Trials@uspto.gov
`571-272-7822
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`Paper # 28
`Entered: August 3, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`RING CENTRAL, INC.,
`Petitioner,
`
`v.
`
`ESTECH SYSTEMS, INC.,
`Patent Owner.
`_________________
`
` IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
`_________________
`
`Record of Oral Argument
`Held: July 12, 2022
`
`
`
`BEFORE: THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON,
`and CHARLES J. BOUDREAU, Administrative Patent Judges.
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`571-272-7822
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`
`
`
`Paper # 28
`Entered: August 3, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`RING CENTRAL, INC.,
`Petitioner,
`
`v.
`
`ESTECH SYSTEMS, INC.,
`Patent Owner.
`_________________
`
` IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
`_________________
`
`Record of Oral Argument
`Held: July 12, 2022
`
`
`
`BEFORE: THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON,
`and CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`
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`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
`
`
`
` A
`
` P P E A R A N C E S
`
`
`ON BEHALF OF THE PETITIONER:
`
`
`K. PATRICK HERMAN, ESQUIRE
`CHRISTOPHER HIGGINS, ESQUIRE
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`51 West 52nd Street
`New York, New York 10019-6142
`(212) 506-5000
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOHN WITTENZELLNER, ESQUIRE
`WILLIAMS SIMONS & LANDIS PLLC
`The Littlefield Building
`601 Congress Avenue, Suite 600
`Austin, Texas 78701
`(512) 543-1354
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`July 12, 2022, commencing at 1:00 p.m., EDT, by video/by telephone.
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`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
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`
`
` P R O C E E D I N G S
` JUDGE BOUDREAU: Good afternoon, or perhaps good
`morning, depending on where everyone is. This is Judge
`Boudreau. We also have present from the Board Judges
`Giannetti and Chagnon.
` And we're here today for the oral hearing of Cases
`IPR2021-00573 and IPR2021-00574, between RingCentral,
`Incorporated, and Estech Systems, Incorporated, concerning
`Patent Nos. 6,067,349 and 8,391,298, respectively.
` As stated in our order setting the hearing and in a
`follow-up message that was sent out to counsel yesterday
`afternoon, each party will have a total of 90 minutes to
`present its arguments today, which the parties may divide up
`as desired between the two cases. And also as stated in the
`follow-up message sent out yesterday, we'd like to hear
`arguments first in the 00573 case.
` Because Petitioner has the burden to show
`unpatentability, Petitioner will proceed first, followed by
`Patent Owner. Petitioner may reserve time as it
`sees fit to rebut Patent Owner's opposition, and Patent Owner
`may reserve time for sur-rebuttal.
` After that, we're going to take a short break, and
`then we'll follow the same order of proceedings for the 574 case.
` We don't have a timer on the screen, but I will be
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`IPR2021-00574 (Patent 8,391,298)
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`keeping track of the time, and I'll try to give you a warning
`when you're getting close to the expiration of the time
`allotted.
` At this time, can we have counsel introduce
`themselves, starting with counsel for Petitioner,
`RingCentral?
` MR. HERMAN: Good afternoon, Your Honors. This is
`Patrick Herman, lead counsel for Petitioner, from the law
`firm of Orrick, Herrington & Sutcliffe. And also on the line
`with me is Chris Higgins, one of the backup counsel for
`Petitioner, also from Orrick, and Mr. Higgins will be
`presenting Petitioner's arguments today.
` JUDGE BOUDREAU: Thank you, Mr. Herman.
` MR. WITTENZELLNER: Good afternoon, Your Honors. My
`name is John Wittenzellner, here on behalf of the Patent
`Owner.
` JUDGE BOUDREAU: Thank you, Mr. Wittenzellner.
` All right. And before we begin, just a reminder that
`because we're all participating by videoconference, we ask
`that you keep that fact in mind when referring to any papers
`or exhibits in the record, as well as to your demonstrative
`slides, so that we'll know what you're referring to and be
`able to follow along and also so that the transcript of the
`proceeding will be clear.
` And I'll just say more generally, if you have any
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`objections during the presentation of opposing counsel, we
`ask that you don't interrupt the presentation with
`objections, but reserve your objections until it's time for
`your own rebuttal or sur-rebuttal.
` With that, I think we're ready to begin.
` MR. WITTENZELLNER: Your Honor.
` JUDGE BOUDREAU: Yes.
