UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`RingCentral Inc.,
`
`Petitioner,
`v.
`Estech Systems, Inc.,
`
`Patent Owner
`__________________
`IPR2021-00574
`U.S. Patent No. 8,391,298
`__________________
`DECLARATION OF VIJAY K. MADISETTI, PH.D. IN SUPPORT OF
`ESTECH SYSTEMS, INC’S PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`RingCentral Inc.,
`
`Petitioner,
`v.
`Estech Systems, Inc.,
`
`Patent Owner
`__________________
`IPR2021-00574
`U.S. Patent No. 8,391,298
`__________________
`DECLARATION OF VIJAY K. MADISETTI, PH.D. IN SUPPORT OF
`ESTECH SYSTEMS, INC’S PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`
`
`I, Vijay K. Madisetti, Ph.D, declare as follows:
`
`1.
`
`I make this declaration based upon my own personal knowledge and, if
`
`called upon to testify, would testify competently to the matters contained herein.
`
`2.
`
`I have been asked to render opinions in inter partes review proceeding
`
`IPR2021-00574, regarding claims 1-12 and 17-19 (the “Challenged Claims”) of U.S.
`
`Patent No. 8,391,298 (Ex. 1001, the “’298 Patent”).
`
`3.
`
`This declaration is a statement of my opinions on issues related to the
`
`patentability of the Challenged Claims.
`
`4.
`
`I am being compensated at my usual rate. My compensation is in no
`
`way related to the outcome of this case.
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`5.
`I, Vijay K. Madisetti, Ph.D., have been retained by counsel for Estech
`
`Systems, Inc. (“Patent Owner”) as an expert in RingCentral Inc. v. Estech Systems,
`
`Inc., IPR2021-00574.
`
`6.
`
`As shown in my curriculum vitae (attached as Exhibit 1), in 1984, I
`
`received a Bachelor of Technology in Electronics and Electrical Communications
`
`Engineering from the Indian Institute of Technology (IIT). In 1989, I received my
`
`Ph.D. in Electrical Engineering and Computer Sciences (EECS) from the University
`
`of California, Berkeley. That year, I also received the Demetri Angelakos
`
`
`
`Outstanding Graduate Student Award from the University of California, Berkeley,
`
`and the IEEE/ACM Ira M. Kay Memorial Paper Prize.
`
`7.
`
`In 1989, I joined the faculty of Georgia Tech. I began working at
`
`Georgia Tech as an assistant professor, became an associate professor in 1995, and
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`have held my current position as Professor since 1998. As a member of the faculty
`
`at Georgia Tech, I have been active in, among other technologies, image and video
`
`processing, computer engineering, embedded systems, chip design, software
`
`systems, wireless networks, and cellular communications.
`
`8.
`
`I have been involved in research and technology in the area of digital
`
`signal processing since the late 1980s, and I am the Editor-in-Chief the IEEE
`
`Press/CRC Press’s three-volume Digital Signal Processing Handbook (Editions 1 &
`
`2) (1998, 2010).
`
`9.
`
`Over the past three decades, I studied, used, and designed image and
`
`video processing and wireless networking circuits for numerous applications,
`
`including digital and video cameras, mobile phones, and networking products for
`
`leading commercial firms.
`
`10.
`
`I also have significant experience in designing and implementing
`
`electronic equipment using various source code languages, including C, assembly
`
`code, VHDL, and Verilog. In 2000, I published a book entitled “VHDL: Electronics
`
`Systems Design Methodologies.”
`
`
`
`11.
`
`In 1997, I was awarded the VHDL International Best PhD Dissertation
`
`Advisor for my contributions in the area of rapid prototyping.
`
`12. Since 1995, I have authored, co-authored, or edited several books in the
`
`areas of communications, signal processing, chip design, and software engineering,
`
`including VLSI Digital Signal Processors (1995), Quick-Turnaround ASIC Design
`
`in VHDL (1996), The Digital Signal Processing Handbook (1997 & 2010), Cloud
`
`Computing: A Hands-On Approach (2013), Internet of Things: A Hands-On
`
`Approach (2014), and Big Data Science & Analytics (2016).
