IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD · fee specified by 37 C.F.R. §...

IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD In re Post-Grant Review of: ) ) U.S. Patent No. 8,098,600 B2 ) U.S. Class: 370/260 ) Issued: January 17, 2012 ) ) Inventor: Alex Kurganov ) ) Application No. 12/697,869 ) ) Filed: February 1, 2010 ) ) FILED ELECTRONICALLY For: COMPUTER, INTERNET AND ) PER 37 C.F.R. § 42.6(b)(1) TELECOMMUNICATIONS ) BASED NETWORK ) Mail Stop Patent Board Patent Trial and Appeal Board U.S.P.T.O. P.O. Box 1450 Alexandria, VA 22313-1450

PETITION FOR POST-GRANT REVIEW UNDER 35 U.S.C. § 321 AND § 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT

Pursuant to 35 U.S.C. § 321 and § 18 of the Leahy-Smith America Invents Act

(“AIA”) and pursuant to 37 C.F.R. § 42.300 et seq., PNC Bank NA and SunTrust Bank

(collectively “Petitioner”) hereby request post-grant review of claims 1-12 of U.S.

Patent No. 8,098,600 B2 (“the ’600 patent,” attached as Petition Exhibit 1001), now

purportedly assigned to Parus Holdings, Inc. (“Patent Owner”).

An electronic payment in the amount of $30,000.00 for the post-grant review

fee specified by 37 C.F.R. § 42.15(b)(1)–(4)—comprising the $12,000.00 request fee

Case CBM2015-00112 U.S. Patent No. 8,098,600

ii

and $18,000.00 post-institution fee—is being paid at the time of filing this petition. If

there are any additional fees due in connection with the filing of this paper, please

charge the required fees to deposit account no. 06-0916.


iii

TABLE OF CONTENTS

I. PRELIMINARY STATEMENT .................................................................. 1

II. MANDATORY NOTICES ........................................................................... 1

A. Real Party-in-Interest .............................................................................. 1

B. Related Matters ....................................................................................... 1

C. Lead and Back-Up Counsel and Service Information ............................. 2

III. OVERVIEW OF THE ’600 PATENT AND ITS PROSECUTION HISTORY ....................................................................................................... 2

A. The ’600 Patent ...................................................................................... 2

B. Challenged Claims .................................................................................. 4

C. Prosecution History ................................................................................ 5

IV. GROUNDS FOR STANDING..................................................................... 5

A. At Least One Challenged Claim Is Unpatentable .................................... 5

B. The ’600 Patent Is a Covered Business Method Patent ........................... 6

C. The ’600 Patent Is Not Directed to a “Technological Invention” ........... 9

1. The ’600 patent does not claim a novel, nonobvious technological feature .................................................................. 10

2. The ’600 patent does not solve a technical problem using a technical solution ....................................................................... 12

D. Petitioner Has Been Sued for Infringement of the ’600 Patent and Is Not Estopped ................................................................................... 13

V. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED ............................................................... 14

A. Claims for which Review is Requested .................................................. 14


iv

B. Statutory Grounds of Challenge ........................................................... 14

C. A Person of Ordinary Skill in the Art ................................................... 14

D. Claim Construction............................................................................... 14

1. “voice server” ............................................................................. 15

2. “web server” .............................................................................. 16

3. “database server”........................................................................ 16

4. “file server” ................................................................................ 17

5. “cluster” ..................................................................................... 17

VI. CLAIMS 1-12 OF THE ’600 PATENT ARE UNPATENTABLE .......... 18

A. Claims 1-12, Which Recite Nothing More Than The Mere Automation of Conventional Administrative Assistant Tasks, Are Invalid Under 35 U.S.C. § 101 .............................................................. 18

1. The ’600 patent teaches using a computer to automate the tasks of an administrative assistant ............................................. 19

2. Patents like the ’600 patent, which claim abstract ideas and nothing substantially more, are patent ineligible ......................... 22

3. The ’600 patent is invalid under § 101 because the claim limitations do not recite inventive subject matter, and instead merely recite longstanding business practices automated using general purpose computer components ........... 24

4. Because the ’600 patent claims nothing more than using general purpose computers to carry out administrative tasks traditionally performed by human assistants, the patent is invalid under § 101. .................................................................... 35

B. The Earliest Possible Priority Date for Claims 1-12 of the ’600 Patent is March 2, 1998 ........................................................................ 35

1. Applicant is not presumed to be entitled to the priority date of the ’056 provisional and bears the burden of production ........... 37


v

2. The ’056 provisional fails to disclose receiving and transmitting all types of “messages” over all types of “internet connection[s]” as recited in claims 1-12 of the ’600 patent ................................................................................. 37

3. The ’056 provisional fails to disclose “text-to-speech” functionality as claimed in claims 1-12 of the ’600 patent ........... 39

C. Claims 1-12 are Invalid Under 35 U.S.C. § 103 ..................................... 40

1. Rogers is Prior Art Under 35 U.S.C. § 102(a) ............................... 40

2. Putz is Prior Art Under 35 U.S.C. § 102(b) ................................. 41

3. Rogers in Combination with Putz Renders Claims 1-12 of the ’600 Patent Obvious ............................................................. 41

4. The Combination of Rogers and Putz Would Have Been Obvious ..................................................................................... 45

VII. CONCLUSION ............................................................................................ 80


vi

TABLE OF AUTHORITIES

Page(s)

Federal Cases

Accenture Global Serv., GMBH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) ........................................................................... 28, 30, 32

Alice Corp. Pty., Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) ................................................................................................. passim

In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ........................................................................................ 15

Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012), petition for cert. filed (Nov. 8, 2013) ............................ 23

buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) ........................................................................................ 32

C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004) .......................................................................................... 15

Cloud Satchel, LLC v. Amazon.com, Inc., Civil Action No. 1:13-cv-00041-SLR, 2014 WL 7227942 (D. Del. Dec. 18, 2014) .................................................................................................................... 28

Cogent Medicine, Inc. v. Elsevier, Inc., Civil Action No. 1:13-cv-04479-RMW, 2014 WL 4966326, . (N.D. Cal. Sept. 30, 2014) ............................................................................................................ 34

Comcast IP Holdings I, LLC v. Spring Comm. Co., LP, 2014 WL 3542055 (D. Del. July 16, 2014) ..................................................................... 30

Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 2013-1588, 2014 WL 7272219 (Fed. Cir. Dec. 23, 2014) ............................................ 34

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) ............................................................................ 31


vii

Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) ................................................................................. 13, 23

Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9-10 (P.T.A.B. Apr. 22, 2014) ........................................ 37 Fort Properties Inc. v. American Master Lease LLC,

671 F.3d 1317 (Fed. Cir. 2012) ................................................................................. 13, 23

In re Jones, 10 Fed. Appx. 822 (Fed. Cir. 2001) ................................................................................ 40

Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 10 at 7-8 (P.T.A.B. Jan. 25, 2013) ......................................... 10

Lizardtech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) ................................................................................. 36, 38

Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) ........................................................................... 36, 38, 40

Lumen View Tech., LLC v. Findthebest.com, Inc., Civil Action No. 1:13-cv-03599-DLC, 2013 WL 6164341 (S.D.N.Y. Nov. 22, 2013) .................................................................................................................... 24

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-98 (2012) ........................................................................ 22, 23, 30 MyMedicalRecords, Inc. v. Walgreens, Inc.,

Civil Action No. 2:13-cv-00631-ODW, 2014 U.S. Dist. LEXIS 176891 (C.D. Cal. Dec. 23, 2014), at 10 ......................................................................... 33

New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir. 2002) ................................................................................. 36, 39

Parus Holdings, Inc. v. PNC Bank, N.A., No. 1:14-cv-01428-SLR (D. Del.) ..................................................................................... 1

Parus Holdings, Inc. v. Sallie Mae Bank, et al., No. 1:14-cv-01427-SLR (D. Del.) ..................................................................................... 1

Parus Holdings, Inc. v. SunTrust Bank, et al., No. 1:14-cv-01429-SLR (D. Del.) ..................................................................................... 1


viii

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................................... 14

Polaris Wireless, Inc. v. Trueposition, Inc., IPR2013-00323, Paper 9 at 29 (P.T.A.B. Nov. 15, 2013) .......................................... 37

SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Paper 36 at 23 (P.T.A.B. Jan. 9, 2013) ........................................ 6, 9 Tenon & Groove, LLC v. Plusgrade S.E.C.,

Civil Action No. 1:12-cv-01118-GMS-SRF, 2015 WL 82531 (D. Del. Jan. 6, 2015) ........................................................................................................................ 33

Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) .......................................................................................... 31

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991) ........................................................................................ 36

Walker Digital, LLC v. Google, Inc., Civil Action No. 1:11-cv-00318-LPS, 2014 WL 4365245 (D. Del. Sept. 3, 2014) ...................................................................................................................... 28

Federal Statutes

35 U.S.C. § 101 ................................................................................................................... passim

35 U.S.C. § 102 .............................................................................................................. 1, 41, 42

35 U.S.C. § 103 ................................................................................................................... passim

35 U.S.C. § 112 ................................................................................................................... passim

35 U.S.C. § 119(e) .................................................................................................................... 36

35 U.S.C. § 321 ......................................................................................................................... 14

35 U.S.C. § 324(a) ............................................................................................................... 5, 80

Regulations

37 C.F.R. § 42.300(b) .............................................................................................................. 15

37 C.F.R. § 42.301 ................................................................................................................. 6, 9


ix

37 C.F.R. § 42.302(b) .............................................................................................................. 13

77 Fed. Reg. 48,734 (Aug. 14, 2012) ....................................................................................... 6

77 Fed. Reg. 48,736 (Aug. 14, 2012) ....................................................................................... 9

77 Fed. Reg. 48,756 (Aug. 14, 2012) ..................................................................................... 10

77 Fed. Reg. 48,764 (Aug. 14, 2012) ..................................................................................... 10

AIA § 18 .................................................................................................................................... 14

AIA § 18(d)(1) ........................................................................................................................ 6, 9

Other Authorities

157 Cong. Rec. S1365 (daily ed. March 8, 2011) .................................................................. 7


x

LIST OF EXHIBITS

Petition Exhibit 1001: U.S. Patent No. 8,098,600

Petition Exhibit 1002: Patent File History for U.S. Patent No. 8,098,600

Petition Exhibit 1003: Expert Declaration of Paul Clark

Petition Exhibit 1004: Patent File History for U.S. Provisional Application No. 60/040,056

Petition Exhibit 1005: Parus Holdings, Inc. v. PNC Bank, N.A., No. 1:14-cv-01428-UNA (D. Del.), Docket No. 1, Complaint For Patent Infringement (Nov. 21, 2014)

Petition Exhibit 1006: Parus Holdings, Inc. v. SunTrust Bank, et al., No. 1:14-cv-01429-UNA (D. Del.), Docket No. 1, Complaint For Patent Infringement (Nov. 21, 2014)

Petition Exhibit 1007: Parus Holdings, Inc. v. Sallie Mae Bank, et al., No. 1:14-cv-01427-UNA (D. Del.), Docket No. 1, Complaint For Patent Infringement (Nov. 21, 2014)

Petition Exhibit 1008: Harry Newton, Newton’s Telecom Dictionary: The Official Glossary of Telecommunications and Voice Processing Terms (1992)

Petition Exhibit 1009: International Publication No. WO 97/34401

Petition Exhibit 1010: Steve Putz, Interactive Information Services Using a World-Wide Web Hypertext (1992)


1

I. PRELIMINARY STATEMENT

The ’600 patent is directed to longstanding and fundamental business practices

and amounts to nothing more than the automation of these abstract ideas using

routine and conventional computer activity. Therefore, claims 1-12 of the ’600 patent

are eligible for CBM review and fail to pass muster under § 101. Indeed, the claims fail

to define an “inventive concept” that is not abstract and fail to recite “significantly

more” than an abstract idea. Moreover, the claims do not recite any novel and non-

obvious technology because the prior art cited in this Petition anticipates and/or

renders obvious claims of this patent under §§ 102 and/or 103.

II. MANDATORY NOTICES

A. Real Party-in-Interest

The real parties-in-interest are PNC Bank, National Association (a subsidiary

of The PNC Financial Services Group, Inc.) (“PNC”), and SunTrust Bank and

SunTrust Mortgage Inc. (a subsidiary of SunTrust Bank) (collectively “SunTrust”).

B. Related Matters

The lawsuit against PNC is captioned Parus Holdings, Inc. v. PNC Bank, N.A.,

No. 1:14-cv-01428 (D. Del.), see, e.g., ex. 1005 at 1-2, and the lawsuit against SunTrust

is captioned Parus Holdings, Inc. v. SunTrust Bank, et al., No. 1:14-cv-01429 (D. Del.), see,

e.g., ex. 1006 at 1-2. Besides the lawsuits against PNC and Suntrust, Parus also asserted

the ’600 patent in Parus Holdings, Inc. v. Sallie Mae Bank, et al., No. 1:14-cv-01427 (D.

Del.). See Ex. 1007.


2

C. Lead and Back-Up Counsel and Service Information

Lead Counsel - Lionel M. Lavenue, Reg. No. 46,859; Finnegan, Henderson,

Farabow, Garrett & Dunner, LLP, Two Freedom Square 11955 Freedom Drive

Reston, VA 20190-5675; Tel: 571.203.2750; Fax: 202.408.4400; E-mail:

[email protected].

Backup Counsel – Kara A. Specht, Reg. No. 69,560; Finnegan, Henderson,

Farabow, Garrett & Dunner, LLP, 3500 SunTrust Plaza, 303 Peachtree Street, N.E.,

Atlanta, GA 30308-3263; Tel: 404.653.6481; Fax: 404.653.6444; E-mail:

[email protected].

Backup Counsel – Guang-Yu Zhu, Reg. No. 66,250; Finnegan, Henderson,

Farabow, Garrett & Dunner, LLP, 901 New York Avenue N.W., Washington, DC

20001-4413; Tel: 202.408.4410; Fax: 202.408.4400; E-mail:

[email protected].

Service Information: Petitioner consents to service by e-mail at the following

address: [email protected].

