Paper 33
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`Trials@uspto.gov
` Entered: May 31, 2019
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`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00199
`Patent 7,092,671 B2
`____________
`
`Before MIRIAM L. QUINN, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge BAER.
`
`Opinion Concurring filed by Administrative Patent Judge QUINN.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`CONFIDENTIAL – BOARD AND PARTIES ONLY
`
`
`
`
`
`
`
`
`Trials@uspto.gov
` Entered: May 31, 2019
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00199
`Patent 7,092,671 B2
`____________
`
`Before MIRIAM L. QUINN, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`Opinion of the Board filed by Administrative Patent Judge BAER.
`
`Opinion Concurring filed by Administrative Patent Judge QUINN.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`
`
`INTRODUCTION
`I.
`Petitioner, Unified Patents Inc., filed a Petition (Paper 2, “Pet.”)
`requesting inter partes review of claims 1–16 of U.S. Patent No. 7,092,671
`B2 (Ex. 1001, “the ’671 patent”). Pursuant to 35 U.S.C. § 314(a), we
`determined Petitioner showed a reasonable likelihood that it would prevail in
`establishing the unpatentability of all challenged claims and instituted an
`inter partes review. Paper 7, 15. Patent Owner Uniloc USA, Inc. and
`Uniloc Luxembourg, S.A. filed a Response (Paper 13, “Resp.”), and
`Petitioner filed a Reply to Patent Owner’s Response (Paper 21, “Reply”).
`An oral hearing was held before the Board. Paper 31.
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. Having considered the record before us and as
`explained below, we determine Petitioner has shown by a preponderance of
`the evidence that claims 1–16 of the ’671 patent are unpatentable. See
`35 U.S.C. § 316(e).
`
`A. RELATED PROCEEDINGS
`Petitioner and Patent Owner identify several related litigations in the
`Eastern District of Texas involving the ʼ671 patent. Pet. 2; Paper 4, 2.
`Another petitioner has also requested inter partes review of the ’671 patent
`in IPR2018-00282.
`
`B. THE ’671 PATENT
`The ’671 patent is directed to a “method and system for wirelessly
`autodialing a telephone number from a record stored on a personal
`information device.” Ex. 1001, [54]. According to the ’671 patent, at the
`time of filing, personal information devices (“PIDs”) and electronic
`organizers were in widespread use. Id. at 1:35–37. The ’671 patent
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`describes these devices as “physically smaller,” having “more limited
`hardware and data processing capabilities” than conventional computers, and
`including “a screen and data processor,” “substantial electronic memory,”
`and “a substantial variety of applications,” relating to, for example, contact
`information made up of addresses and telephone numbers. Id. at 1:14–33.
`In addition to PIDs, the ’671 patent describes cellphones as widely used
`handheld digital devices similar to PIDs, but with substantially fewer
`applications, less available memory for storage, and a limited capacity for
`data entry. Id. at 1:38–53.
`Because of these differences between PIDs and cellphones, the ’671
`patent observes that PIDs, and not cellphones, are used to store contact
`information. Id. at 1:54–63. This leads to a requirement for users to find
`contact numbers on their PID and then manually dial those numbers on the
`cellphone. Id. at 1:58–2:10. Thus, the ’671 patent identifies a need for “a
`method whereby a user’s handheld PID can automatically dial a telephone
`number stored in its memory” such that the user need not access controls of
`a telephone. Id. at 2:11–22.
`To solve this problem, the ’671 patent describes using the wireless
`ports of the telephone and the PID to link the two devices using a standard
`communication protocol, such as short-range radio frequency (“RF”) over
`Bluetooth or infrared signals (“IR”) over the Infrared Data Association
`(“IrDA”) specification. Id. at 4:40–5:27, 6:35–57. The ’671 patent
`describes a method in which the user chooses a phone number from the
`memory of the PID, using the appropriate application, and indicates to the
`PID that the chosen number should be dialed by a cellphone. Id. at 8:10–17.
`In response, the PID application accesses the cellphone, transmits the
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`desired telephone number, and “control[s] [the cellphone] to dial the number
`and establish[] the telephone call” in a manner that is seamless and “without
`requiring any intervening steps or actions by the user” or involving direct
`interaction with the cellphone. Id. at 8:17–25. Figure 8, reproduced below,
`shows a flowchart of the steps in one embodiment of this autodialing
`process. Id. at 9:39–41.