` MR. WITTENZELLNER: I did have one -- one issue, I
`think, maybe a housekeeping issue that I wanted to raise
`before we get -- excuse me. I understand that Mr. Higgins
`will be arguing today on behalf of the Petitioner. I checked
`the record in both IPRs, and I couldn't find a power of
`attorney for him in either -- either proceeding.
` JUDGE BOUDREAU: Mr. Herman, could you address that.
`Do you know whether that's correct?
` MR. HERMAN: I know we filed a power of attorney at
`the beginning of the proceeding, which provided me with the
`ability to identify lead and backup counsel, which I believe
`that we did in the case of Mr. Higgins when we filed
`mandatory notices identifying Mr. Higgins as a backup counsel
`several months ago.
` And, frankly, it's a surprise to be hearing this from
`Patent Owner's counsel now given that they were served with
`mandatory notices identifying Mr. Higgins as the counsel
`months ago and haven't said anything since.
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` JUDGE BOUDREAU: If you could just give me a moment.
`I want to take a look at the record here.
` MR. HERMAN: If it -- if it helps, Your Honor, I
`believe we filed mandatory notices identifying Mr. Higgins on
`-- on May 25th as part of Paper 21 in the 573 proceeding.
` JUDGE BOUDREAU: Yes, I do see that. Thank you.
` MR. WITTENZELLNER: And, Your Honor, we don't dispute
`that he's identified in the mandatory notice. It's just that
`we're not aware of there being any power of attorney being
`filed. I think it's Paper 2 is their power of attorney in
`each proceeding that does not identify Mr. Higgins.
` JUDGE BOUDREAU: I don't believe that our rules
`require that he be identified specifically in the power of
`attorney as long as he's a registered practitioner and has
`been identified in the mandatory notices, so we'll allow him
`to proceed.
` MR. WITTENZELLNER: Just wanted to raise the issue,
`Your Honor.
` JUDGE BOUDREAU: Thank you.
` MR. HIGGINS: And, Your Honor, I guess now that I'm
`cleared to go, there is one -- I don't know if it's
`administrative or another issue that we wanted to raise.
`Well, I guess there's two.
` One, we wanted to point out that, as you know, there
`was a co-pending District Court case on this with a trial
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`IPR2021-00573 (Patent 6,067,349)
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`scheduled in August. Howard Energy, the defendant in that
`case, was granted summary judgment of no infringement, so
`that trial is off calendar. Just wanted to make the Board
`aware of that.
` JUDGE BOUDREAU: Thank you. We were going to ask
`about the status of any co-pending litigation, so thank you
`for that.
` MR. HIGGINS: I figured as much. That's why I tried
`to raise it now.
` The second point is that Estech Systems, Inc., is
`here today and that’s who counsel represents, but they do not
`own the patents. They got rid of the patents and transferred
`them to a different entity, which is not here today. The
`assignment's been filed with the Patent Office, so we wanted
`to raise that.
` I don't know how that gets handled, but Estech
`Systems, Inc., is not the patent owner, so I'm not sure they
`even have standing to be here. I don't want any
`complications after the hearing, but they don't own the
`patent. They have no rights to the patent anymore.
` JUDGE BOUDREAU: When did you become aware of this,
`and why is it just being brought to our attention now?
` MR. HIGGINS: I didn't notice it in this proceeding
`until reviewing some of the papers, getting ready for the
`oral argument, that Patent Owner filed mandatory notices and
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`still stated that Estech Systems, Inc., owns the patents, but
`that is not the case.
` JUDGE BOUDREAU: Mr. Wittenzellner, can you address
`that.
` MR. WITTENZELLNER: Sure. And I think I can maybe
`more clearly ask -- answer the question that you asked
`counsel.
` He's also lead counsel in the District Court
`proceedings and contested the transfer and standing of the
`new Estech Systems entity. There was a transfer from one
`Estech entity to a subsidiary of the patents. He's been
`aware of this transfer for months.
` We are represented -- we represent both entities.
`It's the same general counsel for both, and we have power of
`attorney to proceed on their behalf.
` JUDGE BOUDREAU: So, just to be clear, you represent
`the current patent owner; is that correct?
` MR. WITTENZELLNER: Correct.
` JUDGE BOUDREAU: Thank you.
` All right. And I expect that you'll be filing
`updated mandatory notices with the correct patent owner
`identified?
` MR. WITTENZELLNER: Yes, Your Honor. Of course.
