IPR2021-00574
`Patent 8,391,298
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`RingCentral Inc.,
`
`Petitioner,
`v.
`Estech Systems, Inc.,
`
`Patent Owner.
`__________________
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`IN THE INTER PARTES REVIEW OF U.S. PATENT NO. 8,391,298
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`
`Patent 8,391,298
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`RingCentral Inc.,
`
`Petitioner,
`v.
`Estech Systems, Inc.,
`
`Patent Owner.
`__________________
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`IN THE INTER PARTES REVIEW OF U.S. PATENT NO. 8,391,298
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`
`
`IPR2021-00574
`Patent 8,391,298
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`TABLE OF CONTENTS
`
`
`I.
`II.
`
`B.
`
`C.
`
`INTRODUCTION ........................................................................................... 1
`GROUND I: CLAIMS 1-5, 7-12, and 17-19 ARE PATENTABLE
`OVER CHANG AND BYRNE. ...................................................................... 1
`A.
`Chang and Byrne do not render obvious claim 1 because the
`combination fails to teach or suggest claim element 1[e]. .................... 1
`Chang and Byrne do not render obvious claim 1 because the
`combination fails to teach or suggest claim element 1[h]. .................... 4
`Chang and Byrne do not render obvious claim 1 because the
`combination fails to teach or suggest claim element 1[i]....................12
`Claims 2, 3, 5, 7-12, 18, and 19 ..........................................................16
`D.
`Claim 4 ................................................................................................16
`E.
`Claim 17 ..............................................................................................16
`F.
`III. GROUND 2: CLAIM 6 IS PATENTABLE OVER CHANG, BYRNE,
`IMIELINSKI ..................................................................................................18
`IV. CONCLUSION ..............................................................................................18
`
`
`
`
`
`
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`-i-
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`
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`TABLE OF AUTHORITIES
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`IPR2021-00574
`Patent 8,391,298
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`Cases
`Homeland Housewares, LLC v. Whirlpool Corp.,
` 865 F.3d 1372 (Fed. Cir. 2017) .............................................................................. 7
`
`Panduit Corp. v. Dennison Mfg. Co.,
` 810 F.2d 1561 (Fed. Cir. 1987) ............................................................................14
`
`
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`-ii-
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`IPR2021-00574
`Patent 8,391,298
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`I.
`
`INTRODUCTION
`
`Estech Systems, Inc. (“Patent Owner”) respectfully submits this Sur-Reply to
`
`RingCentral Inc.’s (“Petitioner”) Petitioner’s Reply (“Reply”) in Inter Partes
`
`Review No. IPR2021-00574 of U.S. Patent No. 8,391,298 (the “’298 Patent”).
`
`II. GROUND I: CLAIMS 1-5, 7-12, and 17-19 ARE PATENTABLE OVER
`CHANG AND BYRNE.
`
`The combination of Chang and Byrne does not render obvious any of claims
`
`1-5, 7-12, and 17-19.
`
`A. Chang and Byrne do not render obvious claim 1 because the
`combination fails to teach or suggest claim element 1[e].
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`Claim element 1[e] recites “a first telecommunications device coupled to the
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`first LAN.” The combination of Chang and Byrne fail to teach or suggest this claim
`
`element.
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`In
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`the Reply, Petitioner argues
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`that Chang’s
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`telephone/workstation
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`combination constitutes the “telecommunication device” of claim element 1[e]. See
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`Paper 18, pp. 3-5. Patent Owner disagrees because a POSITA would not understand
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`the combination of just Chang’s “telephone” and “workstation” to be the
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`“telecommunications device” of claim element 1[e] because they are separate,
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`discrete hardware units. The Reply criticizes Patent Owner for stating the fact that
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`neither the Petition nor the Institution Decision describes the telephone/workstation
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`-1-
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`
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`combination or why it would be obvious to combine. See Paper 18 at 3. Here is the
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`entirety of the Petition that discusses the telephone/workstation combination:
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`
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`Paper 1, p. 28. Claim element 1[e] does not require logical association and
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`colocation. The Petition relies on the telephone or workstation alone, and included
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`the telephone/workstation as an afterthought, without providing any necessary
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`analysis. See id., pp. 27-28. Realizing its mistakes, Petitioner now attempts to
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`supplement its grounds in its Reply, which is improper.
