UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.,
`Petitioner,
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
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`Case IPR2017-00058
`Patent 7,805,948
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`PATENT OWNER RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.,
`Petitioner,
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`
`
`
`
`
`Case IPR2017-00058
`Patent 7,805,948
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`
`
`PATENT OWNER RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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` IPR2017-00058
`U.S. Patent No. 7,804,948
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`Table of Contents
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`I.
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`INTRODUCTION ............................................................................................. 4
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`II. RELATED MATTER ....................................................................................... 4
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`III. THE '948 PATENT ........................................................................................... 5
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`A. Overview of System and Method for Initiating a Conference Call ............... 5
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`B. The '948 Patent Claims................................................................................... 9
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`C.
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`Priority Claims of the '948 Patent ................................................................ 10
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`D. Petitioner Oversimplifies the Patented Technology .................................... 10
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`IV. PERSON OF ORDINARY SKILL IN THE ART ....................................... 11
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`V. THE PETITION FAILS TO PROVE UNPATENTABILITY ................... 12
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`A. Claim Construction ...................................................................................... 12
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`1.
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`“generating a conference call request responsively to a single
`request by the conference call requester” .................................................. 13
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`2. The “conference call request” must identify “each of the indicated
`potential targets” ........................................................................................ 16
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`3.
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`4.
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`“instant messaging” ................................................................................... 17
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`“VOIP address” (only dependent Claim 20) ............................................. 18
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`B. The Cited References Fail to Disclose and Teach Away From
`“generating a conference call request responsively to a single request
`by the conference call requester” ................................................................. 19
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`1.
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`Petitioner’s proposed modification would change the principle
`operation of Hamberg’s CALL ALIAS text message ............................... 20
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`2. Hamberg leads away from removing the user-customizable aspect
`of the CALL ALIAS message ................................................................... 25
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`3. The Petition cites no teaching from either cited reference satisfying
`the explicitly claimed interrelationship between the “single request
`by the conference call requester” and the responsively-generated
`“conference call request”........................................................................... 28
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`4.
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`Petitioner’s reliance on multiple user requests does not render
`obvious a “single request by the conference call requester” ..................... 31
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`5. Hamberg’s CALL ALIAS message, even if modified as Petitioner
`proposes, does not identify “each of the potential targets” ....................... 32
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`6. Lamb’s “Call” button does not render obvious “a single conference
`call request … identifying each of the potential targets” .......................... 37
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`7. Lamb’s distinct “CONF.NOW” feature likewise requires more than
`a “single request” ....................................................................................... 42
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`C. The Proposed Combination Does Not Render Obvious “automatically
`establishing a conference call connection to … each of the potential
`targets” ......................................................................................................... 44
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`D. The Proposed Combination Does Not Render Obvious “presenting to
`said conference call requester a display showing a plurality of
`potential targets” .......................................................................................... 46
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`E. The Petition Does Not Prove Obviousness for the Dependent Claims........ 48
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`VI. CONCLUSION ................................................................................................ 50
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` IPR2017-00058
`U.S. Patent No. 7,804,948
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.120, Uniloc Luxembourg S.A.
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`(“Patent Owner”) submits this Response to the Petition for Inter Partes Review (“the
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`Petition”) of U.S. Patent 7,804,948 (“the '948 Patent”) filed by Cisco Systems, Inc.
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`(“Petitioner”).
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`Petitioner has failed to prove that there is a reasonable likelihood that at least
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`one of the claims challenged in the Petition is unpatentable. See 37 C.F.R. § 42.108(c).
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`The Petition does not prove obviousness for at least the following independent
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`reasons: (1) the proposed combination challenging the independent claims would
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`change the principle operation of the primary reference; (2) the teachings in the cited
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`references lead away from the proposed combination; and (3) even if the primary
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`reference did not teach away from the proposed modification (which clearly is not the
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`case), the Petition would nevertheless still fail to “specify where each element of the
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`claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R.
