Paper 30
`Trials@uspto.gov
`Entered: October 3, 2022
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RINGCENTRAL, INC.,
`Petitioner,
`v.
`
`ESTECH SYSTEMS IP, LLC,
`Patent Owner.
`____________
`
`IPR2021-00574
`Patent 8,391,298 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CHARLES J. BOUDREAU, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`Trials@uspto.gov
`Entered: October 3, 2022
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RINGCENTRAL, INC.,
`Petitioner,
`v.
`
`ESTECH SYSTEMS IP, LLC,
`Patent Owner.
`____________
`
`IPR2021-00574
`Patent 8,391,298 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CHARLES J. BOUDREAU, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`IPR2021-00574
`Patent 8,391,298 B2
`
`I. INTRODUCTION
`RingCentral, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–12 and 17–19 (“the challenged
`claims”) of U.S. Patent No. 8,391,298 B2 (Ex. 1001, “the ’298 patent”).
`Patent Owner1 filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314, we instituted this inter partes review as
`to all of the claims challenged and all grounds raised in the Petition.
`Paper 13 (“Institution Dec.”).
`Following institution, Patent Owner filed a Response. Paper 15 (“PO
`Resp.”). Subsequently, Petitioner filed a Reply to Patent Owner’s Response
`(Paper 18, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 19, “PO
`Sur-reply”). On July 12, 2022, we held a consolidated oral hearing with
`case IPR2021-00573, also involving Petitioner and Patent Owner. A
`transcript of the hearing is included in the record. Paper 28 (“Hearing Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision, issued pursuant to 35 U.S.C. § 318(a). For the reasons we
`discuss below, we determine that Petitioner has proven by a preponderance
`of the evidence that all challenged claims of the ’298 patent are
`unpatentable.
`
`
`1 Estech Systems, Inc. was initially identified as the owner of the ’298
`patent. See Paper 3, 1. In Updated Mandatory Notices filed July 15, 2022,
`Estech Systems IP, LLC, is identified as the owner of the ’298 patent
`pursuant to a November 18, 2021, assignment. See Paper 27, 1 & n.2.
`Estech Systems, Inc., is identified as the parent corporation of Estech
`Systems IP, LLC. Id. at 1 n.1. The caption of this case has been revised to
`reflect this change.
`
`2
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`
`II. BACKGROUND
`A. Real Parties-in-Interest
`Petitioner identifies as real parties-in-interest itself (RingCentral, Inc.)
`and the following entity: Howard Midstream Energy Partners (“HEP”).
`Pet. 2. Petitioner states that it has agreed to defend and indemnify its
`customer HEP in Case No. 6:20-cv-00777, filed August 25, 2020. Id. That
`case is an action for patent infringement brought by Patent Owner against
`HEP in the United States District Court for the Western District of Texas
`(Waco Division).
`Patent Owner identifies Estech Systems IP, LLC, and Estech Systems,
`Inc., as real parties-in-interest. Paper 27, 1.
`B. Related Proceedings
`The parties identify numerous infringement litigations in the Eastern
`and Western Districts of Texas involving the ’298 patent, including the
`action against HEP referenced in the preceding section. Pet. 2–4; Paper 6,
`1–3. According to the parties, summary judgment of non-infringement was
`granted in favor of HEP in that action on June 21, 2022. Hearing Tr. 6–7;
`Paper 27, 4. In addition, the ’298 patent has been before the Board in a prior
`petition for inter partes review, in IPR2021-00329. That petition, filed by
`Cisco Systems, Inc., was denied by the Board on July 6, 2021. IPR2021-
`00329, Paper 13.
`
`C. The ’298 Patent
`The ’298 patent relates to Voice over IP (VoIP) systems. Ex. 1001,
`(57), 1:29–60. Such systems are used to transmit voice conversations over a
`data network using the Internet Protocol (IP). Id. at 1:29–31. The patent
`describes a VoIP system where a user can dial numbers stored in a series of
`
`3
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`lists. Id. at (57). The lists are stored in the system and displayed to the user
`of an IP telephone. Id.
`This VoIP system provides an ability for a user to scroll through the
`list of names and phone numbers and then call a person once their name and
`phone number are displayed. Id. One embodiment allows a user to scroll
`through phone listings on remote sites. Id. at 9:53–59. Once a particular
`name and phone number are found, the user can press a button key (e.g., on
`a keyboard) to commence a telephone conversation with the user having the
`selected name and phone number. Id. at 9:60–64.