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`In the Reply, Petitioner also argues that Chang’s “workstation 24” alone
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`meets the “telecommunications device” of claim element 1[e]. Paper 18, pp. 5-6.
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`Specifically, Petitioner argues that “Chang is directed to “PC telephony” and “PC to
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`PC telephone calls over the Internet.’” Paper 18, p. 5 (citing Ex. 1003, 1:17-21). As
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`a threshold matter, Patent Owner believes Petitioner intended to cite page 3 of Ex.
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`1003, not page 1. The language cited by Petitioner is only found on page 3 of Ex.
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`1003. Regardless, Petitioner is citing to the background section of Chang, which
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`discusses the “advent of PC based telephony.” Ex. 1003, 3:19. Chang is silent
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`-2-
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`
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`regarding the “workstation 24” of his allegedly new “integrated voice gateway
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`system” operating the same way as these historical devices mentioned only in the
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`background section. Thus, Petitioner’s arguments are without merit.
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`Petitioner also argues “Chang’s workstation ‘provides the user with desktop
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`CTI capabilities.’ (Id. at 56:4.) ‘The user may dial, answer, hang-up, transfer,
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`conference, forward, place a call on hold, unhold, and drop a call from a desktop
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`workstation.’ (Id. at 56:4-6.).” Paper 18, p. 6. Again, Patent Owner believes
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`Petitioner intended to cite page 58 of Ex. 1003, not page 56. The language cited by
`
`Petitioner is only found on page 58 of Ex. 1003. Regardless, this section of Chang
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`is entitled “PC Call Control.” Ex. 1003, 58:3. Chang discloses “PC call control
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`means for controlling the telephone from the desktop workstation.” Id., 8:27-28. In
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`other words, Chang provides an explicit definition for “PC Call Control,” and this
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`definition requires both the “telephone” and the “workstation.” Thus, Petitioner’s
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`arguments regarding Chang’s “workstation” alone meeting the “telecommunications
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`device” of claim element 1[e] are without merit.
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`In the Reply, Petitioner also argues that Chang’s “telephone 38” alone meets
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`the “telecommunications device” of claim element 1[e]. Paper 18, pp. 6-7. Patent
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`Owner disagrees. Chang deliberately excludes “telephone 38” from the list of
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`components “coupled” to Chang’s LAN (i.e., Petitioner identified “first LAN”). See
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`Chang, 17:20-21 (“Coupled to the LAN 22 are one or more workstations 24, a
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`-3-
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`
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`gateway server 26, a directory server 28, and a router 32.”) (emphasis added).
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`Instead, Chang describes “telephone 38” as being coupled to the PBX, but not the
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`LAN. Id., 15:27-28 (“One or more telephones 38 are coupled to the PBX 34.”)
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`(emphasis added). Thus, Petitioner’s arguments regarding Chang’s “telephone”
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`alone meeting the “telecommunications device coupled to the first LAN” of claim
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`element 1[e] are without merit.
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`For these reasons and the reasons set forth in the Response, the combination
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`of Chang and Byrne does not teach or suggest claim element 1[e].
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`B.
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`Chang and Byrne do not render obvious claim 1 because the
`combination fails to teach or suggest claim element 1[h].