` As far as the District Court proceedings go, counsel
`is correct that an oral order was issued. We don't have an
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`actual written opinion from the court yet. And so we were
`holding off on filing the mandatory notice until we had that
`as well, but we can update -- file an updated mandatory
`notice just with respect to the ownership beforehand, if
`that's what the Board desires.
` JUDGE BOUDREAU: Thank you. And how soon do you
`anticipate that you can file that?
` MR. WITTENZELLNER: I think within a few days, Your
`Honor. Shouldn't be a problem.
` JUDGE BOUDREAU: Okay. If you could get that to us
`by the end of the week, that would be ideal. Thank you.
` Okay. So, with that, unless either of you has
`anything else before we begin, we can go ahead and proceed.
` And I'll just ask, Mr. Higgins, how much of the 90
`minutes do you anticipate to use for the 573 case?
` MR. HIGGINS: I anticipate to use half of that time
`for -- I'm going to split the time evenly.
` JUDGE BOUDREAU: All right. And how much of the 45
`minutes would you like to reserve for rebuttal time, if any?
` MR. HIGGINS: Fifteen minutes.
` JUDGE BOUDREAU: Fifteen minutes. All right.
` All right. You may proceed then.
` ORAL ARGUMENT ON BEHALF OF PETITIONER, IPR2021-00573
` MR. HIGGINS: Thank you, Your Honors.
` And I understand it's typically the practice, the
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`IPR2021-00574 (Patent 8,391,298)
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`preference to not share slides, so I don't plan to share the
`screen unless Your Honors prefer that. I will just refer to
`the slide numbers, if that works.
` JUDGE BOUDREAU: That would be fine with us.
` MR. HIGGINS: Okay. Thank you.
` And so, before I get started, I wanted to make one
`overall observation about the proceeding, and I think this
`will become evident once the Board sees Estech's
`presentation, but all they will be presenting today is
`attorney argument with most of their slides simply
`screenshotting or citing to our original Petition, apparently
`with the intent to try and twist our words and say we've
`conceded something.
` But in our presentation, as you'll see, we'll focus
`on the prior art references, the patents, and also relevant
`testimony from Estech's expert.
` Estech's presentations don't cite to their expert at
`all, and that is because when we deposed him and focused on
`the disputed claim elements, he either said he had no
`opinions or contradicted Estech's positions. And Estech's
`expert declarations are word for word nearly identical copies
`to their Patent Owner Responses. So once their expert gave
`up their arguments, they had nothing left.
` And, you know, perhaps most tellingly, Estech's
`Sur-Replies don't even cite to their expert once. There is
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`IPR2021-00574 (Patent 8,391,298)
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`one cite, I believe, in the '349 Sur-Reply just referencing
`deposition testimony that we did. And in addition to that,
`Estech didn't even bother to depose RingCentral's expert, Dr.
`Houh.
` So they're really -- there is no dispute among
`experts here. All Estech is doing is rehashing arguments it
`made pre-institution, which have already been addressed by
`the Board, on essentially the same record.
` So my goal here today is to go through each disputed
`element quickly and save most of my time, as I did, for
`rebuttal to address any new attorney argument they have.
` JUDGE BOUDREAU: Before you go on, I just want to be
`clear. Are you saying that Mr. Madisetti -- or Dr. Madisetti --
`that he renounced his testimony or simply that he -- can
`you just clarify what you meant by saying that they're no longer
`relying on the testimony of Mr. Madisetti?
` MR. HIGGINS: Yeah. Sure. I'll -- what I mean by
`they're not relying on it is they just simply didn't cite it.
`After his deposition, when he gave up a bunch of things and
`didn't agree with their positions, they seemed to have
`abandoned it. It doesn't appear in their Sur-Reply. It's
`nowhere on their slides today that we'll hear about.
` We will cite to Dr. Madisetti because, you know, he
`admitted things and abandoned his opinions.
` So that's what I meant by that, Your Honor.
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` JUDGE BOUDREAU: All right. Thank you for clarifying
`that.
` MR. HIGGINS: Sure. And if we refer to slide 2 of
`our demonstratives for the 573 proceeding, I have a table
`with the four grounds in the Petition, but I have grayed out
`Grounds 2 and 4. And that's because Patent Owner presents no
`arguments for these grounds separate from what they have for
`Ground 1. They're just referring back. So really what we'll
`talk about today are Grounds 1 and Grounds 3.
