Paper 13
`Trials@uspto.gov
`Entered: October 6, 2021
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RINGCENTRAL, INC.,
`Petitioner,
`v.
`
`ESTECH SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2021-00574
`Patent 8,391,298 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, JENNIFER MEYER CHAGNON, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`

`

`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 Owner, Estech Systems, Inc., filed a Preliminary Response (Paper 8,
`“Prelim. Resp.”).
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C.
`§ 314(a), we may not authorize an inter partes review unless the information
`in the petition and the preliminary response “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`The Board, however, has discretion to deny a petition even when a
`petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a
`petition is a matter committed to the Patent Office’s discretion.”); NHK
`Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential).
`For the reasons that follow, we grant the Petition and institute inter
`partes review of the challenged claims.
`
`
`
`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 HEP in
`
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`IPR2021-00574
`Patent 8,391,298 B2
`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). We
`discuss this case further, infra.
`Patent Owner identifies itself, Estech Systems, Inc., as the real
`party-in-interest. Paper 6, 1.
`B. Related Proceedings
`The parties identify numerous infringement litigations in the Eastern
`and Western Districts of Texas involving the ’298 patent. Pet. 2–4; Paper 6,
`1–3. 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
`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
`
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`IPR2021-00574
`Patent 8,391,298 B2
`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
`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
`
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`IPR2021-00574
`Patent 8,391,298 B2
`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 99/005590 (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 also relies on the Declaration of Dr. Henry H. Houh
`
`(Ex.1006, “Houh Decl.”). At this stage, Patent Owner has not submitted an
`expert declaration.
`
`
`F. The Asserted Grounds
`Petitioner challenges claims 1–12 and 17–19 of the ’298 patent on the
`following grounds (Pet. 7):
`
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`IPR2021-00574
`Patent 8,391,298 B2
`Claims Challenged
`1–5, 7–12, 17–19
`6
`
`
`
`35 U.S.C. §
`103(a) 2
`103(a)
`
`References1
`Chang, Byrne
`Chang, Byrne, Imielinski
`
`III. PATENT OWNER’S REQUEST FOR DENIAL
`UNDER 35 U.S.C. § 314(a)
`Patent Owner contends we should exercise our discretion to deny
`institution under 35 U.S.C. § 314(a). Prelim. Resp. 1–2. Patent Owner
`contends “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.” Id.
`at 1. Patent Owner continues: “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.” Id. at 2. Still further, Patent Owner
`
`1 Each of Petitioner’s challenges additionally refers to “the knowledge of a
`[person of ordinary skill in the art].” Pet. 7. We understand this reference to
`refer to a person of ordinary skill in the art’s understanding of the applied
`reference and not to supplying missing limitations or incorporating an
`unspecified disclosure by reference to supply missing claim limitations.
`General knowledge in the art, unsupported by the references, cannot supply
`a missing limitation. Patent Trial and Appeal Board Consolidated Trial
`Practice Guide 36 (Nov. 2019), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated.
`2 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.
`
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`IPR2021-00574
`Patent 8,391,298 B2
`continues: “Trial in the related . . . Western District of Texas . . . [litigation]
`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.” Id.
`Anticipating Patent Owner’s challenge, Petitioner addresses the
`§ 314(a) issue in its Petition. Pet. 7–10. Petitioner asserts that the factors set
`forth in Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”) “favor Petitioner.” Id. at 7.
`A. Fintiv Factors
`The Board’s precedential decision in Apple Inc. v. Fintiv Inc., supra,
`identifies a non-exclusive list of factors parties may consider addressing
`where there is a related, parallel district court action to determine whether
`such action provides any basis for discretionary denial. Fintiv, Paper 11 at
`5–16. Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6.
`
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`IPR2021-00574
`Patent 8,391,298 B2
`In evaluating the factors, we take a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.
`Id. at 6.
`
`B. The Texas Litigations
`As Patent Owner points out, numerous infringement litigations
`involving the ’298 patent have been filed in both the Eastern District and the
`Western District of Texas. Prelim. Resp. 3. The litigation in the Eastern
`District of Texas involved actions for infringement of the ’298 patent filed
`by Patent Owner against numerous defendants,3 several of which remain
`pending before District Judge J. Rodney Gilstrap. See infra. On August 20,
`2021, Judge Gilstrap entered a revised Docket Control Order setting October
`4, 2021, for jury selection and trial in a group of cases consolidated for trial
`(“the Eastern District Litigation”). Ex. 2011.4
`
`
`3 Estech Systems, Inc. v. PlainsCapital Bank, 2-20-cv-00122; Estech
`Systems, Inc. v. Target Corporation, 2-20-cv-00123; Estech Systems, Inc. v.