`D. Illustrative Claim
`Claim 1 is illustrative of the challenged claims. Claim 1 recites:
`1. [preamble] An information handling system comprising:
`
`[1a] a first local area network (“LAN”);
`
`[1b] a second LAN;
`
`[1c] a wide area network (“WAN”) coupling the first
`LAN to the second LAN;
`
`[1d] a third LAN coupled to the first and second LANs
`via the WAN;
`
`[1e] a first telecommunications device coupled to the first
`LAN;
`
`[1f] a plurality of telecommunications extensions coupled
`to the second LAN;
`
`[1g] 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;
`
`[1h] the first LAN including second circuitry for
`automatically calling one of the plurality of telecommunications
`extensions in response to the user selecting one of the plurality
`of telecommunications extensions from the observed list,
`wherein the list of the plurality of telecommunications
`
`4
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`Patent 8,391,298 B2
`extensions is stored in a server in the second LAN, and is
`accessed by the first circuitry across the WAN; and
`
`[1i] a plurality of telecommunications extensions coupled
`to the third LAN, the first LAN including circuitry for enabling
`the user to select between observing the list of the plurality of
`telecommunications extensions coupled to the second LAN or
`observing a list of the plurality of telecommunications
`extensions coupled to the third LAN.
`Ex. 1001, 15:58–16:19 (references in square brackets provided by
`Petitioner). Challenged claims 8 and 17 are independent claims similar to
`claim 1. Challenged claims 2–7 depend from claim 1, challenged claims 9–
`12 depend from claim 8, and challenged claims 18 and 19 depend from
`claim 17.
`
`E. Prior Art and Other Evidence
`Petitioner relies on the following prior art:
`1. International Application WO 99/05590 (Ex. 1003,
`“Chang”);
`2. United States Patent No. 6,490,619 (Ex. 1004,
`“Byrne”); and
`3. United States Patent No. 6,240,448 (Ex. 1005,
`“Imielinski”).
`Petitioner relies also on the Declaration of Dr. Henry H. Houh.
`
`Ex. 1006 (“Houh Decl.”). Patent Owner relies on the Declaration of Vijay
`K. Madisetti, Ph.D. Ex. 2013 (“Madisetti Decl.”). In addition, Petitioner
`has submitted a transcript of Dr. Madisetti’s deposition. Ex. 1037
`(“Madisetti Dep.”).
`
`
`F. The Asserted Grounds
`Petitioner challenges claims 1–12 and 17–19 of the ’298 patent on the
`following grounds (Pet. 7):
`
`5
`
`
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`Patent 8,391,298 B2
`Claim(s) Challenged
`1–5, 7–12, 17–19
`6
`
`35 U.S.C. §
`103(a) 3
`103(a)
`
`Reference(s)/Basis2
`Chang, Byrne
`Chang, Byrne, Imielinski
`
`
`III. ANALYSIS OF THE CHALLENGED CLAIMS
`A. Obviousness
`Petitioner contends that the challenged claims would have been
`obvious over Chang and Byrne (claims 1–5, 7–12, and 17–19) or over
`Chang and Byrne, further in view of Imielinski (claim 6). Pet. 7.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, so-called
`“secondary considerations,” including commercial success, long-felt but
`
`
`2 Each of Petitioner’s challenges additionally refers to “the knowledge of a
`[person of ordinary skill in the art].” Pet. 7. We understand this to refer
`generally to a person of ordinary skill in the art’s understanding of the
`applied reference and not to a separate basis for the challenge.
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
`’298 patent was filed before March 16, 2013 (the effective date of the
`relevant amendments), the pre-AIA version of § 103 applies.
`
`6
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`unsolved needs, failure of others, and unexpected results. Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966) (“the Graham factors”).
`Neither the Petition nor the Preliminary Response has presented
`evidence on the fourth Graham factor. We, therefore, do not consider that
`factor in this decision.
`
`B. Level of Ordinary Skill
`Petitioner contends that the person of ordinary skill in the art “would
`have had at least a four-year degree in electrical engineering, telecommuni-
`cation engineering, computer engineering, computer science, or a related
`field and two years of relevant experience in developing or implementing
`VoIP systems.” Pet. 13–14. Further, “[a]n individual can substitute
`additional education in the relevant field for some of the experience.” Id.