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`§ 42.104(b)(4). The Petition should be dismissed in its entirety.
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`II. RELATED MATTER
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`Petitioner relies on the exact same combination of references and substantially
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`identical obviousness theories to those presented in IPR2017-00198, filed by the same
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`Petitioner against U.S. Patent No. 7,853,000, which claims priority to and is a
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`continuation of the '948 Patent.
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`III. THE '948 PATENT
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`A. Overview of System and Method for Initiating a Conference Call
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`In general, the '948 Patent discloses and claims various embodiments for
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`“initiating conference calls via an instant messaging system to reduce the effort
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`required to initiate and manage the call.” EX1001 at Abstract. The '194 Patent claims
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`priority to a provisional application filed on December 22, 2003.
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`As explained in the Background section of the '948 Patent and summarized in
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`the attached Declaration of Dr. Val DiEuliis (EX2001), the state of the art at the time
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`of the invention for integrating certain telephony products into software was
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`encumbered by multiple deficiencies. EX2001 ¶ 22 (citing EX1001 2:33-47). For
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`example, passing the correct telephony commands via certain technologies, such as
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`private branch exchange or “PBX,” was problematic because “no two PBX’s are
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`alike.” Id. Further PBX technology often required “system integrators” and had
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`reduced scalability opportunity. Id.
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`The art at the time of the invention typically required all users who wanted to
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`join a conference call to dial in to a central number and enter a passcode, which
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`inhibited setting up spontaneous conference calls and is subject to serious security
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`risks. Id. ¶ 23 (citing EX1001, 2:40-47). Other systems inefficiently required someone
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`(such as the host) to separately join each participant to the call, such as by taking the
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`time to dial or otherwise separately identify each conference participant. Id., (citing
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`EX1001, 2:59-3:20). The above nonlimiting examples are among the various
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`technological problems addressed by certain teachings of the '194 Patent. Id.
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`The following figure illustrates an example system described in the '000
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`specification.
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`EX1001, Fig. 4.
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`Preferred embodiments disclosed in the '948 Patent make novel use of certain
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`instant messaging (“IM”) technology to facilitate automatic initiation of a conference
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`call between participants of an IM session. EX2001 ¶¶ 24-27 (citing EX1001, Figure
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`4 and accompanying description). According to one embodiment, “IM presence”
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`features (e.g., monitored by the IM server) may be used to create a display indicating
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`which users are presently connected to the IM session. Id.
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`In the embodiment described with reference to Figure 4, for example, each user
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`connects to a network with a network accessible device 414 (also called NAD). These
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`devices comprise computers, digital cellular telephones, personal digital assistants (an
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`earlier technology whose functionality has been incorporated into today’s
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`smartphones and tablets), and similar technologies. Id. ¶ 27 (citing EX1001, 5:39-45).
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`The NADs communicate with each other through an instant messaging service
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`and via a conference call server. Id. ¶ 28 (citing EX1001, 9:13-25). As shown in
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`Figure 4, the conference call server (represented in the illustrated embodiment as
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`block 402) may include multiple subcomponents (e.g., a conference request
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`processor, an IM communications processor, a database 406 etc.). The network over
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`which the NADs communicate may be an Internet protocol (IP) network (e.g., the
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`Internet).
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`Preferred embodiments disclosed and claimed in the '948 Patent allow a user
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`to start a conference call from within an IM session using a single request and in a
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`manner which automatically includes each participant in that session. Id. ¶ 28 (citing
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`EX1001, 6:22-59 and 7:27-44). The instant messaging service can send a request to
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`the conference call server to start a conference call. Id.
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`Upon receiving the request, the conference call server 402 may establish the
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`conference call directly by itself or indirectly using a separate component or system,
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`which can be provided by a third party (e.g., through one of the bridges 410A or
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`410B). Id. ¶ 29; see also EX1001 8:11-40.