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`Petitioner continues to dispute that this claim limitation requires storage of the
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`following lists in a server in the second LAN: (1) “the list of the plurality of
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`telecommunications extensions coupled to the second LAN” and (2) “a list of the
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`plurality of telecommunications extensions coupled to the third LAN.” See Paper
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`18 at 12-16. Patent Owner established why the claim language requires storage of
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`those two lists in the second server. Paper 15, pp. 16-17. The crux of Petitioner’s
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`argument in reply is that the term “a list of the plurality of telecommunications
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`extensions” refers only to the “plurality of telecommunications extensions coupled
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`to the second LAN.” See Paper 18 at 13-15. Petitioner’s argument is incorrect
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`because it disregards the remainder of the claim and is illogical, both within claim
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`-4-
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`1, as well as the surrounding claims. For example, under Petitioner’s interpretation
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`of claim 1, the “first circuitry for enabling a user of the first telecommunications
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`device to observe a list of the plurality of telecommunications extensions” would
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`only be capable of displaying the list of extensions coupled to the second LAN, but
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`not those coupled to the third LAN. It is also inconsistent with the final limitation
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`of claim 1 (reproduced below):
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`a plurality of telecommunications extensions coupled to the third LAN, the
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`first LAN including circuitry for enabling the user to select between
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`observing the list of the plurality of telecommunications extensions
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`coupled to the second LAN or observing a list of the plurality of
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`telecommunications extensions coupled to the third LAN
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`Ex. 1001, claim 1. Claim 1 specifically requires “circuitry for enabling the user to
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`select between observing the list of the plurality of telecommunications extensions
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`coupled to the second LAN or observing a list of the plurality of telecommunications
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`extensions coupled to the third LAN.” It would be illogical for claim 1 to require
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`circuitry for selecting which list to observe if, as Petitioner asserts, the “first circuitry
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`for enabling a user to observe a list” can only allow the user to observe the
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`telecommunications extensions coupled to the second LAN, but not any extensions
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`coupled to the third LAN.
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`-5-
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`The dependent claims further highlight the flaw in Petitioner’s position. For
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`example, claim 3 requires that “the list of the plurality of telecommunications
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`extensions is displayed to the user of the first telecommunications device.” Under
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`Petitioner’s interpretation of the claims, the first telecommunications device would
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`only display the telecommunications extensions coupled to the second LAN, but not
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`any extensions coupled to the third LAN. Similarly, claim 6 requires that “the list
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`of the plurality of telecommunications extensions is played as audio to the user of
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`the first telecommunications device.” Under Petitioner’s interpretation of the
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`claims, the first telecommunications device would only play the list of
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`telecommunications extensions coupled to the second LAN, but not any extensions
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`coupled to the third LAN. This result, again, would be illogical given that claim 1
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`includes circuitry for selecting which list to observe.
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`Petitioner also argues that its incorrect interpretation of this claim limitation
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`is consistent with the ’298 Patent specification. See Paper 18 at 15-16. But
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`Petitioner’s citations do not support its position. For example, Petitioner cites to
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`column 10, lines 49 through 51, to argue that each LAN includes its own “site
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`rolodex.” See Paper 18 at 15 (citing Ex. 1001, 10:49-51). But the “site rolodex”
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`refers to the list of extensions itself, not where that rolodex is stored. See Ex. 1001,
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`10:49-51. More importantly, it is improper to rewrite the plain language of the
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`claims as Petitioner urges the Board to do.
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`-6-
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`Petitioner seeks to have the Board rewrite limitation 1[h] because neither
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`Chang, nor Byrne, nor the combination thereof teaches or suggests limitation 1[h]
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`under its proper interpretation. Nor has Petitioner argued as much. Paper 18, pp.
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`12-15.
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`With that said, this limitation is not obvious even under Petitioner’s erroneous
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`interpretation of this claim limitation. In the Reply, Petitioner asserts that “no single
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`gateway server [in Chang] stores the entirety of the white pages,” Paper 18, p. 8, and
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`Patent Owner’s arguments to the contrary should be given no weight because such
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`arguments are “plainly inconsistent with the record.” Id. (citing Homeland
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`Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017)).
`
`Petitioner concedes that “each gateway server has access to the complete enterprise
`
`directory 90.” Petition, p. 39 (emphasis added). Additionally, Chang’s Fig. 3 shows
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`a single “gateway server 26” having access to the entire “enterprise directory 90.”
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`Ex, 1003, Fig. 3. Chang discloses “enterprise directory 90 is the source of the white
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`pages” and the “gateway database 51 [of the gateway server] contains enterprise
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`white pages.” Id., 19:33-20:7. In fact, Chang discloses “gateway database 51”
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`stores a “table [that] can be used as an enterprise wide white pages.” Id., 34:9-11
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`(emphasis added). Further still, Chang discloses “the gateway server is unique in
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`that it stores extensive user telephone information and also integrates with industry
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`standard directory services.” Ex. 1003, 13:5-7 (emphasis added). In view of both
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`-7-
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`Petitioner’s admissions and Chang’s disclosures, Patent Owner’s arguments that a
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`single “gateway server” stores the entirety of the “white pages” are not “plainly
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`inconsistent with the record,” and Patent Owner’s arguments are consistent with the
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`record, demonstrating that the asserted prior art does not teach or suggest limitation
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`1[h]. Paper 18, p. 8.