III. OVERVIEW OF THE ’600 PATENT AND ITS PROSECUTION HISTORY

A. The ’600 Patent

The ’600 patent is directed to the use of general-purpose computers and

computer-related components to automate tasks routinely and conventionally

performed by humans in a business setting. See e.g., Ex. 1001 at 5:37-41;


3

5:37-41. The ’600 patent discloses a collection of known hardware and protocols

combined to automate business tasks, generally performed by a human administrative

assistant. Ex. 1001 at 6:1-2.

Further, as shown above in Fig. 3, the claims of the ’600 patent are directed to

longstanding business practices of managing business communications (such as

emails, voice mails, and faxes) and maintaining calendars and contacts lists—tasks

typically performed by administrative assistants. See Ex. 1001 at 2:38-41 (“[Those that]

do not have . . . the benefit of administrative support staff, may derive unique value

from this shared network solution.”). Each claim of the ’600 patent, focuses on the


4

automated tasks of (1) receiving messages via a phone or Internet connection and

then transmitting those messages to a subscriber by phone or Internet and (2)

receiving a message from a subscriber by phone or Internet and then forwarding that

message based on rules established by the subscriber. Id. at 7:45-10:9.

B. Challenged Claims

The ’600 patent includes 12 claims, three of which (claims 1, 5, and 9) are

independent. Petitioner requests cancellation of every claim. Representative

independent claim 1 recites as follows:1

1. A computer and telecommunications network for receiving,

sending and managing information from a subscriber to the

network and from the network to a subscriber comprising:

at least one cluster, said cluster containing at least one voice server,

said voice server containing telephony, speech recognition, text-

to-speech and conferencing functions, such that said subscriber

can access said cluster by a standard telephone connection or by a

internet connection;

at least one database server, said database server being connected to

said cluster and containing contact lists and administrative data,

such that said subscriber can manipulate and manage said data;

at least one file server, said file server being connected to said cluster;

and

1 Independent claims 5 and 9 recite methods for implementing the system of

independent claim 1, including the recited elements and functionality of claim 1.


5

a web server, said web server being connected to said cluster such

that said subscriber can access said network by connecting to said

web server via the internet;

wherein said network can receive a message from said telephone

connection or said internet connection and transmit said message

to said subscriber by said telephone or internet connection, and

said network can receive a message from said subscriber by

telephone connection or internet connection and transmit said

message by telephone connection or said internet connection

based on commands received from said subscriber.

C. Prosecution History

The application that issued as the ’600 patent was filed on February 1, 2010, as

a continuation of U.S. App. No. 10/877,366, filed on June 25, 2004 (now abandoned).

The abandoned ’366 application is a continuation of U.S. App. No. 09/033,335, filed

on March 2, 1998, which issued as U.S. Patent No. 6,775,264 (“the ’264 patent”) on

August 10, 2004. The ’264 patent is the nonprovisional of Provisional App. No.

60/040,056, attached as Exhibit 1004 (“the ’056 provisional”), which was filed on

March 3, 1997.

IV. GROUNDS FOR STANDING

A. At Least One Challenged Claim Is Unpatentable

As further detailed below, claims 1-12 of the ’600 patent are unpatentable

under at least 35 U.S.C. §§ 101 and 103. Thus, it is more likely than not that at least

one of the claims of the ’600 patent is unpatentable. 35 U.S.C. § 324(a).


6

B. The ’600 Patent Is a Covered Business Method Patent

The AIA defines a CBM patent as “a patent that claims a method or

corresponding apparatus for performing data processing or other operations used in

the practice, administration, or management of a financial product or service . . . .”

AIA § 18(d)(1); see also 37 C.F.R. § 42.301. The USPTO noted that the AIA’s

legislative history demonstrates that “financial product or service” should be

“interpreted broadly,” encompassing patents “claiming activities that are financial in

nature, incidental to a financial activity or complementary to a financial activity.” 77

Fed. Reg. 48,734, 48,735 (Aug. 14, 2012). This Board explained that, based on the

legislative history, “[t]he term financial is an adjective that simply means relating to

monetary matters.” SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Paper 36

at 23 (P.T.A.B. Jan. 9, 2013).

Patent Owner does not dispute that the claims cover financial services. Indeed,

Parus has sued only financial institutions and represented in district court litigations that

defendants’ online and mobile banking products infringe the ’600 patent. See, e.g., Ex.

1005 at 4-5; Ex. 1006 at 5; Ex. 1007 at 5. Parus cannot now deny that the ’600 patent

relates to a covered business method.2 Accordingly, each of claims 1-12 is directed to

2 [I]f a patent holder alleges that a financial product or service infringes its patent, that

patent shall be deemed to cover a ‘‘financial product or service’’ for purposes of this

amendment regardless of whether the asserted claims specifically reference the type of


7

a method or corresponding apparatus for sending and managing information from a

subscriber to a network used in the practice, administration, or management of a

financial product or service.

This is confirmed by the patent’s specification. In the “Background of the

Invention” section of the ’600 patent, the patent explains that the purpose of the

invention is to enable and facilitate business transactions from “almost anywhere.”

Ex. 1001 at 1:26-33. Notably, “business people seek to communicate with the other,

obtain useful information [and] interact commercially.” Id. (emphasis added).

Further the ’600 patent states that the “unified messaging service is designed to meet

these objectives by offering a single point of access to all communications, integrated

with personal information management tools and customized public content

delivery.” Id. at 2:33-36. The ’600 patent also discloses that part of “interacting

commercially” and providing “customized public content delivery” includes

“providing direct access to news, weather, sports, financial, travel, and other custom

content.” Id. at 7:26-29 (emphasis added).

The ’600 patent also discloses that the claimed components are used for

financial purposes. “Subscribers can use voice commands to (1) build, edit and

manage their contact lists, (ii) review, play back, read, reply to and/or reroute voice

product of service accused of infringing.” 157 Cong. Rec. S1365, (daily ed. March 8,

2011) (statement of Sen. Schumer).


8

mail and e-mail, (iii) schedule conference calls with 800 number access, and (iv)

maintain an itemized calling log with a running total of all charges.” Ex. 1001 at

6:10-14 (emphasis added). These voice commands used to maintain the “running total

of all charges” are processed by the claimed “voice server,” which is configured for

the necessary “speech recognition” functionality. Ex. 1001 at 7:49-50. Further, as can

be seen in Fig. 6 reproduced below, the Database Server (as recited in the challenged

claims) and corresponding to the above-noted portion of the specification contains

“billing info.” See Ex. 1001 at 7:54-57. The “billing info” shown in the Fig. 6 is

presumably related to the “itemized calling log with a running total of all charges” and

most likely, for billing the particular user for the listed charges. Ex. 1001 at Fig. 6;

6:10-14.


9

Accordingly, the patent describes using the claimed systems and methods in the

practice, administration, or management of a financial product or service, as it was

designed to be able to provide access to financial content, and custom content that

may include personal financial information (such as personal banking as is accused in

the various litigations filed by the Patent Owner).

C. The ’600 Patent Is Not Directed to a “Technological Invention”

The AIA excludes “patents for technological inventions” from the definition

of CBM patents. AIA § 18(d)(1). To determine whether a patent is for a technological

invention, “the following will be considered on a case-by-case basis: whether the

claimed subject matter as a whole recites a technological feature that is novel and

unobvious over the prior art; and solves a technical problem using a technical

solution.” 37 C.F.R. § 42.301. To institute a CBM post-grant review, a patent need only

have one claim directed to a covered business method that is not a technological

invention, even if the patent includes additional claims. 77 Fed. Reg. 48,736 (August

14, 2014); see also SAP, CBM2012-00001, at 26.

Importantly, a claim does not recite a technological invention merely by using

the following techniques: “(a) Mere recitation of known technologies, such as

computer hardware, communication or computer networks, software, memory,

computer-readable storage medium, scanners, display devices or databases, or

specialized machines, such as an ATM or point of sale device[;] (b) Reciting the use of

known prior art technology to accomplish a process or method, even if that process


10

or method is novel and non-obvious[; or] (c) Combining prior art structures to

achieve the normal, expected, or predictable result of that combination.” Office Trial

Practice Guide, 77 Fed. Reg. at 48,756, 48,764 (Aug. 14, 2012).

Because at least one claim of the ’600 patent fails to recite a novel and

nonobvious technological feature and fails to recite a technical solution to a technical

problem, the patent is not for a technological invention.

1. The ’600 patent does not claim a novel, nonobvious technological feature

Rather than reciting a novel and nonobvious technological feature that would

constitute a technological invention, the claims of the ’600 patent only recite basic,

well-known computing components and functions. Conventional and routine

hardware is not enough to render a patent a technological invention. See, e.g., Liberty

Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 10 at 7-8 (P.T.A.B. Jan.

25, 2013).

Basic and well-known computing components and functions appear

throughout the claims of the ’600 patent. Each of the independent claims of the ’600

patent merely recites generic servers connected to conventional telephone and

Internet networks, including various servers and networks. See e.g., Ex. 1001 at 7:44-

8:3 (reciting only the elements of servers and networks).

The patent itself describes the patented invention as a mere collection of

known hardware and software:


11

The present invention is a compilation of hardware and

software, including voice processing using Dialogic's SCSA

extended bus and board-level resources, Purespeech speech

recognition running on Dialogic Antares boards, and

database management using Sybase System 10 and 11.

Further, the system utilizes data networking, particularly

TCP/IP and distributed systems, object-oriented design

and programming, multi-processing with Intel hardware,

SCO UNIX and Solaris operation systems, Java and

JavaScript languages, US and international long distance

protocols, internet and web protocols, credit and payment

processing, a help desk, customer service system, and

network and service management.

For the voice and fax processing servers, the system relies

on Dialogic hardware, including, voice boards, Antares

cards (for speech recognition and fax) and digital switching

cards. The system also uses the SCSA extended bus. The

Purespeech ASR algorithms, which are used for speech

recognition, run on the Antares cards plugged into the

computers running the Solaris OS.

Ex. 1001 at 5:49-67. The ’600 patent, therefore, fails to recite a novel and nonobvious

technical feature, but rather “[t]he system combines state-of-the-art speech

recognition, computer and telephony technology.” Id. at 6:1-2.


12

2. The ’600 patent does not solve a technical problem using a technical solution

The challenged claims of the ’600 patent do not address a technical problem.

Although the patent describes several applications for its system, it provides no

explanation of a technical problem. For example, the patent merely states that the

system is intended facilitate success for “the mobile professional” by facilitating the

ability to “easily and quickly access, sort through and respond to the messages,” and

“to obtain information necessary to the conduct of business.” Ex. 1001 at 2:5-10.

Facilitating communication, in and of itself, is not providing a technical

solution to a technical problem. The patent merely provides a computerized method

for communicating using known computing technology (e.g., servers and networks)

and known communication devices (e.g., telephone, fax, email, etc.). It does not, nor

does it claim to, combine these generic components into a novel technical invention.

Rather, predictably, it uses computing components for computing, and “standard

communication device[s],” for communication. Ex. 1001 at 6:1-2; 2:19-22. Using

known technology for its ordinary purpose, is not a technical innovation.

The ’600 patent does not, nor could it claim to, provide new communication

methods. Rather, it merely facilitates known communication methods by performing

nontechnical methods implementing the conventional hardware, as confirmed by the

patent’s use of conventional and generic hardware to implement the claimed features.

Ex. 1001 at 5:49-67.


13

Additionally, simply using a computer to perform tasks previously done by

people, without specifying any unique or innovative aspect of the computers, is not a

technological solution sufficient to avoid review as a covered business method. See

Dealertrack Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (holding that the fact

that a computer might be “an obvious mechanism for permitting a solution to be

achieved more quickly—i.e., through the utilization of a computer for performing

calculations”—did not make an otherwise abstract claim patent-eligible, because the

computer does not “impose a meaningful limit on the scope of [the] claim.”); see also

Fort Properties Inc. v. American Master Lease LLC, 671 F.3d 1317, 1322, 1324 (Fed. Cir.

2012) (holding that a claim element requiring use of “a computer to ‘generate a

plurality of deed shares’” did not render abstract idea patentable, because the

“computer limitation [was] simply insignificant post-solution activity”). As in these

cases, here the ’600 patent is merely computerizing a known method for organizing

and facilitating known communication techniques, using conventional hardware.

D. Petitioner Has Been Sued for Infringement of the ’600 Patent and Is Not Estopped

Petitioner has been sued for infringement of “at least claim 1” of the ’600

patent. Ex. 1005 at 4; Ex. 1006 at 5. Petitioner is not estopped from challenging the

claims on the grounds identified in the petition. 37 C.F.R. § 42.302(b). Petitioner has

not been party to any other post-grant review of the challenged claims.


14

V. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED

A. Claims for which Review is Requested

Petitioner respectfully requests review under 35 U.S.C. § 321 and AIA § 18 of

claims 1-12 of the ’600 patent, and the cancellation of these claims as unpatentable.

B. Statutory Grounds of Challenge

Petitioner requests cancellation of claims 1-12 as unpatentable under 35 U.S.C.

§§ 103 and 101. The claim constructions, reasons for unpatentability, and specific

evidence supporting this request are detailed below.

C. A Person of Ordinary Skill in the Art

One of ordinary skill in the art in March 1997 (i.e., when the provisional

application leading to the ’600 patent was filed) would have had at least a Bachelor’s

of Science degree in computer science, electrical engineering, computer engineering,

or mathematics; knowledge of interactive voice response (“IVR”) and unified

messaging techniques; and 2-4 years of experience working with IVR and/or unified

messaging technologies or in a related field. Ex. 1003 at ¶ 26.

D. Claim Construction

Claim terms are given their ordinary and accustomed meaning as understood

by one of ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.

Cir. 2005) (en banc). A claim in an unexpired patent subject to post-grant review

receives the “broadest reasonable construction in light of the specification of the


15

patent in which it appears.” 37 C.F.R. § 42.300(b).3 Under these principles, the

following term from the claims of the ’600 patent requires construction for this post-

grant review proceeding. The broadest reasonable construction should also be applied

to any claim terms and phrases not specifically addressed below.