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`The conference call server 402 or one of the conference call bridges 410A and
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`410B may contact each of the prospective target, possibly directly dialing their phones
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`or, if their NAD has audio and video capability, connecting through it using the one
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`or more of the various communication networks 408, including publicly switched
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`telephone networks (PSTNs), voice over Internet, or cellular telephone. Id. ¶ 30
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`(citing EX1001, 8:11-24). If the conference call server is not provided with a direct
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`number to dial, it may instead inform the prospective targets (e.g., through instant
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`messaging) by giving them instructions to join. Id.
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`Among other novel features, an important and claimed aspect of the preferred
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`embodiment is the capability to automatically, efficiently, and securely “initiat[e] a
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`conference call responsively to a single request” of a conference call requester. See
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`EX1002, Examiner’s Notice of Allowability, p. 33; see also EX1003 ¶ 30 (quoting
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`the same) and EX2001 ¶¶ 31-34. For example, the specification describes FIG. 3, in
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`part, as follows:
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`For the purposes of illustration, the Figure shows three parties, User
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`A 302, User B 304, and User C 306, involved 308 in an IM session,
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`such as a chat session which could occur during a shared application
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`session. User A 302, the conference call requester, could request a
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`conference call through the NAD in use by User A. The IM service
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`in communication with User A's NAD could be implemented to be
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`aware of the on-going IM session, such that the software would
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`determine the list of conference call targets from the list of parties
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`presently in the IM session. Thus, User A could request a conference
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`call with one step, such as through actuation of a "call now" button
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`or icon associated with User A's IM service.
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`Id. ¶ 31 (quoting EX1001 at 7:29-41) (emphasis added).
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`B.
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`The '948 Patent Claims
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`The '948 Patent issued with 66 claims. Of those, Claims 1, 23 and 51 are
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`independent claims. The Petition challenges all independent claims and a majority,
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`though not all, of the dependent claims. All independent claims are written in method
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`form.
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`Among other meaningful limitations that are missing from Petitioner’s
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`proposed combination of references, independent Claims 1 and 23 recite “generating
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`a conference call request responsively to a single request by the conference call
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`requester, said conference call request identifying each of the potential targets for said
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`conference call request.” Similarly, independent Claim 51 recites “generating a
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`conference call request by the call requester responsively to a single requester
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`indication.”
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`C.
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`Priority Claims of the '948 Patent
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`The '948 Patent issued from U.S. Application No. 11/019,655 (“the
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`application”), filed Dec. 22, 2004, which claims the benefit of the U.S. Provisional
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`Application No. 60/531,722 (the '722 application), filed on December 22, 2003.
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`D.
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`Petitioner Oversimplifies the Patented Technology
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`Petitioner attempts to summarize the '948 Patent technology at pages 3-4 of the
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`Petition. In doing so, Petitioner grossly oversimplifies the '948 Patent. For example,
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`Petitioner overlooks disclosed and claimed advantages achieved at least in part
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`through automatically generating a conference call request responsively to a single
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`request by the conference call requester. These deficiencies (among others) are
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`detailed below.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
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`Dr. DiEuliis defines a person of ordinary skill in the art (“POSITA”) as
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`someone who “would have possessed on the priority date a bachelor’s degree in
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`electrical engineering or computer science (or equivalent degree/experience) with at
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`least two years of experience in computer programming and software development,
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`including the development of software for communication with other computers over
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`a network.” EX2001 ¶ 43.
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`Dr. DiEuliis’ definition differs from the definition offered in the Petition in
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`certain respects. EX2001 ¶ 44. (citing Pet. 14 and EX1003 ¶ 44). First, there is
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`disagreement on the minimal amount of experience required. Id. The Petitioners
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`specify “approximately five years” while Dr. DiEuliis specifies at least two years.