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`In the Reply, Petitioner is fixated on each “gateway server” in Chang
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`physically storing only a portion of the overall “enterprise directory.” See, e.g.,
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`Paper 18, p. 10 (“Indeed, Patent Owner’s own expert Dr. Madisetti stated that ‘I
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`don’t agree that’ Chang’s gateway servers ‘store[] the entirety’ of the directory.”)
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`(citing Ex. 1037 at 112:19-113:10). Although the “white pages” are generated from
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`the “enterprise directory,” the “white pages” and the “enterprise directory” are not
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`the same thing. See Ex. 1003, 20:1-6 (“The enterprise directory 90 is the source of
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`the white pages . . . This information is separately maintained in the gateway
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`database because commercially available implementations of an enterprise
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`directory, e.g. NDS, are not indexed, and are therefore not easily searchable. The
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`gateway database 51 is indexed to facilitate the availability of data.”). See also id.,
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`58:19-20 (“white pages directory [is] based upon the enterprise directory”). There
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`is no teaching in Chang that the “white pages” stored in a “gateway server” be
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`restricted to only what can be obtained from the portion of the “enterprise directory”
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`stored locally in the “gateway server.”
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`-8-
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`To the contrary, as discussed above, Chang discloses “gateway database 51”
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`stores a “table [that] can be used as an enterprise wide white pages.” Id., 34:9-11
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`(emphasis added). Additionally, Petitioner even admits that “each gateway server
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`has access to the complete enterprise directory 90.” Petition, p. 39 (emphasis added).
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`So Petitioner admits that despite the “gateway server” only storing a portion of the
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`“enterprise directory,” the “gateway server” still has access to all the information
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`needed to generate/store the entirety of the “white pages.” Again, Patent Owner’s
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`arguments that a single “gateway server” stores the entirety of the “white pages” are
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`not “plainly inconsistent with the record,” and Patent Owner’s arguments are
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`consistent with the record, demonstrating that the asserted prior art does not teach or
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`suggest limitation 1[h]. Paper 18, p. 8.
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`Petitioner argues that in Chang, “the white pages are stored in a distributed
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`fashion, with each gateway server locally storing only the portion of the white pages
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`listing its extensions.” Paper 18, p. 8 (emphasis added). But Chang is silent
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`regarding how a user “workstation” (i.e., Petitioner’s identified “first circuitry”) in
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`a LAN of a first “gateway network” (i.e., Petitioner’s identified “first LAN”) would
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`access “white pages” (i.e., Petitioner’s identified “telecommunications extensions”)
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`stored on a “gateway server” (i.e., Petitioner’s identified “server”) in a LAN of a
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`second “gateway network” (i.e., Petitioner’s identified “second LAN”). As
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`discussed in the Response, Chang does not teach a user “workstation” itself
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`-9-
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`accessing the “gateway server” in the second “gateway network” over the WAN, as
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`is required by claim element 1[h]. See, e.g., Paper 15, p. 14 (“this does not provide
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`any details as to how or where Chang’s workstation (i.e., the first circuitry) obtains
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`the white pages”). Thus, Chang does not teach or suggest claim element 1[h].
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`Petitioner also argues that Figure 3A of Chang shows that “if a user
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`[workstation] on gateway server 26-1 would like to access the director[y] of users
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`on gateway server 26-5, it will be necessary to communicate with gateway server
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`26-5 as that is the only place where that server’s directory is physically stored.”
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`Paper 18, p. 10. But Figure 3A depicts partitions of the “enterprise directory” and
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`not “white pages.” As discussed above, the “enterprise directory” and the “white
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`pages” are not the same thing. But even if each “gateway server” is restricted to
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`storing only the “white pages” that can be generated from the local partition of the
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`“enterprise directory,” Petitioner conveniently fails to mention in this example the
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`actual component that will “communicate with gateway server 26-5.” Id. Thus,
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`Petitioner fails to show that it is Chang’s user “workstation” (i.e., Petitioner’s
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`identified “first circuitry”) that accesses “Chang’s gateway server 26-5” (i.e.,
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`Petitioner’s identified “server”), as required by claim element 1[h]. In fact, Chang’s
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`Fig. 3A does not even show Chang’s user “workstation.”
