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
`__________________
`
`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
`
`
`
`
`
`
`
`

`

`IPR2021-00574
`Patent 8,391,298
`
`TABLE OF CONTENTS
`
`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.
`
`Dependent Claims 2 and 3 ........................................................ 24
`Dependent Claim 4 ................................................................... 24
`Dependent Claim 5 ................................................................... 27
`
`
`
`-i-
`
`

`

`5.
`6.
`
`7.
`8.
`
`IPR2021-00574
`Patent 8,391,298
`Dependent Claim 7 ................................................................... 27
`Independent Claim 8 ................................................................. 27
`i.
`8[b] .................................................................................... 27
`
`ii. 8[d] .................................................................................... 28
`
`iii. 8[f] ..................................................................................... 29
`
`Dependent Claims 9-12 ............................................................. 29
`Independent Claim 17 ............................................................... 29
`i.
`17[a] ................................................................................... 30
`
`ii. 17[b] .................................................................................. 30
`
`iii. 17[c] ................................................................................... 32
`
`iv. 17[d] .................................................................................. 33
`
`v.
`
`17[e] ................................................................................... 34
`
`vi. 17[f] ................................................................................... 34
`
`vii. 17[i] ................................................................................... 35
`
`viii. 17[j] ................................................................................... 35
`
`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
`
`
`
`
`
`-ii-
`
`V.
`
`
`
`
`
`

`

`IPR2021-00574
`Patent 8,391,298
`
`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
`
`
`
`
`
`-iii-
`
`

`

`EXHIBIT LIST
`
`IPR2021-00574
`Patent 8,391,298
`
`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)
`
`
`
`-iv-
`
`

`

`2008
`
`2009
`
`2010
`
`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)
`
`
`
`
`
`-v-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`
`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”).
`
`Institution should be denied because the Petition has failed to demonstrate a
`
`reasonable likelihood that any claim of the ’298 Patent is unpatentable because each
`
`ground presented in the Petition fails to disclose or suggest key limitations of every
`
`challenged claims.
`
`In addition, the Board should exercise its discretionary power to deny
`
`institution under 35 U.S.C. ¶ 314(a) because two parallel litigations will be decided
`
`by a jury before any final written decision (“FWD”) would issue on the Petition—
`
`the first thirteen months before any FWD and the second five months before any
`
`FWD.. See Apple Inc. Fintiv Inc. (“Fintiv”), IPR2020- 00019, Paper 15 at 13, 17
`
`(PTAB May 13, 2020) (precedential) (denying institution where trial in parallel
`
`proceeding was scheduled to begin two months before final written decision); Ex.
`
`2001; Ex. 2002. By the statutory date for an institution decision on October 8, 2021,
`
`the parties will have exchanged final infringement and invalidity contentions, claim
`
`construction will have occurred and fact discovery will be substantially complete.
`
`Instituting trial on this Petition will not serve as an “effective and efficient
`
`-1-
`
`
`

