Trials@uspto.gov
`571-272-7822
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` Paper 30
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` Entered: June 4, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00282
`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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`

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`IPR2018-00282
`Patent 7,092,671 B2
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`I.
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`INTRODUCTION
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`Petitioner, Apple Inc., filed a Petition (Paper 1, “Pet.”) requesting
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`inter partes review of claims 1–7 and 9–15 of U.S. Patent No. 7,092,671 B2
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`(Ex. 1001, “the ’671 patent”). Pursuant to 35 U.S.C. § 314(a), we
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`determined Petitioner showed a reasonable likelihood that it would prevail in
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`establishing the unpatentability of all challenged claims and instituted an
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`inter partes review. Paper 7, 12–13. Patent Owner Uniloc Luxembourg,
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`S.A. filed a Response (Paper 11, “Resp.”), and Petitioner filed a Reply to
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`Patent Owner’s Response (Paper 14, “Reply”). An oral hearing was held
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`before the Board. Paper 29.
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`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
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`and 37 C.F.R. § 42.73. Having considered the record before us and as
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`explained below, we determine Petitioner has shown by a preponderance of
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`the evidence that claims 1–7 and 9–15 of the ’671 patent are unpatentable.
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`See 35 U.S.C. § 316(e).
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`A. RELATED PROCEEDINGS
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`Petitioner and Patent Owner identify several related litigations in the
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`Eastern District of Texas involving the ʼ671 patent. Pet. 1; Paper 4, 2.
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`Another petitioner has also requested inter partes review of the ’671 patent
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`in IPR2018-00199.
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`B. THE ’671 PATENT
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`The ’671 patent is directed to a “method and system for wirelessly
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`autodialing a telephone number from a record stored on a personal
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`information device.” Ex. 1001, [54]. According to the ’671 patent, at the
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`time of filing, personal information devices (“PIDs”) and electronic
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`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
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`IPR2018-00282
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`hardware and data processing capabilities” than conventional computers, and
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`including “a screen and data processor,” “substantial electronic memory,”
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`and “a substantial variety of applications,” relating to, for example, contact
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`information made up of addresses and telephone numbers. Id. at 1:14–33.
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`In addition to PIDs, the ’671 patent describes cellphones as widely used
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`handheld digital devices similar to PIDs, but with substantially fewer
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`applications, less available memory for storage, and a limited capacity for
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`data entry. Id. at 1:38–53.
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`Because of these differences between PIDs and cellphones, the ’671
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`patent observes that PIDs, and not cellphones, are used to store contact
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`information. Id. at 1:54–63. This leads to a requirement for users to find
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`contact numbers on their PID and then manually dial those numbers on the
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`cellphone. Id. at 1:58–2:10. Thus, the ’671 patent identifies a need for “a
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`method whereby a user’s handheld PID can automatically dial a telephone
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`number stored in its memory” such that the user need not access controls of
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`a telephone. Id. at 2:11–22.
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`To solve this problem, the ’671 patent describes using the wireless
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`ports of the telephone and the PID to link the two devices using a standard
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`communication protocol, such as short-range radio frequency (“RF”) over
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`Bluetooth or infrared signals (“IR”) over the Infrared Data Association
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`(“IrDA”) specification. Id. at 4:40–5:27, 6:35–57. The ’671 patent
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`describes a method in which the user chooses a phone number from the
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`memory of the PID, using the appropriate application, and indicates to the
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`PID that the chosen number should be dialed by a cellphone. Id. at 8:10–17.
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`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
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`and establish[] the telephone call” in a manner that is seamless and “without
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`requiring any intervening steps or actions by the user” or involving direct
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`interaction with the cellphone. Id. at 8:17–25. Figure 8, reproduced below,
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`shows a flowchart of the steps in one embodiment of this autodialing
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`process. Id. at 9:39–41.
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`The flow chart of Figure 8, above, begins with step 801—the user
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`accessing the graphical user interface (“GUI”) of a PID to initiate wireless
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`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
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`phone number in step 803, and confirms that the number should be
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`autodialed by the cellphone in step 804. Id. at 9:55–59. The PID, in step
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`805, transfers the chosen number to the cellphone over the wireless
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`communication link. Id. at 9:62–64. Finally, in step 806, the PID “controls
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`telephone 14 to dial the specific number and complete the telephone
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`communication.” Id. at 9:65–67.
