IPR2021-00574
`Patent No. 8,391,298
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`RingCentral Inc.,
`Petitioner,
`
`v.
`
`Estech Systems, Inc,
`Patent Owner
`__________________
`
`PATENT OWNER’S RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,391,298
`PURSUANT TO 37 C.F.R. § 42.120
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`
`
`
`Patent No. 8,391,298
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`RingCentral Inc.,
`Petitioner,
`
`v.
`
`Estech Systems, Inc,
`Patent Owner
`__________________
`
`PATENT OWNER’S RESPONSE TO THE PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,391,298
`PURSUANT TO 37 C.F.R. § 42.120
`
`Filed on behalf of Patent Owner by:
`
`Todd E. Landis (Reg. No. 44,200)
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`
`
`
`
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`IPR2021-00574
`Patent No. 8,391,298
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II.
`
`PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY ........ 1
`
`III.
`
`PRODEDURAL HISTORY ............................................................................ 1
`
`IV. THE TECHNOLOGY OF THE ’298 PATENT ............................................. 1
`
`A. The ’298 Patent ....................................................................................... 1
`B.
`Prosecution History of the ‘’298 Patent ................................................. 5
`C. Level of Ordinary Skill in the Art .......................................................... 5
`D. Claim Construction ................................................................................. 5
`RESPONSE TO ISSUES RAISED IN THE PETITION ................................ 5
`
`V.
`
`A. Ground 1 – The Combination of Chang And Byrne Does Not Render
`Obvious Any of Claims 1-5, 7-12, and 17-19. ....................................... 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
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`Chang and Byrne do not render independent claim 1 obvious
`because they do not teach or suggest claim element 1[e] ........... 5
`
`Chang and Byrne do not render independent claim 1 obvious
`because they do not teach or suggest claim element 1[f] .........12
`
`Chang and Byrne do not render independent claim 1 obvious
`because they do not teach or suggest claim element 1[h] .........13
`
`Chang and Byrne do not render independent claim 1 obvious
`because they do not teach or suggest claim element 1[i]..........20
`
`Chang and Byrne do not render dependent claims 2 and 3
`obvious ......................................................................................22
`
`Chang and Byrne do not render dependent claim 4 obvious. ...22
`
`Chang and Byrne do not render dependent claims 5 and 7
`obvious ......................................................................................25
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`8.
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`9.
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`Chang and Byrne do not render independent claim 8 obvious
`because they do not teach or suggest claim element 8[b] .........25
`
`Chang and Byrne do not render independent claim 8 obvious
`because they do not teach or suggest claim element 8[d] .........26
`
`10. Chang and Byrne do not render independent claim 8 obvious
`because they do not teach or suggest claim element 8[f] .........27
`
`11. Chang and Byrne do not render independent claim 8 obvious
`because they do not teach or suggest claim element 8[g]. ........27
`
`12. Chang and Byrne do not render independent claim 8 obvious
`because they do not teach or suggest claim element 8[h]. ........28
`
`13. Dependent Claims 9-12 .............................................................28
`
`14. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`element 17[a] .............................................................................29
`
`15. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`element 17[b] ............................................................................29
`
`16. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`element 17[c] .............................................................................31
`
`17. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`element 17[d] ............................................................................31
`
`18. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`element 17[e] .............................................................................32
`
`19. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`elements 17[f] ...........................................................................33
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`20. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`elements 17[g]-17[h] .................................................................34
`
`21. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`element 17[i] .............................................................................36
`
`22. Chang and Byrne do not render independent claim 17
`unpatentable because they do not teach or suggest claim
`element 17[j] .............................................................................36
`
`23. Dependent Claims 18 and 19 ....................................................37
`B. Ground 2 – The Combination of Chang, Byrne, and Imielinski Does
`Not Render Obvious Claim 6. .............................................................. 37
`VI. CONCLUSION ..............................................................................................37
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`EXHIBIT LIST
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`Exhibit
`
`Description
`
`2013
`
`Declaration of Vijay K. Madisetti, Ph.D. In Support of Estech
`Systems, Inc’s Patent Owner Response
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`
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`IPR2021-00574
`Patent No. 8,391,298
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`I.
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`INTRODUCTION
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`Estech Systems, Inc. (“Patent Owner”) respectfully submits this Response
`
`(“Response”) to RingCentral, Inc.’s (“RingCentral” or “Petitioner”) Petition for
`
`Inter Partes Review No. IPR2021-00574 (Paper 1) (“Petition” or “Pet.”) of U.S.