`Regus International Ltd., 2-20-cv-00124; Estech Systems, Inc. v. BOKF,
`National Association, 2-20-cv-00126; Estech Systems, Inc. v. BBVA USA
`Bancshares, Inc., 2-20-cv-00127; Estech Systems, Inc. v. Wells Fargo &
`Company et al., 2-20-cv-00128; Estech Systems, Inc. v. Regus Management
`Group, LLC et al,, 2-20-cv-00143; Estech Systems, Inc. v. Burnco Texas
`LLC et al., 2-20-cv-00275; Estech Systems, Inc. v. Burrow Global LLC, 2-
`20-cv-00276; Estech Systems, Inc. v. Hancock Whitney Bank et al., 2-20-cv-
`00277; Estech Systems, Inc. v. US Dermatology Medical Management, Inc.
`d/b/a US Dermatology Partners, 2-20-cv-00278; Estech Systems, Inc. v.
`Oliver Street Dermatology Management, LLC d/b/a US Dermatology
`Partners et al., 2-20-cv-00311. Pet. 2–4; Paper 3, 1–3.
`4 On August 27, 2021, sua sponte, we entered an Order directing Patent
`Owner to “file a status report on the schedules in the parallel Eastern and
`Western District of Texas litigations relied on by Patent Owner in its request
`for denial of the petitions based on Fintiv,” including any changes in the trial
`schedules for those cases. Paper 9, 3. In response, on August 30, 2021,
`
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`IPR2021-00574
`Patent 8,391,298 B2
`The Western District Litigation also involved numerous actions for
`patent infringement and various defendants.5 Some of these actions remain
`pending before District Judge Alan D. Albright, in the United States District
`Court for the Western District of Texas, Waco Division. See infra. Judge
`Albright has entered an Amended Scheduling Order setting November 12,
`2021, as the deadline for completing fact discovery; January 10, 2022, as the
`deadline for completing expert discovery; and April 11, 2022, as the
`expected date for jury selection and trial. Ex. 2012.
`On September 21, 2021, following up on reports in the press that
`Patent Owner had reached settlements in its litigations and requested a stay
`of the Eastern District Litigation, the Board requested Patent Owner to file
`an updated status report. On September 27, 2021, Patent Owner filed
`updated mandatory notices confirming that the still-pending cases in the
`Eastern District Litigation have been stayed “pending filing of dismissal
`papers in view of settlement.” Paper 12, 1–4. Petitioner’s real party-in-
`interest HEP is not involved in the Eastern District Litigation. Patent Owner
`
`
`Patent Owner filed a status report advising us that trial in the Eastern District
`Litigation had been rescheduled to October 4, 2021, and the trial date in the
`Western District Litigation remained April 11, 2022. Paper 10, 2–3; Exs.
`2011, 2012.
`5 Estech Systems, Inc. v. Private Jets, Inc., 6-20-cv-00320; Estech Systems,
`Inc. v. Open Mortgage, LLC, 6-20-cv-00321; Estech Systems, Inc. v. Regions
`Financial Corporation, 6-20-cv-00322; Estech Systems, Inc. v. Energy
`Transfer LP, 6-20-cv-00773; Estech Systems, Inc. v. Gensler Architecture,
`Design & Planning, PC d/b/a Gensler et al., 6-20-cv-00774; Estech Systems,
`Inc. v. HWC Wire & Cable Company, 6-20-cv-00776; Estech Systems, Inc.
`v. Howard Midstream Energy Partners, 6-20-cv-00777; Estech Systems, Inc.
`v. SWBC Mortgage Corporation et al., 6-20-cv-00778. Pet. 2–4; Paper 3, 1–
`3.
`
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`IPR2021-00574
`Patent 8,391,298 B2
`advises us that only the case involving HEP, and one other case pending in
`the Western District Litigation, are still scheduled for trial on April 11, 2022.
`Paper 12, 3–4.
`Petitioner argues that “[s]ignificant scheduling uncertain[ty] in the
`Western District increases the chance that trial will occur after the projected
`final written decision date for this petition, which weighs against
`discretionary denial.” Pet. 9. However, contrary to Petitioner’s assertion of
`uncertainty, we have not been informed of any change in the April 11, 2022,
`jury selection date in the Western District Litigation involving HEP.
`C. Analysis of the Fintiv Factors
`Both Petitioner and Patent Owner address the Fintiv factors in their
`submissions. Pet. 7–10; Prelim. Resp. 2–7. We conclude that, overall, the
`factors do not favor exercising our discretion to decline to institute a trial.
`Our reasoning follows.
`i. Stay in the Texas Litigations (Fintiv Factor 1)
`The remaining cases in the Eastern District Litigation have been
`stayed. See supra. We have not been informed that the Western Texas
`Litigation involving HEP has been stayed, however, nor has a stay been
`requested. Pet. 7; Prelim. Resp. 6. Patent Owner contends that “[b]ecause
`no stay pending resolution of the Petition has been requested and because
`there is a near-zero possibility that the district court case will be stayed even
`if subsequently requested, this factor weighs in favor of denial.” Prelim.