`at 14 (citing Houh Decl. ¶¶ 19–22).
`Patent Owner’s Response states that it does not dispute this
`description “[f]or the purposes of this Response only,” and Patent Owner
`does not state otherwise in its Sur-reply. PO Resp. 5; see generally PO Sur-
`reply.
`
`We credit Petitioner’s definition as it is consistent with the prior art
`and patent specification before us and is supported by credible expert
`testimony, but without the qualifier “at least.”4 See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an
`appropriate level of skill). We therefore adopt Petitioner’s proposal.
`
`
`4 Including “at least” suggests a broader level of ordinary skill than that
`expressly stated by Petitioner. This change, however, does not affect the
`outcome of our analysis.
`
`7
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`
`C. Claim Construction
`For this inter partes review, the Board applies the same claim
`construction standard as that applied in federal courts in civil actions under
`35 U.S.C. § 282(b). See 37 C.F.R § 42.100(b) (2019). Under this standard,
`claim terms “are generally given their ordinary and customary meaning” as
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
`2005) (en banc) (citations omitted). “In determining the meaning of [a]
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). Extrinsic evidence is “less significant than the
`intrinsic record in determining ‘the legally operative meaning of claim
`language.’” Phillips, 415 F.3d at 1317.
`Petitioner proposed constructions for the terms “IP telephone,” “touch
`input,” and “tacitly selecting,” but stated also that it “does not contend that
`claim construction is material to the obviousness dispute presented.”
`Pet. 14.
`1. IP telephone (claims 4, 8, 11, 13, 14, and 17–19)
`Petitioner proposed the following construction: “[A]ny apparatus,
`device, system, or computer that can communicate multimedia traffic using
`IP telephony technology.” Pet. 14. Petitioner relied on the ’298 patent
`specification, which states: “An IP telephone, or telephony device, is any
`apparatus, device, system, etc., that can communicate multimedia traffic
`using IP telephony technology.” Ex. 1001, 3:7–10.
`
`8
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`IPR2021-00574
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`To define “IP telephony,” Petitioner relied on Newton’s Telecom
`Dictionary: “IP Telephony is an emerging set of technologies that enables
`voice, data, and video collaboration over existing IP-based LANs, WANs,
`and the Internet.” Ex. 1015, 5.5 This definition is incorporated by reference
`in the ’298 patent. Ex. 1001, 3:10–12.
`Patent Owner did not provide a construction of these terms, and stated
`that it “accepts Petitioner’s proposed claim constructions.” Prelim. Resp.
`11. We, therefore, adopted Petitioner’s construction of IP telephone for our
`Institution Decision, finding that it is consistent with the patent specification
`and other evidence of record. Institution Dec. 17.
`Patent Owner’s Response states that “for the purposes of this IPR,
`Patent Owner accepts Petitioner’s proposed claim constructions.” PO
`Resp. 5. For the reasons given in our Institution Decision, we maintain our
`construction of IP Telephony as “any apparatus, device, system, or computer
`that can communicate multimedia traffic using IP telephony technology.”
`2. workstation
`Although neither party asked us to construe “workstation,” in view of
`Patent Owner’s arguments, for the purposes of our Institution Decision, we
`adopted the definition from the ’298 patent: “Herein, the term ‘workstation’
`can refer to any network device that can either receive data from a network,
`transmit data to a network, or both.” Institution Dec. 17–18 (citing
`Ex. 1001, 2:60–62).
`We noted that the term “workstation” is discussed further in the ’298
`patent specification in relation to IP telephones: “[A]n IP telephone is not
`
`
`5 Unless otherwise specified, citations to exhibits refer to the page numbers
`assigned by the parties, and not the original page numbers.
`
`9
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`limited to the configurations described herein. For example, all of the
`functionality of the present invention can be implemented in a workstation.”
`Id. at 18 (citing Ex. 1001, 3:15–17). For the purposes of our Institution
`Decision, we adopted this statement from the ’298 patent describing the
`relationship between IP telephones and workstations. Id. For the reasons
`given in our Institution Decision, we maintain this construction of
`“workstation,” including the statement that the functionality of an IP
`telephone can be implemented with a workstation.
