`Patent 8,391,298
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`
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`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
`
`U.S. PATENT NO. 8,391,298
`
`__________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO THE PETITION
`FOR 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
`
`
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`IPR2021-00574
`Patent 8,391,298
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 2
`
`I.
`
`II.
`
`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. ¶ 314(a) ......... 2
`
`A. Fintiv Factor # 5 (Identity of Parties) ..................................................... 3
`B. Fintiv Factors #2 and 3 (Trial Date Proximity to FWD and
`Investment in Parallel Proceedings) ....................................................... 4
`C. Fintiv Factor #4 (Issue Overlap) ............................................................. 6
`D. Fintiv Factor #1 (Likelihood of Stay) ..................................................... 6
`E. Fintiv Factor #6 (Merits and Other Circumstances) ............................... 7
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON
`ANY CHALLENGED CLAIM ....................................................................... 7
`A. The ’298 Patent ....................................................................................... 7
`B. Level of Ordinary Skill in the Art ........................................................ 11
`C. Claim Construction ............................................................................... 11
`D. Ground 1 – The Combination of Chang And Byrne Does Not
`Render Obvious Any of Claims 1-5, 7-12, and 17-19. ........................ 11
`1.
`Independent Claim 1 ................................................................. 11
`i.
`1[e] ..................................................................................... 11
`
`ii. 1[f] ..................................................................................... 16
`
`iii. 1[h] .................................................................................... 17
`
`2.
`3.
`4.
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`Dependent Claims 2 and 3 ........................................................ 24
`Dependent Claim 4 ................................................................... 24
`Dependent Claim 5 ................................................................... 27
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`5.
`6.
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`7.
`8.
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`IPR2021-00574
`Patent 8,391,298
`Dependent Claim 7 ................................................................... 27
`Independent Claim 8 ................................................................. 27
`i.
`8[b] .................................................................................... 27
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`ii. 8[d] .................................................................................... 28
`
`iii. 8[f] ..................................................................................... 29
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`Dependent Claims 9-12 ............................................................. 29
`Independent Claim 17 ............................................................... 29
`i.
`17[a] ................................................................................... 30
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`ii. 17[b] .................................................................................. 30
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`iii. 17[c] ................................................................................... 32
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`iv. 17[d] .................................................................................. 33
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`v.
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`17[e] ................................................................................... 34
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`vi. 17[f] ................................................................................... 34
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`vii. 17[i] ................................................................................... 35
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`viii. 17[j] ................................................................................... 35
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`Dependent Claims 18 and 19 .................................................... 36
`9.
`E. Ground 2 – The Combination of Chang, Byrne, and Imielinski
`Does Not Render Obvious Claim 6. ..................................................... 36
`CONCLUSION .............................................................................................. 36
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`-ii-
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`V.
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`IPR2021-00574
`Patent 8,391,298
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`TABLE OF AUTHORITIES
`
`
`Cases
`Apple Inc. v. Fintiv Inc,
` IPR2020- 00019, Paper 15 (PTAB May 13, 2020) ...................................... passim
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
` IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) .................................................. 2
`Sand Revolution II, LLC, v. Continental Intermodal Group -- Trucking LLC,
` Paper 24, fn. 12 (PTAB June 16, 2020) ................................................................. 4
`Sotera Wireless, Inc. v. Masimo Corp.,
` IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ................................................... 4
`Statutes
`35 U.S.C. § 314(a) .................................................................................................1, 2
`35 U.S.C. § 314(b)(1)................................................................................................. 5
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`EXHIBIT LIST
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`IPR2021-00574
`Patent 8,391,298
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`Exhibit
`2001
`
`Description
`Estech Systems, Inc. v. Target Corp. et al., C.A. No. 2:20-cv-
`00123-JRG (Lead Case), (E.D. Tex.) (Dkt. No. 66, Docket Control
`Order)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`Estech Systems, Inc. v. Howard Midstream Energy Partners d/b/a
`Howard Energy Partners, C.A. No. Case 6:20-cv-00777-ADA,
`(W.D. Tex.) (Dkt. No. 18, Agreed Scheduling Order)
`
`Estech Systems, Inc. v. Howard Midstream Energy Partners d/b/a
`Howard Energy Partners, C.A. No. Case 6:20-cv-00777-ADA,
`(W.D. Tex.) (Dkt. No. 1, Complaint)
`
`Estech Systems, Inc. v. Howard Midstream Energy Partners d/b/a
`Howard Energy Partners, C.A. No. Case 6:20-cv-00777-ADA,
`(W.D. Tex.) (Dkt. No. 8, Appearance of Counsel)
`
`Estech Systems, Inc. v. Howard Midstream Energy Partners d/b/a
`Howard Energy Partners, C.A. No. Case 6:20-cv-00777-ADA,
`(W.D. Tex.) (Dkt. No. 12, Howard Energy Partners’ Answer,
`Defenses, and Counterclaims in Response to Plaintiff’s Complaint
`for Patent Infringement)
`
`Solas OLED Ltd., v. Samsung Display Co. Ltd., Samsung
`Electronics Co., Ltd., and Samung Electronics America, Inc., C.A.