` So, before I get to that, I want to go to slide 3 and
`just do a very brief refresher on the main prior art
`reference that we'll talk about today, which is the Itoh
`reference. And Itoh is nearly identical to what the '349
`patent attempts to claim. Itoh just did it years earlier.
` And on the slide, just very briefly here -- we'll get
`into the details later -- this is the basics. Frankly, it's
`all that -- more than the '349 patent claims. You have a
`CPU, a memory to store the voice mail and caller ID, and an
`automatic callback feature. That's really all the claims
`are.
` And we don't need to get into any details. We're
`talking about a method claim here, and even the system claims
`don't have these details in there.
` So, with that, I want to jump right into Ground 1 and
`slide 4, and then I'll go to slide 5.
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`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
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` On slide 5, I've listed what the disputes are here.
`And to be honest, I'm not sure based on the actual claim
`language there is any dispute that Itoh discloses everything
`here, but nevertheless, since Patent Owner alleges to dispute
`these, I'll step through all of them and just demonstrate how
`what they are disputing is just not in the claims.
` And I'll start with the first claim element. It's on
`slide 6. It's the incoming call claim element, which, as I
`have on slide 7 -- I've highlighted what they dispute here.
`The dispute here appears to be that Patent Owner, for some
`reason, believes that caller ID information must come
`directly to the telephone device from the phone company. I
`don't see that anywhere in the claims.
` And I think, on Patent Owner's slides, we'll see
`later they say that RingCentral has conceded this. That's
`just ridiculous. We haven't conceded any of that. We would
`never take that position.
` And I'll address many of these points in my rebuttal,
`if at all, but I can plainly state now that nothing of what
`Patent Owner will say that we have conceded today is
`accurate. It's just they have no position and are trying to
`kind of twist what we've said in our briefing.
` But here, what's important is the claims just say
`that an incoming call includes caller ID. It doesn't say how
`it got there or in what format. It's just there.
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`IPR2021-00573 (Patent 6,067,349)
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` And if we go to slide 8, we can plainly see that Itoh
`discloses that caller ID information is transmitted to the
`called party with the incoming call.
` And on slide 9, we see just how Itoh does transmit
`that caller ID information, and it's the exact same way as
`it's done in the '349 patent.
` In between --
` JUDGE BOUDREAU: Excuse me. Could you just -- could
`I interrupt for a second. This is Judge Boudreau.
` Can you explain what a call signal is.
` MR. HIGGINS: It's the signal that comes to your
`telephone when a call is placed. For example, it's going to
`cause your phone to ring. So there may be -- a call signal
`may have, you know, the first and second rings. In between
`those two rings, that's when the caller ID information is
`transmitted both in Itoh, as we see here, and in the '349
`patent. It comes in the same way.
` What -- what the dispute here appears to be, Patent
`Owner takes exception that Itoh says that this information
`comes across a switchboard, but the switchboard is just an
`intermediary between the caller's telephone and the party --
`called party's telephone. It sends along the caller ID
`information it receives.
` I don't know where else the caller ID information
`would come from other than, you know, the calling party and
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`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
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`their network. And --
` JUDGE BOUDREAU: Is the switchboard within the public
`switched telephone network, within the PSTN?
` MR. HIGGINS: It would be within the switched
`telephone network. And if you look here on the '349 patent,
`it refers to a central office. It's very similar to what a
`switchboard would be. It's a public switching facility. It
`-- a central office may be bigger than a switchboard, but
`they're switching facilities. They route different networks
`together and send that call on.
` So there's nothing different here in how this is
`described nor is it even relevant to the claim. It is
`undisputed that Itoh includes caller ID information in
`between the first and second call signals just as the '349
`patent does.
` JUDGE GIANNETTI: Counsel, this is Judge Giannetti.
`On -- on slide 9, there's a reference to a Bellcore
`specification. Do you see that? It's right at the bottom of
`the panel on the left of the slide.
` MR. HIGGINS: I do see that, Your Honor.
` JUDGE GIANNETTI: And as I read through this
`material, it occurred to me that it isn't -- much of what is
`in this claim and much of your argument, isn't this all
`standard from the Bellcore specifications? I mean, these
`phones all have to work the same way to be able to
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`IPR2021-00574 (Patent 8,391,298)
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`communicate with each other.
` MR. HIGGINS: That is exactly correct, Your Honor.
`What this patent is claiming is a bunch of standard features
`and then storing a caller ID in relation to a voice mail.
`That's really all we're talking about today. You're exactly
`right.
` JUDGE GIANNETTI: Thank you.