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`Although, this difference does not impact Dr. DiEullis’ qualifications as a POSITA,
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`Dr. DiEullis testifies that five years is in inordinate amount of experience to require
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`for a POSITA. According to Dr. DiEullis, the '948 patent on the priority date would
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`have been understood by and enabled for a person who met his definition of a
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`POSITA. Id.
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`V.
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`THE PETITION FAILS TO PROVE UNPATENTABILITY
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`The Petition presents obviousness challenges under the following grounds:
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`Em
`1, 2, 5, 6, 8, 12,
`103
`Hambergl and Lamb2
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`l8, 19, 21-25, 29,
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`30, 49-51, and
`65-66
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`7, 9, 10, 26, 36,
`37, 52, and 53
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`103
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`Hamberg, Lamb, and Ludwig3
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`Hamber, Lamb, and Vassilovski“
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`Petitioner has the burden ofproof to establish they are entitled to their requested
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`relief. 37 C.F.R. § 42.108(c). The Petition does not satisfy this burden for the reasons
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`set forth herein and in the attached Declaration of Dr. DiEuliis (EX2001).
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`A.
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`Claim Construction
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`Pursuant to 37 CPR. § 42.100(b), and for the purposes of this review, Patent
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`Owner construes the claim language such that the claims are given their broadest
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`reasonable interpretation (“BRI”) in light of the specification of the '948 Patent-
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`The '948 Patent specification provides, at the outset of the section entitled
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`“Detailed Description,” a dictionary—like list of explicit “definitions” to “more readily
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`1 EX1005, WIPO Application Publication No. WO/02/21816 (“Hamberg”).
`2 EX1006, US. Patent No. 6,747,970 to Lamb, et a]. (“Lamb”).
`3 EX1007, US. Patent No. 6,237,025 to Ludwig, et a]. (“Ludwig”).
`4 EX1008, U.S. Publication No. 2003/0086411 to Vassilovski (“Vassilovski”).
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`describe the present invention.” EX1001, 5:30-6:6. “Claim terms should generally be
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`given their ordinary and customary meaning, except ‘1) when a patentee sets out a
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`definition and acts as his own lexicographer, or 2) when the patentee disavows the full
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`scope of a claim term either in the specification or during prosecution.’” ServiceNow,
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`Inc., v. Hewlett-Packard Co., IPR2015-00699, Paper 12 at 8 (Aug. 20, 2015) (quoting
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`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
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`While explicit lexicography should govern, the parties’ present disputes make it
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`unnecessary to construe the terms Petitioner proposes. See Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
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`construed that are in controversy, and only to the extent necessary to resolve the
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`controversy.”). Nevertheless, Petitioner’s erroneous application of the cited art injects
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`fundamental disputes over certain claim terms not specifically identified in the Petition
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`as requiring construction. Those implicitly-injected disputes are identified below.
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`1.
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`“generating a conference call request responsively to a single
`request by the conference call requester”
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`The Petition at least implicitly injects a dispute over the proper construction for
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`“generating a conference call request responsively to a single request by the
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`conference call requester”, as recited in each challenged claim. As explained further
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`below, Petitioner relies on Lamb’s button features in a user interface as allegedly
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`disclosing “a single request by the conference call requestor”; and Petitioner points
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`to the CALL ALIAS feature of Hamberg, in which a user must type a short message
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`separately identifying each of the persons the user wishes to include in a conference
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`call, as allegedly rendering obvious “generating a conference call request
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`responsively to ....”
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`Petitioner’s application of the art fails at least to recognize: (1) the explicit
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`distinction in the claim language concerning the source of the two separately recited
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`requests; and (2) the explicit interrelationship of those two distinguished requests
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`(i.e., one must be generated in automatic response to the other). The claim language
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`distinguishes the two recited requests at least in that only the “single request” is made
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`“by the conference call requester”. The recited qualifiers “single request” and “by the
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`conference call requester” unambiguously confirm, consistent with the teachings of
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`the specification, that the “requester” makes the “single request” but cannot be
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`required to input both claimed requests.
