UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`RINGCENTRAL, INC.,
`Petitioner
`v.
`ESTECH SYSTEMS, INC.,
`Patent Owner
`
`Case IPR2021-00574
`
`US Patent No. 8,391,298
`__________________________________________________________________
`
`PETITIONER’S REPLY
`__________________________________________________________________
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`3.
`
`4.
`
`2.
`
`GROUND 1: CHANG AND BYRNE RENDER CLAIMS 1-5, 7-12,
`AND 17-19 OBVIOUS ...................................................................................... 2
`A.
`Claim 1 .................................................................................................. 2
`1.
`Limitation 1[e]: “a first telecommunications device
`coupled to the first LAN” ........................................................... 2
`Limitation 1[f]: “a plurality of telecommunications
`extensions coupled to the second LAN” ..................................... 7
`Limitation 1[h]: “wherein the list of the plurality of
`telecommunication extensions is stored in a server
`in the second LAN, and is accessed by the first
`circuitry across the WAN” .......................................................... 8
`Limitation 1[i]: “the first LAN including circuitry
`for enabling the user to select between observing
`the list of the plurality of telecommunications
`extensions coupled to the second LAN or
`observing a list of the plurality of
`telecommunications extensions coupled to the
`third LAN.” ............................................................................... 16
`Claims 2 and 3 ..................................................................................... 18
`B.
`Claim 4 ................................................................................................ 18
`C.
`Claims 5 and 7 ..................................................................................... 20
`D.
`Claim 8 ................................................................................................ 20
`E.
`Claims 9-12 ......................................................................................... 20
`F.
`Claim 17 .............................................................................................. 20
`G.
`Claims 18 and 19 ................................................................................. 22
`H.
`II. GROUND 2: CHANG, BYRNE, AND IMIELINSKI RENDER
`CLAIM 6 OBVIOUS ...................................................................................... 22
`
`

`

`LISTING OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 8,391,298 (“Suder”)
`
`Excerpts from Prosecution History of U.S. Patent No. 8,391,298
`
`International Application WO 99/05590 (“Chang”)
`
`U.S. Patent No. 6,490,619 (“Byrne”)
`
`U.S. Patent No. 6,240,558 (“Imielinksi”)
`
`Declaration of Dr. Henry H. Houh in Support of the Petition for
`Inter Partes Review of U.S. Patent No. 8,391,298
`
`Scheduling Order in Estech Systems, Inc. v. Howard Midstream
`Energy Partners, LLC, W.D. Tex. Case No. 6:20-cv-00777-ADA
`Scheduling Order in Estech Systems, Inc. v. Target Corp., E.D.
`Tex. Case No. 2:20-cv-00123-JRG
`Texas Patent Trials Halted Due To COVID-19 Spike, Law 360,
`Nov. 20, 2020, https://www.law360.com/articles/1330855/texas-
`patent-trials-halted-due-to-covid-19-spike (Nov. 20, 2020)
`
`U.S.D.C., W.D. Tex. – Thirteenth Suppl. Order Regarding Court
`Operations Under the Exigent Circumstances Created by the
`Covid-19 Pandemic, Feb. 2, 2021,
`https://www.txwd.uscourts.gov/wp-
`content/uploads/2021/02/ThirteenthSupplementalOrderCOVID020
`221.pdf
`
`U.S.D.C., W.D. Tex. – Eighth Standing Order Relating to Entry
`into United States Courthouse Waco, Texas, Feb. 25, 2021,
`https://www.txwd.uscourts.gov/wp-
`content/uploads/2021/02/EighthStandingOrderEntryToWacoCthse
`022521.pdf
`
`