`

`IPR2021-00574
`Patent 8,391,298
`alternative” to litigation, frustrating a primary objective of the AIA. Gen. Plastic
`
`Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16-17
`
`(PTAB Sept. 6, 2017) (precedential).
`
`For these reasons, institution should be denied.
`
`II. STATEMENT OF THE PRECISE RELIEF REQUESTED
`Patent Owner requests that the Board deny institution of the Petition with
`
`respect to all challenged claims and all asserted grounds. A full statement of the
`
`reasons for the relief requested is set forth in Sections III and IV of this Response.
`
`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
`
`Fintiv factors favor denial.1 The substantially same issues presented by this Petition
`
`are also being pursued in a parallel district court proceedings involving Howard
`
`Midstream Energy Partners (“HEP”), a real party-in-interest. By the time an
`
`institution decision is issued, Patent Owner and HEP, will have fully briefed claim
`
`construction and claim construction hearings will already have been held.
`
`Trial in the related the Western District of Texas (“WDTX”) involving HEP
`
`and the ’298 patent is scheduled for April 11, 2022, approximately five months
`
`before the statutory date for a FWD in this proceeding. See, e.g., Ex. 2001. A second
`
`
`1 See Fintiv, Paper 11 (setting out and applying the six factors).
`
`
`
`-2-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`litigation in the Eastern District of Texas (“EDTX”) litigation involving the ’298
`
`patent is scheduled for trial on August 2, 2021—thirteen months before the
`
`statutory date for a FWD in this proceeding. See Ex. 2002. The timing of the parallel
`
`district court trials is a direct result of Petitioner’s delay in filing the Petition. The
`
`Petition was filed seven months after the WDTX litigation began. Moreover, the
`
`Petition is likely to fail on the merits, as each unpatentability ground presented fails
`
`to disclose or suggest key limitations of the challenged claims.
`
`A. Fintiv Factor # 5 (Identity of Parties)
`
`Petitioner’s discretionary denial arguments are premised on the assertion that
`
`it is not a party to any litigation regarding the invalidity of the ’298 Patent and had
`
`no duty to indemnify HEP. Pet., p. 9. In urging the Board to ignore the WDTX
`
`litigation, Petitioner asserts that it promptly filed the Petition after agreeing to
`
`indemnify HEP on February 1, 2021, but ignores the fact that HEP’s counsel made
`
`an appearance in the WDTX litigation only three days after the complaint was filed.
`
`Ex. 2003; Ex. 2004. HEP subsequently filed its answer on October 19, 2020. Ex.
`
`2005. But Petitioner never identified when Petitioner received such request for
`
`indemnification. Nevertheless, by indemnifying HEP, Petitioner has voluntarily
`
`placed itself in the same position as HEP in the WDTX litigation, including adopting
`
`HEP’s invalidity contentions. Yet, Petitioner has not made the broad stipulation
`
`recommended by the precedential Sand Revolution and Sotera decisions, which
`
`
`
`-3-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`require a stipulation that Petitioner would not pursue in the litigation “any ground
`
`raised or that could have been reasonably raised” in the Petition. See Sotera
`
`Wireless, Inc. v. Masimo Corp. (“Sotera”), IPR2020-01019, Paper 12, pp. 18-19
`
`(PTAB Dec. 1, 2020); Sand Revolution II, LLC, v. Continental Intermodal Group --
`
`Trucking LLC (“Sand Revolution”), Paper 24, fn. 12 (PTAB June 16, 2020).
`
`Moreover, Fintiv factor 5 would weigh in favor of denial even if Petitioner were
`
`completely uninvolved in the WDTX litigation. Fintiv instructs that “[e]ven when
`
`a petitioner is unrelated to a defendant[] if the issues are the same as, or substantially
`
`similar to, those already or about to be litigated, or other circumstances weigh against
`
`redoing the work of another tribunal, the Board may, nonetheless, exercise the
`
`authority to deny institution.” See Fintiv, IPR2020- 00019, Paper 11 at 14 (PTAB
`
`Mar. 20, 2020). Viewed in that light, Fintiv factor 5 weighs heavily in favor of
`
`discretionary denial and Petitioner should be treated as a party to the WDTX
`
`litigation.
`
`B.
`
`Fintiv Factors #2 and 3 (Trial Date Proximity to FWD and
`Investment in Parallel Proceedings)
`
`As noted above, the parallel litigations are at an advanced stage. The WDTX
`
`
`
`litigation is scheduled be tried to a jury five months before any FWD would issue
`
`from the Petition. Ex. 2002. The EDTX litigation is scheduled to be tried to a jury
`
`thirteen months before any FWD would issue from the Petition. Ex. 2001. A
`
`decision on institution for this Petition is expected on October 8, 2021 (see 35 U.S.C.
`-4-
`
`
`
`