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`And, finally, Petitioner argues that “Patent Owner is also wrong that it would
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`not have been obvious to ‘exchange messages’ with another ‘gateway server’ when
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`-10-
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`attempting to access that gateway server’s portion of the white pages . . . Chang
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`already teaches a directory that is physically stored in a distributed fashion. Thus,
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`Patent Owner is effectively arguing that it would not be obvious to do what Chang
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`already does: Chang’s distributed directory necessitates exchange of the very type
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`of messages that Patent Owner contends are non-obvious.” Paper 18, p. 15.
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`Petitioner is misguided and mischaracterizing Patent Owner’s arguments.
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`First, in the Response, Patent Owner argued the “Petition’s contentions
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`effectively require Chang’s workstation in the first LAN (gateway network 4) to
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`exchange messages with the gateway server in the second LAN (gateway network
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`6) over Chang’s IP network. When considering each of Chang’s LANs has multiple
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`workstations, these exchanges between workstations and gateway servers in other
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`LANs would drastically reduce the available bandwidth in Chang’s IP network.”
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`Paper 15, pp. 15-16. In other words, Patent Owner argued that a specific type of
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`message exchange (i.e., between a user “workstation” in one “gateway network” and
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`a “gateway server” in another “gateway network” regarding “white pages”) was non-
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`obvious. Contrary to Petitioner’s contentions, Patent Owner did not argue that all
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`message exchanges involving another “gateway server” were non-obvious.
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`Second, Petitioner is improperly blending the “enterprise directory” and the
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`“white pages.” As discussed above, the “enterprise directory” and the “white pages”
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`are not the same thing. Patent Owner agrees that the distributed implementation of
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`-11-
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`Chang’s “enterprise directory” necessitates message exchanges. See, e.g., Ex. 1003,
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`19:29-31 (“changes to entries in a partition [of the enterprise directory] at one
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`location [] are sent to other locations having a replica of the respective partition.”)
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`(emphasis added). But again, these are not the type of messages exchanges that
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`Patent Owner was discussing in the Response. Patent Owner argued that a specific
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`type of message exchange (i.e., between a user “workstation” in one “gateway
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`network” and a “gateway server” in another “gateway network” regarding “white
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`pages”) was non-obvious. Chang does not teach or suggest this type of message
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`exchange, and thus does not teach claim element 1[h].
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`For these reasons and the reasons set forth in the Response, the combination
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`of Chang and Byrne does not teach or suggest claim element 1[h].
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`C. Chang and Byrne do not render obvious claim 1 because the
`combination fails to teach or suggest claim element 1[i].
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`Claim element 1[i] recites, in part: “the first LAN including circuitry for
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`enabling the user to select between observing the list of the plurality of
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`telecommunications extensions coupled to the second LAN or observing a list of the
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`plurality of telecommunications extensions coupled to the third LAN.” The
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`combination of Chang and Byrne fail to teach or suggest this claim element.
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`In the Reply, Petitioner argues “[w]hile Patent Owner is correct that Figure 9
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`does not itself depict user contact information—instead only the names of users
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`-12-
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`associated with a particular server are shown in that figure—Byrne explains that the
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`unshown contact information can be accessed simply by clicking on ‘[t]he small box
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`with a + 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.’ [] As shown in Figure 6, a
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`variety of information can be associated with each user, including ‘Office number’
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`and ‘Office phone.’” Paper 18, p. 17. But that argument mischaracterizes Byrne.
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`Byrne discloses that “[t]he small box [in Fig. 9] with a + to the left of the name
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`indicates there are subdirectories. Clicking on this box causes the subdirectories to
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`be displayed.” Ex. 1004, 7:29-33 (emphasis added). But Byrne expressly states that
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`a user’s office telephone number (i.e., Petitioner’s identified “telecommunications
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`extensions”) is an “attribute,” not a “subdirectory.” See id., 6:60-63 (“FIGS. 6A and
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`6B show only one particular instance of adding an entry. When adding an entry, the
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`user specifies an objectclass, such a[s] ePerson for an individual. Each object-class
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`has an associated set of attributes.”) (emphasis added), Fig. 6B (showing “Office
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`phone” number as an attribute of the ePerson objectclass). Contrary to Petitioner’s
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`contentions, clicking on the box with the “+” to the left of the name in Fig. 9 will
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`not cause the user’s office telephone number to be displayed, because the office
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`telephone number is not a “subdirectory.” Accordingly, Byrne does not teach or
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`suggest a list of telecommunications extensions, as required by claim element 1[i].