`

`Exhibit
`
`Description
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Fed. Cir. Rebukes Put Spotlight on Albright Transfer Rulings,
`Law 360, Feb. 12, 2021,
`https://www.law360.com/articles/1353897/fed-circ-rebukes-put-
`spotlight-on-albright-transfer-rulings
`
`DocketNavigator Report for W.D. Tex. and Hon. Alan D. Albright
`
`McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials (July 24, 2020),
`https://www.patentspostgrant.com/district-court-trial-dates-tend-
`to-slip-after-ptab-discretionary-denials/
`
`Newton’s Telecom Dictionary (16th ed. 2000)
`
`Excerpts from Understanding LDAP, H. Johner, et al., June 1998
`
`U.S. Patent No. 5,956,391 (“Melen”)
`
`An Introduction to NetWare Directory Services, Herbon, April. 1,
`1993
`
`Internet Protocol, RFC 791, Information Sciences Institute, Sept.
`1981, https://tools.ietf.org/html/rfc791
`
`On the Net: Web Browser Keyboard and Navigation Shortcuts,
`Notes, May 1998, https://notess.com/write/archive/9805.html
`
`Use these keyboard shortcuts when your mouse dies, M. Jackman,
`Nov. 14, 2000, https://www.techrepublic.com/article/use-these-
`keyboard-shortcuts-when-your-mouse-dies/
`
`U.S. Patent No. 5,717,430 (“Copland”)
`
`U.S. Patent No. 5,883,619 (“Ho”)
`
`Microsoft Internet Explorer 5: Quick Look, May/June 2000,
`https://www.wap.org/journal/msie5/msie5.html
`
`

`

`Exhibit
`
`Description
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`Excerpts from Hypertext Transfer Protocol – HTTP/1.1, RFC
`2068, Fielding et al., Jan. 1997
`
`The Intranet: A New Concept for Corporate Information Handling,
`Barbera, 1996
`
`U.S. Patent No. 5,856,822 (“Du”)
`
`A Comparison of Three Selection Techniques for Touchpads,
`MacKenzie, CHI 98, 18-23, Apr. 1998
`
`Excerpts from TCP/IP Tutorial and Technical Overview, 6th ed.,
`IBM, Murhammer, et al., Oct. 1998
`
`Syntha-Voice Computers Gives Speech to Windows, July 16, 1992,
`https://www.cbronline.com/news/syntha_voice_computers_gives_speec
`h_to_windows
`
`Challenged Claim Listing for U.S. Patent No. 8,392,298
`
`U.S. Patent No. 6,298,057 (“Guy”)
`
`U.S. Patent No. 6,829.231 (“Wilson”)
`
`U.S. Patent No. 6,065,016 (“Stuntebeck”)
`
`Curriculum Vitae of Dr. Henry H. Houh
`
`Merriam-Webster’s Collegiate Dictionary (10th ed. 1999)
`
`Transcript from the March 11, 2022 Deposition of Vijay K.
`Madisetti
`
`

`

`Petitioner RingCentral, Inc. (“RingCentral”) submits the following reply to
`
`the response filed by Patent Owner Estech Systems, Inc. (Paper 15, “Response”).
`
`Patent Owner’s response reflects a studied indifference to what the petition
`
`argued, what the prior art actually teaches, and what the ’298 patent claims require.
`
`For instance, Patent Owner spends pages arguing that Chang’s telephone
`
`alone and Chang’s workstation standing alone cannot be the “telecommunications
`
`device” required by the ’298 patent. Not only is this wrong, but the Petition also
`
`argued that the combination of these two things results in what claim 1 requires.
`
`Patent Owner fails to meaningful address this argument and instead simply
`
`states—with no explanation—that Chang does not disclose the combined use of a
`
`telephone and workstation. But, Chang does so repeatedly and explains that it is
`
`the telephone and workstation together that allow its system to facilitate “IP
`
`telephone calls.”
`
`Patent Owner also attempts to distinguish Chang by arguing that each of its
`
`gateway servers stores the entirety of the directory listing all the different
`
`extensions located across all the servers. This is the opposite of what Chang
`
`actually discloses. As explained in the petition and again in this reply, Chang’s
`
`directory is stored in a distributed fashion with each gateway server storing only
`
`that particular server’s list of extensions. Patent Owner ignores this disclosure and
`
`-1-
`
`