1. “voice server”

Independent claims 1, 5, and 9 recite a “voice server.” Ex. 1001 at 7:49; 8:21,

8:57. “voice server” should be construed as “hardware and/or software that allow for

Vtelephony functions.” In claim construction, courts examine the patent’s intrinsic

evidence to define the patented invention’s scope. See C.R. Bard, Inc. v. U.S. Surgical

Corp., 388 F.3d 858, 861 (Fed. Cir. 2004). “Voice server” is contextually used within

the specification as able to include “certain functions, such as telephony, automatic

speech recognition, text-to-speech . . . .” Ex. 1001 at 3:23-25. Additionally, “voice” is

contextually used within the specification to refer to a “normal telephone

connection.” Ex. 1001 at 3:32-34.

A “server” is generally understood in the art to mean “a computer providing a

service [which is] [u]sually a combination of hardware and software.” Ex. 1008 at 802.

3 Because this standard for claim construction differs from that used in district court

litigation, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004),

Petitioners expressly reserve the right to argue that certain terms should be construed

differently in district court litigation.


16

The broadest reasonable construction of “voice server” is “hardware and/or software

that allow for telephony functions.”

2. “web server”

Independent claims 1, 5, and 9 recite a “web server.” Ex. 1001 at 7:60; 8:32;

9:1. “Web server” should be construed as “hardware and/or software that support a

web protocol.” “Web server” is contextually used within the claim as allowing a

subscriber to “access said network by connecting to said web server via the Internet.”

Ex. 1001 at 7:60-62. Additionally, a “web server,” as used in the specification, is a

server “where the web access and services are located.” Ex. 1001 at 3:19-20. A

“server” is generally understood in the art to mean “a computer providing a service

[which is] [u]sually a combination of hardware and software.” Ex. 1008 at 802. The

broadest reasonable construction of “web server” is “hardware and/or software that

support a web protocol.”

3. “database server”

Independent claims 1, 5, and 9 recite a “database server.” Ex. 1001 at 7:54;

8:26; 8:62. “Database server” should be construed as “hardware and/or software that

support the use of structured data” “Database server” is contextually used within the

claim as “containing contact lists and administrative data.” Additionally, “database” is

generally understood in the art to mean a “collection of data structured and organized

in a disciplined fashion.” Ex. 1008 at 256. A “database server,” as used in the

specification, may be in the form of a “Sybase” database server, which includes both


17

hardware and software. Ex. 1001 at 3:19-20. Further, as discussed with reference to

“voice server,” a “server” is also generally understood in the art to mean “a computer

providing a service [which is] [u]sually a combination of hardware and software.” Ex.

1008 at 802. The broadest reasonable construction of a “database server” is

“hardware and/or software that support the use of structured data.”

4. “file server”

Independent claims 1, 5, and 9 recite a “file server.” Ex. 1001 at 7:58; 8:30;

8:66. “File server” should be construed as “hardware and/or software storing

accessible files.” The specification only indicates that the “file server” allows “the

subscriber to maintain and manage contact lists and administrative information” Ex.

1001 at Abstract. Additionally, “file server” is generally understood in the art to mean

a “a device which . . . allows everyone the network to get to files in a single place.” Ex.

1008 at 389. A “server” is generally understood in the art to mean “a computer

providing a service [which is] [u]sually a combination of hardware and software.” Ex.

1008 at 802. The broadest reasonable construction of a “file server” is “hardware

and/or software storing accessible files.”

5. “cluster”

Independent claims 1, 5, and 9 recite a “cluster.” Ex. 1001 at 7:45-8:3; 8:17-40;

8:53-9:9. “Cluster” should be construed as “a group of interconnected servers.” The

specification exemplifies a “cluster of servers,” as a plurality of servers. Id at 3:16-31.

A cluster is also referred to within each claim as “containing at least one voice server.”


18

Id. at 3:16-20. The broadest reasonable construction of “cluster” is “a group of

interconnected servers.”

VI. CLAIMS 1-12 OF THE ’600 PATENT ARE UNPATENTABLE

A. Claims 1-12, Which Recite Nothing More Than The Mere Automation of Conventional Administrative Assistant Tasks, Are Invalid Under 35 U.S.C. § 101

The ’600 patent claims nothing more than using general-purpose computers

and components to automate tasks routinely performed by humans in a business

setting. All of the claims of the ’600 patent are directed to longstanding business

practices of managing business communications (such as emails, voice mails, and

faxes) and maintaining calendars and contacts lists—tasks typically performed by

administrative assistants. Ex. 1003 at ¶¶ 20-21. Although the claims of the ’600 patent

include certain hardware components, these components amount to nothing more

than generic, off-the-shelf computer and computer-related components functioning in

their basic, routine, and expected way to automate conventional administrative

assistant tasks. Id. at ¶¶ 23-25. Indeed, the specification of the ’600 patent suggests

that small offices without dedicated administrative support staff may find value in the

described automated system. Ex. 1001 at 2:38-41.

The United States Supreme Court has recently confirmed that claims directed

merely to abstract ideas without an inventive concept sufficient to transform the

claimed abstract idea into something significantly more are not eligible for patenting.

Alice Corp. Pty., Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014). Here, the claims of


19

the ’600 patent are directed to the abstract concept of managing business

communications, and the addition of off-the-shelf general-purpose computer

components to automate conventional tasks associated with this concept fails to

confer patent eligibility under 35 U.S.C. § 101.

The claims here are directed to longstanding and fundamental business

practices and include nothing more than the automation of these abstract ideas using

routine and conventional computer activity. Therefore, Petitioner respectfully requests

that the Board hold each and every claim of the ’600 patent unpatentable.

1. The ’600 patent teaches using a computer to automate the tasks of an administrative assistant

Based on the specification, the claims of the ’600 patent teach using a computer

to automate tasks traditionally performed by a human administrative assistant,

particularly, tasks related to managing business communications. See e.g., Ex. 1001 at

2:47-51. According to the specification, professionals who do not have access to or

“the benefit of administrative support staff” would find the service disclosed in the

’600 patent useful because it uses a computer to perform the administrative functions

instead of a person. See id.

The ’600 patent only teaches the use of known, general-purpose computer

components to automate these tasks. For example, the system purportedly offers a

“single point of access to all communications” to facilitate management of personal

and business information “using any standard communication device.” Id. at 2:15-34.


20

In order to manage communications (including email, voice mail, or faxes) and

manage calendars and contacts lists, the ’600 patent teaches combining well-known

computer components to access the various communications via telephone or the

Internet. Id. at 3:10-25; 5:49-6:2; Ex. 1003 at ¶ 25. In fact, the specification of the ’600

patent admits that the system “combines [existing] state-of-the-art speech

recognition, computer, and telephony technology.” Ex. 1001 at 6:1-2 (emphasis

added). For instance, well-known software components, such as Purespeech speech

recognition software and Java and JavaScript programming languages, are used to

execute voice-recognition functionality. Id. at 5:49-60. In addition, well-known

hardware components such as Dialogic’s SCSA extended bus and board-level

resources, Sybase database management system, SCO UNIX and the Solaris operating

system are used to run the system. Id. In every aspect, the automated functionality is

provided by general-purpose computer components used in their known capacities to

provide expected functionality. Ex. 1003 at ¶¶ 23-25.

None of these components contributed to the allowance of the ’600 patent.

Notably, during prosecution, the Applicant characterized the distinguishing concept

not relative to any of the hardware components, but instead by focusing on the ability

to “send[] and transmit[] messages based on a subscriber’s commands.” See Ex. 1002

at 55 (Amendment and Reply to Feb. 14, 2011 Non-Final Office Action, p. 9); see also

id. at 75-94 (Feb. 14, 2011 Non-Final Office Action). The Applicant explained that:


21

Messages can be received by the system via either a

telephone or Internet connection, and then based on the

subscriber’s commands, the messages then can be

transmitted to the subscriber by either the telephone or

Internet connection. For example, if an incoming message

arrives through the telephone connection, the subscriber

can set up commands with the system such that the

incoming telephone message is transmitted to the

subscriber through, for instance, an Internet connection.

As another example, an incoming message arriving through

an Internet connection can be transmitted to a subscriber’s

cell phone through a telephone connection, based on

commands provided by the subscriber.

Id. at 55. Thus, according to the Applicant, the contribution of “the invention” was to

provide a user with the ability to set up administrative commands to allow

management of business communications using a telephone or Internet connection.

In other words, the ’600 patent provides a technique for automating, using a general

purpose computer system with off-the-shelf components, the management of a user’s

business communications—tasks that would otherwise be performed by a human

working in the role of an administrative assistant.

The claims do not save the ’600 patent from its general teachings of automating

administrative assistant tasks. Indeed, at its core, claim 1, the representative claim of

the ’600 patent, focuses on the automated tasks of (1) receiving messages via a phone

or Internet connection and then transmitting those messages to a subscriber by phone


22

or Internet and (2) receiving a message from a subscriber by phone or Internet and

then forwarding that message based on rules established by the subscriber. To

accomplish these tasks (traditionally performed by administrative staff), claim 1 recites

several general-purpose computer components, including: a voice server, a database

server, a file server, and a web server.

2. Patents like the ’600 patent, which claim abstract ideas and nothing substantially more, are patent ineligible

Patent claims directed to abstract ideas without reciting elements that add

“significantly more” are not patentable under Section 101. Alice, 134 S. Ct. at 2355

(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-98 (2012)).

Section 101 of the Patent Act sets forth four categories of subject matter that

are eligible for patent protection:

Whoever invents or discovers any new or useful process,

machine, manufacture, or composition of matter, or

any new or useful improvement thereof, may obtain a

patent therefore, subject to the conditions and

requirements of this title.

35 U.S.C. § 101 (emphasis added). However, the Supreme Court has “long held that

this provision contains an important implicit exception: laws of nature, natural

phenomena, and abstract ideas are not patentable.” Alice, 134 S. Ct. at 2354.

In Alice, the Supreme Court set forth a two-part framework for courts to follow

in determining patent eligibility under 35 U.S.C. § 101. Id. at 2355. First, a court must


23

determine whether the claims at issue are directed to an abstract idea, law of nature, or

natural phenomenon. If they are, the court must next “search[] for an ‘inventive

concept’ – i.e., an element or combination of elements that is ‘sufficient to ensure that

the patent in practice amounts to significantly more than a patent upon the [ineligible

concept] itself.’” Id. (quoting Mayo, 132 S. Ct. at 1294). If the court determines that the

remaining claim elements beyond the abstract idea do not provide “significantly

more,” then the patent must be held invalid for lack of patent-eligible subject matter

under Section 101. Alice, 134 S. Ct. at 2355.

Claiming “a generic computer cannot transform a patent-ineligible abstract idea

into a patent-eligible invention.” Alice, 134 S.Ct. at 2358. And, “[g]iven the ubiquity of

computers, wholly generic computer implementation is not generally the sort of

‘additional featur[e]’ that provides any “practical assurance that the process is more

than a drafting effort designed to monopolize the [abstract idea] itself.’” Id. The

Federal Circuit has also made clear that an abstract principle is not converted into

patent-eligible subject matter by simply tying the principle to a computer or computer

environment. See, e.g., Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012);

Fort Props., Inc. v. Am. Master Lease, LLC, 671 F.3d 1317, 1323 (Fed. Cir. 2012); Bancorp

Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.

2012) (“the use of a computer in an otherwise patent-ineligible process for no more

than its most basic function – making calculations or computations – fails to


24

circumvent the prohibition against patenting abstract ideas and mental processes”); see

also Lumen View Tech., LLC v. Findthebest.com, Inc., Civil Action No. 1:13-cv-03599-

DLC, 2013 WL 6164341, at *9 (S.D.N.Y. Nov. 22, 2013) (“[T]he application of

matchmaking to a computer context is not a ‘meaningful’ limitation that can save the

claim from invalidity.”).

3. The ’600 patent is invalid under § 101 because the claim limitations do not recite inventive subject matter, and instead merely recite longstanding business practices automated using general purpose computer components

Under the Alice two-part framework, none of the claims of the ’600 patent are

patent-eligible under 35 U.S.C. § 101. First, each of the claims of the ’600 patent

attempts to cover an abstract idea. Second, there is no additional “inventive concept”

that amounts to significantly more than the abstract idea to which the claims are

directed.

Step 1: The ’600 patent claims the abstract idea of a.managing business communications, a longstanding business practice that is itself not patent eligible

The claims of the ’600 patent are directed to the abstract idea of managing

business communications, a fundamental business practice regularly performed by

administrative assistants. Indeed, claim 1 of the ’600 patent, which is representative in

concept of all of its claims, focuses on the basic communication management tasks of

transmitting messages to a subscriber or distributing messages from a subscriber

based on rules established by the subscriber. These tasks, however, constitute


25

fundamental business practices regularly performed by human administrative

assistants. The following hypothetical illustrates the abstract idea of claim 1 of the

’600 patent in practice in a typical business setting.

Claim 1 of the ’600 patent The abstract idea of claim 1 in

practice in a traditional business setting

1. A computer and

telecommunications network for

receiving, sending and managing

information from a subscriber to

the network and from the network

to a subscriber comprising:

Ms. Smith (“S”) and her assistant,

Mr. Jones (“J”), communicate using

phone and email. S has granted J

with access to her phone line,

voicemail, and email. Thus, J

manages information that he

receives from S intended for others

and that he receives from others

intended for S.

at least one cluster, said cluster

containing at least one voice server,

said voice server containing

telephony, speech recognition,

text-to-speech and conferencing

functions, such that said subscriber

can access said cluster by a

standard telephone connection or

J recognizes commands and spoken

information that he receives from S,

and S can access J using standard

telephone connections or by an

Internet connection.


26



by an Internet connection;

at least one database server, said

database server being connected to

said cluster and containing contact

lists and administrative data, such

that said subscriber can manipulate

and manage said data;

J can access and maintain a

repository including S’s contact lists

and administrative data. S can have

J make changes to the data.

at least one file server, said file

server being connected to said

cluster; and

J has access to an electronic

database, a Rolodex, or filing

cabinet where he stores and

manages S’s contact lists and

administrative data.

a web server, said web server being

connected to said cluster such that

said subscriber can access said

network by connecting to said web

server via the Internet;

J has access to the Internet, and S

can communicate with J via the

Internet.

wherein said network can receive a

message from said telephone

connection or said Internet

connection and transmit said

message to said subscriber by said

J can receive a telephone or email

message intended for S and transmit

that message to S either by

telephone or via their Internet


27



telephone or Internet connection, connection.

and said network can receive a

message from said subscriber by

telephone connection or Internet

connection and transmit said

message by telephone connection

or said Internet connection based

on commands received from said

subscriber.