`No. 2:19-CV-00152-JRG (E.D. Tex.) (Dkt. No. 341, Jury Verdict
`Dated March 8, 2021)
`
`White House, Fact Sheet: President Biden Announces New Steps
`to Boost Vaccine Supply and Increase Transparency for States,
`Tribes, and Territories, Whitehouse.com (Feb. 15, 2021),
`https://www.whitehouse.gov/briefing-room/statementsreleases/
`2021/01/26/fact-sheet-president-biden-announces-newsteps-to-
`boost-vaccine-supply-and-increase-transparency-forstates-tribes-
`and-territories (last visited April 6, 2021)
`
`
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`-iv-
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`2008
`
`2009
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`2010
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`IPR2021-00574
`Patent 8,391,298
`Multimedia Content Management LLC v. Dish Network L.L. C.,
`Civil Case No. 6:18-cv-00207, Order Denying Motion to Stay,
`Dkt. No. 73 (W.D. Tex. May 30, 2019)
`
`Continental Intermodal Group-Trucking LLC v. Sand Revolution
`LLC, Civil Case No. 7:18-cv-00147-ADA, Text Order Denying
`Stay (W.D. Tex. Jul. 22, 2020)
`
`Estech Systems, Inc. v. Howard Midstream Energy Partners d/b/a
`Howard Energy Partners, C.A. No. Case 6:20-cv-00777-ADA,
`(W.D. Tex.) (Pacer Docket)
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`IPR2021-00574
`Patent 8,391,298
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`I.
`
`INTRODUCTION
`Estech Systems, Inc. (“Patent Owner”) respectfully submits this Preliminary
`
`Response (“Response”) to RingCentral, Inc.’s (“RingCentral” or “Petitioner”)
`
`Petition for Inter Partes Review No. IPR2021-00574 (Paper 1) (“Petition” or “Pet.”)
`
`of U.S. Patent No. 8,391,298 (the “’298 Patent”).
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`Institution should be denied because the Petition has failed to demonstrate a
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`reasonable likelihood that any claim of the ’298 Patent is unpatentable because each
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`ground presented in the Petition fails to disclose or suggest key limitations of every
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`challenged claims.
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`In addition, the Board should exercise its discretionary power to deny
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`institution under 35 U.S.C. ¶ 314(a) because two parallel litigations will be decided
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`by a jury before any final written decision (“FWD”) would issue on the Petition—
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`the first thirteen months before any FWD and the second five months before any
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`FWD.. See Apple Inc. Fintiv Inc. (“Fintiv”), IPR2020- 00019, Paper 15 at 13, 17
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`(PTAB May 13, 2020) (precedential) (denying institution where trial in parallel
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`proceeding was scheduled to begin two months before final written decision); Ex.
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`2001; Ex. 2002. By the statutory date for an institution decision on October 8, 2021,
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`the parties will have exchanged final infringement and invalidity contentions, claim
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`construction will have occurred and fact discovery will be substantially complete.