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`By express distinction, the operation “generating a conference call request
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`responsively to” clearly refers to automated computerization, such as that performed
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`by the “instant messaging service” of the requester’s “network access device”. As
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`disclosed and claimed, the latter responsive request is generated for transmission to
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`and interpretation by the conference call server (EX1001, 12:8-14), without requiring
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`action from the “requester” beyond the “single request”. EX1001, 12:8-14.
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`Accordingly, the claim language expressly proscribes relying upon the
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`requester to provide both the “single request” and the responsive “conference call
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`request”. EX2001 ¶ 52-55. The reliance on two user-inputted requests, as disclosed
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`in the art, not only risks introducing human error by requiring a human “requester” to
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`perform what is expressly disclosed and claimed as responsive automation, it is also
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`nonsensically redundant in what it would require the “requester” to do (i.e., execute
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`an automatic response to herself). Additionally, as explained further below, the cited
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`art teaches away from removing its features specifically designed for user input and,
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`instead, somehow replacing that user input (in a non-enabled way) with computerized
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`automation.
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`Petitioner cannot prove obviousness through application of an erroneous
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`construction. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015
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`WL 3637569, at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v.
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`Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s
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`claim construction unreasonable in light of the specification, and therefore, denying
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`Petition as tainted by reliance on an incorrect claim construction). When properly
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`construed, the recitation “generating a conference call request responsively to a single
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`request by the conference call requester” is not rendered obvious by unrelated
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`disclosures in disparate references concerning different user-inputted requests.
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`2.
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`The “conference call request” must identify “each of the
`indicated potential targets”
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`The Petition should be dismissed as applying the cited art in a manner that
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`overlooks the requirement that the “conference call request” must identify “each of
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`the indicated potential targets”. That claim language must be understood in the
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`context of how the challenged claims define the “potential targets”.
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`The independent claims introduce the “potential targets” in the recitation “a
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`plurality of potential targets then being connected to said instant messaging service
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`and participating in a given instant messaging session with the conference call
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`requester and with whom a conference call may be initiated.” That claim language
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`explicitly defines the “potential targets” as those who are connected to the instant
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`messaging service and participating in a given instant messaging session with the
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`conference call requester and with whom a conference call may be initiated.
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`Expressly referring to that antecedent basis, the challenged claims further recite
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`“said conference call request identifying each of the [identified/indicated] potential
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`targets”. Thus, among other limitations, each claim expressly requires that the
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`“conference call request” must identify “each of the indicated potential targets” as
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`expressly defined in the claim language itself. The Petition and the testimony cited
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`therein offer admissions that confirm these limitations are missing from the proposed
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`combination.
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`3.
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`“instant messaging”
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`It is curious that Petitioner does not propose a construction for “instant
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`messaging,” given that Petitioner has argued before the district court that “instant
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`messaging” requires construction. Specifically, in litigation Petitioner seeks to define
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`“instant messaging” as “a real-time messaging connection between multiple users.”
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`See Uniloc USA, Inc. et al. v. Cisco Systems, Inc. et al., Case No. 6:15-CV-1168-JRG
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`(Lead Case), Dkt. 147, at pp. 20-21. The Petition, however, is conspicuously void of
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`any explanation as to (1) why “instant messaging” must be construed in litigation yet
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`requires no construction here, and (2) how the proposed combination of references
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`allegedly satisfies the construction Petitioner proposes in litigation.
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`If the Board were to apply Petitioner’s construction proposed in litigation, the
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`Petition would be deficient at least in that it offers no obviousness theory for how the
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`cited references allegedly disclose a “real-time messaging connection between
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`multiple users.” It is unclear, for example, whether Petitioner attempts by its
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`construction proposed in litigation to exclude embodiments where user devices are
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`only connected indirectly through a central server, as opposed to directly to each
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`other. Such an interpretation would prevent a finding of obviousness here because the
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`cited references rely on a central server as an intermediary for communications.