`

`IPR2021-00574
`Patent 8,391,298
`§ 314(b)(1)). By the date of the decision on institution, the WDTX parties will have
`
`served their final infringement and invalidity contentions and fact discovery will be
`
`substantially complete. Ex. 2002. The EDTX litigation will have concluded with
`
`trial in August 2021. Ex. 2001.
`
`There is no evidence that trial in either of the parallel litigations is likely to be
`
`continued. See Fintiv, Paper 15 at p.13 (“We generally take courts’ trial schedules
`
`at face value absent some strong evidence to the contrary.”). While the Petition
`
`speculates about potential delay in the WDTX litigation (Pet., pp. 7-9), the presiding
`
`judge has shown no inclination to delay trials due to COVID-19, and in fact
`
`continued to hold trials even in the heart of the pandemic in 2020. See Ex. 2006.
`
`Moreover, the presidential administration expects that before any decision on
`
`institution would issue here, more than seventy percent of adults in the United States
`
`will have received at least one vaccine shot and nearly half of adults to be fully
`
`vaccinated. Ex. 2007. Potential COVID-19-related trial delays are simply no longer
`
`a viable argument for conducting a PTAB trial while the parties are litigating the
`
`exact same issues in parallel in district court.
`
`Because the exact issues presented by the Petition will be tried to a jury before
`
`any FWD would issue on the Petition, and because Patent Owner, Petitioner, and the
`
`Court will have invested significant resources into the parallel litigation even before
`
`
`
`-5-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`the decision on institution, Fintiv factors 2 and 3 weigh heavily in favor of
`
`discretionary denial.
`
`C. Fintiv Factor #4 (Issue Overlap)
`
`The substantially same unpatentability challenges presented in the Petition are
`
`also being pursued by HEP in the parallel litigation. The Petition does not allege
`
`otherwise. The same unpatentability issues presented by the Petitioner and HEP will
`
`therefore be decided by a jury before any FWD would issue from the Petition. Ex.
`
`2002. This factor weighs heavily in favor of discretionary denial and should be
`
`dispositive—the Board should not waste its finite resources evaluating primarily the
`
`same issues that will be decided in parallel district court proceedings by the same
`
`parties before any FWD would issue.
`
`D. Fintiv Factor #1 (Likelihood of Stay)
`
`This factor does not favor institution. HEP has not filed for a stay pending
`
`the Board’s decision on the Petition. Ex. 2010. Any subsequent request for a stay
`
`is highly unlikely to be granted. The presiding judge in the parallel litigation
`
`strongly disfavors staying cases when litigation would provide a faster resolution
`
`than a parallel inter partes review. See, e.g., Ex. 2008 (noting preference for trying
`
`issues to a jury and detailing case schedules); Ex. 2009. Because no stay pending
`
`resolution of the Petition has been requested and because there is a near-zero
`
`
`
`-6-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`possibility that the district court case will be stayed even if subsequently requested,
`
`this factor weighs in favor of denial.
`
`
`
`E.
`
`Fintiv Factor #6 (Merits and Other Circumstances)
`
`As detailed above, the Petition does not disclose or suggest key limitations of
`
`each of the challenged claims, as the sole anticipatory reference asserted against each
`
`independent claim and numerous obvious combinations do not disclose numerous
`
`limitations recited by each of those claims. The Petition therefore does not establish
`
`a reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`of the claims challenged in the Petition. The Board should exercise its discretionary
`
`power to deny the Petition.
`
`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
`
`that the Petitioner would prevail with respect to any claim of the ’298 Patent. The
`
`Petition challenges claims 1-12 and 17-19 based on two Grounds but as detailed
`
`herein, each proposed Ground fails to disclose key limitations of each challenged
`
`claim. Trial should not be instituted.
`
`A. The ’298 Patent
`
`The ’298 Patent was filed on May 29, 2003, and issued on March 5, 2013. It
`
`is a continuation-in-part of U.S. App. No. 09/775,018, which was filed on February
`
`
`
`-7-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`1, 2001, and issued as U.S. Patent No. 7,068,684 (the “’684 Patent”). The ’298
`
`Patent is titled “Phone Directory in a Voice Over IP Telephone System.” The
`
`Abstract of the ‘298 patent provides an overview of the claimed subject matter: “In
`
`a Voice over IP system, a user can dial numbers stored in a series of lists, which are
`
`stored in the system and displayed to the user of an IP telephone. One
`
`implementation will allow a user to scroll through a list of remote sites. When the
`
`user finds the desired site, the user is then presented with the same options as a user
`
`local to that site. All of this can be performed without the need for an operator or a
`
`printed directory. This system provides an ability for a user to scroll through a list
`
`of names and phone numbers and then call a person once their name and phone
`
`number is displayed.” Ex. 1001, Abstract.
`
`The invention of the ‘298 Patent can be used in a network architecture
`
`consisting of LANs interconnected by a WAN, an example of which is depicted in
`
`Figure 3. See id. at 2:3-4.2
`
`
`2 A citation of 2:3-4 refers to column 2, lines 3-4. This citation format is used
`through the Response.
`
`
`
`-8-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`
`
`
`Ex. 1001, Fig. 3.
`
`“An embodiment of the present invention permits a user at a remote site to
`
`easily scroll through a phone listing of users through the WAN 201.” Id. at 9:53-55.
`
`The phone listing can be displayed to the user or the phone listing can be vocally
`
`listed to a user. See id. at 9:66-10:4. In some embodiments, the listing can be limited
`
`to the same LAN as the user, or listing from other LANs that are connected via a
`
`WAN. See id. at 9:55-59, Fig. 11. The user can automatically dial the number of an
`
`individual listing by, for example, pressing a button on a VoIP telephone. See id. at
`
`9:60-64, Fig. 11.
`
`
`
`-9-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`
`DISPIA‘!’
`H ESPUNSE M ESSAEE
`RECEIWU
`1r
`
`DIS FI.."I‘Ir
`RESPONSE
`MESSAGE
`
`RDLODEE
`KEY
`F'RE SEED
`:I
`
`ERRDW KE'I"
`DR ALPHANUME RIC
`KE‘I"
`PEESSED
`
`BEGIN C.”- LL
`PROCESSING
`
`DISPLAY FIFIST OF
`N REMDTE SITE
`NAMES
`
`H D L'CIDETII
`BUTTON I‘EE‘If
`F'HESSEE}
`3.‘
`
`E5
`
`ARROW KE‘I" DR
`AL PHANUME RIC
`KEY FRESSED
`
`[)5va STATION DEE
`CIR SYSTEM DEE
`lIZI'F'TIICIIII-IS FDR
`I‘J'ELEIL'TEEII REMGTE SITE
`
`DISF' LAT"
`SELECTED
`R F MUTE S ITE
`
`ARRUW KEY
`GR Al PHANUMERIC
`KEY
`F'RE SSEI'J
`F
`
`SE ND- MESSAGE TO
`SELECTED HEMDTE SrrE
`PE RTAINING TD
`FRFSSED KEY
`
`[SEE FIG. SA]
`
`Ex. 1001, Fig. 11.
`
`
`
`
`
`-10-
`
`