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`Instituting trial on this Petition will not serve as an “effective and efficient
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`alternative” to litigation, frustrating a primary objective of the AIA. Gen. Plastic
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`Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16-17
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`(PTAB Sept. 6, 2017) (precedential).
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`For these reasons, institution should be denied.
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`II. STATEMENT OF THE PRECISE RELIEF REQUESTED
`Patent Owner requests that the Board deny institution of the Petition with
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`respect to all challenged claims and all asserted grounds. A full statement of the
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`reasons for the relief requested is set forth in Sections III and IV of this Response.
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`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. ¶ 314(a)
`The Board should exercise its discretion to deny the Petition because the
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`Fintiv factors favor denial.1 The substantially same issues presented by this Petition
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`are also being pursued in a parallel district court proceedings involving Howard
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`Midstream Energy Partners (“HEP”), a real party-in-interest. By the time an
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`institution decision is issued, Patent Owner and HEP, will have fully briefed claim
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`construction and claim construction hearings will already have been held.
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`Trial in the related the Western District of Texas (“WDTX”) involving HEP
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`and the ’298 patent is scheduled for April 11, 2022, approximately five months
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`before the statutory date for a FWD in this proceeding. See, e.g., Ex. 2001. A second
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`1 See Fintiv, Paper 11 (setting out and applying the six factors).
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`litigation in the Eastern District of Texas (“EDTX”) litigation involving the ’298
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`patent is scheduled for trial on August 2, 2021—thirteen months before the
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`statutory date for a FWD in this proceeding. See Ex. 2002. The timing of the parallel
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`district court trials is a direct result of Petitioner’s delay in filing the Petition. The
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`Petition was filed seven months after the WDTX litigation began. Moreover, the
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`Petition is likely to fail on the merits, as each unpatentability ground presented fails
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`to disclose or suggest key limitations of the challenged claims.
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`A. Fintiv Factor # 5 (Identity of Parties)
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`Petitioner’s discretionary denial arguments are premised on the assertion that
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`it is not a party to any litigation regarding the invalidity of the ’298 Patent and had
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`no duty to indemnify HEP. Pet., p. 9. In urging the Board to ignore the WDTX
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`litigation, Petitioner asserts that it promptly filed the Petition after agreeing to
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`indemnify HEP on February 1, 2021, but ignores the fact that HEP’s counsel made
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`an appearance in the WDTX litigation only three days after the complaint was filed.
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`Ex. 2003; Ex. 2004. HEP subsequently filed its answer on October 19, 2020. Ex.
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`2005. But Petitioner never identified when Petitioner received such request for
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`indemnification. Nevertheless, by indemnifying HEP, Petitioner has voluntarily
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`placed itself in the same position as HEP in the WDTX litigation, including adopting
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`HEP’s invalidity contentions. Yet, Petitioner has not made the broad stipulation
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`recommended by the precedential Sand Revolution and Sotera decisions, which
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`require a stipulation that Petitioner would not pursue in the litigation “any ground
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`raised or that could have been reasonably raised” in the Petition. See Sotera
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`Wireless, Inc. v. Masimo Corp. (“Sotera”), IPR2020-01019, Paper 12, pp. 18-19
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`(PTAB Dec. 1, 2020); Sand Revolution II, LLC, v. Continental Intermodal Group --
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`Trucking LLC (“Sand Revolution”), Paper 24, fn. 12 (PTAB June 16, 2020).
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`Moreover, Fintiv factor 5 would weigh in favor of denial even if Petitioner were
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`completely uninvolved in the WDTX litigation. Fintiv instructs that “[e]ven when
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`a petitioner is unrelated to a defendant[] if the issues are the same as, or substantially
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`similar to, those already or about to be litigated, or other circumstances weigh against
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`redoing the work of another tribunal, the Board may, nonetheless, exercise the
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`authority to deny institution.” See Fintiv, IPR2020- 00019, Paper 11 at 14 (PTAB
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`Mar. 20, 2020). Viewed in that light, Fintiv factor 5 weighs heavily in favor of
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`discretionary denial and Petitioner should be treated as a party to the WDTX
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`litigation.
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`B.