`
`13.
`
`I have authored over 100 articles, reports, and other publications
`
`pertaining to electrical engineering, and in the areas of computer engineering,
`
`communications signal processing, and communications. All of my publications,
`
`including the ones identified here, are set forth in my attached CV.
`
`14.
`
`I have worked in areas of digital signal processing relating to speech,
`
`audio and image processing since the early 1980s.
`
`15.
`
`I developed efficient algorithms for echo cancellers for speech and
`
`voice applications that had reduced complexity and improved performance. This
`
`work resulted in a peer-reviewed publication called “Dynamically Reduced
`
`Complexity Implementation of Echo Cancellers”, IEEE ICASSP 96, Tokyo.
`
`16.
`
`In collaboration with my students, I developed fast algorithms for the
`
`modified discrete cosine transform as used in adaptive spectral entropy coder
`
`
`
`(ASPEC) for music signals that uses Time Domain Aliasing Calculation (as used in
`
`the Opus Audio Codec). The MDCT/IMDCT is used as part of the perfect
`
`reconstruction process used in audio decoders. This peer-reviewed work was
`
`published in “On Fast Algorithms for Computing the Inverse Modified Discrete
`
`Cosine Transform”, IEEE Signal Processing Letters, Vol 6, No. 3, Issue 1999.
`
`17. Adaptive lapped transforms (ALT) are fundamental building blocks for
`
`building time-varying linear phase filter banks, and many audio, image, and speech
`
`codecs utilize lapped transforms utilizing ALTs. I along with my students studied
`
`several improved adaptive lapped transforms between the 1996-1999 timeframe, and
`
`these have been published in several peer reviewed articles, including “Adaptive
`
`Lapped Transform-based Image Coding”, IEEE Signal Processing Letters, Vol 4,
`
`Issue 9, 1997.
`
`18.
`
`I have been active in research in the area of electronic communications
`
`and telecommunications since 1984 and have authored or co-authored several papers
`
`and draft proposals on telephony communications. Some of these papers and
`
`proposals include “Multilevel Range/NEXT Performance in Digital Subscriber
`
`Loops”, IEEE Proceedings on Communications, Speech and Vision, Vol 136, Issue
`
`2, April 1989, and “Comparison of Line Codes and Proposal for Modified
`
`Duobinary”, Contribution T1D1.3-85- 237, American National Standards Institute,
`
`November 1985.
`
`
`
`19. Between 1998 and 2004 I and my students studied different codecs for
`
`audio and video streaming over the internet, and published IETF draft standards on
`
`these techniques. These included:
`
` V. Madisetti and A. Argyriou: Voice and Video over Mobile IP
`
`Networks, IETF Draft, May 20, 2002
`
` V. Madisetti and A. Argyriou: A Transport Layer Technology for
`
`Improving QoS of Networked Multimedia Applications, IETF Draft
`
`July 25, 2002
`
`20.
`
`I have also published a number of peer-reviewed publications in the
`
`area of streaming audio and video applications over the internet include:
`
` V. Madisetti and A. Argyriou: Voice and Video over Mobile IP
`
`Networks, IETF Draft, May 20, 2002
`
` V. Madisetti and A. Argyriou: A Transport Layer Technology for
`
`Improving QoS of Networked Multimedia Applications, IETF Draft
`
`July 25, 2002.
`
`21.