`
`
`The flow chart of Figure 8, above, begins with step 801—the user
`accessing the graphical user interface (“GUI”) of a PID to initiate wireless
`autodialing of a cellphone. Id. at 9:46–47. The user chooses the desired
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`contact from a list displayed by the PID in step 802, verifies the correct
`phone number in step 803, and confirms that the number should be
`autodialed by the cellphone in step 804. Id. at 9:55–59. The PID, in step
`805, transfers the chosen number to the cellphone over the wireless
`communication link. Id. at 9:62–64. Finally, in step 806, the PID “controls
`telephone 14 to dial the specific number and complete the telephone
`communication.” Id. at 9:65–67.
`C. ILLUSTRATIVE CLAIM
`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
`illustrative of the claims at issue and is reproduced below with added
`indentations and spacing for clarity.
`1. An automated telephone dialing system, comprising:
`a telephone having a wireless port for short range wireless data
`transfer; and
`a handheld computer system having a wireless port for
`communication with the wireless port on the telephone,
`wherein a specific telephone number is selectable from a list
`displayed on the handheld computer system and
`wherein the handheld computer system is operable to transfer
`the specific telephone number to the telephone using a wireless
`communication, and
`wherein the handheld computer system is configured to control
`the telephone via the wireless communication such that the
`telephone dials the specific telephone number.
`Ex. 1001, 10:55–67.
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability:
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`References
`
`Challenged Claims
`
`8 and 16
`
`Yunl, Langloisz, and Dykes3
`
`§ 103
`
`1—6 and 9—14
`
`Yun, Langlois, DkaS, and
`Husemann4
`
`§ 103
`
`7, 8, 15, and 16
`
`Harriss, Langlois, and Dykes
`
`§ 103
`
`1—7 and 9—15
`
`Harris, Langlois, DkaS, and
`Husemann
`
`§ 103
`
`Pet. 10—68.
`
`H. ANALYSIS
`
`A. REAL PARTIES IN INTEREST
`
`A petition must identify all real parties in interest (“RPIs”). 35 U.S.C.
`
`§ 312(a)(2). The petitioner bears the burden of persuasion to show that it
`
`accurately names all RPIs. Applications in Internet Time, LLC v. RPX
`
`C0111, 897 F.3d 1336, 1343 G‘ed. Cir. 2018) (“AIT”) (citing Zerto, Inc. v.
`
`EMC Corp, Case IPR2014—01295, slip op. at 6—7 (PTAB Mar. 3, 2015)
`
`(Paper 34)). We generally accept a petitioner’s initial identification of its
`
`RPIs unless the patent owner presents some evidence to support its argument
`
`1 US. Patent No. 6,084,949 (issued July 4, 2000). Ex. 1002 (“Yun”).
`2 UK. Patent Application Publication No. GB 2318703. Ex. 1003
`(“Langlois”).
`3 US. Patent No. 5,428,671 (issued June 27, 1995). EX. 1004 (“Dykes”).
`4 US. Patent No. 7,577,910 B1 (issued Aug. 18, 2009). Ex. 1006
`(“Husemann”).
`5 US. Patent No. 6,738,643 B1 (issued May 18, 2004). Ex. 1005
`(“Harris”).
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`that an unnamed party should be included as an RPI. Worlds Inc. v. Bungie,
`Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018).
`Whether a particular entity is an RPI is a “highly fact-dependent
`question” that is assessed “on a case-by-case basis.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“TPG”). We
`consider multiple factors, including the following: whether a non-party is
`funding, directing, or controlling the IPR; whether the non-party had the
`ability to exercise control; the non-party’s relationship with the petitioner
`and with the petition, including any involvement in the filing; and the nature
`of the entity filing the petition. TPG, 77 Fed. Reg. at 48759–60.
`The Petition identifies Unified Patents, Inc. (“Unified”), as the sole
`RPI in this proceeding. Pet. 1. Patent Owner, relying primarily on the
`Federal Circuit’s decision in AIT, contends that Petitioner should have
`named Apple Inc. (“Apple”)
`
` as RPIs and that, therefore, we should dismiss the Petition.