`

`makes no effort to address the petition’s explanation regarding why the disclosure
`
`renders the ’298 patent’s claims obvious.
`
`As yet another example, Patent Owner discusses supposed deficiencies with
`
`Byrne’s display of listings of user contact information. Here, Patent Owner faults
`
`Byrne for not teaching the display of lists of user “telephone extensions.” But, the
`
`petition focused on the combined teachings of Chang and Byrne, not Byrne in
`
`isolation. Chang teaches a directory of telephone extensions associated with
`
`different LANs. Byrne teaches a method to organize and display such a directory
`
`to a user.
`
`In sum, Patent Owner does not meaningfully address the arguments set forth
`
`in the petition. Because of this, Patent Owner’s response does not even remotely
`
`show that the ’298 patent’s claims are anything other than obvious.
`
`I.
`
`Ground 1: Chang and Byrne Render Claims 1-5, 7-12, and 17-19
`Obvious
`As explained in the petition, Chang and Byrne teach everything claims 1-5,
`
`7-12, and 17-19 require. Patent Owner’s attempts to distinguish the ’298 patent’s
`
`claims either ignore the prior art or misread the claims.
`
`A.
`
`Claim 1
`1.
`Limitation 1[e]: “a first telecommunications device coupled
`to the first LAN”
`Patent Owner begins by arguing that Chang does not teach a “first
`
`telecommunications device coupled to the first LAN.” See Response at 5. In
`
`-2-
`
`

`

`doing so, Patent Owner ignores what the petition actually argued, does not account
`
`for the full teachings of the prior art, and improperly reads limitations into the
`
`claims.
`
`Patent Owner spends the bulk of its response attempting to show that
`
`Chang’s telephone and workstation—when considered alone—are not the claimed
`
`“telecommunications device.” See id. at 5-11. But, as recognized in the Board’s
`
`Institution Decision, the petition also argued that Chang’s “telephone/workstation
`
`combination … constitutes a ‘telecommunications device.’” Paper 1, Petition at
`
`28; see also Paper 13, Institution Decision at 24-25. In contrast to the multiple
`
`pages Patent Owner dedicates to discussing Chang’s telephone and workstation
`
`standing alone, it spends only a single paragraph addressing the combination. See
`
`Response at 11. And, here, Patent Owner’s only argument is that “[n]either the
`
`Petition nor the Institution Decision describe what the [telephone/workstation]
`
`combination would be or why it would have been obvious to combine the
`
`telephone and workstation disclosed in Chang.” Id.
`
`This is wrong. As explained in the petition, Chang unambiguously teaches
`
`that “respective workstation 24” may be “logically associated” and “co-located”
`
`with a “telephone 38.” Paper 1, Petition at 28 (citing Ex. 1003, Chang at 15:28-
`
`33.) In fact, Chang even characterizes its “invention” as an “integrated computer
`
`telephone system.” (Id. at 37:22.) Moreover, it is Chang’s combination of a
`
`-3-
`
`

`

`telephone with a workstation that allows it to improve upon prior art voice over IP
`
`systems. According to Chang, prior art systems lacked, among other things, the
`
`ability to “obtain, store, update and retrieve necessary information about both the
`
`calling party and the called party in order to do anything other than simply attempt
`
`to make a straightforward connection between the two points.” (Id. at 2:23-27.)
`
`To perform this and other functions, Chang’s system includes means for
`
`“controlling the telephone from the desktop workstation.” (Id. at 6:27-28.) This
`
`includes a “gateway server” that “provides features interworking using the
`
`combination of the desktop telephone and desktop workstation.” (Id. at 10:11-12)
`
`Thus, “a worker using a desktop telephone can be notified of an important call via
`
`the desk workstation.” (Id. at 10:14-15.) And, “the identification of the calling
`
`party (e.g. name, title, department, telephone number)” can be “displayed on a
`
`computer screen (rather than on a telephone display) co-located with the called
`
`party's telephone….” (Id. at 4:19-21 (emphasis added).) The gateway server’s
`
`“unique ability … to control both the desktop telephone and the desktop
`
`workstation for calls … provides many new VPBX features not available with
`
`current PBX to PBX solutions.” (Id. at 10:16-18.) This is why Chang explains
`
`that its invention is directed to “PC-based IP telephones. (Id. at 5:1-19.)
`
`Consistent with Chang’s own unambiguous teachings, Patent Owner
`
`recognizes and concedes that Chang employs a workstation and telephone together
`
`-4-
`
`