J can also receive, by telephone or

email, a message from S intended

for another and can transmit the

message by telephone or email to

the intended recipient based on

instructions from S.

The concept in claim 1 of managing business communications according to

predetermined rules is a longstanding and fundamental business practice. The

Supreme Court has emphasized “method[s] of organizing human activity” that have

long been practiced by people in a business setting constitute abstract ideas falling

squarely within the abstract idea exception of Section 101. Alice, 134 S. Ct. at 2356

(finding claims directed to the fundamental economic practice of intermediated

settlement long prevalent in our commerce system as constituting claims to an

abstract idea not eligible for patenting under Section 101). Indeed, it is apparent that

the claims are directed toward the abstract idea of managing business

communications.


28

Applying the rule of Alice, the Federal Circuit and district courts have found

claims similar to those of the ’600 patent as directed to patent ineligible abstract ideas.

See, e.g., Cloud Satchel, LLC v. Amazon.com, Inc., Civil Action No. 1:13-cv-00041-SLR,

2014 WL 7227942, at *7 (D. Del. Dec. 18, 2014) (finding the asserted patent claims

were directed to the abstract idea of cataloging documents in order to facilitate their

retrieval from storage); Walker Digital, LLC v. Google, Inc., Civil Action No. 1:11-cv-

00318-LPS, 2014 WL 4365245, at *7 (D. Del. Sept. 3, 2014) (finding the asserted

patent claims were directed to the abstract idea of “controlled exchange of

information about people”); Accenture Global Serv., GMBH v. Guidewire Software, Inc., 728

F.3d 1336, 1344 (Fed. Cir. 2013) (determining that the patent claims were directed

toward the abstract concept of “generating tasks to be performed in an insurance

organization”). In each of these cases, the claims at issue were directed to

longstanding, fundamental business practices regularly performed by humans, just like

the claims of the ’600 patent.

The ability to receive a communication, receiving such a communication, and

the ability to organize the communication based upon a rule is a “method of

organizing human activity” under Alice and its progeny. Thus, the above hypothetical

shows that the ’600 patent is directed toward the abstract concept of managing

business communications, and, accordingly, falls into the abstract idea exception.

Step 2: None of the claims of the ’600 patent includes b.an inventive concept sufficient to transform the claim


29

into “significantly more” than the patent ineligible abstract idea itself

Step 1 of the Alice framework reveals that all of the claims of the ’600 patent

are directed to the abstract idea of managing business communications. Step 2

requires a court to look for an “inventive concept” by “consider[ing] the elements of

each claim both individually and as an ordered combination to determine whether the

additional elements transform that nature of the claim into a patent-eligible

application.” Alice, 134 S. Ct. at 2356–57 (citations and internal quotation marks

omitted). The claims of the ’600 patent do not contain an “inventive concept”

sufficient to transform the abstract idea into patentable subject matter.

The claims of the ’600 patent add several elements, none of which confers

patent eligibility. These elements include: (1) information being sent and received

between a user (subscriber) and a “computer and telecommunications network,”

including via standard Internet protocols and standard DTMF dial tone lines; (2)

generic computer components, such as a “voice server,” “file server,” “database

server,” and a “web server;” and (3) communications being received, transmitted, and

organized “based on commands”4 from the user.

4 The ’600 patent claims use the term “based on commands.” As the specification

explains, the voice-recognition hardware and software are preferably selected from

among known off-the-shelf components. See, e.g., Ex. 1001 at 5:48-67.


30

For example, use of a general-purpose “computer and telecommunications

network” for sending information to and from a subscriber does not confer patent

eligibility to the claims of the ’600 patent. For example, in Alice, the Supreme Court

expressly held that mere “generic computer” implementation of method claims fails

to “transform the abstract idea into a patent-eligible invention.”5 Alice, 134 S. Ct. at

2359. At best, elements that allow the abstract idea to be automatically carried out by

a computer over a communications network like the Internet “do no more than

require a generic computer to perform generic computer functions.” Id.

Several courts have also invalidated claims with a limitation similar to

“telecommunications network.” In one case, a patentee argued that “the claims cover

methods performed by a device in a telephony network, not a human,” and that “[t]he

claims do not simply recite making a conditional decision, but are narrowly directed to

overcoming a specific problem of telephony networks by using telephony parameters

to optimize bandwidth allocation on such networks.” Comcast IP Holdings I, LLC v.

Spring Comm. Co., LP, 2014 WL 3542055, at *3 (D. Del. July 16, 2014). The Court

recognized, however, that “even assuming that the claimed method must take place

5 In Accenture, the court instructed that when system claims and method claims

“contain only minor differences in terminology [but] require performance of the same

basic process, they should rise or fall together.” Accenture, 728 F.3d at 1344 (citing

Mayo, 132 S.Ct. at 1294 (internal citations omitted)).


31

on a computerized telephony network, and a computer is the one that makes the

decision, the claim is still not patentable,” as it “merely covers the application of what

has for a long time been conducted solely in the mind to modern, computerized,

telephony networks.” Id. *5. The Federal Circuit has also held that “the Internet is not

sufficient to save the patent” from ineligibility because the Internet is a “ubiquitous

information-transmitting medium, not a novel machine.” Ultramercial, Inc. v. Hulu,

LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (citing CyberSource Corp. v. Retail Decisions, Inc.,

654 F.3d 1366, 1370 (Fed. Cir. 2011)).

In the claims of the ’600 patent, the use of a generic communications network

(including standard telephone line and Internet connections) to carry email and voice

communications is insufficient to transform the claimed abstract idea into patentable

subject matter. Moreover, the limitations in several of the claims that require

traditional DTMF signals and Internet protocols (as shown in the section below) also

fail to confer patent eligibility. None of these generic limitations constitutes an

inventive concept, and none does any more than automate the longstanding

communication management practices of traditional administrative assistants in a

known and expected way.

Transmitting Data (Using Internet/Network/Internet Protocol/DTMF Signal/ Electronic Communication Device): Claims 1, 3, 4, 5, 7, 8, 9, 11

The Federal Circuit has held that “a computer [that] receives and sends the

information over a network—with no further specification—is not even arguably


32

inventive,” nor is a “computer[] receiving and sending information over networks to

connect one intermediary to the other institutions involved.” buySAFE, Inc. v. Google,

Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (internal citations and quotations omitted).

Thus, the recitation of a telecommunication network is insufficient to confer

patentability.

Moreover, generic computer components, such as a “voice server,” “file

server,” “database server,” and a “web server,” do not confer patent eligibility. A

primary thrust of the ’600 patent is to automate the tasks typically performed by

administrative assistants. See Ex 1001 at 5:37-41. As claimed in the ’600 patent, this

automation is accomplished using a generic “voice server,” “file server,” “database

server,” and “web server.” The section below identifies the claims of the ’600 patent

where these components are recited.

Server (e.g., Voice, Database, File, Web): Claims 1, 5, 9

None of these generic computer components (which are all used in their

known and expected way to automate the abstract idea of the claims) confers patent

eligibility. See Accenture, 728 F.3d at 1344-46 (finding that recitations of a “data

component,” “data cache,” “insurance transaction database,” a “task library,” a “client

component,” a “server component,” and an “event processor” did not confer patent

eligibility to claims directed to the abstract concept of “generating tasks to be

performed in an insurance organization”). Similar to Accenture, the specification


33

explains that the recited hardware components are off-the-shelf components (the

specification identifies name brands and model numbers) that are merely combined

and used to automate a process long performed and used by administrative assistants.

See, e.g., Ex. 1001 at 5:48-67 (describing the use of off-the-shelf hardware and software

components). Despite the number of computer components listed in the claims, those

computer components are used for their basic functions, and thus, they are not

sufficiently inventive to transform the claimed abstract idea into patentable subject

matter. See also MyMedicalRecords, Inc. v. Walgreens, Inc., Civil Action No. 2:13-cv-00631-

ODW (SHx), 2014 U.S. Dist. LEXIS 176891 (C.D. Cal. Dec. 23, 2014), at 10

(“routine, conventional functions of a computer and server” held insufficient to

confer patent eligibility to the abstract idea of records management and access); Tenon

& Groove, LLC v. Plusgrade S.E.C., Civil Action No. 1:12-cv-01118-GMS-SRF, 2015

WL 82531, at *7-8 (D. Del. Jan. 6, 2015) (finding claims directed to the abstract idea

of facilitating customer purchases of upgrades to airline reservations were not saved

by mere recitation of various computer components).

Similarly, receiving, transmitting, and organizing communications through

automated user commands does not add an inventive concept sufficient to confer

patent eligibility. Several of the claims of the ’600 patent (as shown in the section

below) recite additional elements directed to the transmission or organization of

communications based on commands from a subscriber relating to phone calls, faxes,


34

emails, voicemail, calendars, and contacts. None of these elements, however, confers

patent eligibility to the claims.

Transmitting/Organizing Communications Based on Commands (e.g., Phone Calls, Faxes, Emails, Voicemail, Calendars, Contact Lists):

Claims: 2, 4, 6, 8, 10, 12

Courts following Alice have concluded that claim elements recited merely for

the purpose of automating what was previously done by assistants fails to transform

an abstract idea into patentable subject matter. For example, claims directed to the

abstract idea of maintaining and searching a library of information were found to be

invalid because “using a computer to identify and supply new medical literature

merely automates what was previously done manually by assistants or librarians,” and

thus the computer involvement alone was insufficient to transform an unpatentable

abstract idea into patentable subject matter. Cogent Medicine, Inc. v. Elsevier, Inc., Civil

Action No. 1:13-cv-04479-RMW, 2014 WL 4966326, at *5-6. (N.D. Cal. Sept. 30,

2014); see also Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 2013-

1588, 2014 WL 7272219 (Fed. Cir. Dec. 23, 2014) (affirming invalidation of patent

claims directed to data collection, recognition, and storage because “humans have

always performed these functions,” and the generic hardware components did not add

significantly more to turn the abstract idea into patentable subject matter).

Similarly here, using a computer to automate the management of business

communications, such as emails, phone calls, and faxes (a longstanding practice of


35

human administrative assistants), is insufficient to transform the abstract idea of the

claims of the ’600 patent into patentable subject matter.

4. Because the ’600 patent claims nothing more than using general purpose computers to carry out administrative tasks traditionally performed by human assistants, the patent is invalid under § 101.

The ’600 patent claims unpatentable subject matter. The claims of the ’600

patent are directed to the abstract idea and routine business practice of managing

business communications by setting up rules on how to access and reply to emails,

voice mails, and faxes, as well as maintaining calendars and contact lists. Furthermore,

the claims do not contain an inventive concept sufficient to transform the claimed

abstract idea into patentable subject matter. At best, the claims merely require using a

computer to do what computers do—store data and process information based on

rules or programming—to automate the administrative activities of managing business

communications. These are tasks that have historically been performed in a business

environment by human assistants. The patent claims recite the mere use of off-the-

shelf components and the performance of tasks over a generic communications

network. Thus, the claims of the ’600 patent are invalid under 35 U.S.C. § 101.

B. The Earliest Possible Priority Date for Claims 1-12 of the ’600 Patent is March 2, 1998

The claims of the ’600 patent are entitled to a priority date no earlier than

March 2, 1998, because the disclosure of the ’056 provisional fails to provide adequate

written disclosure support for the “invention” claimed in claims 1-12 of the ’600


36

patent and fails to describe the manner and process of making and using the invention

needed to enable the full scope of the claims.

A claim in a U.S. non-provisional application only receives the benefit of the

filing date of a provisional application only if the earlier filed provisional application

discloses the subject matter of that claim in the manner provided by 35 U.S.C. § 112,

¶ 1. 35 U.S.C. § 119(e); see e.g., New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d

1290, 1294 (Fed. Cir. 2002); see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-

72 (Fed. Cir. 1997); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561-1564 (Fed. Cir.

1991). To comply with 35 U.S.C. § 112, ¶ 1, the specification “must describe the

manner and process of making and using the invention so as to enable” the full scope

of the invention and “must describe the invention sufficiently to convey . . . that the

patentee had possession of the claimed invention at the time of the application.” See

Lizardtech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005).

The continuation application that issued as the ’600 patent claimed priority to

two parent non-provisional applications, the earliest of which was filed on March 2,

1998, and the ’056 provisional, filed on March 3, 1997 (discussed above). The ’056

provisional contains a wholly different disclosure from the non-provisional

application. It is limited to a less than two-and-a-half page “preliminary product

specification,” a single page list of components, and 139 pages of incomplete source

code. Ex. 1003 at ¶ 38. The wholly different disclosure of the ’056 provisional fails to


37

confer priority to the ’600 patent because it fails to disclose the “invention” claimed in

the ’600 patent in a manner that complies with 35 U.S.C. § 112, ¶ 1.

1. Applicant is not presumed to be entitled to the priority date of the ’056 provisional and bears the burden of production

A “Patent Owner is not presumed to be entitled to the earlier filing dates of

ancestral applications which do not share the same disclosure.” Polaris Wireless, Inc. v.

Trueposition, Inc., IPR2013-00323, Paper 9 at 29 (P.T.A.B. Nov. 15, 2013). Instead, the

Patent Owner must “make a sufficient showing of entitlement to earlier filing date or

dates, in a manner that is commensurate in scope with the specific points and

contentions raised” after the Petitioner raises the issue in its petition. See id.; see also

Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9-10 (P.T.A.B. Apr. 22,

2014).

2. The ’056 provisional fails to disclose receiving and transmitting all types of “messages” over all types of “internet connection[s]” as recited in claims 1-12 of the ’600 patent

The ’056 provisional further fails to disclose the “full scope” of the

functionality claimed in claims 1-12 of the ’600 patent. Specifically, the ’056

provisional fails to disclose receiving and transmitting all types of “messages,”

regardless of the type of message received or transmitted, and fails to disclose

receiving and transmitting messages over an all types of “internet connection[s].”