` MR. HIGGINS: Just to close out this claim element,
`if I can quickly refer to slide 10. This is another -- this
`is an example of Dr. Madisetti not agreeing with Patent
`Owner's positions.
` He was asked, Is that way of transmitting and
`receiving caller ID information discussed in column 3 of the
`'349 patent? This is what we were just looking at. Is that
`outside the scope of the '349 patent claims you looked at?
` His answer, That's not my opinion. I did not offer
`such an opinion.
` So this is the first instance we'll see today of Dr.
`Madisetti abandoning Patent Owner's position. There is no
`dispute here that Itoh includes caller ID information, as it
`must. It's on a public telephone network. It operates the
`same way as the '349 patent.
` Want to move to the next claim element. Skip over
`slide 11, and go straight to slide 12.
` And this claim element is connecting the incoming
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`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
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`call to a voice mailbox. And, again, we have no argument
`from the Patent Owner that in any way relates to the claim
`language here. All you have to do is take a call that comes
`in and connect it to a voice mailbox. There are no further
`details here.
` And if we look at slide 13, Itoh does -- does just
`that. Highlighted in blue, it receives the call. Call's not
`answered, down in red, it's connected to a voice mailbox, so
`a caller can leave a message. That's all this claim element
`requires.
` Now, if we go to slide 14, Patent Owner's only
`dispute here --
` JUDGE BOUDREAU: Mr. Higgins, this is Judge Boudreau
`again.
` Are you saying, then, that the telephone has some
`sort of an internal connection within it that corresponds to
`that step S200? Because the claim does require connecting to
`a voice mailbox, and so I just want to drill down a little
`bit on what you're relating the connecting step to within the
`context of Itoh.
` MR. HIGGINS: Yes, Your Honor. The call signal's
`going to be received, you know, at the processor or some kind
`of circuitry at the beginning of the system.
` And Itoh has a DRAM module. That DRAM module is then
`what -- signal has to go, and that's where the connection is
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`made. That's where the voice mail and caller ID are stored.
`So it has to be connected from the incoming receipt to the
`DRAM.
` JUDGE BOUDREAU: So, in other words, there's a
`connection that's made within the telephone if the user
`doesn't answer the phone call?
` MR. HIGGINS: Correct, Your Honor. And that
`connection is circuitry. And as we see in some of the claims
`of the '349 patent, that's within the scope of what this
`patent calls, you know, a connection and constituting a
`system.
` JUDGE BOUDREAU: And is that circuitry that wouldn't
`be connected if the user did answer the call?
` MR. HIGGINS: Yeah. I think that's true for any
`phone system, even the '349. If someone answers the call,
`the caller's not going to leave a voice mail.
` So all of these systems work the same way where if
`the call isn't answered or, say, you leave your phone off the
`hook, it goes straight to voice mail. That's when this
`connection could be made.
` If the call is answered, for example, that signal
`will be sent to the handset rather than making a connection
`to the DRAM.
` JUDGE BOUDREAU: Thank you.
` MR. HIGGINS: Now, we go to slide 14, and we've
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`IPR2021-00573 (Patent 6,067,349)
`IPR2021-00574 (Patent 8,391,298)
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`briefly just touched on this, but Patent Owner's dispute is
`that the phone and the voice mailbox are within the same
`overall structure.
` And as our position is and as the Board held in its
`Institution Decision, the claim doesn't require that. This
`is a method claim. There are no separate structures. None
`of the claims require anything separate.
` And for Patent Owner to suggest in its Sur-Reply that
`there is some sort of agreed construction here that reads in
`the telephone call processing system, which is in dependent
`Claim 6, that's just wrong. We obviously don't agree with that.
` But, I mean, even as we see -- you know, Patent Owner
`here recognized these steps are performed by the same system,
`same system, the same device. Again, there's really no --
`there's no dispute here.
` And if we go to slide 15, again, we see Patent
`Owner's expert, Dr. Madisetti, asked, you know, Is a phone
`that includes the storage system itself -- so Itoh's DRAM --
`is that outside the scope of Claim 1?
` He doesn't offer an opinion on that.
` There is nothing from their expert that supports
`their position. It's pure attorney argument, and we would
`submit it's unsupported argument.
` If we move along to the next claim element, this will
`be the last disputed claim element of Claim 1 here. I want
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`IPR2021-00573 (Patent 6,067,349)
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`to jump to slide 17 where I have this highlighted.