`
`Patent No. 8,391,298 (the “’298 Patent”).
`
`Petitioner fails to show unpatentability of any claim of the ’298 Patent because
`
`the grounds fail to render obvious several elements of each challenged claim.
`
`II. PETITIONER’S ASSERTED GROUNDS OF UNPATENTABILITY
`
`
`
`1.
`
`2.
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`
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`Prior Art
`
`Basis
`
`Challenged Claims
`
`Chang and Byrne
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`Obviousness (§ 103) 1-5, 7-12, and 17-19
`
`Chang, Byrne, and
`Imielinski
`
`Obviousness (§ 103) 6
`
`III. PRODEDURAL HISTORY
`
`Petitioner filed this Petition for Inter Partes Review of the ’298 Patent on
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`March 5, 2021. Patent Owner submitted a Preliminary Response to the Petition on
`
`July 8, 2021. The Board instituted inter partes review as to claims 1-12 and 17-19
`
`of the ’298 Patent (“Challenged Claims”) on the Grounds raised in the Petition.
`
`IV. THE TECHNOLOGY OF THE ’298 PATENT
`
`A. The ’298 Patent
`
`The ’298 Patent is titled “Phone Directory in a Voice Over IP Telephone
`
`System.” The Abstract of the ‘298 Patent provides an overview of the claimed
`
`-1-
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`subject matter: “In a Voice over IP system, a user can dial numbers stored in a series
`
`of lists, which are stored in the system and displayed to the user of an IP telephone.
`
`One implementation will allow a user to scroll through a list of remote sites. When
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`the user finds the desired site, the user is then presented with the same options as a
`
`user local to that site. All of this can be performed without the need for an operator
`
`or a printed directory. This system provides an ability for a user to scroll through a
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`list of names and phone numbers and then call a person once their name and phone
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`number is displayed.” Ex. 1001, Abstract.
`
`The invention of the ‘298 Patent can be used in a network architecture
`
`consisting of LANs interconnected by a WAN, an example of which is depicted in
`
`Figure 3. See id. at 2:3-4.1
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`
`1 A citation of 2:3-4 refers to column 2, lines 3-4. This citation format is used
`through the Response.
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`-2-
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`Ex. 1001, Fig. 3.
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`“An embodiment of the present invention permits a user at a remote site to
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`easily scroll through a phone listing of users through the WAN 201.” Id. at 9:53-55.
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`The phone listing can be displayed to the user or the phone listing can be vocally
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`listed to a user. See id. at 9:66-10:4. In some embodiments, the listing can be limited
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`to the same LAN as the user, or listing from other LANs that are connected via a
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`WAN. See id. at 9:55-59, Fig. 11. The user can automatically dial the number of an
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`individual listing by, for example, pressing a button on a VoIP telephone. See id. at
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`9:60-64, Fig. 11.
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` DISPLAY
`RESPONSE MESSAGE
`RECEIVED
`?
`
`DISPLAY FIRST OF
`N REMOTE SITE
`
` DISPLAY
`RESPONSE
`MESSAGE
`
`
`
`
`
`
`
`ALPHANUMERIC
`KEY PRESSED
`
`
`
`
`
`
`
` DISPLAY STATION - DEX
`
`DISPLAY
`
`SELECTED
`
`
`REMOTESITE
`
`
`
`
`BUTTON KEY
`PRESSED
`?
`
`OR SYSTEM DEX
`OPTIONS FOR
`SELECTED REMOTESITE
`
`
`
`
`ARROW KEY
`
`OR ALPHANUMERIC ARROW KEY
`OR ALPHANUMERIC
`
`
`KEY
`
`
`
`SEND MESSAGE TO
`SELECTED REMOTESITE
`
`PERTAINING TO
`
`
`
`BEGIN CALL
`PRESSED KEY
`PROCESSING
`
`(SEE FIG. 9A)
`
`Ex. 1001, Fig. 11.
`Ex. 1001, Fig. 11.
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`
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`B.
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`Prosecution History of the ‘’298 Patent
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`The ’298 Patent filed on May 29, 2003 and issued on March 5, 2013. It is a
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`continuation-in-part of U.S. App. No. 09/775,018, which filed on February 1, 2001,
`
`and issued as U.S. Patent No. 7,068,684 (the “’684 Patent”).