`

`B.
`
`Level of Ordinary Skill in the Art
`
`For the purposes of this Response only, Patent Owner does not dispute the
`
`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
`
`IPR2021-00574
`Patent 8,391,298
`
`Petition.
`
`C. Claim Construction
`
`For purposes of this IPR, Patent Owner accepts Petitioner’s proposed claim
`
`constructions. Because the Petition fails to raise a reasonable likelihood that any
`
`claim of the ’298 Patent is unpatentable even under Petitioner’s proposed
`
`interpretations, this Response applies Petitioner’s term interpretations to minimize
`
`the disputes to be resolved by the Board at this preliminary stage.
`
`D. Ground 1 – The Combination of Chang and Byrne Does Not
`Render Obvious Any of Claims 1-5, 7-12, and 17-19.
`
`The combination of Chang (Ex. 1003) and Byrne (Ex. 1004) does not render
`
`
`
`obvious any of claims 1-5, 7-12, and 17-19, because neither reference, nor the
`
`combination thereof, teaches or suggests every claim limitation.
`
`1.
`
`Independent Claim 1
`
`The combination of Chang and Byrne does not render obvious claim 1 at least
`
`because it does not teach or suggest the following elements of independent claim 1.
`
`i.
`
`1[e]
`
`Claim element 1[e] recites “a first telecommunications device coupled to the
`
`first LAN.” Chang does not teach or suggest this limitation. The Petition contends
`-11-
`
`
`
`