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`Fintiv Factors #2 and 3 (Trial Date Proximity to FWD and
`Investment in Parallel Proceedings)
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`As noted above, the parallel litigations are at an advanced stage. The WDTX
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`
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`litigation is scheduled be tried to a jury five months before any FWD would issue
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`from the Petition. Ex. 2002. The EDTX litigation is scheduled to be tried to a jury
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`thirteen months before any FWD would issue from the Petition. Ex. 2001. A
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`decision on institution for this Petition is expected on October 8, 2021 (see 35 U.S.C.
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`§ 314(b)(1)). By the date of the decision on institution, the WDTX parties will have
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`served their final infringement and invalidity contentions and fact discovery will be
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`substantially complete. Ex. 2002. The EDTX litigation will have concluded with
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`trial in August 2021. Ex. 2001.
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`There is no evidence that trial in either of the parallel litigations is likely to be
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`continued. See Fintiv, Paper 15 at p.13 (“We generally take courts’ trial schedules
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`at face value absent some strong evidence to the contrary.”). While the Petition
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`speculates about potential delay in the WDTX litigation (Pet., pp. 7-9), the presiding
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`judge has shown no inclination to delay trials due to COVID-19, and in fact
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`continued to hold trials even in the heart of the pandemic in 2020. See Ex. 2006.
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`Moreover, the presidential administration expects that before any decision on
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`institution would issue here, more than seventy percent of adults in the United States
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`will have received at least one vaccine shot and nearly half of adults to be fully
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`vaccinated. Ex. 2007. Potential COVID-19-related trial delays are simply no longer
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`a viable argument for conducting a PTAB trial while the parties are litigating the
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`exact same issues in parallel in district court.
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`Because the exact issues presented by the Petition will be tried to a jury before
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`any FWD would issue on the Petition, and because Patent Owner, Petitioner, and the
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`Court will have invested significant resources into the parallel litigation even before
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`the decision on institution, Fintiv factors 2 and 3 weigh heavily in favor of
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`discretionary denial.
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`C. Fintiv Factor #4 (Issue Overlap)
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`The substantially same unpatentability challenges presented in the Petition are
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`also being pursued by HEP in the parallel litigation. The Petition does not allege
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`otherwise. The same unpatentability issues presented by the Petitioner and HEP will
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`therefore be decided by a jury before any FWD would issue from the Petition. Ex.
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`2002. This factor weighs heavily in favor of discretionary denial and should be
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`dispositive—the Board should not waste its finite resources evaluating primarily the
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`same issues that will be decided in parallel district court proceedings by the same
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`parties before any FWD would issue.
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`D. Fintiv Factor #1 (Likelihood of Stay)
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`This factor does not favor institution. HEP has not filed for a stay pending
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`the Board’s decision on the Petition. Ex. 2010. Any subsequent request for a stay
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`is highly unlikely to be granted. The presiding judge in the parallel litigation
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`strongly disfavors staying cases when litigation would provide a faster resolution
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`than a parallel inter partes review. See, e.g., Ex. 2008 (noting preference for trying
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`issues to a jury and detailing case schedules); Ex. 2009. Because no stay pending
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`resolution of the Petition has been requested and because there is a near-zero
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`possibility that the district court case will be stayed even if subsequently requested,
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`this factor weighs in favor of denial.
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`E.
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`Fintiv Factor #6 (Merits and Other Circumstances)
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`As detailed above, the Petition does not disclose or suggest key limitations of
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`each of the challenged claims, as the sole anticipatory reference asserted against each
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`independent claim and numerous obvious combinations do not disclose numerous
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`limitations recited by each of those claims. The Petition therefore does not establish
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`a reasonable likelihood that the Petitioner would prevail with respect to at least one
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`of the claims challenged in the Petition. The Board should exercise its discretionary
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`power to deny the Petition.
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`IV. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH A REASONABLE LIKELIHOOD OF SUCCESS ON ANY
`CHALLENGED CLAIM
`As detailed below, the Petition fails to demonstrate a reasonable likelihood
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`that the Petitioner would prevail with respect to any claim of the ’298 Patent. The
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`Petition challenges claims 1-12 and 17-19 based on two Grounds but as detailed
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`herein, each proposed Ground fails to disclose key limitations of each challenged
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`claim. Trial should not be instituted.