`Resp. 1–2. Patent Owner contends that Apple
` have a
`
`preexisting, established relationship with Unified based on Apple’s
` subscription agreements with Unified. Resp. 4. In addition,
`Patent Owner asserts that Apple
` are beneficiaries of the
`Petition because Unified targets patents to mitigate the risk of non-
`practicing-entity lawsuits against its clients, and both Apple
`
`
`
`
`. Id. at 6, 13. Patent Owner also suggests that Apple likely collaborated
`with Petitioner because, within days of Unified filing its petition, Apple filed
`a similar IPR challenging the ’671 patent based on partly overlapping prior
`art. Id. at 9–10. Last, relying heavily on the concurring opinion in AIT,
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`Patent Owner argues that Petitioner acted as a proxy for Apple
`in seeking this IPR and has a history of acting as a proxy in challenging
`patents asserted by Patent Owner in litigation. Id. at 13–20. Thus, Patent
`Owner contends, “[t]he facts here . . . support[] a finding of privity” between
`Petitioner the alleged unnamed RPIs. Id. at 13.
`On the other side, Petitioner points to record evidence that “only
`Unified directed, controlled, and funded this IPR.” Reply 16 (citing
`Ex. 1022 ¶¶ 5, 8–11, 16, 17). Petitioner states that it “did not communicate
`or coordinate with any member . . . regarding the challenged patent or seek
`input on the Petition.” Id. at 17 (citing Ex. 1022 ¶¶ 5, 9–12). Petitioner
`further contends that no Unified member funded its Petition in this case and
`that no membership fees are designated for challenges to specific patents.
`Id. at 21 (citing Ex. 1022 ¶¶ 3, 5, 12). Petitioner submits that it directs its
`activities in so-called “Technology Zones” and that the ’671 patent falls
`within
`. Id. at 19 (citing Ex. 1022 ¶¶ 13–16).
`According to Petitioner, “[n]either Apple
` directed or otherwise
`participated in the establishment of these Zones, no member made Unified
`aware of the ’671 Patent, and no member expressed to Unified any interest
`in the ’671 Patent.” Id. at 19 (citing Ex. 1022 ¶¶ 6, 8–10) (internal quotation
`marks omitted). We are not aware of any evidence that persuasively
`contradicts Petitioner’s assertions. We, thus, agree with Petitioner that
` Apple are not unnamed RPIs.
`The facts of this case are distinguishable from AIT where Salesforce—
`the alleged unnamed RPI—made a payment to petitioner RPX shortly before
`RPX filed its petition, discussed the patent and related litigation with RPX,
`shared a board member with RPX; and RPX negotiated a license on behalf
`
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`of Salesforce. See AIT, 897 F.3d at 1340–42. Further, unlike here, the
`alleged unnamed RPI in AIT would have been barred from filing a petition
`because of the time bar under 35 U.S.C. § 315(b). Id. at 1338–39. In this
`case, Patent Owner does not allege that Apple
` would have been
`time barred, so this proceeding does not implicate § 315(b). Cf. Ventex Co.,
`Ltd. v. Columbia Sportswear N. Am., Inc., Case IPR2017-00651 (Jan. 24,
`2019) (Paper 152) (precedential). The record also contains no evidence of
`client-specific or pre-filing communications between Petitioner and Apple
` regarding this proceeding or the preparation of the Petition filed in
`this proceeding. Instead, Petitioner offers undisputed evidence that Unified
`alone directed, controlled, and funded this IPR, and that Unified did not
`communicate or coordinate with Apple
` regarding the challenged
`patent in this proceeding. See Reply 16 (citing Ex. 1022 ¶¶ 5, 8–11, 16, 17);
`id. at 20–21 (citing Ex. 1036 ¶¶ 5–8; Ex. 1037, 123:12–13, 160:10–162:9,
`163:12–164:17).6 There is also no specific evidence that the Petition was
`filed at Apple’s
` behest. That Apple filed its own similar
`Petition around the same time as Petitioner does not suggest Apple is an
`unnamed RPI. To the contrary, it suggests that Apple did not need Petitioner
`to file this Petition on its behalf, and chose to file its own similar petition,
`giving Apple control over its own proceeding. Last, Patent Owner’s
`
`
`
`
`6 The only evidence of communication between Petitioner and the alleged
`unnamed RPIs is a mass email Petitioner sent, after filing its Petition, to over
`150 of its members announcing that Unified had filed an IPR petition against
`the ’671 patent, describing the ’671 patent, and noting that
`
` Apple
`. See Ex. 2005,
`
`44–47.