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`Petitioner also argues that “Chang teaches a telephone extension directory that
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`includes user extensions associated with different LANs. And, Byrne provides one
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`example of how such a directory can be displayed (a nested tree structure that can
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`display users and user information on a LAN-by-LAN basis).” Paper 18, p. 17
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`(emphasis added). Contrary to Petitioner’s contentions, Bryne does not display users
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`and user information on a LAN-by-LAN basis. Bryne displays users on a server-by-
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`server basis. Ex. 1004, Fig. 4 (showing tabs 406 are “server tabs 406”). A server is
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`not a LAN.
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`Petitioner also disregards the entirety of the cited prior art references, which
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`is improper. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed.
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`Cir. 1987) (“a prior patent must be considered in its entirety, i.e., as a whole”). Byrne
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`is for managing multiple lightweight directory access protocol (LDAP) directory
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`servers. Ex. 1004, Title. Specifically, Byrne discloses a “Directory Management
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`Tool (DMT)” for “locating a server in a distributed network using the [LDAP],
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`maintaining information for the server, displaying a tree of servers, browsing the tree
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`of servers, and searching the tree of servers for an entry with specific attributes.”
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`Id., 2:50-56. According to Petitioner, Byrne’s DMT can allegedly enable the user to
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`select between observing different lists. See Paper 18, pp. 17-18.
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`Byrne also discloses LDAP “is a software protocol for providing directory
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`service enablement to a large number of applications . . . LDAP is a ‘lightweight’
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`version of DAP (Directory Access Protocol), which is part of X.500, a standard for
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`directory services in a network.” Id., 1:38-46 (emphasis added). Accordingly, when
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`Byrne is properly considered in its entirety, the teachings of Byrne and the alleged
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`features of Byrne’s DMT pertain to directory services that use LDAP.
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`Chang’s “enterprise directory” is a directory service. In fact, Chang even
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`discloses the “enterprise directory” is “X.500 compatible,” Ex. 1003, 20:13-14, and
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`supports LDAP. Id., 11:22-30. In contrast, the “white pages” stored on Chang’s
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`“gateway servers” are not a directory service. Id. at 19:33-20:1. Unlike the
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`“enterprise directory,” Chang never refers to the “white pages” as a directory
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`service. Id. at 8:10, 11:27-30, 20:13-14. Again, the “white pages” are generated
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`based on the “enterprise directory,” which is a directory service. Id. at 20:1-9, 58:19-
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`20. But the “white pages” themselves are not a directory service and they are stored
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`in different databases (e.g., “gateway databases”) than the “enterprise directory.” Id.
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`at 18:22, 19:33-20:1, Fig. 3. Thus, the teachings of Byrne and the features of Byrne’s
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`DMT, which are directory-service specific and LDAP specific, would not be
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`applicable to Chang’s “white pages.” As a result, it would not be obvious to
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`integrate Chang’s user “workstation” with the features of Byrne’s DMT, including
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`enabling the user to select between observing different lists, with Chang’s white
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`pages.
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`For these reasons and the reasons set forth in the Response, the combination
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`IPR2021-00574
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`of Chang and Byrne does not teach or suggest claim element 1[i].
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`D. Claims 2, 3, 5, 7-12, 18, and 19
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`Petitioner presents no new arguments for these claims that have not already
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`been addressed by Patent Owner in the Response or this Sur-Reply.
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`E. Claim 4
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`In the Reply, Petitioner argues “[i]t is the combination of the workstation and
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`associated telephone—and not just the workstation alone—that makes Chang’s ‘IP
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`telephone.’” Paper 18, p. 19. For the same reasons set forth above with respect to
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`claim element 1[e], the combination of Chang’s “workstation 24” and “telephone
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`38” does not meet the “IP telephone” requirement of claim 4.