`We construe claim terms only as relevant to the parties’ contentions,
`and only to the extent necessary to resolve the issues in dispute. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017). We do not see the need to construe any other terms
`for the purpose of this Decision.
`D. Description of the Prior Art References
`Chang
`1.
`Chang describes “[a]n integrated voice gateway system for use within
`a company that can route a voice telephone call between parties at two
`different locations over an IP network or over the PSTN [Public Switched
`Telephone Network].” Ex. 1003, (57). Chang’s system includes multiple
`gateway networks “coupled to the company’s IP network.” Id. at 15:10–11.6
`Each gateway network includes a LAN. Id. at 15:19.
`
`
`
`6 Citations to Chang refer to the original page numbers, and not the page
`numbers assigned by Petitioner.
`
`10
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`Various components are coupled together via the LAN, including a
`router, multiple workstations, and a gateway server. This is illustrated in
`Figure 2 of Chang, following:
`
`
`Figure 2 is a block diagram of the top-level architecture of a gateway
`network 4. Id. at 15:16–18. The gateway network includes local area
`network (LAN) 22. Id. at 15:19–20. Coupled to LAN 22 are one or more
`workstations 24, gateway server 26, directory server 28, and router 32. Id. at
`15:20–21. The gateway server is coupled to private branch exchange (PBX)
`34 via an industry standard tie-trunk or central office (CO) trunk 36. Id. at
`15:21–22.
`
`One or more telephones 38 are coupled to PBX 34. Id. at 15:27–28.
`Each telephone 38 may be logically associated with and co-located with a
`workstation 24. Id. at 15:30–31. Gateway server 28 is also coupled to PBX
`34 via industry standard telephone station interface 33. Id. at 15:32–33.
`
`11
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`Patent 8,391,298 B2
`
`Figure 3A of Chang, following, illustrates the distributed architecture
`of enterprise directory 90. Id. at 17:4–5.
`
`
`
`
`
`
`Figure 3A shows a series of gateway servers 26-1, 26-2, 26-3, 26-4, 26-5,
`26-6. Id. at 17:11–12. Each gateway server is coupled to a respective
`physical partition P1', P2', P3', P4', P5', P6' of enterprise directory 90. Id. at
`17:12–13.
`
`Enterprise directory 90 is a company-wide global database of named
`objects, including users, network devices (e.g., routers, gateways), and
`network services (e.g., print servers). Id. at 16:22–24. Enterprise directory
`90 is a distributed system with replication and synchronization among its
`nodes. Id. at 16:24–25. The dashed curved lines in Figure 3A indicate the
`
`12
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`correspondence of the physical partitions P1', P2', P3', P4', P5', P6' with the
`logical partitions P1, P2, P3, P4, P5, P6 of enterprise directory 90. Id. at
`17:13–16. Each physical partition P1', P2', P3', P4', P5', P6' comprises the
`portion of the respective enterprise directory 90 applicable to the respective
`location served by a gateway server 26-1, 26-2, 26-3, 26-4, 26-5, 26-6 in the
`enterprise’s gateway network. Id. at 17:16–19.
`Byrne
`2.
`Byrne describes a method and apparatus for accessing information in
`
`a distributed system and managing LDAP (Lightweight Directory Access
`Protocol) directory servers. Ex. 1004, 1:7–12. Byrne describes a graphical
`user interface (GUI) that enables users to browse an enterprise directory
`distributed among many servers. Id. at 2:1–2, Fig. 4.
`Imielinski
`3.
`Imielinski describes a method to create interactive audio-enabled web
`pages to link text data from the World Wide Web. Ex. 1005, (57).
`Imielinski describes an audio web server that provides access to Internet
`resources with a telephone. Id. at 2:20–43. The user can use a telephone to
`dial a number to access the audio-enabled web pages through the web server.
`Id. at 2:40–43. The user can navigate the web pages and make selections
`using the telephone’s touch tone keypad. Id. at 5:25–27.
`E. Chang and Byrne (Claims 1–5, 7–12, 17–19)
`Petitioner asserts that claims 1–5, 7–12, and 17–19 would have been
`obvious over the combination of Chang and Byrne. Pet. 21. Petitioner
`contends that Chang’s integrated voice gateway system “discloses the
`majority of the claimed limitations.” Id. Petitioner relies on Byrne mainly
`for its description of a GUI: “Although Chang contains a general discussion
`
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`of basic user interface elements for a ‘white pages’ directory, Byrne
`describes a GUI for a similar directory system in great detail.” Id.