`Resp. 6–7.
`We decline to speculate on the likelihood of a stay in the Western
`District Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15
`at 12 (PTAB May 13, 2020) (informative) (“We decline to infer, based on
`
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`IPR2021-00574
`Patent 8,391,298 B2
`actions taken in different cases with different facts, how the District Court
`would rule should a stay be requested by the parties in the parallel case
`here.”). Thus, we find this factor is neutral.
`ii. Trial Date and Investment in the Texas Litigations
`(Fintiv Factors 2 and 3)
`As discussed, Patent Owner relies, in part, on the trial date in the
`Eastern District Litigation, which has now been stayed. Prelim. Resp. 2–3.
`In addition, Patent Owner states that trial in the Western District Litigation is
`scheduled to begin “approximately five months before the statutory date for a
`[final written decision] in this proceeding.” Id. at 2.
`Patent Owner argues that these parallel litigations “are at an advanced
`stage.” Prelim. Resp. 4. In the Western District Litigation, a Markman
`Hearing was held on January 22, 2021, and fact discovery is scheduled to
`close on November 12, 2021. Ex 2012, 2. Expert discovery does not open
`until November 19, 2021. Id. at 3. Patent Owner argues: “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.” Prelim. Resp. 5.
`Because the remaining cases in the Eastern District have been stayed
`and settlement is likely, we do not consider the trial date in the Eastern
`District Litigation in our analysis. Nonetheless, the trial date currently set in
`the Western District Litigation precedes the projected statutory deadline for
`the Final Written Decision in this case by more than five months, which
`favors exercising our discretion to deny institution. Additionally, as outlined
`by Patent Owner, fact discovery is proceeding in the Western District
`Litigation and a Markman hearing has been held. However, expert
`discovery has not begun, and substantial work remains before the trial. See
`
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`IPR2021-00574
`Patent 8,391,298 B2
`Ex. 2012. This factor favors not exercising our discretion to deny
`institution. Pet. 9.
`iii. Overlap of the Issues (Fintiv Factor 4)
`At the Board’s request, the parties filed a joint statement addressing
`the overlap in issues between the Petition and the Texas Litigations.
`Paper 11. The parties report that Chang, the principal reference in both
`grounds of the Petition, is being asserted in the Western District Litigation.
`Id.
`
`To address this issue, Petitioner has proffered a stipulation. Id.
`Petitioner states that “if inter partes review is granted, Petitioner represents
`that no Real Party-in-Interest with respect to the above proceeding will rely
`upon the Grounds or prior art presented in the Petition in the Western
`District of Texas Litigation.” Id. Although Petitioner has not stipulated to
`forgo relying on all the patents and prior art publications that could have
`reasonably been raised in the inter partes review (see Sotera Wireless, Inc. v.
`Masimo Corp., IPR2020-01019, Paper 12, 18–19 (precedential as to
`§ II.A.)), Petitioner’s stipulation will likely contribute to streamlining the
`issues presented there as to the ’298 patent. See Sand Revolution II, LLC v.
`Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at
`11–12 (PTAB June 16, 2020) (informative) (similar stipulation “mitigates to
`some degree the concerns of duplicative efforts between the district court
`and the Board, as well as concerns of potentially conflicting decisions”).
`We are persuaded that the stipulation proffered here is sufficient to
`“mitigate[] to some degree” the overlap caused by Petitioner’s reliance on
`Chang. We conclude that this factor weighs against exercising discretion to
`deny institution.
`
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`IPR2021-00574
`Patent 8,391,298 B2
`iv. Whether Petitioner is the Same As or Related to the
`Defendants in the Texas Litigations (Fintiv Factor 5)
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion.”
`Fintiv, Paper 11 at 13–14. Here, Petitioner contends “[it] is not a party to
`the district court proceedings.” Pet. 10. Patent Owner responds that while
`Petitioner is not a party to the Texas Litigations, “by indemnifying HEP,
`Petitioner has voluntarily placed itself in the same position as HEP in the
`WDTX litigation.” Prelim. Resp. 3.
`Petitioner does not deny these assertions regarding its relationship to
`HEP. In fact, Petitioner identifies HEP as a real party-in-interest. Pet. 3.
`We conclude from the undisputed facts that although Petitioner is not
`a party, the overlap between a defendant (HEP) in the Western District
`Litigation and a real party-in-interest identified by Petitioner in this
`proceeding favors exercising our discretion to deny institution.
`v. Other Considerations (Fintiv Factor 6)
`The final Fintiv factor takes into account any other relevant
`circumstances. Petitioner contends “Petitioner’s strong showing of merit on
`the preliminary record weighs in favor of institution.” Pet. 10.