`
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` are privies of Unified does not support
`contention that Apple
`its assertion that we should deny the Petition. See Unified Patents Inc. v.
`Uniloc 2017, LLC, Case IPR2017-02148, slip op. at 16–17 (PTAB April 26,
`2019) (Paper 82) (explaining that “to the extent Patent Owner asserts the
`Petition should be denied because it does not identify any privy of Petitioner,
`such arguments are unpersuasive because Petitioner is not required to
`identify its privies”).
`Against Petitioner’s assertions, Patent Owner’s contentions amount to
`general statements that membership in Unified is enough to make any
`Unified member that has been sued on a patent an RPI for any Unified
`petition challenging that patent. We agree with other Board decisions that
`have held that is not enough. See, e.g., Unified Patents, Inc. v. Uniloc 2017
`LLC, Case IPR2017-02148 slip op. at 14–24 (PTAB April 26, 2019) (Paper
`82); Unified Patents, Inc. v. Universal Secure Registry LLC, Case IPR2018-
`00067, slip op. at 72–75 (PTAB May 28, 2019) (Paper 59); Unified Patents
`Inc. v. Cellular Commc’ns Equip., Case IPR2018-00091, slip. op. at 8–17
`(PTAB May 22, 2019) (Paper 33). The evidence and arguments advanced
`by Petitioner lead us to determine that Apple
` are not unnamed
`RPIs to this proceeding.
` LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner asserts that a person of ordinary skill in the art for the ’671
`patent “would have had at least a Master’s Degree in electrical engineering,
`computer science, or a related subject or the equivalent, or at least a
`Bachelor’s Degree in electrical engineering, computer science, or a related
`subject or the equivalent and two years of experience working with wireless
`networks and telephone systems.” Pet. 7 (citing Ex. 1007 ¶ 24). Patent
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`Owner does not assert a different level of ordinary skill. See Resp. 22. We
`agree with Petitioner’s assertion related to a skilled artisan’s qualifications.
` CLAIM CONSTRUCTION
`The ’671 patent has not expired, and the Petition was filed before
`November 13, 2018. Therefore, we interpret terms of the challenged claims
`according to their broadest reasonable interpretation in light of the
`specification. See 37 C.F.R. § 42.100(b) (2017).7 Unless the record shows
`otherwise, we presume a claim term carries its “ordinary and customary
`meaning,” which is “the meaning that the term would have to a person of
`ordinary skill in the art in question” at the time of the invention. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Independent claim 1 requires a handheld computer system that “is
`operable to transfer the specific telephone number to the telephone using a
`wireless communication, and wherein the handheld computer system is
`configured to control the telephone via the wireless communication such that
`the telephone dials the specific telephone number.” The other challenged
`independent claim, claim 9, includes similar transfer and control limitations:
`“transferring the specific telephone number from the handheld computer
`system to the telephone using a wireless communication” and “controlling
`
`
`7 See also Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340, 51,344 (Oct. 11, 2018) (“The Office will continue to apply
`the BRI standard for construing unexpired patent claims . . . in AIA
`proceedings where a petition was filed before the [November 13, 2018]
`effective date of the rule.”).
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`the telephone using the handheld computer system to cause the telephone to
`dial the specific telephone number.”
`Patent Owner asserts that these limitations “require[] the handheld
`computer to issue a control command that is separate and apart from
`‘transferring the specific telephone number’ itself.” Resp. 25. According to
`Patent Owner, both the Specification and the prosecution history support its
`“separate and apart” construction. Petitioner disagrees that the claims
`require a control command separate and apart from transferring the
`telephone number. Reply 2–5. According to Petitioner, the transferring and
`control limitations “may be performed by signals or portions of a signal that
`are not necessarily ‘separate and apart’ to effectuate both the claimed
`transfer and control.” Id. at 3.