The features described within the preliminary product specification and source

code of the ’056 provisional describe only a few specific message types that can be


38

received and transmitted by both telephone and Internet and only in a few specific

scenarios. For example, the only type of Internet connection described in the ’056

provisional is a connection to a “web site.” Ex. 1004 at 3-5. Yet the claims of the ’600

patent purports to claim systems and methods that receive and transmit messages

over an “internet connection” generally, regardless of the type of internet protocol

used. See e.g., Ex. 1001 at 7:63-8:3. As another example, the ’056 provisional describes

just a few message types, including email, voicemail, and communications through a

handset or website. See Ex. 1003 at ¶ 40. Yet the ’600 patent claims purports to cover

“message[s]” generally, regardless of the type of message received or transmitted. See

e.g.,, Ex. 1001 at 7:63-8:3. Thus the ’056 provisional fails to disclose the full scope of

the broad claims in the ’600 patent. See Lizardtech, Inc. v. Earth Resource Mapping, Inc.,

424 F.3d 1336, 1346 (“[A] patentee cannot always satisfy the requirements of section

112, in supporting expansive claim language, merely by clearly describing one

embodiment of the thing claimed”).

Thus, the ’056 provisional fails to disclose the full scope of claims 1-12 of the

’600 patent, because it fails to disclose receiving and transmitting all types of messages

through the telephone and Internet in general, regardless of the type of Internet

protocol used. See Ex. 1003 at ¶ 40; Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-

72 (Fed. Cir. 1997) (“It is the disclosures of the applications that count. Entitlement

to a filing date does not extend to subject matter which is not disclosed, but would be


39

obvious over what is expressly disclosed. It extends only to that which is disclosed.”).

Accordingly, the ’600 patent is not entitled to the priority date of the ’056 provisional.

See New Railhead, 298 F.3d at 1294 (“the specification of the provisional must ‘contain a

written description of the invention and the manner and process of making and using

it, in such full, clear, concise, and exact terms,’ 35 U.S.C. § 112 ¶ 1, to enable an

ordinarily skilled artisan to practice the invention claimed in the non-provisional

application”).

3. The ’056 provisional fails to disclose “text-to-speech” functionality as claimed in claims 1-12 of the ’600 patent

Each of claims 1-12 in the ’600 patent requires “text-to-speech” functionality

For example, claim 1 recites “at least one cluster, said cluster containing at least one

voice server, said voice server containing . . . text-to-speech and conferencing

functions.” Ex. 1001 at 7:48-51 (emphasis added). But the ’056 provisional fails to

disclose this feature or how to implement it. The “preliminary product specification”

in the ’056 provisional contains a list of purported features for a system, none of

which necessarily involve text-to-speech functionality. See Ex. 1003 at ¶ 39; Ex. 1004

at 3-5.

Indeed, at most the preliminary product specification discloses is that “email

may be read from a handset.” Ex. 1004 at 3 (emphasis added). This statement alone

does not necessarily convey to a person of ordinary skill in the art that the inventors

possessed a system with text-to-speech functionality. Ex. 1003 at ¶ 39. Indeed, the


40

preliminary product specification provides no additional disclosure about how a user

may “read” an email from a handset, whether such reading is done in conjunction

with a screen, and what information the system sends to the user. Ex. 1004 at 3-5.

The remainder of the ’056 provisional is devoid of any disclosure describing text-to-

speech functionality or describing how to implement such functionality. Ex. 1003 at

¶ 39. Such disclosure is required for the ’056 provisional to confer priority to claims 1-

12 of the ’600 patent. See In re Jones, 10 Fed. Appx. 822, 828 (Fed. Cir. 2001) (The

“written description requirement is not satisfied if the disclosure would lead one to

speculate as to ‘modifications that the inventor might have envisioned, but failed to

disclose.’”) (citing Lockwood, 107 F.3d at 1572). Thus, a person of ordinary skill, having

read the ’056 provisional, would not have necessarily understood the Applicant to

have possessed an invention that included text-to-speech functionality, as recited in

each of the claims. See Ex. 1003 at ¶ 39.

Accordingly, the claims of the ’600 patent are not entitled to the priority date of

the ’056 provisional, because the specification of the ’056 provisional fails to disclose

text-to-speech functionality, as claimed in claims 1-12 of the ’600 patent.

C. Claims 1-12 are Invalid Under 35 U.S.C. § 103

1. Rogers is Prior Art Under 35 U.S.C. § 102(a)

International Publication No. WO 97/34401 (Ex. 1009, “Rogers”) published on

September 18, 1997. Because claims 1-12 of the ’600 patent are not entitled to the


41

priority date of the provisional application, Rogers published before the earliest priority

date of the ’600 patent, making it prior art under 35 U.S.C. § 102(a).

2. Putz is Prior Art Under 35 U.S.C. § 102(b)

Interactive Information Services Using World-Wide Web Hypertext (Ex. 1010,

“Putz”) published on April 20, 1992. Because claims 1-12 of the ’600 patent are not

entitled to the priority date of the provisional application, Putz published more than

one year before the earliest priority date of the ’600 patent, making it prior art under

35 U.S.C. § 102(b).

3. Rogers in Combination with Putz Renders Claims 1-12 of the ’600 Patent Obvious

Rogers discloses a call management system. Ex. 1009 at Abstract. An exemplary

embodiment of the system is shown in Figure 1 of the reference:


42

As shown in Fig. 6, the system in Rogers includes at least two user workstations

computers 114A, 114P, each of which is connected to at least one call management

computer 101. The call management computer is configured to control handling of

incoming calls so as to direct the calls according to the instructions of the users. Ex.

1009 at Abstract, 13:4-6. A user submits instructions from their workstation computer

114, which instructs the call management computer 101 how to handle incoming calls.

Id. at 122:17-20. The call management computer receives calls and data signals via

either the Internet or via the public switched telephone network. Id. at 13:18-21.


43

Rogers also provides additional ‘special functions’ as required for each specific

system, including “voice recognition, text-to-speech, etc.” Ex. 1009 at 42:23-25. The

call management computer 101 also provides a notification system, for notifying the

user when a fax, email, call, etc. is received for the particular user, and the

notifications may be handled through separate network or switch system from that

over which the message has been received. Id. at 18:5-10.

The user is also able to manage and control a directory as shown in Fig. 6d.

The user may transfer a call into a contact number in the directory. Id. at 71:15-16.

The directory is also maintained and managed by the user though functions, “new”

583, “delete” 584, and “edit” 585. Id. at 76:13-15.

One of skill in the art would understand the functionality and implementation

described in Rogers to teach a “database server,” ex. 1003 at ¶¶ 49, 65, 79, and a “file


44

server.” One of skill in the art would further understand Rogers to teach “utilizing said

contact list to place telephone calls, send email, voice-mail and faxes, and create or

modify conference calls.” For example, and as cited in the above charts, Rogers teaches

that the “user may originate a call at any time . . . by opening the ‘Directory’ described

above, selecting an entry and clicking ‘Call’.” Ex. 1009 at 77:22-26. Rogers also teaches

that “Fax and data transmission of documents/files created at the desktop computer

. . . can be transmitted . . . to one or more recipients in the Call Management System

directory or to numbers typed in by the user and with specified retry attempts. Ex.

1009 at 99:1-8. Lastly, Rogers teaches that the “directory is used . . . for routing calls

VIP rules, originating calls 688, . . .transferring and conferencing calls, . . . and many

other things.” Ex. 1009 at 77:11-15. Based on these quoted disclosures from Rogers,

one of skill in the art would understand that the directory of Rogers may be utilized to

initiate each of the user-actions disclosed in Rogers, including the claimed “place

telephone calls, send e-mails, voice-mail and faxes, and create or modify conference

calls,” as claimed in the ’600 patent.

To the extent that Rogers fails to disclose a “web server” as recited in the claims,

Putz discloses this feature. Putz discloses an “information retrieval” system configured

to allow a user to access and retrieve information via the World-Wide-Web with use

of an “http server” or a “world wide web server,” as shown in the figure reproduced

below.


45

The system of Putz teaches that a “client program communicates with a remote

server program using the HTTP protocol, requesting some information using a URL”

and “[t]he server responds with the requested information encoded as an HTML

document.” Ex. 1010 at 2. Specifically, Putz indicates that “[m]ost HTTP servers

operate as a hypertext file server, providing access to stored HTML and text

documents.” Id. The “HTTP server” of Putz, therefore, discloses a “web server,” as

recited in the challenged claims, as it discloses an HTTP server for accessing

information on the Internet using a web protocol. See Id. at 2.

4. The Combination of Rogers and Putz Would Have Been Obvious

It would have been obvious to one skilled in the art at the time of the alleged

invention of the ’600 patent to combine the teachings of Rogers and Putz. Ex. 1003 at

¶¶ 50, 66, 81. Rogers teaches, suggests, and motivates this combination, as it teaches

connecting to Internet without specifically noting accessing the World-Wide-Web or

any web protocols. For example, Rogers discloses a “work-at-home system user with

workstation connected via the Internet . . .” Ex. 1009 at 13:18-19. Rogers further


46

discloses a “traveling employee with a workstation or laptop computer 114p attached

remotely via the Internet . . . .” Id. at 14:19-20. Rogers also discloses a number of LAN

server computers connected to the call management computer that provide email,

voice mail, database, Internet access, and “other services.” Id. at 18:11-26. Putz

recognizes the advantage of web servers which can “provide more than simple

document browsing and retrieval” and allow access using “generic browsers” rather

than special purpose software. Ex. 1010 at 2. One skilled in the art at the time of the

invention, would have understood that one manner of accessing the Internet, as

described in Rogers, is via the World-Wide-Web and a web server, as taught by Putz.

Ex. 1003 at ¶ 50. Further, one of ordinary skill in the art at the time would have found

it obvious to combine the call management system of Rogers with the web server of

Putz to allow traveling employees with a workstation or laptop computer to manage

their calls through a web server, as doing so would allow the traveling employee to

access the call management system with only a web browser. Ex. 1003 at ¶ 50.

Therefore, it would have been obvious to combine the web-based disclosure of Putz

including its “web server” with the call management system of Rogers.

As further detailed below,6 Rogers in combination with Putz, disclose all

elements of claims 1-12 of the ’600 patent.

6 All emphasis in the claim charts in this petition is added unless otherwise noted.


47

Claim Exemplary Disclosure of Rogers and Putz 1. [1.0] A computer and telecommunications network for receiving, sending and managing information from a subscriber to the network and from the network to a subscriber comprising:

Rogers discloses a call management system operating on a digital network (the claimed “computer and telecommunications network”) for managing the calls (the claimed “receiving, sending, and managing information”) of users (the claimed “subscriber”), the calls being from the user to the call management system (the claimed “from a subscriber to the network and from the network to a subscriber”). Ex. 1009 at Abstract; 13:3-18.

“A Call Management System (99) provides for management of calls directly by system users (106A or 106P) at their workstation computers (114A or 114P) via a digital data network (125) such as a digital network not controlled via the user's telephone instruments (106A or 106P) as in prior systems.” Id. Abstract. “Fig. 1 is an overall block diagram of one embodiment of the improved Call Management System, in which call control is provided by the user through a networked workstation computer, not a conventional telephone instrument. Fig. 1 shows the organization's environment with its Local Area Network and/or Wide Area Network (LAN/WAN), an on-site system user with a LAN/WAN based workstation, a PBX or similar switch, voice mail and a call management computer. . . . The organization's calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider's central office and the organization's PBX or other switch (or as its replacement).” Id. at 13:3-18.


48

Claim Exemplary Disclosure of Rogers and Putz

[1.1] at least one cluster, said cluster containing at least one voice server, said voice server containing

Rogers discloses one or more networks which interconnect the workstation computers with information servers, communications and computing devices (the claimed “cluster”) connected to a call management computer (the claimed “voice server”). Id. at 13:3-18.

“The focus of computer technology has become the desktop workstation computer attached to one or more business enterprise-wide, high-speed digital networks which interconnect the workstation computers of business enterprise’s employees with a variety of information servers, communications and computing devices.” Id. at 1:25-2:2. “The configuration of the call management computer 101 with individual interface boards 203, circuit switches 204, DSP processors 208 and the high-speed buses 210 provide means for real-time sensing, switching and management of calls.” Id. at 17:20-24.

[1.2] telephony, speech

Rogers discloses that the call management computer has real-time sensing, switching, and management of calls (the claimed


49

Claim Exemplary Disclosure of Rogers and Putz recognition, text-to-speech and conferencing functions,

“telephony”) voice recognition (the claimed “speech recognition”) text-to-speech and conference calls (the claimed “text-to-speech and conference functions”). Id. at 17:20-24; 42:23-25; 30:14-16.

“Trunk interfaces 203, 206, circuit switches 204 and DSP digital signal processors 208 interact with and control the CO and PBX trunks under the overall control of the call management computer 101” Id. at 17:9-13. “The configuration of the call management computer 101 with individual interface boards 203, circuit switches 204, DSP processors 208 and the high-speed buses 210 provide means for real-time sensing, switching and management of calls.” Id. at 17:20-24. “‘Special function’ DSPs provide special functions as required for each specific system e.g. voice recognition, text-to-speech, etc.” Id. at 42:23-25. “The Call Management System can conference calls independent of whether the parties are directly coupled to the PBX or are accessed via the central office 103.”) Id. at 30:14-16. “As each called system user ‘Answers’ the Conference call, the call management computer 101, 201 creates a new voice path 121 as appropriate, instructs the appropriate circuit switches 204 to connect the voice paths together to the assigned DSP 208, and instructs the DSPs to combine the signals appropriately to create a conference call.” Id. at 30:26 –31:3.

[1.3] such that said subscriber can access said cluster by a standard telephone connection or by an Internet connection;

Rogers discloses that a system user (the claimed “subscriber”) can access the call management system (part of the claimed “cluster”) through plain old telephone service or through the Internet (the claimed “telephone connection or by Internet connection”). Id. at 34:19-24; 35:9-12; 18:18-16.

“One significant advantage of the Call Management System is that it provides system users the many unique features and functions described here while requiring nothing more than plain old telephone services (POTS) telephones or headsets instead of expensive multi-button proprietary business telephone instruments.” Id. at 34:19-24.


50

Claim Exemplary Disclosure of Rogers and Putz “When a call is put through to a system user, the call management computer 101 creates a reusable “voice pathway” 121 to the called party either an in-house user 113 or an external user 111.” Id. at 35:9-12. “The call management computer 101 attaches to the organization’s digital data network including a LAN as well as Internet and/or other external WAN networks such as Internet via interfaces 209, 213, and 214, through which it has immediate access to the user workstations, whether in-the office 113 or at the site of a remote user 111”). Id. at 18:18-16.