`

`IPR2021-00574
`Patent 8,391,298
`that either of the “workstation” and the “telephone” disclosed in Chang is “a first
`
`telecommunications device.” Petition at 28. Neither the “workstation” nor the
`
`“telephone” meet this limitation.
`
`The “telephone” disclosed in Chang does not meet this limitation because it
`
`is not “coupled to the first LAN.” The Petition identifies LAN 22, as depicted in
`
`Figure 2, as the “first LAN.” See Petition at 23 (“As shown, the network includes a
`
`LAN 22 that connects a gateway server 26, a router 32, workstation, and the
`
`directory server 26.” Telephone 38 is not listed as a device connected via LAN 22.
`
`Nor is telephone 38 depicted (in Figure 2) as one of the devices connected to LAN
`
`22.
`
`
`
`-12-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`
`
`
`Ex. 1003, Fig. 2.
`
`Chang describes the telephone as “coupled to the PBX.” See id. at 6:14,
`
`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
`
`least these reasons, the “telephone” disclosed in Chang is not “a first
`
`telecommunications device coupled to the first LAN.”
`
`The “workstation” disclosed in Chang does not meet this limitation because it
`
`is not a “telecommunications device.” The Petition contends that workstation 24 is
`
`a “telecommunications device.” See Petition at 28. The workstation is not described
`
`as allowing for telecommunications. The Petition cites only a single portion of
`
`
`
`-13-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`Chang to allege that the “workstation” is a telecommunications device—page 5,
`
`lines 28-32. See Petition at 28. Not surprisingly, the Petition does not quote the
`
`entire citation because it is contrary to Petitioner’s position. Chang states: “It is an
`
`object of the invention to provide an integrated voice gateway system in which users
`
`can initiate telephone functions from the workstation, such functions including,
`
`without limitation, dialing a call, transferring a call, add-on conference, and forward
`
`a call to/from any white pages entry or persona telephone book entry.” Compare
`
`Ex. 1003, 5:28-32 (emphasis added) with Petition at 28 (“telephone functions …
`
`including, without limitation, dialing a call, transferring a call, add-on conference,
`
`and forward a call to/from any white pages entry...”) (quoting Ex. 1003 at 5:28-32).
`
`The workstation can initiate some telephone functions, but not actually perform the
`
`functions of a telecommunications device, like conducting a phone call. Without the
`
`telephone of Chang, however, the workstation cannot perform any of these
`
`functions. The remainder of Chang, which was not cited by the Petition, clarifies
`
`that the workstation merely controls the telephone (i.e., the workstation initiates
`
`functions by controlling the telephone to perform those functions), and is not capable
`
`of operating as a telecommunications device.
`
`Chang contains a detailed description of the “PC Call Control” functionality,
`
`which is used to control the telephone from the workstation. See Ex. 1003 at 6:27-
`
`28. The PC Call Control functionality is provided through a web browser interface
`
`
`
`-14-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`that is accessible from the workstation.3 Id. at 37:13-15 (“The integrated computer
`
`telephone system of the invention provides the user with an integrated,
`
`comprehensive, and easy to use PC Call Control capability via a web browser
`
`interface.”). Chang states in no uncertain terms that “all of the methods and
`
`scenarios of operation illustrated by the FIGs., and described herein, may be
`
`controlled by the user from the telephone via DTMF buttons or from the desktop
`
`workstation via the web browser interface.” See id. at 37:16-19 (emphasis added).
`
`Chang also states in no uncertain terms that all calls are made by the
`
`telephone, not the workstation. The description of a “Basic PSTN Call” describes
`
`calls as occurring between telephones, not workstations. See id. at 37:22-35 (“In a
`
`preferring embodiment, the integrated computer telephone system of the invention
`
`provides the capability to place a telephone call from a caller gateway telephone to
`
`a called gateway telephone via the PSTN.”) (emphasis added). Likewise for a “Basic
`
`VoIP Call.” See id. at 38:1-32 (“In a preferred embodiment, the gateway network
`
`provides the capability to place a telephone call from a caller gateway telephone to
`
`a called gateway telephone via an IP network.”) (emphasis added).
`
`The “Virtual Desktop” functionality disclosed in Chang further confirms that
`
`the “workstation” is not a “telecommunications device.” Chang describes this
`
`
`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.
`-15-
`
`
`
`