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`A. The ’298 Patent
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`The ’298 Patent was filed on May 29, 2003, and issued on March 5, 2013. It
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`is a continuation-in-part of U.S. App. No. 09/775,018, which was filed on February
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`1, 2001, and issued as U.S. Patent No. 7,068,684 (the “’684 Patent”). The ’298
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`Patent is titled “Phone Directory in a Voice Over IP Telephone System.” The
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`Abstract of the ‘298 patent provides an overview of the claimed subject matter: “In
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`a Voice over IP system, a user can dial numbers stored in a series of lists, which are
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`stored in the system and displayed to the user of an IP telephone. One
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`implementation will allow a user to scroll through a list of remote sites. When the
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`user finds the desired site, the user is then presented with the same options as a user
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`local to that site. All of this can be performed without the need for an operator or a
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`printed directory. This system provides an ability for a user to scroll through a list
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`of names and phone numbers and then call a person once their name and phone
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`number is displayed.” Ex. 1001, Abstract.
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`The invention of the ‘298 Patent can be used in a network architecture
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`consisting of LANs interconnected by a WAN, an example of which is depicted in
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`Figure 3. See id. at 2:3-4.2
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`2 A citation of 2:3-4 refers to column 2, lines 3-4. This citation format is used
`through the Response.
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`Ex. 1001, Fig. 3.
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`“An embodiment of the present invention permits a user at a remote site to
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`easily scroll through a phone listing of users through the WAN 201.” Id. at 9:53-55.
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`The phone listing can be displayed to the user or the phone listing can be vocally
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`listed to a user. See id. at 9:66-10:4. In some embodiments, the listing can be limited
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`to the same LAN as the user, or listing from other LANs that are connected via a
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`WAN. See id. at 9:55-59, Fig. 11. The user can automatically dial the number of an
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`individual listing by, for example, pressing a button on a VoIP telephone. See id. at
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`9:60-64, Fig. 11.
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`IPR2021-00574
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`[SEE FIG. SA]
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`Ex. 1001, Fig. 11.
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`
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`B.
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`Level of Ordinary Skill in the Art
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`For the purposes of this Response only, Patent Owner does not dispute the
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`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
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`IPR2021-00574
`Patent 8,391,298
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`Petition.
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`C. Claim Construction
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`For purposes of this IPR, Patent Owner accepts Petitioner’s proposed claim
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`constructions. Because the Petition fails to raise a reasonable likelihood that any
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`claim of the ’298 Patent is unpatentable even under Petitioner’s proposed
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`interpretations, this Response applies Petitioner’s term interpretations to minimize
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`the disputes to be resolved by the Board at this preliminary stage.
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`D. Ground 1 – The Combination of Chang and Byrne Does Not
`Render Obvious Any of Claims 1-5, 7-12, and 17-19.
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`The combination of Chang (Ex. 1003) and Byrne (Ex. 1004) does not render
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`
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`obvious any of claims 1-5, 7-12, and 17-19, because neither reference, nor the
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`combination thereof, teaches or suggests every claim limitation.
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`1.
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`Independent Claim 1
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`The combination of Chang and Byrne does not render obvious claim 1 at least
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`because it does not teach or suggest the following elements of independent claim 1.
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`i.
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`1[e]
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`Claim element 1[e] recites “a first telecommunications device coupled to the
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`first LAN.” Chang does not teach or suggest this limitation. The Petition contends
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`that either of the “workstation” and the “telephone” disclosed in Chang is “a first
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`telecommunications device.” Petition at 28. Neither the “workstation” nor the
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`“telephone” meet this limitation.
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`The “telephone” disclosed in Chang does not meet this limitation because it
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`is not “coupled to the first LAN.” The Petition identifies LAN 22, as depicted in
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`Figure 2, as the “first LAN.” See Petition at 23 (“As shown, the network includes a
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`LAN 22 that connects a gateway server 26, a router 32, workstation, and the
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`directory server 26.” Telephone 38 is not listed as a device connected via LAN 22.