[1.4] at least one database server, said database server being connected to said cluster and containing contact lists and

Rogers discloses call management databases (the claimed “database server”) that the call management system utilizes (the claimed “connected to said cluster”) that contain phone directories (the claimed “contact lists”) and system and user configurations (the claimed “administrative data”) that the user can update, correct, or add to (the claimed “manipulate and manage said data”). Id. at 18:27-19:5; 60:16-19; 85:19-23.


51

Claim Exemplary Disclosure of Rogers and Putz administrative data, such that said subscriber can manipulate and manage said data;

“The call management system 101 utilizes a variety of interactive call management databases 215 . . . These on-line, real-time databases 215 may reside on the call management computer 101 itself or elsewhere on the digital network, e.g., on a LAN-based database server 110.” Id. at 18:11-12. “The call management computer 101 attaches to the organization’s digital data network including a LAN.” Id. at 18:27-19:8. “The call management system 101 utilizes a variety of interactive call management databases 215 for functions including: system and user configurations, primary and secondary caller identifications and voice caller identification, YIP rules, phone directories, Fax and data file storage, voice messaging storage, user-accessible call logs and many other functions.” Id. at 18:27-19:5. “A system user can select the "Record" function for any call currently active. The "Record" messages are relayed via the call management window 115 and sent via the organization's digital network(s) 109 to the call management computer 101 which instructs the assigned DSP 208 to record the call content, sending it to the call management computer 101 which saves it to the Call Management Databases 215 for future replay.” Id. at 32:4-11. “Identification of a calling party, e.g., party 118, from the calling party's telephone or PIN number or other entries is accomplished with two Caller ID Databases which are part of the overall Call Management Databases 215. A Primary Caller ID Database is dynamic and continuously updating. Id. at 58:12-17. “With or without a call present, the called party 111 or 113 may use the workstation call control window 115 to update or correct the Primary Caller ID Database for a caller, or add a new caller to the database.” Id. at 60:16-19. “VIP call handling rules for each user are maintained by the call management computer 101, 201 as part of the call management databases 215 and are dynamically changeable by and for each user, except for corporate-wide rules.” Id. at 85:19-23.


52

Claim Exemplary Disclosure of Rogers and Putz [1.5] at least one file server, said file server being connected to said cluster; and

Rogers discloses a variety of call management databases (the claimed “file server”) that the call management system utilizes (the claimed “connected to said cluster”). Id. at 18:27–19:8.7

“The call management system 101 utilizes a variety of interactive call management databases 215 for functions including: . . . data file storage . . . . These on-line, real-time databases 215 may reside on the call management computer 101 itself or elsewhere on the digital network, e.g., on a LAN-based database server 110.” Id. at 18:27-19:8.

[1.6] a web server, said web server being connected to said cluster such that said subscriber can access said network by connecting to said web server via the Internet;

Rogers discloses a work-at-home system user with a workstation connected to the call management system (part of the claimed “cluster”) via the Internet. Id. at 13:14-22; 14:15-21. Rogers discloses LAN server computers that are connected to the call management computer (part of the claimed “cluster”). Id. at 18:11-26.

“The organization’s calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider’s central office and the organization’s PBX or other switch (or as its replacement). Also shown are work-at-home system user with workstation connected via the Internet, a voice caller at a pay phone as well as Fax and data callers all connecting through the public switched telephone network.” Id. at 13:14-22 “In Fig. 1, two different types of system users are shown, the first is an in-house user 113 associated with workstation 114a and telephone instrument 106a while a second user is a work-at-home or traveling employee with a workstation or laptop

7 A person of ordinary skill in the art would understand that Rogers, which discloses

databases that may reside “on LAN-based database server[s]” and an organizational

digital data network including a LAN and networked workstations, necessarily

discloses hardware and/or software storing accessible files. Ex. 1003 at ¶ 49; Ex. 1009

at 18:11-12; 18:27 – 19:8.


53

Claim Exemplary Disclosure of Rogers and Putz computer 114p attached remotely via the Internet or WAN extension of the LAN 109, through ISDN or otherwise.” Id. at 14:15-21. “The call management computer 101 attaches to the organization's digital data network including a LAN as well as Internet and/or other external WAN networks such as Internet via interfaces 209, 213 and 214, through which it has immediate access to the user workstations, whether in-the-office 113 or at the site of a remote user 111. . . . The digital networks 109 are used by the call management computer 101 to alert called users such as users 111 and 113 to incoming voice calls and newly received Fax, voice or data messages and for receiving back user controls of all types from the user's workstation 114. In addition the digital networks 109 provides access to the organization's LAN server computers 110 for e-mail, voice mail, database, Internet access and other services.” Id. at 18:11-26. Putz discloses an http or world wide web server (the claimed “web server”) that allows a user to access and retrieve information via the World-Wide-Web. Ex. 1010 at 1-2.

“This paper describes some interactive World-Wide Web servers that produce information displays and documents dynamically rather than just providing access to static files.” Id. at 1. “However the HTML hypertext format and the HTTP retrieval protocol can provide more than simple document browsing and retrieval. With additional server software, the same protocol and generic browsers can allow access to may kinds of interactive information sources while providing customized user interfaces.” Id. at 2.

[1.7] wherein said network can receive a message from said telephone connection or said Internet connection and

Rogers discloses a digital network (the claimed “network”) that can receive voice calls and voice mail (the claimed “message”) from a public switched telephone network (“PSTN”) (the claimed “telephone connection”) or through voice-over-Internet (the claimed “Internet connection”) and route those voice calls or transmit the voice mail to users (the claimed “subscriber”) through voice pathways to a telephone instrument (the claimed “telephone connection”) or to an external network such as the


54

Claim Exemplary Disclosure of Rogers and Putz transmit said message to said subscriber by said telephone or Internet connection,

Internet (the claimed “Internet Connection”). Ex. 1009 at 20:10-21; 91:14 – 92:15; 105:20-22; 107:13-16; 36:3-24; 108:4-10.

“The DSP digital signal processors 208 include multiple DSPs. The multiple DSPs as needed are attached to the telephony signal buses 210 through switches 204 and to the computer data bus 211 through which they provide information to the computer processor 201 and receive back control and data e.g. voice messages to play out to the caller. For voice-over-Internet or similar digital connections, voice interface board 207 is connected to the computer data bus 211 and through its own circuit switches 204 to the telephony signal bus 210, through which the voice connections can be made to/from any telephone instrument 106.”) Id. at 20:10-21. “Unlike existing PBX or other telephone switching systems, the Call Management System routes calls internally within the organization or externally anywhere in the PSTN. . . . For voice calls, the called party may be alerted, receive the call and transfer it to a specified number or VIP rules may specify transfer to another number. . . . Calls utilizing Internet voice capabilities are placed through the Voice-over-Internet interface. The ability to route calls anywhere, not just within the organization, is a major improvement in efficiency for organizations.” Id. at 91:14 – 92:15. “Callers to system users are transferred to voice mail only because the user makes that choice directly or because of predetermined VIP rules.” Id. at 105:20-22. “Having the Call Management System establish a voice pathway to the user and then instructing the voice mail system to play out the messages selected through that voice pathway.” Id. at 107:13-16. “A voice pathway 121 is created by the call management computer 101 in any variety of ways . . . 4. Connecting to a called party using an external network such as the Internet; . . . 7. Playback of recorded voice messages may be done via a ‘Voice Pathway’ created to the user’s telephone instrument 106 or via the ‘Data Path’ transferring the voice message to


55

Claim Exemplary Disclosure of Rogers and Putz the user’s workstation to be played out via the workstation’s sound capability.” Id. at 36:3-24. “When a voice mail message is selected to be heard by the double-click of a mouse or otherwise, the call management computer 101 creates a voice pathway to the user's telephone instrument 106, if one is not already present, which it then uses to play back the selected voice mail messages from the call management database or other storage.” Id. at 108:4-10.

[1.8] and said network can receive a message from said subscriber by telephone connection or Internet connection and transmit said message by telephone connection or said Internet connection based on commands received from said subscriber.

Rogers discloses that the call management system can receive pre-recorded messages (the claimed “message”) from users (the claimed “subscriber”) through a voice pathway to either a telephone instrument (the claimed “telephone connection”) or to an external network such as the Internet (the claimed “internet connection”) and transmit or play those pre-recorded messages to callers over the telephone or Voice-over-Internet (the claimed “telephone connection or said Internet connection”) based on VIP rules (the claimed “based on commands received from said subscriber”). Id. at 91:14-92:15; 87:26-88:2; 36:3-24; 87:13-17; 87:2-4; 52:1-5.

“Creating new messages is done by selecting "New" from the list of prerecorded messages, whereupon, the call management computer 101, 201 will establish a voice pathway 121, 221 to the user's telephone instrument 106 and the user will record the message.” Id. at 87:26-88:2 “A voice pathway 121 is created by the call management computer 101 in any variety of ways . . . 4. Connecting to a called party using an external network such as the Internet; . . . 7. Playback of recorded voice messages may be done via a ‘Voice Pathway’ created to the user’s telephone instrument 106 or via the ‘Data Path’ transferring the voice message to the user’s workstation to be played out via the workstation’s sound capability.” Id. at 36:3-24. “Screen 7701 is used to define ‘WHAT’ actions are to be taken. VIP rules can result in one or a series of actions to be taken: 1. Play out selected pre-recorded messages 715 to the caller.” Id. at 87:13-17. “[T]he user will name the message, edit it as needed and then have it available for the VIP rule being created or modified.”


56

Claim Exemplary Disclosure of Rogers and Putz Id. at 87:2-4. “Activate another VIP rule based on information input by the caller.” Id. at 87:15-16. “FIG. 1 shows four different types of callers: an outside voice caller 118, an inside voice caller 113, an outside Fax caller 119 and an outside data caller 120. These callers all use the same ‘One Number’ to call the same system user 111 and they may do so all at the same time.” Id. at 52:1-5.

2. The computer and telecommunicat-ions network described in claim 1, wherein the information received or transmitted by said subscriber comprises telephone calls, e-mail, faxes, conference calls and voice-mail.

Rogers discloses that a user (the claimed “subscriber”) can receive and transmit electronic messages, voicemail, fax, data files, or email (the claimed “telephone calls, e-mail, faxes . . . and voice-mail”) and initiate conference calls (the claimed “conference calls”) when the call management system establishes a voice pathway to the user over the telephone or Internet. Id. at 107:13-16; 87:26-88:2; 102:25-103:7; 99:1-8; 30:14-25.

“Having the Call Management System establish a voice pathway to the user and then instructing the voice mail system to play out the messages selected through that voice pathway.” Id. at 107:13-16 “Creating new messages is done by selecting "New" from the list of prerecorded messages, whereupon, the call management computer 101, 201 will establish a voice pathway 121, 221 to the user's telephone instrument 106 and the user will record the message.” Id. at 87:26-88:2. “The Call Management System permits for traveling or out-of-the-office employees to make a single telephone call to receive all of their electronic messages, whether voice mail, Fax messages, data files or e-mail. This feature is a significant improvement over the usual requirement to make several calls, using different technologies to retrieve messages in different forms. Retrieving all of the user's electronic messages during a single telephone call is a major improvement, especially from remote locations where telephone call connections are difficult, unreliable or can take a long time to establish, and re-establish.” Id. at 102:25-103:7. “The caller is then given a menu of delivery options for the electronic messages, including: . . . Read part or all of the


57

Claim Exemplary Disclosure of Rogers and Putz messages to [the user] (via text-to-speech).” Id. at 104:22-21. “Fax and data transmission of documents/files created at the desktop computer 114 is also provided through conventional ‘printing’ to the fax/data feature of the call management computer, from whence the document can be transmitted automatically immediately, or at specified times, to one or more recipients in the Call Management System directory or to numbers typed in by the user and with specified retry attempts.” Id. at 99:1-8. “When a system user 113 selects the “Conference” function for an existing active call or with no active call, he then selects one or more destination parties from the call management window 115 directory and/or types in one or more telephone numbers. The call management window 115 sends a “Conference” message down the organization’s digital network(s) 109 to the call management computer 101, 201, whereupon the call management computer 101 alerts the new system users.” Id. at 30:14-25.

3. The computer and telecommunications network described in claim 1, wherein manipulating and managing said data comprises creating and modifying a contact list.

Rogers discloses adding, editing, and deleting entries (the claimed “manipulating and managing” and “creating and modifying”) in a directory (the claimed “contact list”). Id. at 75:24-25; 76:13-15.

“One important aspect of the Call Management System is support for the ‘Directory’, both corporate and personal.” Id. at 75:24-25. “The user maintains the directory through subscreens to add ‘New’ 683 entries, to ‘Delete’ 684 an existing entry or to ‘Edit’ 685 a selected entry.” Id. at 76:13-15.


58


4. The computer and telecommunications network described in claim 3, wherein manipulating and managing said data comprises utilizing said contact list to place telephone calls, send e-mail, voice-mail and faxes, and

Rogers discloses using the directory (the claimed “contact list”) to originate calls at any time (the claimed “place telephone calls”), to route VIP rules, which includes transmission of voice-mail, faxes, and email (the claimed “e-mail, voice-mail and faxes”), and to transfer and conference calls (the claimed “create or modify conference calls”). Id. at 77:22-26; 77:11-15; 86:26-28; 104:5-15.8

“The user may originate a call at any time, even while other calls are active or waiting, by opening the ‘Directory’ described above, selecting an entry and clicking ‘Call’ or pressing ‘Enter.’” Id. at 77:22-26. “Fax and data transmission of documents/files created at the desktop computer 114 is also provided through conventional “printing” to the fax/data feature of the call management computer, from whence the document can be transmitted automatically immediately, or at specified times, to one or

8 A person of ordinary skill in the art would recognize that Rogers discloses the ability

to use the directory to perform these operations because Rogers discloses that the

directory is used “throughout the call management window” for “many other things,”

which must necessarily include placing calls, sending emails, voice-mail and faxes, and

creating and modifying conference calls. Ex. 1003 at ¶ 58.