`

`to make IP telephone calls. For instance, Patent Owner explains that “Chang …
`
`clarifies that the workstation … controls the telephone.” Response at 9. Likewise,
`
`Patent Owner notes that in Chang, use of a telephone and workstation together is
`
`“required to implement the ‘Virtual Desktop’ functionality[.]’” Id. at 10.
`
`Thus, far from leaving a POSITA in the dark regarding how a telephone and
`
`workstation can be used together to make voice over IP calls, Chang explains at
`
`length how these two components are to be so used. Indeed, this is the primary
`
`focus of Chang. Patent Owner is wrong when it argues that there is no indication
`
`in the record of what this “combination would be or why it would have been
`
`obvious to combine” Chang’s teachings. A POSITA does not need to “combine”
`
`Chang’s telephone and workstation because Chang already does this itself.
`
`While Chang’s disclosure of a combined telephone and workstation for
`
`making voice over IP calls itself ends the analysis, Patent Owner is also wrong that
`
`the workstation and telephone standing alone do not themselves correspond to the
`
`claimed “first telecommunication device.”
`
`According
`
`to Patent Owner, Chang’s workstation
`
`is not
`
`a
`
`“telecommunications device” because it does not “hav[e] telecommunications
`
`capabilities.” Response at 8. This is directly contradicted by Chang’s own
`
`disclosure. Chang is directed to “PC telephony” and “PC to PC telephone calls
`
`over the Internet.” (Ex. 1003, Chang at 1:17-21.) To facilitate this type of call,
`
`-5-
`
`

`

`Chang’s workstation “provides the user with desktop CTI capabilities.” (Id. at
`
`56:4.) “The user may dial, answer, hang-up, transfer, conference, forward, place a
`
`call on hold, unhold, and drop a call from a desktop workstation.” (Id. at 56:4-6.)
`
`Thus, Chang’s workstation allows users to perform a variety of telephone functions
`
`and facilitates communication.
`
`By arguing that such a workstation is not what claim 1 requires, Patent
`
`Owner has taken the position that a device can only be the claimed
`
`“telecommunications device” if it is identical to and performs all the same
`
`functions as the IP telephone exemplified in the ’298 patent’s specification. There
`
`is no such requirement. Instead, ’298 patent explains that it is not “limited to the
`
`[IP phone] configurations” shown in its figures. (Ex. 1001, ’298 patent at 3:13-
`
`17.) In fact, the patent even notes that, as in Chang, “all of the functionality of the
`
`present invention can be implemented in a workstation.” (Id., 3:13-17)
`
`Patent Owner is also wrong that Chang’s telephone alone cannot be the
`
`claimed “first telecommunications device.” Here, Patent Owner argues that the
`
`telephone cannot be what claim 1 requires because it is “coupled” to a PBX, not
`
`“the first LAN.” See Response at 6-7. This improperly limits the claim—which
`
`requires only that the “first telecommunications device” be “coupled” to the “first
`
`LAN”—to only those systems where the LAN and device are “directly coupled” to
`
`-6-
`
`