`We agree with Petitioner. First, the claim’s plain language does not
`support Patent Owner’s narrow construction. The transferring and control
`limitations at issue recite separate and distinct steps, not separate and distinct
`commands. The claim language does not reference “commands” at all and
`does not preclude the same command from accomplishing the two distinct
`steps. See Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32
`(Fed. Cir. 2011) (holding that the same physical structure can serve two
`distinct claim limitations). The Specification and prosecution history also do
`not support Patent Owner’s narrow construction. Patent Owner alleges two
`Specification passages and three prosecution history references support its
`construction. See Resp. 26–27 (citing Ex. 1001, 8:17‒21, 9:7‒21; Ex. 1015,
`8). At most, however, the cited passages describe transferring a number and
`controlling a telephone to dial the number as separate steps, not as separate
`commands. The cited passages are ambiguous as to whether the transfer and
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`control steps can be accomplished with just one command. See, e.g.,
`Ex. 1001, 8:17–21 (Specification describing that “[t]he wireless link 20
`enables an application executing on PID 12 to access telephone 14,
`communicate the desired telephone number, and control telephone 14 to dial
`the number”); Ex. 1015, 8 (prosecution history passage asserting that “the
`mere exchange of data as described in [a prior art reference] is separate and
`distinct from the claim limitation of one wireless station controlling
`another”).
`
` OBVIOUSNESS GROUNDS BASED ON YUN
`As outlined below, we conclude that Petitioner has shown by a
`preponderance of evidence that claims 1–6 and 9–14 would have been
`obvious over Yun, Langlois, and Dykes, and that claims 7, 8, 15, and 16
`would have been obvious over Yun, Langlois, Dykes, and Husemann.
`1. Overview of Yun
`Yun discloses a “telephone system with automatic dialing using
`infrared transmission from [an] electronic pocket book.” Ex. 1002, [54].
`Yun’s electronic pocket book is a “conventional” device “organized to
`feature a visual display, computer linking and a host of communication
`options and expandability, including touch screen display, word processor,
`calendar, scheduler, telephone directory and the like.” Id. at 1:20–31. After
`user selection of a phone number using the electronic pocketbook, Yun
`describes the telephone as “initially analyzing the telephone number
`contained in the infrared ray signal received from the electronic pocketbook
`after receipt of an electronic dial request in an off-hook state, and
`automatically dialing the analyzed telephone number contained in the
`infrared ray signal.” Id. at 4:24–31.
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`2. Combining Yun with Langlois
`Petitioner relies on Yun as disclosing all limitations recited by the
`challenged independent claims, except that Petitioner points to Langlois as
`disclosing “wherein a specific telephone number is selectable from a list
`displayed on the handheld computer system.” Pet. 11–37. Specifically,
`Petitioner asserts that Yun discloses displaying the name and number of
`stored contacts and that Langlois discloses displaying, for user selection, a
`variety of different types of lists containing contact information. Id. at 16–
`20 (citing Ex. 1002, 2:37–38, 4:45–50, 4:60–5:2; Ex. 1003, 21:8–10, 25:7–9,
`25:13–14, 26:11–27:1, 29:10–20, 29:25–28, Figs. 17D, 18B, 22C, 23C;
`Ex. 1007 ¶ 46). In addition, Petitioner explains that a person of ordinary
`skill would have included Langlois’s technique of displaying contacts in a
`selectable list with Yun’s automatic dialing system to “provide a more
`interactive telephone user interface that includes useful features, such as the
`viewing and selection of multiple contacts in a list.” Id. at 18 (citing
`Ex. 1007 ¶ 47). Petitioner adds that such combination would have been
`easily accomplished using conventional software techniques. Id. at 19–20
`(citing Ex. 1007 ¶ 49). Patent Owner does not challenge Petitioner’s
`assertions in this regard. We conclude Petitioner has articulated sufficient
`reasoning with some rational underpinning to support the legal conclusion
`that its proffered combination of Yun and Langlois would have been obvious
`to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 418 (2007).