`Petitioner contends it would have been obvious to combine Chang and
`Byrne and supports this contention with testimony by Dr. Houh. Id. at 22,
`71–74; Houh Decl. ¶¶ 164–169. Petitioner contends Chang and Byrne relate
`to the same field of art and describe compatible and technologically
`overlapping aspects of distributed directory systems. Pet. 22. Petitioner
`asserts that “Chang recognizes the benefits of making a ‘user-friendly’
`enterprise directory service for a multi-site company, and the
`complementary benefits of combining Chang’s enterprise directory with
`Byrne’s directory interface design would have been readily apparent to a
`[person of ordinary skill in the art].” Id.; see also Houh Decl. ¶¶ 164–169.
`1.
`Claim 1
`Petitioner provides an element-by-element analysis of claim 1 in
`relation to Chang and Byrne. Pet. 22–45. Petitioner supports this analysis
`with testimony from Dr. Houh. Houh Decl. ¶¶ 73–108. For the reasons that
`follow, we find that Petitioner demonstrates that each limitation of claim 1 is
`met by Chang and Byrne.
`a. Preamble: “An information handling system”
`Petitioner contends Chang discloses the preamble of claim 1 by
`describing “an ‘integrated voice gateway system for use within a company
`which can route a voice telephone call between parties at two different
`locations over an IP network or over the PSTN.’” Pet. 22 (citing Ex. 1003,
`(57)). Patent Owner does not challenge this assertion. We find, based on
`the record presented, that Chang teaches the preamble of claim 1.
`
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`b. Element 1[a]: “a first local area network (‘LAN’)”
`Petitioner contends this limitation is met by LAN 22 of gateway
`network 4 in Chang. Pet. 23–24 (citing Ex. 1003, 15:19–21). Referring to
`Figure 2 of Chang, reproduced supra, Petitioner explains: “[E]xemplary
`gateway network 4 . . . includes a LAN 22 that connects a gateway server
`26, a router 32, workstations 24, and the directory server 26.” Id. at 23.
`Patent Owner does not challenge this assertion. We find, based on the
`record presented, that Chang teaches this limitation.
`c. Element 1[b]: “a second LAN”
`Petitioner contends Chang meets this limitation by disclosing “an IP
`network connected with multiple gateway networks (4, 5, and 6), each of
`which includes a number of components connected via its own LAN 22.”
`Pet. 24.
`Patent Owner does not challenge this assertion. We find, based on the
`record presented, that Chang teaches this limitation.
`d. Element 1[c]: “a wide area network (‘WAN’) coupling
`the first LAN to the second LAN”
`Petitioner contends Chang meets this limitation by disclosing IP
`network 10 coupling two gateway networks and their respective LANs: “A
`[person of ordinary skill] would have understood that the Internet is a
`WAN.” Pet. 25 (citing Ex. 1003, 2:3–4; Houh Decl. ¶ 80).
`Patent Owner does not challenge this assertion. We find, based on the
`record presented, that Chang teaches this limitation.
`e. Element 1[d]: “a third LAN coupled to the first and
`second LANs via the WAN”
`
`Petitioner contends this limitation is met by Chang because, in Chang,
`“there are multiple gateway networks, each including a LAN, coupled to
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`each other via the IP network.” Pet. 26–27 (citing Ex. 1003, Fig. 1; Houh
`Decl. ¶ 82).
`
`Patent Owner does not challenge this assertion. We find, based on the
`record presented, that Chang teaches this limitation.
`
`f. Element 1[e]: “a first telecommunications device coupled
`to the first LAN”
`Petitioner identifies the claimed “telecommunications device” with
`the workstations and telephones depicted in Figure 2 of Chang, supra.
`Pet. 27–28; Houh Decl. ¶¶ 83–85. Petitioner asserts, “Figure 2 teaches ‘a
`first telecommunications device’ in the form of both a ‘workstation’ and a
`‘telephone.’” Pet. 28. Petitioner explains, “the workstation is a
`telecommunications device because it performs ‘telephone functions . . .