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`C. ILLUSTRATIVE CLAIM
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`Of the challenged claims, claims 1 and 9 are independent. Claim 1 is
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`illustrative of the claims at issue and is reproduced below with added
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`indentations and spacing for clarity.
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`1. An automated telephone dialing system, comprising:
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`a telephone having a wireless port for short range wireless data
`transfer; and
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`a handheld computer system having a wireless port for
`communication with the wireless port on the telephone,
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`wherein a specific telephone number is selectable from a list
`displayed on the handheld computer system and
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`wherein the handheld computer system is operable to transfer
`the specific telephone number to the telephone using a wireless
`communication, and
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`wherein the handheld computer system is configured to control
`the telephone via the wireless communication such that the
`telephone dials the specific telephone number.
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`Ex. 1001, 10:55–67.
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`D. ASSERTED GROUNDS OF UNPATENTABILITY
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`Petitioner asserts the following grounds of unpatentability:
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`References
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`
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`Basis
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`Challenged Claims
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`Yun1 and Kikinis2
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`§ 103
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`1–6 and 9–14
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`Yun, Kikinis, and Inoue3
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`Harris4 and Kikinis
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`§ 103
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`§ 103
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`7 and 15
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`1–7 and 9–15
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`Pet. 7.
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`II. ANALYSIS
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` REAL PARTIES IN INTEREST
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`A petition must identify all real parties in interest (“RPIs”). 35 U.S.C.
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`§ 312(a)(2). The petitioner bears the burden of persuasion to show that it
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`accurately names all RPIs. Applications in Internet Time, LLC v. RPX
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`Corp., 897 F.3d 1336, 1343 (Fed. Cir. 2018) (“AIT”) (citing Zerto, Inc. v.
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`EMC Corp., Case IPR2014-01295, slip op. at 6–7 (PTAB Mar. 3, 2015)
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`(Paper 34)). We generally accept a petitioner’s initial identification of its
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`RPIs unless the patent owner presents some evidence to support its argument
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`that an unnamed party should be included as an RPI. Worlds Inc. v. Bungie,
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`Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018).
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`Whether a particular entity is an RPI is a “highly fact-dependent
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`question” that is assessed “on a case-by-case basis.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“TPG”). We
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`
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`1 U.S. Patent No. 6,084,949 (issued July 4, 2000). Ex. 1005 (“Yun”).
`2 U.S. Patent No. 5,790,644 (issued Aug. 4, 1998). EX. 1006 (“Kikinis”).
`3 U.S. Patent No. 7,080,154 B1 (issued July 18, 2006). Ex. 1007 (“Inoue”).
`4 U.S. Patent No. 6,738,643 B1 (issued May 18, 2004). Ex. 1012
`(“Harris”).
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`consider multiple factors, including the following: whether a non-party is
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`funding, directing, or controlling the IPR; whether the non-party had the
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`ability to exercise control; the non-party’s relationship with the petitioner
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`and with the petition, including any involvement in the filing; and the nature
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`of the entity filing the petition. TPG, 77 Fed. Reg. at 48759–60.
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`The Petition identifies Apple Inc. as the sole RPI in this proceeding.
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`Pet. 1. Patent Owner contends that Petitioner should have named Unified
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`Patents, Inc. (“Unified”) as an RPI and that, therefore, we should dismiss the
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`Petition. Resp. 22. Specifically, Patent Owner notes its “suspicion of
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`collaboration” between Petitioner and Unified because Unified filed its own
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`petition asserting the same two primary references against the ’671 within
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`days of Petitioner filing its Petition in this case. Resp. 24. Patent Owner
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`also asserts Petitioner and Unified have a preexisting relationship based on
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`Petitioner’s subscription agreement with Unified. Resp. 25.
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`On the other side, Petitioner asserts Unified is not an RPI because
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`Petitioner’s business model—selling iPhones, iPads and Mac computers—in
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`no way suggests Petitioner filed the Petition to benefit Unified or at
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`Unified’s behest. Reply 19. Petitioner further points to record evidence that
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`it neither “solicit[ed] any input from Unified Patents with respect to [this]
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`IPR,” nor “receive[d] any contributions, financial or otherwise, from Unified
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`with respect to the preparation or filing of [this] IPR.” Id. at 21 (citing
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`Ex. 1018 ¶ 5). Petitioner further asserts that it “received no instructions
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`from Unified,” and “received no information from Unified Patents with
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`respect to [this] IPR.” Id. (citing Ex. 1018 ¶ 5). We are not aware of any
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`evidence that contradicts Petitioner’s assertions.