59

Claim Exemplary Disclosure of Rogers and Putz create or modify conference calls.

more recipients in the Call Management System directory or to numbers typed in by the user and with specified retry attempts. Id. at 99:1-8. “The directory is used throughout the call management window 115 functions for routing calls VIP rules, originating calls 688, reviewing user status, transferring and conferencing calls, sending ‘Flash’ notes, and many other things.” Id. at 77:11-15. “Creating new messages is done by selecting "New" from the list of prerecorded messages, whereupon, the call management computer 101, 201 will establish a voice pathway 121, 221 to the user's telephone instrument 106 and the user will record the message.” Id. at 87:26 – 88:2. “The rule applies to specific individual callers 710 whether included in the ‘Directory’ or just typed in.” Id. at 86:26-28. “Individual callers or groups of callers can be included in multiple VIP Rules, allowing the user to specify different handling for differing conditions.” Id. at 87:4-6. “Screen 7701 is used to define ‘WHAT’ actions are to be taken. VIP rules can result in one or a series of actions to be taken: 1. Play out selected pre-recorded messages 715 to the caller.” Id. at 87:13-17. “One special feature the Call Management System provides is the ability to record a voice message and attach that message to an e-mail message for later retrieval by the recipient.” Id. at 67:6-8. “‘You have two new Faxes and three new e-mail messages, press one for immediate delivery.” . . . ‘send them to my home computer . . . send them to my home fax machine . . . I will attach my laptop computer and then send them to me electronically now.” Id. at 104:5-15 (emphasis added). “[T]he call management computer 101 will respond accordingly including providing translations as needed, e.g., e-mail sent to a Fax machine is converted to Fax format.” Id. at 104:23-25.

5. [5.0] A method for

Rogers discloses a call management system that manages calls (the claimed “receiving, sending and managing information”)


60

Claim Exemplary Disclosure of Rogers and Putz receiving, sending and managing information between a computer and telecommunications network and a subscriber comprising the steps of:

between a workstation (the claimed “computer”), a call management system operating on digital networks (the claimed “telecommunications network”), and a user (the claimed “subscriber”). Id. at Abstract; 13:3-18.

“A Call Management System (99) provides for management of calls directly by system users (106A or 106P) at their workstation computers (114A or 114P) via a digital data network (125) such as a digital network not controlled via the user's telephone instruments (106A or 106P) as in prior systems.” Id. at Abstract. “Fig. 1 is an overall block diagram of one embodiment of the improved Call Management System, in which call control is provided by the user through a networked workstation computer, not a conventional telephone instrument. Fig. 1 shows the organization's environment with its Local Area Network and/or Wide Area Network (LAN/WAN), an on-site system user with a LAN/WAN based workstation, a PBX or similar switch, voice mail and a call management computer. In Fig. 1, an organization utilizing the Call Management System is clustered at the bottom of the figure and the outside world of callers and system users is clustered at the top. The organization's calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider's central office and the organization's PBX or other switch (or as its replacement).” Id. at 13:3-18.

[5.1] providing at least one cluster, said cluster containing at least one voice server,

Rogers discloses one or more networks that interconnect the workstation computers with information servers, communications and computing devices (the claimed “cluster”) connected to a call management computer (the claimed “voice server”). Id. at 13:3-18. “The focus of computer technology has become the desktop workstation computer attached to one or more business enterprise-wide, high-speed digital networks which interconnect the workstation computers of business enterprise’s employees with a variety of information servers, communications and computing devices.” Id. at 1:25- 2:2. “Fig. 1 is an overall block diagram of one embodiment of the


61

Claim Exemplary Disclosure of Rogers and Putz improved Call Management System, in which call control is provided by the user through a networked workstation computer, not a conventional telephone instrument. Fig. 1 shows the organization's environment with its Local Area Network and/or Wide Area Network (LAN/WAN), an on-site system user with a LAN/WAN based workstation, a PBX or similar switch, voice mail and a call management computer. In Fig. 1, an organization utilizing the Call Management System is clustered at the bottom of the figure and the outside world of callers and system users is clustered at the top. The organization's calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider's central office and the organization's PBX or other switch (or as its replacement).” Id. at 13:3-18. “The configuration of the call management computer 101 with individual interface boards 203, circuit switches 204, DSP processors 208 and the high-speed buses 210 provide means for real-time sensing, switching and management of calls.” Id. at 17:20-24.

[5.2] said voice server containing telephony, speech recognition, text-to-speech and conferencing functions,

Rogers discloses that the call management computer has real-time sensing, switching, and management of calls (the claimed “telephony”) voice recognition (the claimed “speech recognition”) text-to-speech and conference calls (the claimed “text-to-speech and conference functions”). Id. at 17:20-24; 42:23-25; 30:14-16.

“Trunk interfaces 203, 206, circuit switches 204 and DSP digital signal processors 208 interact with and control the CO and PBX trunks under the overall control of the call management computer 101” Id. at 17:9-13. “The configuration of the call management computer 101 with individual interface boards 203, circuit switches 204, DSP processors 208 and the high-speed buses 210 provide means for real-time sensing, switching and management of calls.” Id. at 17:20-24. “‘Special function’ DSPs provide special functions as required for each specific system e.g. voice recognition, text-to-speech, etc.” Id. at 42:23-25.


62

Claim Exemplary Disclosure of Rogers and Putz “The Call Management System can conference calls independent of whether the parties are directly coupled to the PBX or are accessed via the central office 103.”) Id. at 30:14-16. “As each called system user ‘Answers’ the Conference call, the call management computer 101, 201 creates a new voice path 121 as appropriate, instructs the appropriate circuit switches 204 to connect the voice paths together to the assigned DSP 208, and instructs the DSPs to combine the signals appropriately to create a conference call.” Id. at 30:26-31:3.

[5.3] such that said subscriber can access said cluster by a standard telephone connection or by a internet connection;


“One significant advantage of the Call Management System is that it provides system users the many unique features and functions described here while requiring nothing more than plain old telephone services (POTS) telephones or headsets instead of expensive multi-button proprietary business telephone instruments.” Id. at 34:19-24. “When a call is put through to a system user, the call management computer 101 creates a reusable “voice pathway” 121 to the called party either an in-house user 113 or an external user 111.” Id. at 35:9-12. “The call management computer 101 attaches to the organization’s digital data network including a LAN as well as Internet and/or other external WAN networks such as Internet via interfaces 209, 213, and 214, through which it has immediate access to the user workstations, whether in-the office 113 or at the site of a remote user 111”). Id. at 18:18-16.

[5.4] providing at least one database server, said database server being connected to said cluster and

Rogers discloses call management databases (the claimed “database server”) that the call management system utilizes (the claimed “connected to said cluster”) that contain phone directories (the claimed “contact lists”) and system and user configurations (the claimed “administrative data”) that the user can update, correct, or add to (the claimed “manipulate and


63

Claim Exemplary Disclosure of Rogers and Putz containing contact lists and administrative data, such that said subscriber can manipulate and manage said data;

manage said data”). Id. at 18:27-19:5; 60:16-19; 85:19-23.

“The call management system 101 utilizes a variety of interactive call management databases 215 . . . . These on-line, real-time databases 215 may reside on the call management computer 101 itself or elsewhere on the digital network, e.g., on a LAN-based database server 110.” Id. at 18:11-12. “The call management computer 101 attaches to the organization’s digital data network including a LAN.” Id. at 18:27-19:8. “The call management system 101 utilizes a variety of interactive call management databases 215 for functions including: system and user configurations, primary and secondary caller identifications and voice caller identification, YIP rules, phone directories, Fax and data file storage, voice messaging storage, user-accessible call logs and many other functions.” Id. at 18:27-19:5. “A system user can select the "Record" function for any call currently active. The "Record" messages are relayed via the call management window 115 and sent via the organization's digital network(s) 109 to the call management computer 101 which instructs the assigned DSP 208 to record the call content, sending it to the call management computer 101 which saves it to the Call Management Databases 215 for future replay.” Id. at 32:4-11. “Identification of a calling party, e.g., party 118, from the calling party's telephone or PIN number or other entries is accomplished with two Caller ID Databases which are part of the overall Call Management Databases 215. A Primary Caller ID Database is dynamic and continuously updating.” Id. at 58:12-17. “With or without a call present, the called party 111 or 113 may use the workstation call control window 115 to update or correct the Primary Caller ID Database for a caller, or add a new caller to the database.” Id. at 60:16-19. “VIP call handling rules for each user are maintained by the call management computer 101, 201 as part of the call management databases 215 and are dynamically changeable by and for each user, except for corporate-wide rules.” Id. at


64

Claim Exemplary Disclosure of Rogers and Putz 85:19-23.

[5.5] providing at least one file server, said file server being connected to said cluster; and

Rogers discloses a variety of call management databases (the claimed “file server”) that the call management system utilizes (the claimed “connected to said cluster”). Id. at 18:27 – 19:8.9 “The call management system 101 utilizes a variety of interactive call management databases 215 for functions including: . . . data file storage . . . . These on-line, real-time databases 215 may reside on the call management computer 101 itself or elsewhere on the digital network, e.g., on a LAN-based database server 110.” Id. at 18:27 – 19:8.

[5.6] providing a web server, said web server being connected to said cluster such that said subscriber can access said network by connecting to said web server via the internet;


“The organization’s calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider’s central office and the organization’s PBX or other switch (or as its replacement). Also shown are work-at-home system user with workstation connected via the Internet, a voice caller at a pay phone as well as Fax and data callers all connecting through the public switched telephone network.” Id. at 13:14-22 “In Fig. 1, two different types of system users are shown, the first is an in-house user 113 associated with workstation 114a and telephone instrument 106a while a second user is a work-

9 A person of ordinary skill in the art would understand that Rogers, which discloses

databases that may reside “on LAN-based database server[s]” and an organizational

digital data network including a LAN and networked workstations, discloses hardware

and/or software storing accessible files. Ex. 1003 at ¶ 65. Ex. 1009 at 18:11-12; 18:27

– 19:8.


65

Claim Exemplary Disclosure of Rogers and Putz at-home or traveling employee with a workstation or laptop computer 114p attached remotely via the Internet or WAN extension of the LAN 109, through ISDN or otherwise.” Id. at 14:15-21. “The call management computer 101 attaches to the organization's digital data network including a LAN as well as Internet and/or other external WAN networks such as Internet via interfaces 209, 213 and 214, through which it has immediate access to the user workstations, whether in-the-office 113 or at the site of a remote user 111. . . . The digital networks 109 are used by the call management computer 101 to alert called users such as users 111 and 113 to incoming voice calls and newly received Fax, voice or data messages and for receiving back user controls of all types from the user's workstation 114. In addition the digital networks 109 provides access to the organization's LAN server computers 110 for e-mail, voice mail, database, Internet access and other services.” Id. at 18:11-26. Putz discloses an http or world wide web server (the claimed “web server”) that allows a user to access and retrieve information via the World-Wide-Web. Ex. 1010 at 1-2.


[5.7] receiving a message from said telephone connection or said internet connection transmitting said

Rogers discloses a digital network (the claimed “network”) that can receive voice calls and voice mail (the claimed “message”) from a public switched telephone network (“PSTN”) (the claimed “telephone connection”) or through voice-over-Internet (the claimed “Internet connection”) and route those voice calls or transmit the voice mail to users (the claimed “subscriber”) through voice pathways to a telephone instrument (the claimed


66

Claim Exemplary Disclosure of Rogers and Putz message to said subscriber by said telephone or internet connection, based on commands received by the network from said subscriber.

“telephone connection”) or to an external network such as the Internet (the claimed “Internet Connection”) when a user double-clicks a mouse or otherwise provides a command (the claimed “based on commands received by the network from said subscriber”). Ex. 1009 at 20:10-21; 91:14-92:15; 105:20-22; 107:13-16; 36:3-24; 108:4-10.

“The DSP digital signal processors 208 include multiple DSPs. The multiple DSPs as needed are attached to the telephony signal buses 210 through switches 204 and to the computer data bus 211 through which they provide information to the computer processor 201 and receive back control and data e.g. voice messages to play out to the caller. For voice-over-Internet or similar digital connections, voice interface board 207 is connected to the computer data bus 211 and through its own circuit switches 204 to the telephony signal bus 210, through which the voice connections can be made to/from any telephone instrument 106.”) Id. at 20:10-21. “Unlike existing PBX or other telephone switching systems, the Call Management System routes calls internally within the organization or externally anywhere in the PSTN. . . . For voice calls, the called party may be alerted, receive the call and transfer it to a specified number or VIP rules may specify transfer to another number. . . . Calls utilizing Internet voice capabilities are placed through the Voice-over-Internet interface. The ability to route calls anywhere, not just within the organization, is a major improvement in efficiency for organizations.” Id. at 91:14-92:15. “Callers to system users are transferred to voice mail only because the user makes that choice directly or because of predetermined VIP rules.” Id. at 105:20-22. “Having the Call Management System establish a voice pathway to the user and then instructing the voice mail system to play out the messages selected through that voice pathway.” Id. at 107:13-16. “A voice pathway 121 is created by the call management computer 101 in any variety of ways . . . 4. Connecting to a called party using an external network such as the Internet; . . .


67

Claim Exemplary Disclosure of Rogers and Putz 7. Playback of recorded voice messages may be done via a ‘Voice Pathway’ created to the user’s telephone instrument 106 or via the ‘Data Path’ transferring the voice message to the user’s workstation to be played out via the workstation’s sound capability.” Id. at 36:3-24. “When a voice mail message is selected to be heard by the double-click of a mouse or otherwise, the call management computer 101 creates a voice pathway to the user's telephone instrument 106, if one is not already present, which it then uses to play back the selected voice mail messages from the call management database or other storage.” Id. at 108:4-10.

6. [6.0] The computer and telecommunications network described in claim 5, wherein the information received or transmitted by said subscriber comprises telephone calls, e-mail, faxes, conference calls and voice-mail.

Rogers discloses that a user (the claimed “subscriber”) can receive and transmit electronic messages, voicemail, fax, data files, or email (the claimed “telephone calls, e-mail, faxes . . . and voice-mail”) and initiate conference calls (the claimed “conference calls”) when the call management system establishes a voice pathway to the user over the telephone or Internet. Id. at 107:13-16; 87:26-88:2; 102:25-103:7; 99:1-8; 30:14-25.