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`EX2001 ¶¶ 58-59.
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`4.
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`“VOIP address” (only dependent Claim 20)
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`While the '948 Patent specification does not define the couplet “VOIP address,”
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`the specification separately defines both “VOIP” and “address.” As Petitioner
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`acknowledges, the specification defines “VOIP” as “Voice over Internet Protocol”
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`and it defines “address” as “the identifier for where a participant to a conference call
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`may be contacted.” EX1001, 5:53-54 and 6:6. Concatenating those two explicit and
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`agreed definitions together yields “a Voice-over-Internet-Protocol identifier for
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`where a participant to a conference call may be contacted.” Id.
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`Although it is unclear how it advances Petitioner’s obviousness theory, if at all,
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`Petitioner appears to propose a narrowing construction for “VOIP address” that
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`imports limitations from what Petitioner identifies as one of the “non-limiting
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`examples of an address” disclosed in the Specification. Pet. 8. Specifically, Petitioner
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`departs from its acknowledged definition of “address” and, instead, seeks to further
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`require additional qualifiers, such as “unique” and “communication path.” Not only
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`is it impermissible to read in example embodiments as claim limitations, Petitioner’s
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`construction is inconsistent with the broadest reasonable interpretation standard
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`applicable here.
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`B.
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`The Cited References Fail to Disclose and Teach Away From
`“generating a conference call request responsively to a single request
`by the conference call requester”
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`The Petition fails to prove obviousness for the recitation “generating a
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`conference call request responsively to a single request by the conference call
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`requester,” as recited in each challenged claim. Petitioner argues “[i]t would have
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`been obvious to a POSITA to incorporate Lamb’s ‘Call’ or ‘CONF. NOW’ button
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`into Hamberg’s mobile stations and workstation such that the mobile station or
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`workstation responds to a press of the ‘Call’ or ‘CONF.NOW’ button by generating
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`a CALL ALIAS message.” Pet. 34.
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`The proposed modification of Hamberg does not prove obvious for at least the
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`following independent reasons:
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`(1) the proposed modification would change the principle operation of
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`Hamberg’s CALL ALIAS message;
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`(2) Hamberg leads away from removing the user-customizable aspect of the
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`CALL ALIAS message;
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`(3) the Petition cites no teaching from either reference satisfying the explicitly
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`claimed interrelationship between the “single request by the conference
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`call requester” and the responsively-generated “conference call request”;
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`(4) Petitioner’s reliance on multiple user requests does not render obvious the
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`claimed “single request by the conference call requester”;
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`(5) it is undisputed that Hamberg’s CALL ALIAS message, even if modified
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`as proposed, does not identify “each of the indicated potential targets”;
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`(6) Lamb’s “Call” button does not render obvious “a single conference call
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`request … identifying each of the potential targets”; and
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`(7) Lamb’s distinct “CONF.NOW” button does not render obvious “a single
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`conference call request … identifying each of the potential targets”.
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`Each reason provides an independent basis to dismiss the Petition in its entirety.
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`1. Petitioner’s proposed modification would change the principle
`operation of Hamberg’s CALL ALIAS text message
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`First, Hamberg teaches away from Petitioner’s proposed modification because
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`it would change the principle operation of Hamberg’s CALL ALIAS message. In re
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`Ratti, 270 F.2d 810, 813 (CCPA 1959) (“If a proposed modification or combination
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`of the prior art would change the principle of operation of the prior art device being
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`modified, then the teachings of the references are not sufficient to render the claims
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`prima facie obvious.”); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“It is
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`improper to combine references where the references teach away from their
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`combination.”); see also EX2001 ¶¶ 96, 98-100, 111-115.