`
`In the 1999-2003 timeframe, I consulted with a team of engineers to
`
`design an integrated Soft Switch & Media Server, the SNX 850/8500, that was being
`
`sold and installed in Asia. The SNX 8500 was a one-box solution to VOIP, LAN
`
`switching, and iPBX/PBX solutions for enterprise customers, and has been installed
`
`as part of BPL Telecom’s then offerings in Asia. The PBX modules within SNX
`
`
`
`850/8500 supported Analog Phones, Digital Feature Phones, E1/ISDN PRI Trunks,
`
`E1 or PRI at the PSTN gateway, VOIP (SIP) soft phones, SS7 interfaces, and
`
`operated via a browser-based console. It included a variety of features, such as
`
`Automatic Call Back, Busy Override, Do Not Disturb, etc., through support for 16
`
`ISDN
`
`BRI
`
`circuits.
`
`See
`
`additional
`
`details
`
`at
`
`URL
`
`(http://www.financialexpress.com/news/bpl-telecom-launches-voip-
`
`platform/42827).
`
`
`In the timeframe of 2000-2007, I designed and provided optimized
`
`22.
`
`mobile speech codecs AMR and AMR-WB to one of the leading mobile phone and
`
`base station manufacturers in the world, and this implementation has been deployed
`
`on millions of 3G/4G mobile phones and numerous base stations.
`
`23.
`
`In the timeframe of 2000-2007, I also designed and provided several
`
`VOIP codecs to leading VOIP phone vendors that are now deployed in several
`
`generations of enterprise VOIP phone products in the USA and abroad. I also
`
`
`
`designed and provided echo cancellers for VOIP applications for deployment during
`
`that timeframe.
`
`24.
`
`I have been elected a Fellow of the Institute of Electrical and
`
`Electronics Engineers (“IEEE”) in recognition of my contributions to embedded
`
`computing systems. The IEEE is a worldwide professional body consisting of more
`
`than 300,000 electrical and electronic engineers. Fellow is the highest grade of
`
`membership of the IEEE, with only one-tenth of one percent of the IEEE
`
`membership being elected to the Fellow grade each year.
`
`25.
`
`In 2006, I was awarded the Frederick Emmons Terman Medal from the
`
`American Society of Engineering Education (ASEE) and HP Corporation for my
`
`contribution to electrical engineering while under the age of 45.
`
`26.
`
`I am the official representative from Georgia Tech to the 3GPP/ETSI
`
`Standards organization and quite familiar with the standardization processors for
`
`speech, audio and video applications in the context of mobile and wireless
`
`communications.
`
`27.
`
`I have developed speech and video codecs that comply with 3GPP
`
`standards. These tasks involved developing software to implement the associated
`
`3GPP standards and also tests to verify compliance to these standards. The families
`
`of these 3GPP standards include TS 26.071 – TS 26.204, covering over a hundred
`
`standard specification documents. The software that I developed that complies with
`
`
`
`these standards is now available commercial on millions of 3G and 4G handsets
`
`worldwide. My codecs were tested on live 3G and 4G networks in Europe and USA
`
`since the early 2004 – 2006 timeframe.
`
`28.
`
`I have also developed several speech and VOIP codecs that conform
`
`with the ITU (International Telecommunications Union) standards G.723.1, G.729
`
`and Echo Cancellers conforming with
`
`the
`
`ITU G.168 standards
`
`(See
`
`https://www.itu.int/rec/T-REC-G.723/en)
`
`29. The software and code I have developed and tested based on
`
`technologies essential to the ITU standards are now used by one of the leading
`
`suppliers of VOIP/Internet telephones in the world. This software is also part of
`
`commercially released soft switches for internet telephony used extensively in Asia.
`
`See
`
`for
`
`example
`
`URL
`
`https://www.thehindubusinessline.com/bline/2002/04/09/stories/200204090066070
`
`0.htm.
`
`30. As part of earlier consulting work, I tested compliance of several
`
`smartphones (3G and 4G) in their use of standards-essential patents (SEP) related to
`
`3GPP and 3GPP2 standards, primarily in the area of HARQ and encryption. This
`
`work involved use of commercial 3GPP test equipment that included base stations
`
`and UEs to evaluate compliance to the standard and further opine on the issue of
`
`alternatives.