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`Nor is telephone 38 depicted (in Figure 2) as one of the devices connected to LAN
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`22.
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`Ex. 1003, Fig. 2.
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`Chang describes the telephone as “coupled to the PBX.” See id. at 6:14,
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`15:29-30, 6:22-23, 7:34, 72:8, 72:24, 73:7, 73:11, 74:2, 75:13, 79:6, 84:1-2. For at
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`least these reasons, the “telephone” disclosed in Chang is not “a first
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`telecommunications device coupled to the first LAN.”
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`The “workstation” disclosed in Chang does not meet this limitation because it
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`is not a “telecommunications device.” The Petition contends that workstation 24 is
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`a “telecommunications device.” See Petition at 28. The workstation is not described
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`as allowing for telecommunications. The Petition cites only a single portion of
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`Chang to allege that the “workstation” is a telecommunications device—page 5,
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`lines 28-32. See Petition at 28. Not surprisingly, the Petition does not quote the
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`entire citation because it is contrary to Petitioner’s position. Chang states: “It is an
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`object of the invention to provide an integrated voice gateway system in which users
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`can initiate telephone functions from the workstation, such functions including,
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`without limitation, dialing a call, transferring a call, add-on conference, and forward
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`a call to/from any white pages entry or persona telephone book entry.” Compare
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`Ex. 1003, 5:28-32 (emphasis added) with Petition at 28 (“telephone functions …
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`including, without limitation, dialing a call, transferring a call, add-on conference,
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`and forward a call to/from any white pages entry...”) (quoting Ex. 1003 at 5:28-32).
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`The workstation can initiate some telephone functions, but not actually perform the
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`functions of a telecommunications device, like conducting a phone call. Without the
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`telephone of Chang, however, the workstation cannot perform any of these
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`functions. The remainder of Chang, which was not cited by the Petition, clarifies
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`that the workstation merely controls the telephone (i.e., the workstation initiates
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`functions by controlling the telephone to perform those functions), and is not capable
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`of operating as a telecommunications device.
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`Chang contains a detailed description of the “PC Call Control” functionality,
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`which is used to control the telephone from the workstation. See Ex. 1003 at 6:27-
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`28. The PC Call Control functionality is provided through a web browser interface
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`that is accessible from the workstation.3 Id. at 37:13-15 (“The integrated computer
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`telephone system of the invention provides the user with an integrated,
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`comprehensive, and easy to use PC Call Control capability via a web browser
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`interface.”). Chang states in no uncertain terms that “all of the methods and
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`scenarios of operation illustrated by the FIGs., and described herein, may be
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`controlled by the user from the telephone via DTMF buttons or from the desktop
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`workstation via the web browser interface.” See id. at 37:16-19 (emphasis added).
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`Chang also states in no uncertain terms that all calls are made by the
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`telephone, not the workstation. The description of a “Basic PSTN Call” describes
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`calls as occurring between telephones, not workstations. See id. at 37:22-35 (“In a
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`preferring embodiment, the integrated computer telephone system of the invention
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`provides the capability to place a telephone call from a caller gateway telephone to
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`a called gateway telephone via the PSTN.”) (emphasis added). Likewise for a “Basic
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`VoIP Call.” See id. at 38:1-32 (“In a preferred embodiment, the gateway network
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`provides the capability to place a telephone call from a caller gateway telephone to
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`a called gateway telephone via an IP network.”) (emphasis added).
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`The “Virtual Desktop” functionality disclosed in Chang further confirms that
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`the “workstation” is not a “telecommunications device.” Chang describes this
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`3 The PC Call Control capability is implemented via a web browser interface,
`rather than an application installed on the workstation, to reduce the cost and
`complexity of implementation. See id. at 56:22-57:5.
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`functionality as providing “a virtual desktop which allows a computer browser and
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`a telephone at a location other than a user’s regular office, e.g. an ‘alternate office’
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`or a ‘virtual office’, to be logically associated with the user.” Id. at 57:12-15
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`(emphasis added). Chang notes that both a telephone and a workstation are required
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`to implement the “Virtual Desktop” functionality. See id. at 57:18-20 (“An alternate
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`office within the company is any location that has access to both a gateway
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`telephone, and a desktop workstation having a browser. . . .”) (emphasis added). The
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`reason for why both devices are required is clear—the workstation itself is not a
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`“telecommunications device,” so a separate telephone is necessary.