`3. Transfer/Control Limitations and Combining Dykes
`For the transfer and control limitations, Petitioner relies on Yun’s
`disclosure that it sends both an electronic dial request and a telephone
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`number to a telephone in response to a user selecting a telephone number
`and a dial key. Pet. 20–21 (citing Ex. 1002, Abstract, 1:64–2:55, 3:37–42,
`3:51–57, 4:11–20, 4:41–59, 5:5–23; Ex. 1007 ¶ 53). In addition, under a
`potentially narrower reading of the control limitation, Petitioner relies on
`Dykes, which describes a separate set of commands for a computer to
`control a modem over a communication link. Id. at 21 (citing Ex. 1004,
`2:52–62, 5:60–64, 9:22–24). One such command instructs the modem to
`dial a particular phone number. Id. at 22 (citing Ex. 1004, 3:41–44, 3:44–59,
`10:38–43; Ex. 1007 ¶ 55). Petitioner adds that Dykes also discloses a
`computer commanding a cellular phone to dial a phone number. Id. at 22–
`23 (citing Ex. 1004, 3:44–61, 4:14–33, 5:60–64, 9:30–34, 10:43–48, 10:56–
`62, 11:9–13, 11:65–12:5, 13:5–14:10, 16:62–17:19; Ex. 1007 ¶ 56).
`Petitioner also explains, with relevant support from its expert, that a person
`of ordinary skill would have combined Dykes’s dial command teaching with
`Yun’s automated dialing system because, among other reasons (see id.
`at 23–26), it was a “routine substitution of one known element (e.g., the
`control described by Yun that utilizes an electronic dial request and the
`telephone number) for another known element (e.g., the control described by
`Dykes that utilizes a telephone number and a ‘SEND’ command) to obtain
`the predictable result of a system that causes a device to dial a telephone
`number.” Id. at 23 (citing Ex. 1007 ¶ 57). Petitioner goes on to explain that,
`during the relevant time period, this was a standard way of causing a
`telephone to dial a number and this functionality could easily be
`accomplished using conventional programming methods. Id. at 22–23
`(citing Ex. 1007 ¶¶ 57–58). Based on its contentions and supporting
`evidence, we agree with Petitioner that Yun teaches the independent claims’
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`transfer and control limitations. We further agree with Petitioner’s
`alternative argument that Dykes teaches separately commanding a cellular
`phone to dial a phone number and one skilled in the art would have found it
`obvious to combine Dykes’s teaching with Yun.
`Patent Owner argues that Petitioner does not sufficiently show that
`Yun discloses the control limitation because Yun describes control merely
`by transmitting a telephone number, rather than by a separate step apart from
`transferring the telephone number. See Resp. 29–30, 31–32. We disagree
`with Patent Owner’s argument for two reasons. First, it relies on Patent
`Owner’s narrow construction of the control limitation, which we declined to
`adopt as explained above. Second, we do not agree with Patent Owner’s
`characterization that in Yun “the only involvement of the electronic
`pocketbook is the transfer of a single infrared ray signal that contains the
`telephone number.” Id. at 31. Yun discloses a device sending an infrared
`ray signal “containing an electronic dial request and telephone number of an
`interested person selected for an automatic dialing function.” Ex. 1002,
`4:13–16 (emphasis added). Thus, Yun distinguishes between its dial request
`and transferred telephone number. By doing so, Yun discloses the transfer
`and controlling limitations even under Patent Owner’s narrow construction.
`Patent Owner next argues that Yun is deficient because in Yun, the
`telephone’s control unit, rather than the electronic pocketbook’s dial request,
`controls dialing the telephone. Resp. 32. As evidence that Yun’s telephone
`control unit is responsible for the controlling limitation, Patent Owner cites
`passages in Yun that describe the telephone’s control unit “controlling the
`overall operation of the telephone system,” including making calls. Id.
`(citing Ex. 1002, 3:18–20); see id. (citing Ex. 1002, 3:30‒33, 4:36‒38, 5:5‒
`
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`16). Patent Owner also notes that Yun’s “telephone can and will ignore a
`‘dial request’ received from the electronic pocketbook while the telephone is
`not in an off-hook state.” Id. at 33 (citing Ex. 1002 Fig. 3, Step 310). We
`disagree with Patent Owner’s argument because it assumes that the
`electronic pocketbook’s dial request cannot control the telephone to
`automatically dial the transferred number by working in conjunction with
`telephone’s control unit. Yet that is precisely what Yun discloses. See
`Ex. 1002, 4:54–59, 5:8–16 (“[I]f the infrared ray signal corresponding to the
`electronic dial request from the electronic pocketbook is received . . . the
`[telephone’s] control unit 110 determines whether the infrared ray signal
`contains a telephone number” and “control[s] the [telephone’s] dial unit 116
`to automatically dial the telephone number.”). In addition, Yun’s off-hook
`functionality (ignoring dial requests) is irrelevant because Yun’s on-hook
`functionality teaches the claimed control feature. See Hewlett-Packard Co.