`
`
`
`31. Further, as stated above, I serve as the official representative of Georgia
`
`Tech to ETSI. In that role, I manage Georgia Tech’s relationship with ETSI and am
`
`responsible for representing Georgia Tech’s interests as they relate to ETSI,
`
`including to choose technical areas to which Georgia Tech may contribute, to
`
`determine which meetings to attend, and participating in technical work related to
`
`various technologies, including those in the area of 5G, 4G, and IoT (Internet of
`
`Things). In addition, as noted, prior to assuming this role, in the past twenty years I
`
`have been retained to test various commercial mobile and wireless products to
`
`determine if they comply with various ETSI, 3GPP, and TIA (including 3GPP2)
`
`standards.
`
`32.
`
`I have over thirty patent applications pending and am listed as inventor
`
`on over two dozen US patents.
`
`33.
`
`I have served on the paper reviewing committees of many leading
`
`conferences in my field, and have taken on editorial roles for leading technical
`
`journals in fields pertinent to my research.
`
`34. As such, I am qualified to provide opinions regarding the state of the
`
`art at the time the ’298 Patent was filed (which I understand to be no later than May
`
`29, 2003, but claiming a priority date of February 1, 2001) and how a person of
`
`ordinary skill in the art (“POSITA”) at that time would have interpreted and
`
`understood the ’298 Patent.
`
`
`
`35.
`
`I am being compensated for my work and any travel expenses in
`
`connection with this proceeding at my standard consulting rates. My compensation
`
`is in no way dependent on or contingent on the outcome of my analysis or opinions
`
`rendered in this proceeding and is in no way dependent on or contingent on the
`
`results of these or any other proceedings relating to the above-captioned patent.
`
`36. Although I am not rendering an opinion about the level of skill of a
`
`POSITA proffered by Petitioner, based on my professional experience, I have an
`
`understanding of the capabilities of a POSITA (as such a POSITA is defined by
`
`Petitioner). Over the course of my career, I have supervised and directed many such
`
`persons. Additionally, I myself, at the time the ’298 Patent was filed and at its
`
`priority date, qualified as at least a POSITA.
`
`II. MATERIALS CONSIDERED
`37.
`In preparing this declaration, I reviewed the ’298 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’298 Patent, various
`
`prior art and technical references from the time of the invention, and the IPR2021-
`
`00574 and its exhibits.
`
`38.
`
`In addition, I have reviewed all of the papers and exhibits in the record
`
`for inter partes review proceeding IPR2021-00574.
`
`
`
`III. LEGAL UNDERSTANDING
`39.
`I have worked with counsel for Patent Owner in the preparation of this
`
`Declaration. Nevertheless, the opinions, statements, and conclusions offered in this
`
`Declaration are purely my own and were neither suggested nor indicated in any way
`
`by counsel or anyone other than myself. I confirmed with counsel my understanding
`
`that the term “obvious,” as used in the Petitions addressed herein and as a general
`
`matter under United States law, refers to subject matter that would have occurred to
`
`a POSITA to which the ’298 Patent is directed without inventive or creative thought.
`
`That which is obvious, it is my understanding, flows naturally from the art and the
`
`education one of skill practicing in that art would have had in the relevant time
`
`frame, which for the ’298 Patent is 2001.
`
`A. Obviousness
`40.
`I understand that a patent claim can be invalid under 35 U.S.C. § 103 if
`
`the claimed subject matter would have been “obvious” to a person of ordinary skill
`
`in the art as of the priority date of the patent based upon one or more prior art
`
`references. I understand that an obviousness analysis should consider each of the
`
`following so-called “Graham factors”: (1) the scope and content of the prior art; (2)
`
`the differences between the claims and the prior art; (3) the level of ordinary skill in
`
`the pertinent art; and (4) secondary considerations, if any (such as unexpected
`
`
`
`results, commercial success, long-felt but unsolved needs, failure of others, copying
`
`by others, licensing, and skepticism of experts).