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`The Petition does not contend that this limitation is met by Byrne. See Petition
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`at 27-28. Nor does the Petition contend that it would have been obvious to modify
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`either of the “telephone” or “workstation” in Chang to satisfy this limitation. See id.
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`For at least these reasons, neither Chang nor Byrne, taken alone or in combination,
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`teach or suggest “a first telecommunications device coupled to the first LAN.”
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`ii.
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`1[f]
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`Claim element 1[f] recites “a plurality of telecommunications extensions
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`coupled to the second LAN.” The Petition contends that this limitation is satisfied
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`by “a plurality [of] telephones and/or workstations, each of which is its own
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`telecommunications extension with its own extension number.” See Petition at 30.
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`Neither the “workstation” nor the “telephone” meet this limitation.
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`The “telephone” described in Chang does not meet this limitation because it
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`is not coupled to the second LAN. As has already been established for limitation
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`1[e], the telephones of Chang are not coupled to any LAN. See Section IV.D.1.i.
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`As a result, a telephone in one “Gateway Network” cannot be coupled to the LAN
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`in a different “Gateway Network” (i.e., the alleged “second LAN”).
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`The “workstation” described in Chang does not meet this limitation because
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`it is not a telecommunications extension. As has already been established for
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`limitation 1[e], the workstations of Chang are not telecommunications extensions.
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`See Section IV.D.1.i. The Petition cites no evidence that the workstation has a
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`telecommunications extension associated with it. See Petition at 29-30.
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`The Petition does not contend that this limitation is met by Byrne. See Petition
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`at 29-30. Nor does the Petition contend that it would have been obvious to modify
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`either of the “telephone” or “workstation” in Chang to satisfy this limitation. See id.
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`For at least these reasons, neither Chang nor Byrne, taken alone or in combination,
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`teach or suggest “a plurality of telecommunications extensions coupled to the second
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`LAN.”
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`iii.
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`1[h]
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`Claim element 1[h] recites “the first LAN including second circuitry for
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`automatically calling one of the plurality of telecommunications extensions in
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`response to the user selecting one of the plurality of telecommunications extensions
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`from the observed list, wherein the list of the plurality of telecommunications
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`extensions is stored in a server in the second LAN, and is accessed by the first
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`circuitry across the WAN.” It is important to consider the surrounding claim
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`limitations to determine the scope of the claim and properly analyze the alleged prior
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`art.
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`Limitation 1[g] recites “the first LAN including first circuitry for enabling a
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`user of the first telecommunications device to observe a list of the plurality of
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`telecommunications extensions.” The second part of limitation 1[h] recites “wherein
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`the list of the plurality of telecommunications extensions is stored in a server in the
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`second LAN.” The “list of the plurality of telecommunications extensions” recited
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`in limitation 1[h] refers to the same “list of the plurality of telecommunications
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`extensions” recited in limitation 1[g].
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`Limitation 1[g]
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`Limitation 1[h]
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`“the first LAN including first circuitry
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`“the
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`first LAN
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`including second
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`for enabling a user of
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`the
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`first
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`circuitry for automatically calling one
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`telecommunications device to observe a
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`of the plurality of telecommunications
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`list
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`of
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`the
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`plurality
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`of
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`extensions in response to the user
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`telecommunications extensions;”
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`selecting one of
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`the plurality of
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`telecommunications extensions from
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`the observed list, wherein the list of the
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`plurality
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`of
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`telecommunications
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`extensions is stored in a server in the
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`second LAN, and is accessed by the first
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`circuitry across the WAN”
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`Accordingly, every list of telecommunications extensions that the “first
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`circuitry” enables a user to observe (limitation 1[g]) must be stored in a server in the
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`second LAN (limitation 1[h]). Neither Chang, nor Byrne, nor the combination
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`thereof, rende