`including, without limitation, dialing a call, transferring a call, add-on
`conference, and forward a call to/from any white pages entry . . .’” Id.
`(citing Ex. 1003, 5:28–32) (alterations in original). Citing Dr. Houh’s
`testimony, Petitioner asserts “[a person of ordinary skill] would have
`understood that a workstation that performs telephone functions and
`communicates with other devices is a ‘telecommunications device.’” Id.
`(citing Houh Decl. ¶ 84).
`Alternatively, Petitioner argues that the telephone/workstation
`combination in Chang “also constitutes a ‘telecommunications device.’” Id.
`(citing Houh Decl. ¶ 85). Petitioner explains that Chang teaches that
`telephones 38 can be “logically associated with and may be co-located with
`respective workstation 24.” Id. (quoting Ex. 1003, 15:30–31).
`Patent Owner responds that neither the workstation nor the telephone
`disclosed in Chang meets this limitation. PO Resp. 5–6 (citing Madisetti
`Decl. ¶ 64). Patent Owner contends that the telephone does not meet this
`
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`limitation “because it is not ‘coupled to the first LAN.’” Id. at 6–8. We do
`not agree. Our Institution Decision concluded that this claim limitation is
`met because the telephones in Chang “are connected to LAN 22 through the
`PBX and gate server.” Institution Dec. 24. Patent Owner has not advanced
`a construction of “coupling” that requires a direct connection between the
`telephone and the LAN, nor would such a construction be proper. The claim
`itself does not require a direct connection, nor does the specification support
`this argument. The ’298 patent describes the workstations and servers in
`Figure 1 as “coupled to the LAN through hub 103.” Ex. 1001, 2:55–56
`(emphasis added).
`Patent Owner argues that our Institution Decision “disregards
`Petitioner’s concession that the ‘telephone’ disclosed in Chang is not one of
`the devices connected to LAN 22.” PO Resp. 7–8 (citing Pet. 23). We do
`not agree. The page from the Petition (p. 23) cited by Patent Owner
`describes LAN 22, not the telecommunications device, and relates to a
`different limitation of the claim. See Pet. 23 (discussing claim element 1[a]).
`For these reasons, this description of LAN 22 itself is not a “concession”
`that certain telecommunication devices are not “coupled” to the LAN. For
`the reasons given, we find that the telephones illustrated in Figure 2 of
`Chang are coupled to LAN 22 through the PBX and gate server. See
`Ex. 1003, Figure 2.
`Patent Owner further contends the workstation in Chang “is not a
`‘telecommunications device.’” PO Resp. 8. Patent Owner argues that
`Chang’s workstation “is not described as having telecommunications
`capabilities.” Id. Patent Owner elaborates that “[t]he workstation can
`initiate some telephone functions, but not actually perform the functions of a
`
`17
`
`
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`IPR2021-00574
`Patent 8,391,298 B2
`telecommunications device, like conducting a phone call.” Id. Patent
`Owner presents additional arguments attempting to show that the
`workstation in Chang is not a telecommunications device. Id. at 9–12. We
`do not agree with those arguments.
`For the reasons given by Petitioner, we find that Chang’s workstations
`are telecommunications devices. See Pet. 28; Pet. Reply 5–6; Houh Decl.
`¶ 84. As noted supra, in Section III.C.2, workstations are described broadly
`in the ’298 patent as having all the technical capabilities of an IP telephone:
`“However, an IP telephone is not limited to the configuration described
`herein. . . . [A]ll of the functionality of the present invention can be
`implemented in a workstation.” Ex. 1001, 3:14–17. Petitioner
`demonstrates that users of Chang’s workstations can initiate “telephone
`functions” associated with telecommunications devices by “dialing a call,
`transferring a call, add-on conference [calls], and forward[ing] a call to [or]
`from any white pages entry.” Pet. 28 (quoting Ex. 1003, 5:28–33); Houh
`Decl. ¶ 84.
`
`
`Even if Patent Owner’s argument that Chang’s workstations are not
`telecommunications devices were correct, however, it would be unavailing.