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`We agree with Petitioner that Unified is not an unnamed RPI. The
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`record contains no evidence of specific communications between Petitioner
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`and Unified regarding this proceeding or the preparation of the Petition filed
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`in this proceeding. Instead, Petitioner offers undisputed evidence that it
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`alone directed, controlled, and funded this IPR, and that Petitioner did not
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`communicate or coordinate with Unified in any way regarding the
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`challenged patent or the asserted prior art in this proceeding. See Id. at 21–
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`22 (citing Ex. 1018 ¶¶ 4, 5). There is also no specific evidence that the
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`Petition was filed at Unified’s behest or to benefit Unified. To the contrary,
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`as Petitioner notes, Petitioner has its own, independent reason for filing its
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`Petition—Patent Owner has sued Petitioner for allegedly infringing the ’671
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`patent. Id. at 21. Last, that Unified filed its own somewhat similar petition
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`around the same time as Petitioner does not suggest Unified is an unnamed
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`RPI, as Patent Owner suggests. Instead, it shows that to the extent that
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`Unified wanted to challenge the ’671 patent, Unified did not need Petitioner
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`to file an IPR because Unified could (and did) file its own petition. The
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`evidence and arguments advanced by Petitioner lead us to determine that
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`Unified is not an unnamed RPI to this proceeding.
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` LEVEL OF ORDINARY SKILL IN THE ART
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`Patent Owner contends “the Petition does not set forth the requisite
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`analysis necessary to prove obviousness at least because . . . it fails to
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`provide or expressly rely upon any definition for the level of ordinary skill in
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`the pertinent art.” Resp. 3. We disagree.
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`The Petition consistently cites to Dr. Medvidović’s Declaration, which
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`both defines a person of ordinary skill in the art and explains that all of the
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`opinions expressed are consistent with that person’s perspective. Ex. 1003
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`¶¶ 26, 27. The Petition also explains that its prior art analysis is from a
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`skilled artisan’s prospective. See Pet. 7 (noting that the Petition
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`“explains . . . why the claims would have been obvious to a person of
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`ordinary skill in the art”) (emphasis added). We see no need to require
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`more, and Patent Owner cites no authority for its contention that we should
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`reject the Petition based solely on Petitioner’s failure to expressly define the
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`level of ordinary skill in the art in the Petition itself, as opposed to in an
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`expert’s supporting declaration.
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` CLAIM CONSTRUCTION
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`The ’671 patent has not expired, and the Petition was filed before
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`November 13, 2018. Therefore, we interpret terms of the challenged claims
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`according to their broadest reasonable interpretation in light of the
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`specification. See 37 C.F.R. § 42.100(b) (2017).5 Unless the record shows
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`otherwise, we presume a claim term carries its “ordinary and customary
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`meaning,” which is “the meaning that the term would have to a person of
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`ordinary skill in the art in question” at the time of the invention. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`Independent claim 1 requires a handheld computer system that “is
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`operable to transfer the specific telephone number to the telephone using a
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`wireless communication, and wherein the handheld computer system is
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`configured to control the telephone via the wireless communication such that
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`
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`5 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 dials the specific telephone number.” Ex. 1001, 10:62–67.
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`The other challenged independent claim, claim 9, includes similar transfer
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`and control limitations: “transferring the specific telephone number from
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`the handheld computer system to the telephone using a wireless
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`communication” and “controlling the telephone using the handheld
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`computer system to cause the telephone to dial the specific telephone
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`number.” Id. at 12:1–6.
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`Patent Owner asserts that these limitations “require[] the handheld
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`computer to issue a control command that is separate and apart from
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`‘transferring the specific telephone number’ itself.” Resp. 6. According to
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`Patent Owner, both the Specification and the prosecution history support its
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`“separate and apart” construction. Id. at 6–9. Petitioner disagrees that the
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`claims require a control command separate and apart from transferring the
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`telephone number. Reply 7–9. According to Petitioner, the transferring and
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`control limitations “simply require a configuration in which the telephone is
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`controlled by the handheld computer system to dial the specific telephone
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`number, even if the transfer of the telephone number accomplishes as
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`much.” Id. at 7.