`
`41.
`
`I understand that a conclusion of obviousness may be based upon either
`
`a single prior art reference or a combination of prior art references. However, I
`
`understand that merely demonstrating that each of the claim elements was,
`
`independently, known in the prior art does not prove that a claim composed of
`
`several known elements is obvious. In other words, I have been informed that
`
`obviousness requires more than a mere showing that the prior art includes separate
`
`references covering each limitation in a claim. Rather, obviousness requires the
`
`additional showing that a person of ordinary skill at the time of the invention would
`
`have selected and combined those elements in the normal course of research and
`
`development to yield the claimed invention.
`
`42. Moreover, I understand that it can be important to identify a reason that
`
`would have prompted a person of ordinary skill in the relevant field to combine the
`
`elements in a way the claimed new invention does.
`
`43.
`
`I further understand that, to determine obviousness, courts look to the
`
`interrelated teachings of multiple patents or other prior art references, the effects of
`
`demands known to the design community or present in the marketplace, and the
`
`background knowledge possessed by a person having ordinary skill in the art.
`
`
`
`44.
`
`I also understand that, in determining whether a combination of prior
`
`art references renders a claim obvious, it may be helpful to consider whether there
`
`is some teaching, suggestion, or motivation to combine the references and a
`
`reasonable expectation of success in doing so. I understand, however, that the
`
`teaching, suggestion, or motivation to combine inquiry is not required and may not
`
`be relied upon in lieu of the obviousness analysis outlined above.
`
`45.
`
`I understand that the following exemplary rationales may lead to a
`
`conclusion of obviousness: the combination of prior art elements according to
`
`known methods to yield predictable results; the substitution of one known element
`
`for another to obtain predictable results; and the use of known techniques to improve
`
`similar devices in the same way.
`
`46. However, a claim is not obvious if the improvement is more than the
`
`predictable use of prior art elements according to their established functions.
`
`Similarly, a claim is not obvious if the application of a known technique is beyond
`
`the level of ordinary skill in the art.
`
`47. Further, when the prior art teaches away from combining certain known
`
`elements, discovery of successful means of combining them is not obvious. I
`
`understand that similar subject matter may not be sufficient motivation for a person
`
`of skill in the art to combine references if the references have conflicting elements.
`
`
`
`48.
`
`I understand that, in order to be used in an obviousness combination, a
`
`prior art reference must be “analogous.” I understand that a prior art reference may
`
`be analogous if it is in the same field of endeavor as the other references with which
`
`it is combined, or if the reference is reasonably pertinent to the solving the problems
`
`the inventors of the patent-at-issue sought to solve.
`
`49.
`
`I understand that obviousness of a patent claim cannot properly be
`
`established through hindsight, and that elements from different prior art references,
`
`or different embodiments of a single prior art reference, cannot be selected to create
`
`the claimed invention using the invention itself as a roadmap. I understand that the
`
`claimed invention as a whole must be compared to the prior art as a whole, and courts
`
`must avoid aggregating pieces of prior art through hindsight that would not have
`
`been combined absent the inventors’ insight.
`
`50.
`
`I understand that obviousness is not established by simply combining
`
`previously known elements from the prior art. A patent composed of several
`
`elements is not proved obvious merely by demonstrating that each of its elements
`
`was, independently, known in the prior art. An invention is unpatentable as obvious
`
`if the differences between the patented subject matter and the prior art would have
`
`been obvious at the time of invention to a person of ordinary skill in the art.
`
`51.
`
`I understand that obviousness of a patent cannot properly be established
`
`by mere conclusory statements. Instead, there must be some articulated reasoning
`
`
`
`with some rational underpinning to support the legal conclusion of obviousness.