`Patent Owner responds by alleging that the Petition does not establish
`a reasonable likelihood that Petitioner will prevail on at least one challenged
`claim. Prelim. Resp. 7.
`Having reviewed Petitioner’s unpatentability arguments and Patent
`Owner’s responses, and based on the record before us, we agree that the
`merits of Petitioner’s challenge are strong. As discussed below, on this
`record and at this stage of the proceeding, Petitioner presents a strong case
`that the challenged claims are not patentable. See Fintiv, Paper 11 at 14–15
`
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`IPR2021-00574
`Patent 8,391,298 B2
`(“[I]f the merits of a ground raised in the petition seem particularly strong on
`the preliminary record, this fact has favored institution.”). For example,
`Petitioner’s evidence persuasively shows that Chang alone discloses key
`elements of the challenged claims, including “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.” See infra,
`Section IV.E.1.h. Furthermore, Petitioner demonstrates that Chang discloses
`“the first LAN including second circuity 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 extensions is stored in
`a server in the second LAN, and is accessed by the first circuitry across the
`WAN.” See infra, Section IV.E.1.i.
`This factor weighs against exercising discretion to deny institution.
`D. Conclusion
`The decision whether to exercise discretion to deny institution under
`§ 314(a) is based on “a balanced assessment of all relevant circumstances in
`the case, including the merits.” Patent Trial and Appeal Board Consolidated
`Trial Practice Guide 58 (Nov. 2019), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated.
`Based on the facts and circumstances of this case, we do not exercise
`our discretion under 35 U.S.C. § 314(a) to deny inter partes review.
`
`
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`IPR2021-00574
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`IV. 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” may be found, including commercial success,
`long-felt but 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 presents evidence
`on the fourth Graham factor at this stage. 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
`
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`IPR2021-00574
`Patent 8,391,298 B2
`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 does not dispute this description “[f]or the purposes of
`this Response only.” Prelim. Resp. 11.
`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. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`(prior art itself may reflect an appropriate level of skill). For the purpose of
`our Decision, we adopt Petitioner’s proposal.
`C. Claim Construction
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b). Under that standard, and absent any special definitions, we
`give claim terms their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art at the time of the invention.
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any
`special definitions for claim terms must be set forth with reasonable clarity,
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994).
`Petitioner proposes constructions for the terms “IP telephone,” “touch
`input,” and “tacitly selecting,” but states also that it “does not contend that
`claim construction is material to the obviousness dispute presented.”
`Pet. 14. Patent Owner responds that it “accepts Petitioner’s proposed claim
`constructions,” but contends that “the Petition fails to raise a reasonable
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`IPR2021-00574
`Patent 8,391,298 B2
`likelihood that any claim of the ’298 Patent is unpatentable even under
`Petitioner’s proposed interpretations.” Prelim. Resp. 11.
`1. IP telephone (claims 4, 8, 11, 13, 14, and 17–19)
`Petitioner proposes the following construction: “[A]ny apparatus,
`device, system, or computer that can communicate multimedia traffic using
`IP telephony technology.” Pet. 14. Petitioner relies 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.
`To define “IP telephony,” Petitioner relies 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, 5.6 This definition is incorporated by reference
`in the ’298 patent. Ex. 1001, 3:10–12.
`At this stage, Patent Owner does not provide a construction of these
`terms, and as noted, “accepts Petitioner’s proposed claim constructions.”
`Prelim. Resp. 11. We, therefore, accept Petitioner’s construction of IP
`telephone for this Decision, as it is consistent with the patent specification
`and other evidence of record.
`2. workstation
`Although neither party has asked us to construe “workstation,” in
`view of Patent Owner’s arguments, discussed infra, for the purposes of this
`Decision, we adopt the definition from the ’298 patent: “Herein, the term
`
`
`6 Unless otherwise specified, citations to exhibits refer to the page numbers
`assigned by the parties, and not the original page numbers.
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`‘workstation’ can refer to any network device that can either receive data
`from a network, transmit data to a network, or both.” Ex. 1001, 2:60–62.
`The term “workstation,” is also discussed further in the ’298 patent
`specification in relation to IP telephones: “[A]n IP telephone is not limited
`to the configurations described herein. For example, all of the functionality
`of the present invention can be implemented in a workstation.” Id. at 3:15–
`17. For the purposes of this Decision, we adopt this statement from the ’298
`patent describing the relationship between IP telephones and workstations,
`namely, 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
`1. Chang
`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 15:10–11.7
`Each gateway network includes a LAN. Id. at 15:19.
`
`
`
`7 Citations to Chang refer to the original page numbers, and not the page
`numbers assigned by Petitioner.
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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.
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`Figure 3A of Chang, following, illustrates the distributed architecture
`of enterprise directory 90. Ex. 1003, 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), etc. 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 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'
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`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.
`2. Byrne
`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