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`For these reasons and the reasons set forth in the Response, the combination
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`of Chang and Byrne does not teach or suggest claim 4.
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`F. Claim 17
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`In the Reply, when discussing claim 17, Petitioner references and repeats the
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`arguments presented for claim element 1[h] and claim 4. See Paper 18, pp. 20-22.
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`Accordingly, for the same reasons set forth above with respect to claim element 1[h]
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`and claim 4, the combination of Chang and Byrne does not render claim 17 obvious.
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`Claim element 17[b] recites: “displaying on a display on the IP telephone a
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`first list including second and third LANs.” In the Reply, while attempting to justify
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`-16-
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`Petitioner’s prior art mappings/position regarding claim element 17[b], Petitioner
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`argues “Byrne itself is open to each of its servers including a network of different
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`user devices. Indeed, this is exactly what is shown in Figure 9A: the selected server
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`is associated with a variety of different users identified in work area 904. (See id. at
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`Fig. 9A).” Paper 18, p. 21 (emphasis added). This is illogical. A server does not
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`include a network. A server may be a component in a network or belong to a
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`network, but the server itself does not include a network. Petitioner’s arguments are
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`based on flawed logic and thus do not render claim 17 obvious.
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`Petitioner’s citation to column 4, lines 15 through 19 of Byrne is unavailing.
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`That portion of Byrne is reproduced below:
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`Of course, distributed data processing system 100 also may be
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`implemented as a number of different types of networks, such as for
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`example, an intranet, a local area network (LAN), or a wide area
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`network (WAN).
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`Ex. 1004, 4:15-19. That portion of Byrne refers to the network in which Byrne is
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`implemented, not the information displayed to the user. See id. Petitioner neglects
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`to cite the next sentence, which confirms this point. See id., 4:19-20 (“FIG. 1 is
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`intended as an example, and not as an architectural limitation for the present
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`invention.”); Fig. 1 (depicting network architecture).
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`-17-
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`Petitioner also argues that “Figure 9A” shows that “Byrne itself is open to
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`Patent 8,391,298
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`each of its servers including a network of different user devices. See Paper 18 at 21.
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`Byrne does not include a Figure 9A. Assuming that Petitioner meant to refer to
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`Figure 9, that figure does not disclose anything about user devices. See Ex. 1004,
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`Fig. 9, 7:22-36. Figure 9 merely shows a listing of what appears to be user names.
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`See id.
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`For these reasons and the reasons set forth in the Response, the combination
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`of Chang and Byrne does not teach or suggest claim 17.
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`III. GROUND 2: CLAIM 6 IS PATENTABLE OVER CHANG, BYRNE,
`IMIELINSKI
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`Petitioner presents no new arguments for this claim that have not already been
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`addressed by Patent Owner in the Response or this Sur-Reply. Paper 18, p. 22.
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`IV. CONCLUSION
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`The evidence shows that the Challenged Claims are patentable.
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`-18-
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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), I hereby certify that the foregoing Patent
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`IPR2021-00574
`Patent 8,391,298
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`Owner’s Sur-Reply contains 4,089 words as measured by the word processing
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`software used to prepare the document, excluding the cover page, signature block,
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`and portions exempted under 37 C.F.R. § 42.24(a) or (b).
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`DATED: April 27, 2022
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`Respectfully submitted,
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`By: /Todd E. Landis/
`Todd E. Landis
`Registration No. 44,200
`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on April 27, 2022,
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`IPR2021-00574
`Patent 8,391,298
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`the foregoing document was served on counsel of record for Petitioner by filing this
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`document through the End-to-End System, as well as via electronic mail to counsel
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`of record for Petitioner at the following addresses:
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`K. Patrick Herma (P52PTABDocket@orrick.com)
`Alyssa Caridis (A8CPTABDocket@orrick.com)
`Clement Roberts (croberts@orrick.com)
`Robert L. Uriarte (ruriarte@orrick.com)
`Li Shen (lshen@orrick.com)
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`Respectfully submitted,
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`By: /Todd E. Landis/
`Todd E. Landis
`Registration No. 44,200
`Counsel for Patent Owner
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