`
`When an expert opines that all the elements of a claim disparately exist in the prior
`
`art, the expert should provide the rationale to combine the disparate references. A
`
`reason for combining disparate prior art references is a critical component of an
`
`obviousness analysis. The obviousness analysis should be made explicit and needs
`
`to provide an articulated reasoning with some rational underpinning to identify the
`
`reason that would have prompted a person of ordinary skill in the relevant field to
`
`combine the elements in the way the claimed invention does.
`
`52.
`
`I also understand that inventions in most, if not all, instances rely upon
`
`building blocks long since uncovered, and claimed discoveries almost of necessity
`
`will be combinations of what, in some sense, is already known. This is another
`
`reason why merely pointing to the elements being known in the art in separate
`
`locations is not the end of the obviousness inquiry.
`
`53.
`
`I understand that technical experts may testify to matters like the level
`
`of skill in the art at the time of the invention and what a skilled artisan might find
`
`obvious in light of the prior art without addressing objective indicia of non-
`
`obviousness. However, where an expert purports to testify not just to certain factual
`
`components underlying the obviousness inquiry, but to the ultimate question of
`
`obviousness, the expert must consider all factors relevant to that ultimate question,
`
`
`
`including all objective evidence of nonobviousness. Accordingly, I have undertaken
`
`such considerations here.
`
`54.
`
`I understand that, to render obvious a patent claim the prior art
`
`references must be enabling. That is, the references must provide sufficient
`
`information to allow one skilled in the art to practice what is disclosed without undue
`
`experimentation. I understand that, while a prior art reference may support any
`
`finding apparent to a person of ordinary skill in the art, prior art references that
`
`address different problems may not, depending on the art and circumstances, support
`
`an inference that the skilled artisan would consult both of them simultaneously.
`
`B.
`55.
`
`Secondary Considerations
`I understand that one of the so-called Graham factors that must be
`
`considered in determining obviousness is the existence of any secondary
`
`considerations, which tend to show that a patent claim is not obvious. Such
`
`secondary considerations of nonobviousness of a patent include (1) long-felt and
`
`unmet need in the art that was satisfied by the claimed invention of the patent; (2)
`
`failure of others to achieve the results of the claimed invention; (3) commercial
`
`success or lack thereof of the products and processes covered by the claimed
`
`invention; (4) deliberate copying of the claimed invention by others in the field; (5)
`
`taking of licenses under the patent by others; (6) whether the claimed invention was
`
`contrary to the accepted wisdom of the prior art; (7) expression of disbelief or
`
`
`
`skepticism by those skilled in the art upon learning of the claimed invention; (8)
`
`unexpected results achieved by the claimed invention; (9) praise of the claimed
`
`invention by others skilled in the art; and (10) lack of contemporaneous and
`
`independent invention by others.
`
`56.
`
`I understand that each of these considerations may form an independent
`
`basis for nonobviousness of a patent. I also understand that the fact that another
`
`person simultaneously and independently created the same invention claimed in an
`
`asserted patent can serve as an indication that the invention was obvious.
`
`57.
`
`I also have been informed by counsel that there must be a nexus
`
`between any such secondary considerations and the claimed invention.
`
`IV. CLAIM CONSTRUCTION
`58.
`I reviewed the comments in the Petition, and Petitioner’s expert’s
`
`declaration (Ex. 1006) pertaining to “construction of the claims” of the ’298 Patent.
`
`My understanding is simply that, in the absence of a specific controversy, one arrives
`
`at the appropriate “construction” or definition of what is embraced by the claims of
`
`the ’298 Patent and what is excluded by those claims by a reading of the ’298 Patent
`
`and arriving at what, based on that reading, the inventor of the claimed subject matter
`
`intended to protect as her or his invention.
`
`59. The Petition proposes claim constructions for “IP telephone” (claims 4,
`
`8, 11, 13, 14, and 17-19), “touch input” (claims 17-19), and “tacitly selecting” (claim
`
`
`
`4). I have not been asked to opine on the correctness of these constructions, but
`
`rather to accept them as part of my work here.