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`We agree with Petitioner. First, the claim’s plain language does not
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`support Patent Owner’s narrow construction. The transferring and control
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`limitations at issue recite separate and distinct steps, not separate and distinct
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`commands. The claim language does not reference “commands” at all and
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`does not preclude the same command from accomplishing the two distinct
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`steps. See Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–32
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`(Fed. Cir. 2011) (holding that the same physical structure can serve two
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`distinct claim limitations). The Specification and prosecution history also do
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`not support Patent Owner’s narrow construction. Patent Owner alleges two
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`Specification references and three prosecution history passages support its
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`construction. See Resp. 7–10 (citing Ex. 1001, 8:17‒21, 9:7‒21; Ex. 1002,
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`243–244). At most, however, the cited passages describe transferring a
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`number and controlling a telephone to dial the number as separate steps, not
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`separate commands. The cited passages are ambiguous as to whether the
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`transfer and control steps can be accomplished with just one command. See,
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`e.g., Ex. 1001, 8:17–21 (Specification passage describing that “[t]he wireless
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`link 20 enables an application executing on PID 12 to access telephone 14,
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`communicate the desired telephone number, and control telephone 14 to dial
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`the number”); Ex. 2001, 243 (prosecution history passage asserting that “the
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`mere exchange of data as described in [a prior art reference] is separate and
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`distinct from the claim limitation of one wireless station controlling
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`another”).
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` OBVIOUSNESS GROUNDS BASED ON YUN
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`As outlined below, we conclude that Petitioner has shown by a
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`preponderance of evidence that claims 1–6 and 9–14 would have been
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`obvious over Yun and Kikinis, and that claims 7, and 15 would have been
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`obvious over Yun, Kikinis, and Inoue.
`
`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
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`feature a visual display, computer linking and a host of communication
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`options and expandability, including touch screen display, word processor,
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`calendar, scheduler, telephone directory and the like.” Id. at 1:20–31. After
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`user selection of a phone number using the electronic pocketbook, Yun
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`describes the telephone as “initially analyzing the telephone number
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`contained in the infrared ray signal received from the electronic pocketbook
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`after receipt of an electronic dial request in an off-hook state, and
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`automatically dialing the analyzed telephone number contained in the
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`infrared ray signal.” Id. at 4:24–31.
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`2. Combining Kikinis with Yun
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`Petitioner relies on Yun as disclosing all the limitations recited by the
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`challenged independent claims, except Petitioner points to Kikinis as
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`disclosing “wherein a specific telephone number is selectable from a list
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`displayed on the handheld computer system.” Pet. 10–50. Specifically,
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`Petitioner asserts that Yun discloses displaying the name and number of
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`stored contacts, and that Kikinis discloses displaying, for user selection, a
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`plurality of stored telephone numbers. Id. at 23 (citing Ex. 1005, 2:29–41;
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`Ex. 1006, Fig. 2C; Ex. 1003, 43–44). In addition, Petitioner explains that a
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`person of ordinary skill would have included Kikinis’s technique of
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`displaying contacts in a selectable list with Yun’s display of contact
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`information to improve efficiency and usability. Id. at 14–17. As support
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`for this reasoning, Petitioner points to Kikinis’s own disclosure that “[a]n
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`important feature of the embodiment shown by FIG. 1 is user interface
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`display 16, which provides a flexible interface to easily operate and edit
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`variable information for the dialer.” Id. at 16 (quoting Ex. 1006, 4:21–25;
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`Ex. 1003 ¶ 78). Patent Owner does not challenge Petitioner’s assertions in
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`this regard. We conclude Petitioner has articulated sufficient reasoning with
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`some rational underpinning to support the legal conclusion that its proffered
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`combination of Yun and Kikinis would have been obvious to one of ordinary
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`skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
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`3. Transfer/Control Limitations
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`For the transfer and control limitations, Petitioner relies on Yun’s
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`disclosure that its electronic pocketbook transmits a specific telephone
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`number to its telephone system, which then automatically dials the number.
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`Pet. 25–28 (citing Ex. 1005, 3:13–17, 3:45–51, 4:16–30, 5:7–15, Figs. 1, 2,
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`3; Ex. 1003, 46, 47–49); id. at 41 (citing Ex. 1003, 62). Based on its
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`contentions and supporting evidence, we agree with Petitioner that Yun
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`teaches the independent claims’ transfer and control limitations.