`

`IPR2021-00574
`Patent 8,391,298
`functionality as providing “a virtual desktop which allows a computer browser and
`
`a telephone at a location other than a user’s regular office, e.g. an ‘alternate office’
`
`or a ‘virtual office’, to be logically associated with the user.” Id. at 57:12-15
`
`(emphasis added). Chang notes that both a telephone and a workstation are required
`
`to implement the “Virtual Desktop” functionality. See id. at 57:18-20 (“An alternate
`
`office within the company is any location that has access to both a gateway
`
`telephone, and a desktop workstation having a browser. . . .”) (emphasis added). The
`
`reason for why both devices are required is clear—the workstation itself is not a
`
`“telecommunications device,” so a separate telephone is necessary.
`
`The Petition does not contend that this limitation is met by Byrne. See Petition
`
`at 27-28. Nor does the Petition contend that it would have been obvious to modify
`
`either of the “telephone” or “workstation” in Chang to satisfy this limitation. See id.
`
`For at least these reasons, neither Chang nor Byrne, taken alone or in combination,
`
`teach or suggest “a first telecommunications device coupled to the first LAN.”
`
`ii.
`
`1[f]
`
`Claim element 1[f] recites “a plurality of telecommunications extensions
`
`coupled to the second LAN.” The Petition contends that this limitation is satisfied
`
`by “a plurality [of] telephones and/or workstations, each of which is its own
`
`telecommunications extension with its own extension number.” See Petition at 30.
`
`Neither the “workstation” nor the “telephone” meet this limitation.
`
`
`
`-16-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`The “telephone” described in Chang does not meet this limitation because it
`
`is not coupled to the second LAN. As has already been established for limitation
`
`1[e], the telephones of Chang are not coupled to any LAN. See Section IV.D.1.i.
`
`As a result, a telephone in one “Gateway Network” cannot be coupled to the LAN
`
`in a different “Gateway Network” (i.e., the alleged “second LAN”).
`
`The “workstation” described in Chang does not meet this limitation because
`
`it is not a telecommunications extension. As has already been established for
`
`limitation 1[e], the workstations of Chang are not telecommunications extensions.
`
`See Section IV.D.1.i. The Petition cites no evidence that the workstation has a
`
`telecommunications extension associated with it. See Petition at 29-30.
`
`The Petition does not contend that this limitation is met by Byrne. See Petition
`
`at 29-30. Nor does the Petition contend that it would have been obvious to modify
`
`either of the “telephone” or “workstation” in Chang to satisfy this limitation. See id.
`
`For at least these reasons, neither Chang nor Byrne, taken alone or in combination,
`
`teach or suggest “a plurality of telecommunications extensions coupled to the second
`
`LAN.”
`
`iii.
`
`1[h]
`
`Claim element 1[h] recites “the first LAN including second circuitry for
`
`automatically calling one of the plurality of telecommunications extensions in
`
`response to the user selecting one of the plurality of telecommunications extensions
`
`
`
`-17-
`
`

`

`IPR2021-00574
`Patent 8,391,298
`from the observed list, wherein the list of the plurality of telecommunications
`
`extensions is stored in a server in the second LAN, and is accessed by the first
`
`circuitry across the WAN.” It is important to consider the surrounding claim
`
`limitations to determine the scope of the claim and properly analyze the alleged prior
`
`art.
`
`Limitation 1[g] recites “the first LAN including first circuitry for enabling a
`
`user of the first telecommunications device to observe a list of the plurality of
`
`telecommunications extensions.” The second part of limitation 1[h] recites “wherein
`
`the list of the plurality of telecommunications extensions is stored in a server in the
`
`second LAN.” The “list of the plurality of telecommunications extensions” recited
`
`in limitation 1[h] refers to the same “list of the plurality of telecommunications
`
`extensions” recited in limitation 1[g].
`
`Limitation 1[g]
`
`Limitation 1[h]
`
`“the first LAN including first circuitry
`
`“the
`
`first LAN
`
`including second
`
`for enabling a user of
`
`the
`
`first
`
`circuitry for automatically calling one
`
`telecommunications device to observe a
`
`of the plurality of telecommunications
`
`list
`
`of
`
`the
`
`plurality
`
`of
`
`extensions in response to the user
`
`telecommunications extensions;”
`
`selecting one of
`
`the plurality of
`
`telecommunications extensions from
`
`the observed list, wherein the list of the
`
`
`
`-18-
`
`

`

`plurality
`
`of
`
`IPR2021-00574
`Patent 8,391,298
`telecommunications
`
`extensions is stored in a server in the
`
`second LAN, and is accessed by the first
`
`circuitry across the WAN”
`
`
`
`Accordingly, every list of telecommunications extensions that the “first
`
`circuitry” enables a user to observe (limitation 1[g]) must be stored in a server in the
`
`second LAN (limitation 1[h]). Neither Chang, nor Byrne, nor the combination
`
`thereof, rende