`

`each other Claim 1, however, requires only that the “first telecommunications
`
`device” and “first LAN” be “coupled.” It does not require “direct coupling.”
`
`The ’298 patent repeatedly confirms that it uses the word “coupled” broadly.
`
`Claim 1 itself provides that the “third LAN” is “coupled to the first and second
`
`LANs” even though there is an intervening “WAN.” (Ex. 1001, ’298 patent at
`
`15:63-64.) In other words, the claim states that “coupled” includes indirect
`
`coupling.
`
` The specification is no different.
`
` For instance, the patent’s
`
`“workstations” are described as “coupled to the LAN” even though they are only
`
`indirectly coupled to the LAN through the “hub 103.” (Id. at 2:51-57; see also id.
`
`at 3:3-6 (noting that the that “workstations” can be “coupled to hub 103 through …
`
`IP telephony devices.”) Given this, the term “coupled” cannot be narrowly
`
`interpreted as Patent Owner proposes.
`
`2.
`
`Limitation 1[f]: “a plurality of telecommunications
`extensions coupled to the second LAN”
`Patent Owner simply repeats the same arguments it made in connection with
`
`“first LAN”
`
`limit.
`
` See Response at 12-13.
`
` But, Chang
`
`teaches
`
`“telecommunication extensions coupled to the second LAN” for the same reasons
`
`it teaches a “first telecommunications device coupled to the first LAN:” its
`
`telephone/workstation combination, workstation, and telephone all qualify. See
`
`Section I.A.1
`
`-7-
`
`

`

`3.
`
`Limitation 1[h]: “wherein the list of the plurality of
`telecommunication extensions is stored in a server in the
`second LAN, and is accessed by the first circuitry across the
`WAN”
`Patent Owner next argues that in Chang’s system, “the list of the plurality of
`
`telecommunications extensions … stored in a server on the second LAN” is not
`
`“accessed by the first circuitry across the WAN.” Response at 14. According to
`
`Patent Owner, rather than a first LAN device accessing the second LAN to retrieve
`
`that LAN’s list of extensions, “a POSITA would conclude that each of Chang’s
`
`gateway servers contains the white pages of all users.” Id. at 15. Patent Owner
`
`also argues that it would not have been obvious to modify Chang to employ
`
`remotely stored directories in place of an entirely locally stored directory because
`
`this would purportedly slow down the operation of Chang’s system by requiring
`
`many directory access requests. (Id. at 15-16.)
`
`This ignores what Chang actually teaches and does not establish non-
`
`obviousness. See Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
`
`1378 (Fed. Cir. 2017) (explaining that the Board must ignore and should give no
`
`weight to arguments and testimony “that is plainly inconsistent with the record.”)
`
`In Chang, no single gateway server stores the entirety of the white pages. Instead,
`
`the white pages are stored in a distributed fashion, with each gateway server
`
`locally storing only the portion of the white pages listing its extensions. This is
`
`shown in Figure 3A:
`
`-8-
`
`

`

`(Ex. 1003, Chang at Fig. 3A.) As shown, an “enterprise directory 90” includes a
`
`series of “logical partitions P1, P2, P3, P4, P5, P6.” (Id. at 17:15-16.) The
`
`“respective physical partition[s]” associated with each of these logical partitions—
`
`the actual directory data—is “coupled” to “each gateway server.” (Id. at 17:12-
`
`13.) Thus, gateway server 26-1 stores only physical directory partition P1´ (i.e.,
`
`the data associated with server 26-1) and gateway server 26-4 stores only physical
`
`directory partition P4´ (i.e., the data associated with server 26-4). (Id. at Fig. 3A.)
`
`Certain of the gateway servers may store “a replica of a partition from another
`
`-9-
`
`