` And on slide 17, this is the storing the caller ID
`information in association with the voice mailbox. This
`dispute here, it's strikingly similar to the first one we
`discussed.
` Patent Owner has taken the position that there must
`be additional pieces of information stored in order to
`perform this step, but that language simply isn't in the
`claim. The claim just requires the caller ID information to
`be stored in the correct voice mailbox, and that makes sense
`because you wouldn't want to store it in the wrong voice
`mailbox. You want to be able to get the voice mail. But
`there simply is no requirement of some mysterious linking
`information required to be stored separately.
` And what really hits the nail on the head here for me
`when I noticed this is on the Patent Owner's slides, to make
`this argument, they literally changed the claim language.
`What they have in quotes on their slides is not the language.
`Their slides say you have to store an, A-N, an association.
`The claim says you store the caller ID information in
`association with.
` They are trying to make it appear that there is some
`extra sort of information that has to be stored, but in order
`to that, they had to change the claim language. That claim
`language is not there. There is no separate piece of data.
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` And indeed, on slide 18, we can see how there is no
`support for the Patent Owner's position. Itoh does the exact
`same thing as the '349 patent. The disclosure from Itoh on
`the right notes how the telephone number is stored in a
`one-to-one correspondence with the incoming message in the
`DRAM. The '349 patent just says it's stored with the
`message, and the claim requires nothing more.
` So, in all, there really isn't any dispute based on
`the actual claim language, unless Patent Owner changes it,
`that Itoh meets all elements of independent Claim 1.
` So that takes us then to the next topic. If we go to
`slide 20, there is a dependent Claim 6 and then Claim 19, and
`the dispute here is similar. These two claims include a
`similar claim element, a telephone call/voice processing
`system. And these two elements are -- claims are disputed
`for the same reason. Patent Owner believes that this system
`requires multiple and distinct components because it uses the
`word system.
` And to start with dependent Claim 6, again, this is a
`method claim. There is simply nothing in the claim requiring
`that the steps of Claim 1 must be performed on multiple
`separate components with certain features. It's just not
`there. This is labeling the environment on which the method
`has to be performed.
` Itoh clearly discloses this with its telephone
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`system. Itoh discloses the telephone system, the same as the
`'349 patent.
` Now, for Claim 19, even though it's a system claim,
`the result is the same. Even if you buy Patent Owner's
`argument that this is somehow a limiting preamble, it's not.
`It's just labeling the body of the claim. The body of the
`claim, when it refers back, it just refers back to the
`system. It's not using it in any special way. It just says,
`from the system. The system can be anything.
` You know, all of the -- all the system requires here
`in the claim, each element is circuitry for performing
`various functions. There is no requirement of where that
`circuity must reside, has to be external to one component,
`internal to another.
` Even Figure 5 of the '349 patent is described as
`housing circuitry within one overall system.
` So circuits can make up a system. That's all we have
`in Claim 19.
` And I'll very briefly note some of these other
`slides.
` Slide 21, the patent notes that -- you know, even
`though Patent Owner's pointing to a figure, those are
`examples. They aren't limiting.
` And indeed, Patent Owner's expert, again, Dr.
`Madisetti, we asked him -- this is on slide 22 -- he doesn't
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`agree with their position. When asked if the claims were
`limited to a specific system that had multiple separate
`components, he refused to agree and said he wouldn't limit
`the claims that way.
` And even -- go ahead.
` JUDGE BOUDREAU: This is Judge Boudreau.
` Even if those are just examples, Patent Owner argues
`that -- as I understand it -- every embodiment in the '349
`patent involves a TC/VP system separate from the end user
`telephones. Why doesn't that matter?
` MR. HIGGINS: Because it's not in the claims, Your
`Honor.
` The claims just have -- well, for number one, for
`Claims 1 and 6, we're talking about a method claim. So that
`-- set that aside, there is no -- there shouldn't be a
`dispute there. There is no system that needs to be required
`there.
` And there really -- the patent doesn't have to -- the
`patent doesn't have a collection of different embodiments.
`It just has one embodiment that uses an example.
` And even Patent Owner's expert said, this specific
`embodiment that's in the patent, just the one example it
`uses, that had the EKT device and the KSU device, he said --
`this is on slide 23 -- These are, again, non-limiting
`examples disclosed in the '349 patent.
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`IPR2021-00574 (Patent 8,391,298)
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` They don't -- they don't want to limit it to use of
`an EKT and a KSU. They want to limit the claim to that,
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