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`C. Level of Ordinary Skill in the Art
`
`For the purposes of this Response only, Patent Owner does not dispute the
`
`level of skill of a person of ordinary skill in the art (“POSITA”) identified in the
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`Petition.
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`D. Claim Construction
`
`For purposes of this IPR, Patent Owner accepts Petitioner’s proposed claim
`
`constructions.
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`V. RESPONSE TO ISSUES RAISED IN THE PETITION
`
`A. Ground 1 – The Combination of Chang And Byrne Does Not
`Render Obvious Any of Claims 1-5, 7-12, and 17-19.
`
`The combination of Chang (Ex. 1003) and Byrne (Ex. 1004) does not render
`
`
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`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.
`
`Chang and Byrne do not render independent claim 1
`obvious because they do not teach or suggest claim element
`1[e]
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`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
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`-5-
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`that either the “workstation” or the “telephone” disclosed in Chang is “a first
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`telecommunications device.” Petition at 28. Neither the “workstation” nor the
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`U.S. Patent No. 8,391,298
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`“telephone” meet this limitation. See Ex. 2013, ¶64.
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`The “telephone” disclosed in Chang does not meet this limitation because it
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`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. See Ex. 2013, ¶65.
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`Ex. 1003, Fig. 2.
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`Indeed Chang describes the telephone as “coupled to the PBX.” See id. at
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`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.
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`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
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`Decision disregards Petitioner’s concession that the “telephone” disclosed in Chang
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`-7-
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`is not one of the devices connected to LAN 22. See Paper 1, p. 23. See also Ex.
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`2013, ¶66.
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`The “workstation” disclosed in Chang does not meet this limitation because it
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`is not a “telecommunications device.” The workstation is not described as having
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`telecommunications capabilities. The Petition cites only a single portion of Chang
`
`to allege that the “workstation” is a telecommunications device—page 5, lines 28-
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`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
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`can initiate telecommunications functions, but does not state that the workstation
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`performs those functions: “It is an object of the invention to provide an integrated
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`voice gateway system in which users can initiate telephone functions from the
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`workstation, such functions including, without limitation, dialing a call, transferring
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`a call, add-on conference, and forward a call to/from any white pages entry or
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`persona telephone book entry.” Compare Ex. 1003, 5:28-32 (emphasis added) with
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`Petition at 28 (“telephone 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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`entry...”) (quoting Ex. 1003 at 5:28-32). The workstation can initiate some
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`telephone functions, but not actually perform the functions of a telecommunications
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`device, like conducting a phone call. Without the telephone of Chang, the
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`workstation cannot perform any telecommunications functions. The remainder of
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`Chang, which was not cited by the Petition, clarifies that the workstation merely
`
`controls the telephone (i.e., the workstation initiates functions by controlling the
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`telephone to perform those functions), and is not capable of operating as a
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`telecommunications device. See Ex. 2013, ¶67.
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`Chang contains a detailed description of the “PC Call Control” functionality,
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`which is used to control the telephone from the workstation. See Ex. 1003 at 6:27-
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`28. The PC Call Control functionality is provided through a web browser interface
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`that is accessible from the workstation.2 Id. at 37:13-15 (“The integrated computer
`
`telephone system of the invention provides the user with an integrated,
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`comprehensive, and easy to use PC Call Control capability via a web browser
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`interface.”). Chang states in no uncertain terms that “all of the methods and
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`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
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`workstation via the web browser interface.” See id. at 37:16-19 (emphasis added).
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`See Ex. 2013, ¶68.
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`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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`2 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.
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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
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`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). See Ex. 2013, ¶69.
`
`The “Virtual Desktop” functionality disclosed in Chang further confirms that
`
`the “workstation” is not a “telecommunications device.” Chang describes this
`
`functionality as providing “a virtual desktop which allows a computer browser and
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`a telephone at a location other than a user’s regular office, e.g. an ‘alternate office’
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`or a ‘virtual office’, to be logically associated with the user.” Id. at 57:12-15
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`(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
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`reason for why both devices are required is clear—the workstation itself is not a
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`“telecommunications device,” so a separate telecommunications device (i.e., the
`
`telephone) is necessary. See Ex. 2013, ¶70.