`
`V. OPINIONS
`60. Petitioner challenges independent Claims 1, 8, and 17, and dependent
`
`Claims 2-7, 9-12, 18, and 19 of the ’298 patent.
`
`61.
`
`In my opinion, as described below, Petitioner has not established by a
`
`preponderance of the evidence that the challenged claims of the ’298 patent are
`
`obvious.
`
`A. Ground 1 – The combination of Chang and Byrne does not render
`obvious any of claims 1-5, 7-12, and 17-19.
`In my opinion, the combination of Chang and Byrne (the “Ground 1
`
`62.
`
`References”) does not render obvious any of claims 1-5, 7-12, and 17-19, because
`
`neither reference, nor the combination thereof, teaches or suggests every claim
`
`limitation.
`
`1.
`63.
`
`Independent Claim 1
`In my opinion, the Ground 1 References do not render obvious claim 1
`
`at least because they do not teach or suggest the following elements of independent
`
`claim 1.
`
`a.
`Claim element 1[e]
`64. Claim element 1[e] claims “a first telecommunications device coupled
`
`to the first LAN.” Chang does not teach or suggest this limitation. The Petition
`
`
`
`contends that either the “workstation” or the “telephone” disclosed in Chang is “a
`
`first telecommunications device.” Petition at 28. It is my opinion that neither the
`
`“workstation” nor the “telephone” meet this limitation.
`
`65. The “telephone” disclosed in Chang does not meet this limitation
`
`because it is not “coupled to the first LAN.” The Petition identifies LAN 22, as
`
`depicted in Figure 2, as the “first LAN.” Petitioner concedes that telephone 38 is
`
`not connected to LAN 22. See Petition at 23 (“As shown, the network includes a
`
`LAN 22 that connects a gateway server 26, a router 32, workstation, and the
`
`directory server 26.”). Nor is telephone 38 depicted (in Figure 2) as one of the
`
`devices connected to LAN 22.
`
`
`
`
`
`Ex. 1003, Fig. 2.
`
`66.
`
`Indeed Chang describes the telephone as “coupled to the PBX.” See id.
`
`at 6:14, 15:29-30, 6:22-23, 7:34, 72:8, 72:24, 73:7, 73:11, 74:2, 75:13, 79:6, 84:1-2.
`
`For at least these reasons, the “telephone” disclosed in Chang is not “a first
`
`telecommunications device coupled to the first LAN.” The Institution Decision
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`states that “the telephones in Chang are connected to LAN 22 through the PBX and
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`gate server.” Paper 13, p. 24 (citing Ex. 1003, Fig. 2). In doing so, the Institution
`
`Decision disregards Petitioner’s concession that the “telephone” disclosed in Chang
`
`is not one of the devices connected to LAN 22. See Paper 1, p. 23.
`
`67. The “workstation” disclosed in Chang does not meet this limitation
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`because it is not a “telecommunications device.” The workstation is not described
`
`as having telecommunications capabilities. The Petition cites only a single portion
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`of Chang to allege that the “workstation” is a telecommunications device—page 5,
`
`lines 28-32. See Petition at 28. Not surprisingly, the Petition does not quote the
`
`entire citation because it is contrary to Petitioner’s position. Chang discloses that
`
`the workstation can initiate telecommunications functions, but does not state that the
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`workstation performs those functions: “It is an object of the invention to provide an
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`integrated voice gateway system in which users can initiate telephone functions from
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`the workstation, such functions including, without limitation, dialing a call,
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`transferring a call, add-on conference, and forward a call to/from any white pages
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`
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`entry or persona telephone book entry.” Compare Ex. 1003, 5:28-32 (emphasis
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`added) with Petition at 28 (“telephone functions … including, without limitation,
`
`dialing a call, transferring a call, add-on conference, and forward a call to/from any
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`white pages entry...”) (quoting Ex. 1003 at 5:28-32). The workstation can initiate
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`some
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`telephone functions, but not actually perform
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`the functions of a
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`telecommunications device, like conducting a phone call. Without the telephone of
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`Chang, the workstation cannot perform any telecommunications functions. The
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`remainder of Chang, which was not cited by the Petition, clarifies that the
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`workstation merely controls the telephone (i.e., the workstation initiates functions
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`by controlling the telephone to perform those functions), and is not capable of
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`operating as a telecommunications device.