`We find also that Petitioner has demonstrated that the combination of the
`workstations and associated co-located telephones in Chang, together,
`constitute “telecommunications devices.” Pet. 28 (citing Houh Decl. ¶ 85);
`Pet. Reply 3–5. Patent Owner acknowledges itself that “the workstation [in
`Chang] initiates functions by controlling the telephone to perform those
`functions.” PO Resp. 9. And Dr. Houh testifies that “[b]ecause the
`workstation [in Chang] is co-located with a telephone, they form a
`telecommunication combination so that the user can control the telephone
`
`18
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`IPR2021-00574
`Patent 8,391,298 B2
`using the workstation.” Houh Decl. ¶ 85 (citing Ex. 1003, 4:18–21, 10:11–
`15).
`We do not agree with Patent Owner that Petitioner fails to
`
`demonstrate that it would have been obvious “to combine the two devices
`into a ‘telecommunications device’ as claimed.” PO Resp. 11. The Petition
`explains that Chang describes telephone 38 as “logically associated” with
`workstation 24 and “co-located” with the workstation. Pet. 28 (citing
`Ex. 1003, 15:28–33). In addition to the above reasons, Petitioner
`summarizes its rationale for combining these devices as follows: “A [person
`of ordinary skill] does not need to ‘combine’ Chang’s telephone and
`workstation because Chang already does this itself.” Pet. Reply 5. We find
`that Petitioner has set forth a convincing rationale for combining Chang’s
`telephone and workstation, together, as a “telecommunications device.”
`
`Petitioner contends also that Chang’s “telephone alone” meets the
`limitation of a “telecommunications device.” See Pet. Reply 6–7. As we
`have discussed supra, Patent Owner responds to this argument by asserting
`that the telephones in Chang are not “coupled to the first LAN.” PO Resp.
`6–7; PO Sur-reply 3–4. For the reasons given above, we do not agree with
`Patent Owner’s argument, as it would import a requirement for a direct
`connection into the claims that is not supported by the claim language or the
`specification. We find, therefore, that Chang’s telephones also meet the
`“telecommunications device” limitation.
`
`In sum, we find, based on the record presented, that Chang teaches
`this limitation.
`
`19
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`IPR2021-00574
`Patent 8,391,298 B2
`g. Element 1[f]: “a plurality of telecommunications extensions
`coupled to the second LAN”
`Petitioner contends Chang meets this limitation. Pet. 29–30.
`Petitioner explains, referring to Chang’s Figure 2, that “[a person of ordinary
`skill] would have understood that the gateway network of Figure 2 is
`exemplary and also depicts the composition of gateway network 6, including
`its own version [of] LAN 22 and an attached plurality of workstations 24
`and telephones 38.” Id. at 29 (citing Houh Decl. ¶ 86).
`Patent Owner responds with arguments similar to those directed to
`element 1[e], supra, namely, that the telephone in Chang is not coupled to
`the second LAN, and the workstation is not a telecommunications extension.
`PO Resp. 12–13. For the reasons given above for element 1[e], we do not
`agree with these arguments and find that Chang meets element 1[f].
`h. Element 1[g]: “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”
`Petitioner contends that Chang meets this limitation. Pet. 31–34.
`Petitioner explains that “Chang discloses that the ‘first LAN’ (the LAN 22
`of first gateway network 4 in Chang) includes a ‘first circuitry’ (comprising
`a computer and a display controlled by its processor) for ‘enabling a user of
`the first telecommunications device’ (the workstation coupled to the first
`LAN in Chang) to observe ‘a list of the plurality of telecommunications
`extensions’ (white pages stored in the ‘gateway database’ in the second
`gateway network).” Id. at 31 (emphases omitted).
`As Petitioner observes, Chang discloses a “list of the plurality of
`telecommunications extensions” in the form of white pages records stored in
`gateway database 51 that is part of each gateway server 26. Id. at 31 (citing
`
`20
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`IPR2021-00574
`Patent 8,391,298 B2
`Ex. 1003, 17:32–35). The collection of white pages is a listing of
`telecommunications extensions of all users in the gateway network. Id.
`The source of the white pages is enterprise directory 90. Id. (citing
`Ex. 1003, 18:1–2). As noted supra, in Section III.D.1, enterprise directory
`90 is a “company-wide global database of named objects including users,
`network devices . . . , and network services.” Pet. 31–32 (quoting Ex. 1003,
`16:22–24). Enterprise network 90 is a distributed directory. Id. at 32. As is
`also discussed in Section II
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