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`It is undisputed that Hamberg teaches the purpose for its CALL ALIAS
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`message is to enable a user to selectively define whom to include/exclude in a
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`conference call. EX2001 ¶¶ 71-73, 112 (citing, inter alia, EX1005, 4:27-33);
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`EX2002, Dr. Houh Deposition Transcript, 89:23-24 (“[Hamberg] says that the sender
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`of the call message can define the group members with whom he wants to talk”). A
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`user customizes the CALL ALIAS message by manually inputting the short message
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`“CALL” followed by the specific usernames for the persons the user wants to include
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`on the call (e.g., “CALL LISA HENRY ANN”). EX2001 ¶¶ 71-73; EX2002, 91:61-
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`21 (“in just the Hamberg reference here, the user is composing the message, and that
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`the message would need to be ‘Call LISA HENRY ANN’, if the user intends Lisa,
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`Henry and Ann to be joined to the conference call, or to be requested to be joined to
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`a conference call.”).
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`Petitioner’s proposed modification would vitiate the fundamental purpose of
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`this user-customizable feature by requiring, instead, that the user’s mobile station
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`somehow automatically define the persons with whom the user wishes to include on
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`the conference call. Compare EX1003 pp. 53-56 with EX2001 ¶¶ 96, 98-100, 111-
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`115. There simply is no teaching or suggestion in Hamberg that the user’s mobile
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`station could somehow serve as a proxy to the user’s thoughts and compose the
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`CALL ALIAS message for the user, let alone do so as an automated response to
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`another request. EX2001 ¶¶ 111-115. Such an implausible hindsight reconstruction,
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`which would require the Hamberg system to read minds, should be rejected as non-
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`enabled science fiction. Id.
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`There is no legal or factual basis for Dr. Houh’s speculation that Hamberg’s
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`mobile stations could be modified to automatically compose a CALL ALIAS
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`message based on which usernames are locally displayed as having a “logged” or
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`“active” status, as opposed to an “absent” status. EX1003 pp. 53-56; cf. EX2001 ¶¶
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`96, 98-100, 111-115. As alleged support for this drastic and undisclosed modification
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`of Hamberg, Dr. Houh does not point to any teaching within the four corners of the
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`cited references, but rather he admittedly relies on what he considers to be the general
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`programming knowledge of POSITA. See EX2002 at 128:24-130:23 and 131:23-
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`132:5; see also Paper 7, Instituting Decision, at 13 (summarizing Dr. Houh’s
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`testimony stated at EX1003 pp. 53-54).
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`Such an argument should be rejected as a matter of law because alleged
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`knowledge of POSITA is not “prior art or a printed publication” and cannot properly
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`be substituted in for contrary teachings in a cited reference. See 35 U.S.C. § 311(b);
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`see also In re Sang Su Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002); K/S HIMPP v.
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`Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014) (finding the
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`P.T.A.B. correctly rejected conclusory assertions of what would have been common
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`knowledge in the art). The cited references, either individually or collectively, simply
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`do not disclose that a mobile station may automatically compose the CALL ALIAS
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`text message in any matter, let alone according to Dr. Houh’s speculative
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`modification. EX2001 ¶¶ 96, 98-100, 111-115.
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`Dr. Houh’s alleged basis for his modification is also factually flawed. Id. Even
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`if it were permissible to speculate on what Hamberg could have alternatively
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`disclosed (and it is not), it is unreasonable to presume Hamberg’s mobile station
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`could read a user’s thoughts (concerning whom she wishes to include within a CALL
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`ALIAS message) simply by deferring to the local status display. Id. A problem arises,
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`for example, in those instances where individuals are identified as simultaneously
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`participating in multiple chat groups.5 In the only disclosed example, Lisa, Henry,
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`and John are all participating at least in chat Groups G1 and G2. This is clearly shown
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`in Figure 2 of Hamberg, copied below.
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`At a minimum, therefore, the displayed status column would provide no insight as to
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`whether a user wishes to initiate a conference call only with certain “logged”
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