`

`location in the network” to help “set up calls between locations which have a high
`
`volume of telephone calls” (id. at 17:20-23; Fig. 3A (showing replicas in servers
`
`26-2, 26-3, and 26-6.) But, the storage of replicas is only an option, and even
`
`when replicas are present, no single gateway server includes the entirety of the
`
`directory. Because of this, if a user on gateway server 26-1 would like to access
`
`the director of users on gateway server 26-5, it will be necessary to communicate
`
`with gateway server 26-5 as that is the only place where that server’s directory is
`
`physically stored. (See id. at Fig. 3A.) This is all claim 1 requires.
`
`None of the passages cited by Patent Owner say anything to the contrary.
`
`For example, while Chang notes that “gateway database 51 contains enterprise
`
`white pages” (id. at 17:33-35), this statement comes after Chang’s earlier
`
`description that directory storage is distributed such that each gateway stores only
`
`its own portion of the overall directory. And, while Chang does state that
`
`“enterprise directory 90 is the source of the white pages” (id. at 18:1-2), this is
`
`because it is the directory 90 that links and interconnects all the locally stored
`
`directory parts using logical partitions. (See id. at 17:4-18; Fig. 3.) Indeed, Patent
`
`Owner’s own expert Dr. Madisetti stated that “I don’t agree that” Chang’s gateway
`
`servers “store[] the entirety” of the directory. (Ex. 1037 at 112:19-113:10.)
`
`Instead, Dr. Madisetti is only of the opinion that Chang does not include
`
`“disclosure that servers are storing the partition.” (Id. at 114:7-22.) But, this just
`
`-10-
`
`

`

`ignores what Chang actually teaches: Chang explains that its directory is
`
`“distributed,” and “each gateway server” is “coupled to a respective physical
`
`partition” that “comprises the portion of the portion of the respective enterprise
`
`directory 90 applicable to the respective location served by a gateway server….”
`
`(Ex. 1003, Chang at 17:12-15.) So, far from being ambiguous regarding how its
`
`physical directory partitions are stored, Chang teaches that the directory is not all
`
`stored in one place. Instead, each partition is stored in association with one
`
`particular gateway server.
`
`Patent Owner is also wrong that it would not have been obvious to
`
`“exchange messages” with another “gateway server” when attempting to access
`
`that gateway server’s portion of the white pages. Response at 16. According to
`
`Patent Owner, a POSITA would supposedly not employ this approach because it
`
`would “drastically reduce the available bandwidth in Chang’s IP network for its
`
`intended purpose, i.e., telephone calls.” Id. But, as discussed, Chang already
`
`teaches a directory that is physically stored in a distributed fashion. Thus, Patent
`
`Owner is effectively arguing that it would not be obvious to do what Chang
`
`already does: Chang’s distributed directory necessitates exchange of the very type
`
`of messages that Patent Owner contends are non-obvious. Moreover, Chang also
`
`teaches a solution to the problem highlighted by Patent Owner. According to
`
`Chang, “the enterprise directory 90 at an individual location may include a replica
`
`-11-
`
`

`

`of a partition from another location in the network … to facilitate set up of calls
`
`between locations which have a high volume of telephone calls.” (Id. at 17:20-23.)
`
`Thus, per Chang, if many directory queries are made from a first gateway server to
`
`a second gateway server, then the first server can store a “replica” of the second
`
`server’s directory to reduce the volume of messages passing between the servers.
`
`If, however, the volume of messages between servers is low, then there will be no
`
`replica and the first server will need to query the second server to obtain directory
`
`information just as claim 1 requires.
`
`Patent Owner then continues—as it did in its preliminary response—to argue
`
`that this limitation of claim 1 requires that second LAN store lists of first, second,
`
`and third LAN extensions. See Response at 16. There is no such requirement in
`
`the claims. Claim 1, which is reproduced and highlighted below for reference,
`
`includes a series of ordered elements relevant to this particular limitation that build
`
`on each other:
`
`1. An information handling system comprising:
`
`a first local area network (“LAN”);
`
`a second LAN;
`
`a wide area network (“WAN”) coupling the first LAN to the
`second LAN;
`
`a third LAN coupled to the first and second LANs via the WAN;
`
`a first telecommunications device coupled to the first LAN;
`
`-12-
`
`

