic
`pocketbook
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`
`
`APPL-1005, FIG. 2 (annotated); APPL-1003, p. 41.
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`Yun’s electronic pocketbook is a “computer system” in that it “includes a
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`control unit 130, a key input unit 132, a display unit 134, a memory unit 136”
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`and runs “programs for the control unit 130 to process data information in each
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`mode of operation.” APPL-1005, 44-46, 3:67-4:3; APPL-1003, p. 41. Yun
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`further discloses that a control unit can be implemented as a “microprocessor”
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`executing an “application program.” See e.g., APPL-1005, 3:18-23.
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`Yun’s computerized electronic pocketbook is “handheld” in that such
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`devices are small and, by definition, designed to be put into a user’s pocket, and
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`thus capable of being held in the user’s hand. APPL-1005, 1:20-43; APPL-1003,
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`p. 42.
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`Second, Yun discloses that its computerized electronic pocketbook has a
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`“wireless port” in the form of the “optical transmission unit 138 [which]
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`transmits the infrared ray signal containing the telephone number of the
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`interested person to the telephone system.” APPL-1005, 3:44-46, 4:10-19; APPL-
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`1003, p. 42. As such, under the ’671 Patent’s meaning of “wireless port” as
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`including “some combination of a wireless receiver and/or transmitter” (APPL-
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`1001, 4:40-45), the optical transmission unit 138 of Yun capable of communicating
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`wirelessly, is a “wireless port.” APPL-1003, p. 42.
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`Third, to the extent that the claim language “for communication with the
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`wireless port on the telephone” is limiting, Yun discloses that its optical
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`transmission unit 138 (“wireless port”) is capable of communicating with the
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`optical reception unit 122 (“wireless port”) on the telephone system. See e.g.,
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`APPL-1005, Abstract (“[t]he dialing method includes receiving an infrared signal
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`containing a telephone number of an interested person selected for an automatic
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`dialing function, transmitted from the optical transmission unit of the electronic
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`pocketbook, via the optical reception unit of the telephone system”), 4:11-20;
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`APPL-1003, pp. 42-43.
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`Thus, the electronic pocketbook of Yun that has an optical transmission unit
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`for transmitting the wireless infrared signal containing the telephone number to the
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`optical reception unit of the telephone discloses “a handheld computer system
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`
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`having a wireless port for communication with the wireless port on the telephone,”
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`as recited in [1.2]. APPL-1003, p. 43.
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`[1.3] “wherein a specific telephone number is selectable from a list displayed
`on the handheld computer system and”
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`First, Yun discloses that its computerized electronic pocketbook (“handheld
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`computer system”) stores a plurality of telephone numbers that can be “displayed
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`on the handheld computer system,” and from which “a specific telephone number
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`is selectable.” See e.g., APPL-1005, 2:29-41 (“an electronic pocketbook …
`
`includes a memory storing a directory of pre-registered telephone numbers of
`
`interested persons; … a display unit for providing a visual display of telephone
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`numbers input by the operator and the telephone number of the interested
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`person selected by the operator”); see also id., 2:1-6; APPL-1003, pp. 43-44.
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`Second, Kikinis discloses that it was a known technique for handheld
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`computer systems to display a list of telephone numbers—i.e., “a list displayed on
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`the handheld computer system”—for example, as shown in FIG. 2C reproduced
`
`and annotated below:
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`Petition for Inter Partes Review of U.S. Patent No. 7,092,671
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`display
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`list
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`
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`APPL-1006, FIG. 2C (annotated); APPL-1003, p. 45.
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`Kikinis states: “This menu allows the user to display the list of phone
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`numbers currently stored in computer memory and select a number to be called.”
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`APPL-1006, 5:10-12.
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`The improvement of Yun’s computerized electronic pocketbook with
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`Kikinis’s dial list would have been a predictable us