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`Patent Owner argues that Petitioner does not sufficiently show that
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`Yun discloses the control limitation because Yun describes control merely
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`by transmitting a telephone number, rather than by a separate step apart from
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`transferring the telephone number. See Resp. 13. We disagree with Patent
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`Owner’s argument for two reasons. First, it relies on Patent Owner’s narrow
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`construction of the control limitation, which we declined to adopt, as
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`explained above. Second, we disagree with Patent Owner’s characterization
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`that in Yun “the only involvement of the electronic pocketbook is the
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`transfer of a single infrared ray signal containing a telephone number.” Id.
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`Yun discloses a device sending an infrared ray signal “containing an
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`electronic dial request and telephone number of an interested person selected
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`for an automatic dialing function.” Ex. 1005, 4:13–16 (emphasis added).
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`Thus, Yun distinguishes between its dial request and transferred telephone
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`number. By doing so, Yun discloses the transfer and controlling limitations
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`even under Patent Owner’s narrow construction.6
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`Patent Owner next argues Yun is deficient because in Yun, the
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`telephone’s control unit, rather than the electronic pocketbook, controls
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`dialing the telephone. Resp. 12. As evidence that Yun’s telephone control
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`unit is responsible for the controlling limitation, Patent Owner cites passages
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`in Yun that describe the telephone’s control unit “controlling the overall
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`operation of the telephone system,” including making calls. Id. (citing
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`Ex. 1005, 3:18–20); see id. (citing Ex. 1005, 3:30‒33, 4:36‒38, 5:5‒16).
`
`Patent Owner also notes that Yun’s telephone control unit “is specifically
`
`designed to ignore a received ‘dial request’ while the handset unit 118 is not
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`in an off-hook state.” Id. at 16, 17 (citing Ex. 1005, Fig. 3, Step 310). We
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`disagree with Patent Owner’s argument because it assumes that the
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`electronic pocketbook’s dial request cannot control the telephone to
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`automatically dial the transferred number by working in conjunction with
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`telephone’s control unit. Yet that is precisely what Yun discloses. See
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`Ex. 1005, 4:54–59, 5:8–16 (“[I]f the infrared ray signal corresponding to the
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`electronic dial request from the electronic pocketbook is received . . . the
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`[telephone’s] control unit 110 determines whether the infrared ray signal
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`contains a telephone number” and “control[s] the [telephone’s] dial unit 116
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`
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`6 Patent Owner asserts Petitioner waived relying on Yun’s electronic dial
`request for teaching the claimed control limitation by failing to raise that
`argument in the Petition. Resp. 13–15. We disagree. The Petition and
`Dr. Medvidović’s Declaration cited the Specification’s dial request passage.
`See Pet. 12; Ex. 1003 ¶ 66. In addition, Petitioner’s reliance on Yun’s dial
`request in its Reply (see Reply 10–13) is permissible because it is responsive
`to Patent Owner’s claim construction argument. See 37 C.F.R. § 42.23(b).
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`to automatically dial the telephone number.”). In addition, Yun’s off-hook
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`functionality (ignoring dial requests) is irrelevant because Yun’s on-hook
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`functionality teaches the claimed control feature. See Hewlett-Packard Co.
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`v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“[A] prior art
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`product that sometimes, but not always, embodies a claimed method
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`nonetheless teaches that aspect of the invention.”).
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`4. Combining Inoue with Yun and Kikinis
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`Petitioner relies on Inoue for teaching limitations requiring remote
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`device control using a wireless communication that supports Bluetooth
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`compatible protocols. See Pet. 45. Petitioner explains that “[a] POSITA
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`seeking to implement the Yun/Kikinis system would have evaluated the
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`available, known options for short-range wireless communication, as taught
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`in Inoue, and considered which of these would be an appropriate design
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`choice.” Id. at 47 (citing Ex. 1003 ¶ 86). Petitioner adds that Yun expressly
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`recognizes “various changes and modifications may be made” to its system
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`and that “a POSITA viewing Yun’s statement allowing for modifications to
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`its system would be motivated to consider and use other options for wireless
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`communication instead of infrared, such as Bluetooth, as taught by Inoue,
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`depending on the needs of the design.” Id. at 46, 47 (citing Ex. 1005, 5:23–
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`28; Ex. 1003 ¶ 87). Petitioner goes on to note, “[a] POSITA would
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`understand that Bluetooth ‘may be specifically preferred since it is a short
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`range, low-power, high noise immune protocol.’” Id. at 47 (citing Ex. 1012,
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`2:12–16). Patent Owner does not challenge Petitioner’s assertion in this
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`regard. We conclude Petitioner has articulated sufficient reasoning with
`
`some rational underpinning to support the legal conclusion that its proffered
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`combination of Inoue with Yun and Kikinis would have been obvious to one
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`of ordinary skill in the art.