`
`68. Chang contains a detailed description of the “PC Call Control”
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`functionality, which is used to control the telephone from the workstation. See Ex.
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`1003 at 6:27-28. The PC Call Control functionality is provided through a web
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`browser interface that is accessible from the workstation.1 Id. at 37:13-15 (“The
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`integrated computer telephone system of the invention provides the user with an
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`integrated, comprehensive, and easy to use PC Call Control capability via a web
`
`browser interface.”). Chang states in no uncertain terms that “all of the methods and
`
`
`1 The PC Call Control capability is implemented via a web browser interface,
`rather than an application installed on the workstation, to reduce the cost and
`complexity of implementation. See id. at 56:22-57:5.
`
`
`
`scenarios of operation illustrated by the FIGs., and described herein, may be
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`controlled by the user from the telephone via DTMF buttons or from the desktop
`
`workstation via the web browser interface.” See id. at 37:16-19 (emphasis added).
`
`69. Chang also states in no uncertain terms that all calls are made by the
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`telephone, not the workstation. The description of a “Basic PSTN Call” describes
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`calls as occurring between telephones, not workstations. See id. at 37:22-35 (“In a
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`preferring embodiment, the integrated computer telephone system of the invention
`
`provides the capability to place a telephone call from a caller gateway telephone to
`
`a called gateway telephone via the PSTN.”) (emphasis added). The same is
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`described for a “Basic VoIP Call.” See id. At 38:1-32 (“In a preferred embodiment,
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`the gateway network provides the capability to place a telephone call from a caller
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`gateway telephone to a called gateway telephone via an IP network.”) (emphasis
`
`added).
`
`70. The “Virtual Desktop” functionality disclosed in Chang further
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`confirms that the “workstation” is not a “telecommunications device.” Chang
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`describes this functionality as providing “a virtual desktop which allows a computer
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`browser and a telephone at a location other than a user’s regular office, e.g. an
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`‘alternate office’ or a ‘virtual office’, to be logically associated with the user.” Id.
`
`at 57:12-15 (emphasis added). Chang notes that both a telephone and a workstation
`
`are required to implement the “Virtual Desktop” functionality. See id. At 57:18-20
`
`
`
`(“An alternate office within the company is any location that has access to both a
`
`gateway telephone, and a desktop workstation having a browser. . . .”) (emphasis
`
`added). The reason for why both devices are required is clear—the workstation itself
`
`is not a “telecommunications device,” so a separate telecommunications device (i.e.,
`
`the telephone) is necessary.
`
`71. Neither the Petition, Petitioner’s expert, nor the Institution Decision
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`address any of these disclosures regarding the functionality of the Chang
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`“workstation.” See Petition, pp. 27-29; Ex. 1006, ¶84; Paper 13, pp. 24-25.
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`Petitioner’s expert declaration, to which the Institution Decision cites to for support,
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`should not be afforded any weight because it is a conclusory opinion that merely
`
`restates the citations from the Petition. See Ex. 1006, ¶84. The fact remains that the
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`detailed description of the “PC Call Control” functionality disclosed in Chang makes
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`it clear that the “workstation” is not a “telecommunications device” as required by
`
`the claim.
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`72. The Institution Decision also states that the “telephone/workstation
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`combination also constituted a ‘telecommunications device.’” Paper 13, p. 28.
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`Neither the Petition nor the Institution Decision describe what the combination
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`would be or why it would have been obvious to combine the telephone and
`
`workstation disclosed in Chang. The Petition merely states that the two devices can
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`be co-located. Petition, p. 40. It does
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