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`Neither the Petition, Petitioner’s expert, nor the Institution Decision address
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`any of these disclosures regarding the functionality of the Chang “workstation.” See
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`Petition, pp. 27-29; Ex. 1006, ¶84; Paper 13, pp. 24-25. Petitioner’s expert
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`declaration, to which the Institution Decision cites to for support, should not be
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`afforded any weight because it is a conclusory opinion that merely restates the
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`citations from the Petition. See Ex. 1006, ¶84. The fact remains that the detailed
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`description of the “PC Call Control” functionality disclosed in Chang makes it clear
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`that the “workstation” is not a “telecommunications device” as required by the claim.
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`See Ex. 2013, ¶71.
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`The Institution Decision also states
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`that
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`the “telephone/workstation
`
`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
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`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 not argue that it would have been obvious to
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`combine the two devices into a “telecommunications device” as claimed—the claim
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`does not recite a telephone and separate computer workstation. Nor does the Petition
`
`provide any motivation to combine the two devices. See Ex. 2013, ¶72.
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`The Petition does not contend that this limitation is met by Byrne. See Petition
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`at 27-28. Nor does the Petition contend that it would have been obvious to modify
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`either of the “telephone” or “workstation” in Chang to satisfy this limitation. See id.
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`For at least these reasons, neither Chang nor Byrne, taken alone or in combination,
`
`teach or suggest “a first telecommunications device coupled to the first LAN.” See
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`Ex. 2013, ¶73.
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`2.
`
`Chang and Byrne do not render independent claim 1
`obvious because they do not teach or suggest claim element
`1[f]
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`Claim element 1[f] recites “a plurality of telecommunications extensions
`
`coupled to the second LAN.” The Petition contends that this limitation is satisfied
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`by “a plurality [of] telephones and/or workstations, each of which is its own
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`telecommunications extension with its own extension number.” See Petition at 30.
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`Neither the “workstation” nor the “telephone” meet this limitation.
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`The “telephone” described in Chang does not meet this limitation because it
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`is not coupled to the second LAN. As has already been established for limitation
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`1[e], the telephones of Chang are not coupled to any LAN. See Section V(A)(1).
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`As a result, a telephone in one “Gateway Network” cannot be coupled to the LAN
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`in a different “Gateway Network” (i.e., the alleged “second LAN”). See Ex. 2013,
`
`¶75.
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`The “workstation” described in Chang does not meet this limitation because
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`it is not a telecommunications extension. As has already been established for
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`limitation 1[e], the workstations of Chang are not telecommunications extensions.
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`See Section V(A)(1). The Petition cites no evidence that the workstation has a
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`telecommunications extension associated with it. See Petition at 29-30; Ex. 2013,
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`¶76.
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`The Petition does not contend that this limitation is met by Byrne. See Petition
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`at 29-30. Nor does the Petition contend that it would have been obvious to modify
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`either of the “telephone” or “workstation” in Chang to satisfy this limitation. See id.
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`For at least these reasons, neither Chang nor Byrne, taken alone or in combination,
`
`teach or suggest “a plurality of telecommunications extensions coupled to the second
`
`LAN.” See Ex. 2013, ¶77.
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`3.
`
`Chang and Byrne do not render independent claim 1
`obvious because they do not teach or suggest claim element
`1[h]
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`
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`Claim element 1[h] recites, in part: “wherein the list of the plurality of
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`telecommunications extensions is stored in a server in the second LAN, and is
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`accessed by the first circuitry across the WAN.” Petitioner contends this claim
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`element is taught by the combination of Chang and Byrne. Pet., pp. 37-41. Patent
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`Owner disagrees.
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`The Petition contends that Chang teaches a first LAN (e.g., LAN of gateway
`
`network 4), a second LAN (e.g., LAN of gateway network 6), and a WAN (e.g., IP
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`network 18) coupling the first LAN and second LAN. Pet., pp. 23-25. Further, the
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`Petition contends that Chang teaches the second LAN (e.g., LAN of gateway
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`network 6)
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`includes a server (i.e.,, gateway server) storing a
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`list of
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`telecommunication extensions (i.e.,, white pages with extensions of users of the
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`second LAN) coupled to the second LAN. Pet., p. 31. The Petition also contends
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`that Chang teaches first circuitry in the first LAN (a workstation executing a browser
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`coupled to the LAN of gateway network 4). Id. See Ex. 2013, ¶79.