`

`a plurality of telecommunications extensions coupled to the second
`LAN;
`
`the first LAN including first circuitry for enabling a user of the
`first telecommunications device to observe a list of the plurality
`of telecommunications extensions;
`
`the first LAN including second circuitry for automatically calling
`one of the plurality of telecommunications extensions in
`response to the user selecting one of the plurality of
`telecommunications extensions from the observed list, wherein
`the list of the plurality of telecommunications extensions is
`stored in a server in the second LAN, and is accessed by the
`first circuitry across the WAN; and
`
`a plurality of telecommunications extensions coupled to the third
`LAN, the first LAN including circuitry for enabling the user to
`select between observing
`the
`list of
`the plurality of
`telecommunications extensions coupled to the second LAN or
`observing a
`list of
`the plurality of
`telecommunications
`extensions coupled to the third LAN.
`
`As shown, in claim 1:
`
`(1) The claim first requires “a plurality of telecommunication extensions
`
`coupled to the second LAN.”
`
`(2) The claim then references circuitry that allows “a user of the first
`
`telecommunications device” on a “first LAN” to observe “a list of the plurality of
`
`telecommunication extensions.” The phrase “the plurality of telecommunication
`
`extensions” refers back to (1), the extensions “coupled to the second LAN.” So,
`
`-13-
`
`

`

`the claim requires that a user on the first LAN be able to observe a list of second
`
`LAN extensions.
`
`(3) Next,
`
`the claim
`
`specifies
`
`that “the
`
`list of plurality of
`
`telecommunication extensions is stored in a server in the second LAN.” The
`
`phrase “the list of plurality of telecommunication extensions” refers back to the list
`
`of second LAN extensions mentioned in (2). So, the claim requires that the second
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`LAN store the list of second LAN extensions.
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`(4) Then, the claim requires “a plurality of telecommunication extensions
`
`coupled to the third LAN.” This is a new set of extensions not previously required.
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`(5) The claim then concludes by requiring that the first LAN include
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`“circuitry” allowing a first LAN user to “select between observing” two different
`
`lists: “the list of plurality of telecommunication extensions coupled to the second
`
`LAN” and “a list of the plurality of telecommunication extensions coupled to the
`
`third LAN.” The language “the list of plurality of telecommunication extensions
`
`coupled to the second LAN” refers back to (2) and (3) (the list of second LAN
`
`extensions stored
`
`in
`
`the second LAN).
`
` “[A]
`
`list of
`
`the plurality of
`
`telecommunication extensions coupled to the third LAN” is a new list of third
`
`LAN extensions not previously referenced in the claim. There is no requirement
`
`that this list be stored anywhere in particular.
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`-14-
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`

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`Accordingly, claim 1 requires only that the list of the second LAN’s
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`extensions be stored in the second LAN. There are no limitations, however,
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`requiring storage of the first and third LAN extensions at any particular location,
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`let alone in the second LAN as Patent Owner argues.
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`This claim scope is consistent with the ’298 patent’s specification. The
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`specification explains that each LAN includes its own “site rolodex.” (Ex.
`
`1001, ’298 patent at 10:49-51.) Thus, “the user at IP telephone 105 in LAN 301 …
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`can locate and access the site rolodex for LAN 302.” (Id.) When a user requests
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`access to a particular remote site’s rolodex, “[a] message will be sent to the
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`selected remote site in step 1109.” (Id. at 11:25-26.) Then, the selected remote
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`site returns a “display response message” to allow for display of “the first entry in
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`the station or system rolodex list selected by the user for that remote site….” (Id.
`
`at 11:34-40; see also 14:54-57 (explaining that upon selection of a particular
`
`remote site’s rolodex, a user is able “to remotely control the station rolodex mode
`
`at the selected remote site”). Put another way, in the ’298 patent, each remote site
`
`stores its own rolodex. To obtain a particular remote site’s rolodex, a message
`
`must be sent to that particular remote site. There is no single remote site that stores
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`the entire rolodex. Instead, just like Chang’s directories, the ’298 patent’s rolodex
`
`is stored in a distributed fashion, with each LAN storing a list of extensions or
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`-15-
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`