`v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“[A] prior art
`product that sometimes, but not always, embodies a claimed method
`nonetheless teaches that aspect of the invention.”).
`In response to Petitioner’s alternative argument incorporating Dykes’s
`distinct dial command, Patent Owner argues that Dykes’s hardwired phone
`connection fails to disclose, and is incompatible with, the claims’ wireless
`communication feature. See Resp. 38–40. We disagree. Petitioner relies on
`Dykes to show only that a skilled artisan would understand that a dial
`command, separate from the telephone number, would be a plausible method
`for implementing the automatic dialing described by Yun. See Pet. 21.
`Dykes’s implementation details beyond this broad understanding are not
`material. It does not matter whether Dykes discloses wireless
`
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`communication because Petitioner relies on Yun, not Dykes, to disclose that
`feature. See Pet. 20. As for Patent Owner’s incompatibility argument, we
`disagree because it is undermined by the only relevant record evidence—
`Mr. Cohen’s testimony that, during the relevant time, “the standard way of
`controlling a telephone to dial a telephone number was to send a dialing
`command and the telephone number,” and “[m]odifying Yun to send a
`telephone number and a separate command for dialing the telephone number
`would have been well within the abilities of a POSA because this kind of
`control was conventional and could easily be accomplished with a high
`chance of success.” Ex. 1007 ¶ 58. Moreover, Patent Owner offers no
`reasoning or evidence to support its assertion that Dykes’s separate
`command cannot be applied to a wireless system such as Yun’s. Even if this
`combination would take some effort, we agree with Petitioner that applying
`Dykes’s teaching to Yun would be within a skilled artisan’s ability. See In
`re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007)
`(noting that “we do not ignore the modifications that one skilled in the art
`would make to a device borrowed from the prior art”).
`4. Combining Husemann with Yun and Langlois
`Petitioner relies on Husemann for teaching limitations requiring
`remote device control using a wireless communication that supports either
`Bluetooth (claims 7 and 15) or IrDA (claims 8 and 16) compatible protocols.
`See Pet. 36–37. Petitioner explains that a skilled artisan “would have been
`motivated to implement Husemann’s technique of transmitting requests and
`commands between computing devices using a Bluetooth protocol or an
`IrDA protocol” with the combined Yun and Langlois system “to provide
`compatibility with a greater number of devices by using a standardized
`
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`communication protocol used by many devices.” Id. at 37 (citing Ex. 1006,
`2:64–3:31; Ex. 1007 ¶ 134). Petitioner adds that “implementation details of
`Bluetooth and IrDA were standardized and understood by [skilled artisans]
`prior to the alleged invention.” Id. (citing Ex. 1007 ¶ 135). Patent Owner
`does not challenge Petitioner’s assertion in this regard. We conclude
`Petitioner has articulated sufficient reasoning with some rational
`underpinning to support the legal conclusion that its proffered combination
`of Husemann with Yun and Langlois would have been obvious to one of
`ordinary skill in the art.
`5. Undisputed Elements
`As outlined below, Petitioner has shown by a preponderance of the
`evidence that the combination of Yun, Langlois, and Dykes teaches the
`remaining limitations of claims 1–6 and 9–14, and that the combination of
`Yun, Langlois, Dykes, and Husemann teaches the remaining limitations of
`claims 7, 8, 15, and 16. Patent Owner does not contest Petitioner’s
`assertions in these regards.
`Independent Claim 1
`a.
`Petitioner has shown that Yun teaches “[a]n automated telephone
`dialing system” as claim 1 requires. See Pet. 13–14 (citing Ex. 1002, Title,
`Abstract, 2:1–55, 3:37–42, 3:53–57, 4:11–16, 4:54–59, 5:5–7, 5:16–23;
`Ex. 1007 ¶ 38). Petitioner has shown that Yun teaches “a telephone having a
`wireless port for short range wireless data transfer” as claim 1 requires. See
`id. at 14–15 (citing Ex. 1002, Abstract, 2:7–23, 2:47–55, 3:11–18, 3:37–42,
`Fig. 1; Ex. 1007 ¶ 40). Petitioner has shown that Yun teaches “a handheld
`computer system having a wireless port for co
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