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`However, Chang is completely silent regarding the first circuitry (i.e.,
`
`workstation in first LAN) accessing the list of telecommunication extensions (i.e.,
`
`white pages with extensions of users of second LAN) stored in the server of the
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`second LAN (i.e., gateway server in second LAN) over the WAN, as required by
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`claim element 1[h]. Chang discloses that it is an “object of the invention to provide
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`the desktop telephone users with a telephone white pages display of any entry in the
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`enterprise directory services database.” Ex. 1003, 8:8-10 (emphasis added). At best,
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`this teaches that Chang’s workstation (i.e., the first circuity) can view the white
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`pages (including an extension) for any user of any LAN. However, this does not
`
`provide any details as to how or where Chang’s workstation (i.e., the first circuitry)
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`obtains the white pages (i.e., list of extensions coupled to second LAN). See Ex.
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`2013, ¶80.
`
`Chang discloses that “the gateway database 51 [of the gateway server]
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`contains enterprise white pages,” Ex. 1003, 19:33-34 (emphasis added), and that the
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`“enterprise directory 90 is the source of the white pages.” Id. at 20:1. The Petition
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`concedes that “each gateway server has access to the complete enterprise directory.”
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`Pet., p. 39 (emphasis added). Based on these facts, a POSITA would conclude that
`
`each of Chang’s gateway servers contains the white pages of all users. Thus,
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`Chang’s workstation (i.e., first circuitry) would obtain all white pages (i.e., list of
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`extensions) by accessing the gateway server in the same LAN as the workstation
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`(i.e., first LAN), not by accessing the gateway server in another one of Chang’s
`
`LANs (i.e., second LAN) via Chang’s IP network (i.e., WAN) as required by
`
`limitation 1[h]. See Ex. 2013, ¶81.
`
`The Petition contends that “when a user in a first LAN ([Chang’s] gateway
`
`network 4) accesses the white pages in a second LAN ([Chang’s] gateway network
`
`6), the user is browsing the directory data stored in [Chang’s] gateway server of the
`
`gateway network 6 across the IP network 18.” Pet., p. 40. Again, this is not
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`disclosed by Chang. Although Chang discloses that a user in a first LAN (gateway
`
`network 4) can access a white page of a user associated with a second LAN (gateway
`
`network 6), Chang is silent as to how this is accomplished. The Petition’s
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`contentions effectively require Chang’s workstation in the first LAN (gateway
`
`network 4) to exchange messages with the gateway server in the second LAN
`
`(gateway network 6) over Chang’s IP network. When considering each of Chang’s
`
`LANs has multiple workstations, these exchanges between workstations and
`
`gateway servers in other LANs would drastically reduce the available bandwidth in
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`Chang’s IP network for its intended purpose, i.e., telephone calls, which is contrary
`
`to one of the goals of Chang. See, e.g., Ex. 1003, 8:32-34 (“The gateway server
`
`takes advantage of the underutilized bandwidth when such bandwidth is available to
`
`transmit voice.”). Accordingly, the Petition’s contentions are unrealistic. Chang
`
`simply does not teach or suggest these requirements of claim element 1[h], and
`
`Byrne does not cure the deficiencies of Chang. See Ex. 2013, ¶82.
`
`The Institution Decision states that claim 1 does not require that “the server
`
`in the second LAN must store the list of telecommunications extensions for the first,
`
`second, and third LANs.” Paper 13, pp. 26-27. The reliance on the indefinite article
`
`in the Institution Decision is misplaced and does not support its conclusion. Claim
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`1 is reproduced below in pertinent part:
`
`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;
`
`1[h] 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
`
`Limitation 1[g] claims “first circuitry for enabling a user of the first
`
`telecommunications device to observe a list of the plurality of telecommunications
`
`extensions.” The Institution Decision is correct that the term “a list” in limitation
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`1[g] does not refer to a specific list. See Paper 13, p. 26. That is because the claim
`
`requires that the first circuitry enable a user to observe at least two lists:3 (1) “the
`
`list of the plurality of telecommunications extensions coupled to the second LAN”
`
`and (2) “a list of the plurality of telecommunications extensions coupled to the third
`
`LAN.” But the use of the indefinite article in limitation 1[g] does not pertain to
`
`where the list is stored. See Ex. 2013, ¶¶83-84.
`
`The use of the indefinite article “a list” in limitation 1[g] is followed by use
`
`of the definite article in limitation 1[h]: “wherein the list of the plurality of
`
`telecommunications extensions is stored in a server in the second LAN.” Use of the
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`definite article in limitation 1[h] refers to the same list recited in limitation 1[g].