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`5. Undisputed Elements
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`As outlined below, Petitioner has shown by a preponderance of the
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`evidence that the combination of Yun and Kikinis teaches the remaining
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`limitations of claims 1–6 and 9–14, and the combination of Yun, Kikinis,
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`and Inoue teaches the remaining limitations of claims 7 and 15. Patent
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`Owner does not contest Petitioner’s assertions in these regards.
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`a.
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`Independent Claim 1
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`Petitioner has shown that Yun teaches “[a]n automated telephone
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`dialing system” as claim 1 requires. See Pet. 17–18 (citing Ex. 1005,
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`Abstract, 1:16–19, Figs 1, 2; Ex. 1003, 37–38). Petitioner has shown that
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`Yun teaches “a telephone having a wireless port for short range wireless data
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`transfer” as claim 1 requires. See id. at 19–20 (citing Ex. 1005, Abstract,
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`3:11–41, Fig. 1; Ex. 1003, 39–40). Petitioner has shown that Yun teaches “a
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`handheld computer system having a wireless port for communication with
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`the wireless port on the telephone” as claim 1 requires. See id. at 20–23
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`(citing Ex. 1005, Abstract, 1:20–43, 3:18–23, 3:42–46, 3:67–4:3, 4:10–20,
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`Fig. 2; Ex. 1003, 41, 42–43). Petitioner also has shown that Kikinis teaches
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`“wherein a specific telephone number is selectable from a list displayed on
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`the handheld computer system” as claim 1 requires. See id. at 23–25 (citing
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`Ex. 1006, 4:21–26, 5:10–12, Fig. 2C ; Ex. 1003, 45–46).
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`b.
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`Independent Claim 9
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`Petitioner has shown that Yun teaches “[a]n automatic wireless
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`telephone dialing method” as claim 9 requires. See Pet. 37–38 (citing
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`Ex. 1005, Abstract, 3:6–7, 4:20–31, Fig. 3; Ex. 1003, 58–60). Petitioner has
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`shown that Yun teaches “establishing a wireless communications link for a
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`short range data transfer between a telephone and a handheld computer
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`system” as claim 9 requires. See id. at 39–40 (citing Ex. 1005, 3:36–41,
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`4:16–20; Ex. 1003, 60–61). Petitioner also has shown that the combination
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`of Yun and Kikinis teaches “receiving a user input identifying a specific
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`telephone number from a list displayed on the handheld computer system” as
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`claim 9 requires. See id. at 40–41 (citing Ex. 1006, 5:11–13, 5:26–29,
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`Fig. 2C; Ex. 1003, 61–62).
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`c. Claims 2 and 10
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`Petitioner has shown that Yun teaches the additional limitation in
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`dependent claim 2 (and parallel limitation in claim 10): “wherein the dialing
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`of the specific telephone number by the telephone is automatically effected
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`in response to a user interacting with the information stored on the handheld
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`computer system.” See id. at 29–30 (citing Ex. 1005, 2:29–34, 4:60–5:7,
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`5:16–22; Ex. 1003, 50–51); id. at 42 (citing Ex. 1003, 62–63).
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`d. Claims 3 and 11
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`Petitioner has shown that Yun teaches the additional limitation in
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`dependent claim 3 (and parallel limitation in claim 11): “wherein the
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`information stored in the handheld computer system includes contact
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`information.” See id. at 31 (citing Ex. 1005, 2:1–3, 4:60–5:4; Ex. 1003, 51–
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`52); id. at 42 (citing Ex. 1003, 63).