`

`users associated with that particular LAN. Patent Owner’s arguments to the
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`contrary ignore the record.
`
`Patent Owner concludes its discussion of this limitation by arguing that a
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`POSITA would not have been motivated to combine Chang with Byrne. (See
`
`Response at 19-20.) This amounts to nothing more than a conclusory denial
`
`without explanation or supporting evidence. “Conclusory assertions” in a brief
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`that are “merely repeated in conclusory and unsupported statements by an expert
`
`witness in support, are not persuasive….” Coalition for Affordable Drugs VII LLC
`
`v. Pozen Inc., Case IPR2015-01680, Paper 18 at 15 (Feb. 11, 2016); see also 37
`
`CFR 42.65(a). In contrast, the petition explained in detail why it would have been
`
`obvious to combine Chang and Byrne with citations to both references themselves
`
`and expert testimony. See, e.g., Paper 1, Petition at 71-74.
`
`4.
`
`Limitation 1[i]: “the first LAN including circuitry for
`enabling the user to select between observing the list of the
`plurality of telecommunications extensions coupled to the
`second LAN or observing a list of the plurality of
`telecommunications extensions coupled to the third LAN.”
`Patent Owner next argues that Chang and Byrne do not teach a system in
`
`which a user can “select between observing”
`
`two different
`
`lists of
`
`“telecommunication extensions” (one list of extensions “coupled to the second
`
`LAN” and another list of extensions “coupled to the first LAN”). See Response at
`
`21.
`
`-16-
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`

`

`Here, Patent Owner argues that “FIG. 9” of Byrne “does not show a list of
`
`contact information and certainly does not show a list of telecommunication
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`extensions…” Id. While Patent Owner is correct that Figure 9 does not itself
`
`depict user contact information—instead only the names of users associated with a
`
`particular server are shown in that figure—Byrne explains that the unshown
`
`contact information can be accessed simply by clicking on “[t]he small box with a
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`+ to the left of the name” to “cause[] the subdirectories” or “subcategories” of
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`information associated with a user “to be displayed.” (Ex. 1004, Byrne at 7:30-
`
`33.) As shown in Figure 6, a variety of information can be associated with each
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`user, including “Office number” and “Office phone.” (Id. at Fig. 6B.)
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`Further, the fact that Byrne standing alone does not itself depict in a single
`
`figure the display of telephone extensions on a LAN-by-LAN basis is of no
`
`pertinence. Here, the petition argued that it is the combined teachings of Chang
`
`and Byrne—not Byrne itself—that renders this limitation obvious. See Paper 1,
`
`Petition at 42-45. Chang teaches a telephone extension directory that includes user
`
`extensions associated with different LANs. And, Byrne provides one example of
`
`how such a directory can be displayed (a nested tree structure that can display
`
`users and user information on a LAN-by-LAN basis). See id. The test for
`
`obviousness is “what the combined teachings of the references would have
`
`suggested to” a POSITA. In re Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012).
`
`-17-
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`

`

`Patent Owner essentially limits its analysis to Figure 9A of Byrne. It does not even
`
`consider teachings of Byre as whole, let alone the collective teachings of Chang
`
`and Byrne.
`
`Next, Patent Owner appears to argue that Byrne falls short because a user is
`
`required to both select a server tab and then select a “browse tree” option before a
`
`list of users associated with the selected server is displayed. See Response at 21-
`
`22. This does not distinguish Byrne from claim 1. Claim 1 only requires circuitry
`
`for “enabling the user to select between observing” two lists of extensions.
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`Nothing about this necessitates that the “select[ion]” occur via the provision of
`
`only a single user input as Patent Owner would require. Instead, the claim is open
`
`to systems—like Byrne—where “select[ion]” entails multiple input steps, such as
`
`clicking the “Server Tab 406” shown in Figure 4 of Byrne, and then clicking the
`
`“browse tree” option to view a list of users associated with a particular LAN.
`
`Claims 2 and 3
`B.
`In connection with claims 2 and 3, Patent Owner merely cross references its
`
`claim 1 arguments. Nothing new is added. See Response at 22. These claim 1
`
`arguments are unavailing for the reasons discussed above. See Section I.A