`
`Thus, the language of the claim clearly requires that the “list” that can be observed
`
`via the circuitry recited in limitation 1[g] must be stored in a server in the second
`
`LAN (as recited in limitation 1[h]). See Ex. 2013, ¶85.
`
`The Institution Decision also states that “the ’298 patent specification
`
`contradicts Patent Owner’s argument.” Paper 13, p. 27 (citing Ex. 1001, 9:53-10:4,
`
`9:56-50 [sic]). Neither portion of the specification supports the conclusion in the
`
`Institution Decision. The portion of the specification relied on in the Institution
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`Decision is reproduced below:
`
`
`3 Claim 1 uses the open-ended transitional phrase “comprising.”
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`An embodiment of the present invention permits a user at a remote site
`to easily scroll through a phone listing of users throughout the WAN
`201. For example, referring to FIG. 3, using either a workstation 106 or
`an IP telephone 105, a user can scroll through displayed names and
`phone numbers of other users within their own LAN (e.g., 301), or a
`LAN at another remote location across the WAN 201 (e.g., LAN 302).
`
`Ex. 1001, 9:53-59. That portion of the specification states that the user of a
`
`workstation or IP telephone can choose to observe different lists: users within their
`
`own LAN or a LAN at another remote location across the WAN. It is silent
`
`regarding where the list is stored. Thus, the Institution Decision is incorrect in
`
`finding that “the ’298 patent specification contradicts Patent Owner’s argument.”
`
`Paper 13, p. 27. See Ex. 2013, ¶86.
`
`Finally, the Institution Decision states that “[i]f both lists had been stored in
`
`the second LAN, no switching between LANs would be necessary.” Paper 13, p.
`
`27. It is unclear what the Institution Decision is referring to because the “switching”
`
`refers to the user of the “first circuitry” switching between observing the two lists
`
`recited in the claim: (1) “the list of the plurality of telecommunications extension
`
`coupled to the second LAN” and (2) “a list of the plurality of telecommunications
`
`extensions coupled to the third LAN.” The “switching” does not pertain to switching
`
`the LAN to which the “first circuitry” is connected. See Ex. 2013, ¶87.
`
`In an alternative attempt to meet the requirements of claim element 1[h], the
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`Petition contends that in Byrne’s system, when “a user requests to access a directory
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`at another server, the user’s home server passes the request to the target server to
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`retrieve the directory information . . . Therefore, the ‘list of a plurality of
`
`telecommunications extensions,’ i.e., the directory in Byrne, is located at the second
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`server (LAN) and is accessed by a user at the first server across the WAN.” Pet.,
`
`pp. 40-41. The Petition also argues that a POSITA would “have been motivated to
`
`combine Chang with these aspects of Byrne’s teachings at least because Chang also
`
`expressly discloses distributed directory architecture, and because using the search
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`mechanism disclosed in Byrne (i.e. passing the request to the target server) is an
`
`efficient way to search distributed data . . . far more efficient than . . . retrieving all
`
`the data to be searched form the server storing that data and then performing the
`
`search locally.” Pet., p. 41. Patent Owner disagrees for several reasons.
`
`First, this proposed combination suffers from the same critical flaws
`
`previously discussed: Chang’s IP network being flooded with user requests and
`
`directory information responses, reducing the bandwidth of Chang’s IP network for
`
`its intended purpose, i.e., telephone calls. See, e.g., Ex. 1003, 8:32-34 (“The gateway
`
`server takes advantage of the underutilized bandwidth when such bandwidth is
`
`available to transmit voice.”). Accordingly, a POSITA would not have combined
`
`Chang with the purported teachings of Byrne. See Ex. 2013, ¶89.
`
`Second, the Petition’s reliance on a more efficient search mechanism as the
`
`motivation to apply the purported teachings of Byrne to Chang is misplaced.
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`Following the Petition’s proposed combination of Chang and Byrne, the requests
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`would be for existing lists of telecommunications extensions stored at well-known
`
`locations (i.e., Chang’s gateway servers). It is unclear as to what searching function,
`
`if any, would be improved and made more efficient. The Petition’s reasoning for
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`combining Byrne and Chang is misguided and no such motivation exists. See Ex.
`
`2013, ¶90.
`
`For the above reasons, Chang and Byrne do not teach or suggest claim element
`
`1[h].
`
`
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`4.
`
`Chang and Byrne do not render independent claim 1
`obvious because they do
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