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`e. Claims 4 and 12
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`Petitioner has shown that Kikinis teaches the additional limitation in
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`dependent claim 4 (and parallel limitation in claim 12): “wherein the list is
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`presented as a list of contacts and the telephone number dialed by the
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`telephone corresponds to one of the contacts selected by the user.” See id. at
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`32–33 (citing Ex. 1006, Abstract, 2:37–38, 5:10–13, 5:26–29, Fig. 2C;
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`Ex. 1003, 52–53); id. at 43 (citing Ex. 1003, 63).
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`f. Claims 5, 6, 13, and 14
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`Petitioner has shown that the combination of Yun and Kikinis teaches
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`the additional limitation in dependent claim 5 (and parallel limitation in
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`claim 13): “wherein the information stored on the handheld computer
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`system is maintained by a management program executing on the handheld
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`computer system and the management program controls the telephone via
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`the wireless communication,” as well as the additional limitation in claim 6
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`(and parallel limitation in claim 14): “wherein the management program is
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`an address book program.” See id. at 33–37 (citing Ex. 1005, 3:67–4:20,
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`5:13–16; Ex. 1006, 3:14–17, 3:36–42, 3:52–54, 3:63–65, 5:11–13, 5:2–4,
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`5:34–63, 6:50–54, 7:30–35, 8:36–39; Ex. 1003, 54–58); id. at 43–44 (citing
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`Ex. 1003, 64).
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`g. Claims 7 and 15
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`Petitioner has shown that Inoue discloses the additional limitation in
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`dependent claims 7 and 15: “wherein the wireless communication is
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`compatible with a version of the Bluetooth specification.” See id. at 48
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`(citing Ex. 1007, 6:14–19; Ex. 1003, 69–70); id. at 49–50 (citing Ex. 1003,
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`71).
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` OBVIOUSNESS GROUNDS BASED ON HARRIS
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`We conclude that Petitioner has shown by a preponderance of
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`evidence that claims 1–7 and 9–15 would have been obvious over Harris,
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`and Kikinis, as outlined below.
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`1. Overview of Harris
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`Harris discloses a personal digital assistant (PDA) that can
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`automatically dial a telephone. Ex. 1012, Abstract, 1:41–46. Harris’s PDA
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`“stores a plurality of contacts” and displays “the person’s name and phone
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`number as conventional” with “an icon or spot on the screen 112, which
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`commands dialing the displayed number” when selected by a user. Id.
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`at 1:47–53.
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`2. Combining Harris with Kikinis
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`Petitioner relies on Harris as disclosing all limitations recited by the
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`challenged independent claims, except Petitioner again points to Kikinis as
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`disclosing “wherein a specific telephone number is selectable from a list
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`displayed on the handheld computer system.” Pet. 59–61. Specifically,
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`Petitioner asserts that Harris discloses displaying the name and number of
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`stored contacts and that Kikinis discloses a list of those numbers displayed
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`on a handheld computer system. Id. at 59 (citing Ex. 1012, 1:46–49;
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`Ex. 1006, Fig. 2C; Ex. 1003, 84–85). In addition, Petitioner explains that a
`
`person of ordinary skill would have included Kikinis’s technique of
`
`displaying contacts in a selectable list with Harris’s display of the contacts to
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`improve efficiency and usability. Id. at 53–54. As support for this
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`reasoning, Petitioner points to Kikinis’s own disclosure that “[a]n important
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`feature of the embodiment shown by FIG. 1 is user interface display 16,
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`which provides a flexible interface to easily operate and edit variable
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`information for the dialer.” Id. at 53 (quoting Ex. 1006, 4:21–25; Ex. 1003,
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`97). Patent Owner does not challenge Petitioner’s assertion in this regard.
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`We conclude Petitioner has articulated sufficient reasoning with some
`
`rational underpinning to support the legal conclusion that its proffered
`
`combination of Harris and Kikinis would have been obvious to one of
`
`ordinary skill in the art. See KSR, 550 U.S. at 418.
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`3. Transfer/Control Limitations
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`For the transfer and control limitations, Petitioner relies on Harris’s
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`disclosure that when a user selects an icon, the telephone phone number
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`information associated with that contact information is sent wirelessly to a
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`telephone, which then automatically dials the number. See Pet. 61–63
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`(citing Ex. 1012, Abstract, 1:49–50, 2:10–22, 2:32–34, 4:3–6, Fig. 2); id.
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`at 74–75 (citing Ex. 1003, 98–99). Ba