“Having the Call Management System establish a voice pathway to the user and then instructing the voice mail system to play out the messages selected through that voice pathway.” Id. at 107:13-16. “Creating new messages is done by selecting "New" from the list of prerecorded messages, whereupon, the call management computer 101, 201 will establish a voice pathway 121, 221 to the user's telephone instrument 106 and the user will record the message.” Id. at 87:26-88:2. “The Call Management System permits for traveling or out-of-the-office employees to make a single telephone call to receive all of their electronic messages, whether voice mail, Fax messages, data files or e-mail. This feature is a significant improvement over the usual requirement to make several calls, using different technologies to retrieve messages in different forms. Retrieving all of the user's electronic messages during a single telephone call is a major improvement, especially from remote locations where telephone call connections are difficult, unreliable or can take a long time to establish, and re-establish.” Id. at 102:25-103:7.


68

Claim Exemplary Disclosure of Rogers and Putz “The caller is then given a menu of delivery options for the electronic messages, including: . . . Read part or all of the messages to [the user] (via text-to-speech).” Id. at 104:22-21. “Fax and data transmission of documents/files created at the desktop computer 114 is also provided through conventional ‘printing’ to the fax/data feature of the call management computer, from whence the document can be transmitted automatically immediately, or at specified times, to one or more recipients in the Call Management System directory or to numbers typed in by the user and with specified retry attempts.” Id. at 99:1-8. “When a system user 113 selects the “Conference” function for an existing active call or with no active call, he then selects one or more destination parties from the call management window 115 directory and/or types in one or more telephone numbers. The call management window 115 sends a “Conference” message down the organization’s digital network(s) 109 to the call management computer 101, 201, whereupon the call management computer 101 alerts the new system users.” Id. at 30:14-25.

7. [7.0] The computer and telecommunications network described in claim 5, wherein manipulating and managing said data comprises creating and modifying a contact list.

Rogers discloses adding, editing, and deleting entries (the claimed “manipulating and managing” and “creating and modifying”) in a directory (the claimed “contact list”). Id. at 75:24-25; 76:13-15.


8. [8.0] The computer and telecommunications network described in

Rogers discloses using the directory (the claimed “contact list”) to originate calls at any time (the claimed “place telephone calls”), to route VIP rules, which includes transmission of voice-mail, faxes, and email (the claimed “e-mail, voice-mail and faxes”), and to transfer and conference calls (the claimed “create or modify


69

Claim Exemplary Disclosure of Rogers and Putz claim 7, wherein manipulating and managing said data comprises utilizing said contact list to place telephone calls, send e-mail, voice-mail and faxes, and create or modify conference calls.

conference calls”). Id. at 77:22-26; 77:11-15; 86:26-28; 104:5-15.

“The user may originate a call at any time, even while other calls are active or waiting, by opening the ‘Directory’ described above, selecting an entry and clicking ‘Call’ or pressing ‘Enter.’” Id. at 77:22-26. “Fax and data transmission of documents/files created at the desktop computer 114 is also provided through conventional “printing” to the fax/data feature of the call management computer, from whence the document can be transmitted automatically immediately, or at specified times, to one or more recipients in the Call Management System directory or to numbers typed in by the user and with specified retry attempts. Id. at 99:1-8. “The directory is used throughout the call management window 115 functions for routing calls VIP rules, originating calls 688, reviewing user status, transferring and conferencing calls, sending ‘Flash’ notes, and many other things.” Id. at 77:11-15. “Creating new messages is done by selecting "New" from the list of prerecorded messages, whereupon, the call management computer 101, 201 will establish a voice pathway 121, 221 to the user's telephone instrument 106 and the user will record the message.” Id. at 87:26 – 88:2. “The rule applies to specific individual callers 710 whether included in the ‘Directory’ or just typed in.” Id. at 86:26-28. “Screen 7701 is used to define ‘WHAT’ actions are to be taken. VIP rules can result in one or a series of actions to be taken: 1. Play out selected pre-recorded messages 715 to the caller.” Id. at 87:13-17. “One special feature the Call Management System provides is the ability to record a voice message and attach that message to an e-mail message for later retrieval by the recipient.” Id. at 67:6-8. “‘You have two new Faxes and three new e-mail messages, press one for immediate delivery.” . . . ‘send them to my home computer . . . send them to my home fax machine . . . I will attach my laptop computer and then send them to


70

Claim Exemplary Disclosure of Rogers and Putz me electronically now.” Id. at 104:5-15 (emphasis added). “[T]he call management computer 101 will respond accordingly including providing translations as needed, e.g., e-mail sent to a Fax machine is converted to Fax format.” Id. at 104:23-25 (emphasis added).

9. [9.0] A method for receiving, sending and managing information between a computer and telecommunications network and a subscriber comprising the steps of:

Rogers discloses a call management system that manages calls (the claimed “receiving, sending and managing information”) between a workstation (the claimed “computer”), a call management system operating on digital networks (the claimed “telecommunications network”), and a user (the claimed “subscriber”). Id. at Abstract; 13:3-18.

“A Call Management System (99) provides for management of calls directly by system users (106A or 106P) at their workstation computers (114A or 114P) via a digital data network (125) such as a digital network not controlled via the user's telephone instruments (106A or 106P) as in prior systems.” Id. at Abstract. “Fig. 1 is an overall block diagram of one embodiment of the improved Call Management System, in which call control is provided by the user through a networked workstation computer, not a conventional telephone instrument. Fig. 1 shows the organization's environment with its Local Area Network and/or Wide Area Network (LAN/WAN), an on-site system user with a LAN/WAN based workstation, a PBX or similar switch, voice mail and a call management computer. In Fig. 1, an organization utilizing the Call Management System is clustered at the bottom of the figure and the outside world of callers and system users is clustered at the top. The organization's calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider's central office and the organization's PBX or other switch (or as its replacement).” Id. at 13:3-18.


71


[9.1] providing at least one cluster, said cluster containing at least one voice server,

Rogers discloses one or more networks which interconnect the workstation computers with information servers, communications and computing devices (the claimed “cluster”) connected to a call management computer (the claimed “voice server”). Id. at 13:3-18.

“The focus of computer technology has become the desktop workstation computer attached to one or more business enterprise-wide, high-speed digital networks which interconnect the workstation computers of business enterprise’s employees with a variety of information servers, communications and computing devices.” Id. at 1:25- 2:2. “Fig. 1 is an overall block diagram of one embodiment of the improved Call Management System, in which call control is provided by the user through a networked workstation computer, not a conventional telephone instrument. Fig. 1


72

Claim Exemplary Disclosure of Rogers and Putz shows the organization's environment with its Local Area Network and/or Wide Area Network (LAN/WAN), an on-site system user with a LAN/WAN based workstation, a PBX or similar switch, voice mail and a call management computer. In Fig. 1, an organization utilizing the Call Management System is clustered at the bottom of the figure and the outside world of callers and system users is clustered at the top. The organization's calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider's central office and the organization's PBX or other switch (or as its replacement).” Id. at 13:3-18. “The configuration of the call management computer 101 with individual interface boards 203, circuit switches 204, DSP processors 208 and the high-speed buses 210 provide means for real-time sensing, switching and management of calls.” Id. at 17:20-24.

[9.2] said voice server containing telephony, speech recognition, text-to-speech and conferencing functions,

Rogers discloses that the call management computer has real-time sensing, switching, and management of calls (the claimed “telephony”) voice recognition (the claimed “speech recognition”) text-to-speech and conference calls (the claimed “text-to-speech and conference functions”). Id. at 17:20-24; 42:23-25; 30:14-16.

“Trunk interfaces 203, 206, circuit switches 204 and DSP digital signal processors 208 interact with and control the CO and PBX trunks under the overall control of the call management computer 101” Id. at 17:9-13. “The configuration of the call management computer 101 with individual interface boards 203, circuit switches 204, DSP processors 208 and the high-speed buses 210 provide means for real-time sensing, switching and management of calls.” Id. at 17:20-24. “‘Special function’ DSPs provide special functions as required for each specific system e.g. voice recognition, text-to-speech, etc.” Id. at 42:23-25. “The Call Management System can conference calls independent of whether the parties are directly coupled to the PBX or are accessed via the central office 103.” Id. at 30:14-


73

Claim Exemplary Disclosure of Rogers and Putz 16. “As each called system user ‘Answers’ the Conference call, the call management computer 101, 201 creates a new voice path 121 as appropriate, instructs the appropriate circuit switches 204 to connect the voice paths together to the assigned DSP 208, and instructs the DSPs to combine the signals appropriately to create a conference call.” Id. at 30:26 – 31:3.

[9.3] such that said subscriber can access said cluster by a standard telephone connection or by a internet connection;


“One significant advantage of the Call Management System is that it provides system users the many unique features and functions described here while requiring nothing more than plain old telephone services (POTS) telephones or headsets instead of expensive multi-button proprietary business telephone instruments.” Id. at 34:19-24. “When a call is put through to a system user, the call management computer 101 creates a reusable “voice pathway” 121 to the called party either an in-house user 113 or an external user 111.” Id. at 35:9-12. “The call management computer 101 attaches to the organization’s digital data network including a LAN as well as Internet and/or other external WAN networks such as Internet via interfaces 209, 213, and 214, through which it has immediate access to the user workstations, whether in-the office 113 or at the site of a remote user 111.” Id. at 18:18-16.

[9.4] providing at least one database server, said database server being connected to said cluster and containing contact lists and administrative

Rogers discloses call management databases (the claimed “database server”) that the call management system utilizes (the claimed “connected to said cluster”) that contain phone directories (the claimed “contact lists”) and system and user configurations (the claimed “administrative data”) that the user can update, correct, or add to (the claimed “manipulate and manage said data”). Id. at 18:27-19:5; 60:16-19; 85:19-23.

“The call management system 101 utilizes a variety of interactive call management databases 215 . . . . These on-line,


74

Claim Exemplary Disclosure of Rogers and Putz data, such that said subscriber can manipulate and manage said data;

real-time databases 215 may reside on the call management computer 101 itself or elsewhere on the digital network, e.g., on a LAN-based database server 110.” Id. at 18:11-12. “The call management computer 101 attaches to the organization’s digital data network including a LAN.” Id. at 18:27-19:8. “The call management system 101 utilizes a variety of interactive call management databases 215 for functions including: system and user configurations, primary and secondary caller identifications and voice caller identification, YIP rules, phone directories, Fax and data file storage, voice messaging storage, user-accessible call logs and many other functions.” Id. at 18:27-19:5. “A system user can select the "Record" function for any call currently active. The "Record" messages are relayed via the call management window 115 and sent via the organization's digital network(s) 109 to the call management computer 101 which instructs the assigned DSP 208 to record the call content, sending it to the call management computer 101 which saves it to the Call Management Databases 215 for future replay.” Id. at 32:4-11. “Identification of a calling party, e.g., party 118, from the calling party's telephone or PIN number or other entries is accomplished with two Caller ID Databases which are part of the overall Call Management Databases 215. A Primary Caller ID Database is dynamic and continuously updating.” Id. at 58:12-17. “With or without a call present, the called party 111 or 113 may use the workstation call control window 115 to update or correct the Primary Caller ID Database for a caller, or add a new caller to the database.” Id. at 60:16-19. “VIP call handling rules for each user are maintained by the call management computer 101, 201 as part of the call management databases 215 and are dynamically changeable by and for each user, except for corporate-wide rules.” Id. at 85:19-23.

[9.5] providing at least one file

Rogers discloses a variety of call management databases (the claimed “file server”) that the call management system utilizes


75

Claim Exemplary Disclosure of Rogers and Putz server, said file server being connected to said cluster; and

(the claimed “connected to said cluster”). Id. at 18:27-19:8.

“The call management system 101 utilizes a variety of interactive call management databases 215 for functions including: . . . data file storage . . . . These on-line, real-time databases 215 may reside on the call management computer 101 itself or elsewhere on the digital network, e.g., on a LAN-based database server 110.” Id. at 18:27-19:8.

[9.6] providing a web server, said web server being connected to said cluster such that said subscriber can access said network by connecting to said web server via the internet;


“The organization’s calls are handled using a call management computer which is placed so as to intercept telephone and data trunks between the telephone provider’s central office and the organization’s PBX or other switch (or as its replacement). Also shown are work-at-home system user with workstation connected via the Internet, a voice caller at a pay phone as well as Fax and data callers all connecting through the public switched telephone network.” Id. at 13:14-22 “In Fig. 1, two different types of system users are shown, the first is an in-house user 113 associated with workstation 114a and telephone instrument 106a while a second user is a work-at-home or traveling employee with a workstation or laptop computer 114p attached remotely via the Internet or WAN extension of the LAN 109, through ISDN or otherwise.” Id. at 14:15-21. “The call management computer 101 attaches to the organization's digital data network including a LAN as well as Internet and/or other external WAN networks such as Internet via interfaces 209, 213 and 214, through which it has immediate access to the user workstations, whether in-the-office 113 or at the site of a remote user 111. . . . The digital networks 109 are used by the call management computer 101 to alert called users such as users 111 and 113 to incoming voice calls and newly received Fax, voice or data messages and for receiving back user controls of all types from the user's


76

Claim Exemplary Disclosure of Rogers and Putz workstation 114. In addition the digital networks 109 provides access to the organization's LAN server computers 110 for e-mail, voice mail, database, Internet access and other services.” Id. at 18:11-26. Putz discloses an http or world wide web server (the claimed “web server”) that allows a user to access and retrieve information via the World-Wide-Web. Ex. 1010 at 1-2.


[9.7] receiving a message from said subscriber by telephone connection or said internet connection; and transmitting said message by said telephone or internet connection, based on commands received by the network from said subscriber.

Rogers discloses that the call management system can receive pre-recorded messages (the claimed “message”) from users (the claimed “subscriber”) through a voice pathway to either a telephone instrument (the claimed “telephone connection”) or to an external network such as the Internet (the claimed “internet connection”) and transmit or play those pre-recorded messages to callers over the telephone or Voice-over-Internet (the claimed “telephone connection or internet connection”) based on VIP rules (the claimed “based on commands received by the network from said subscriber”). Ex. 1009 at 91:14-92:15; 87:26-88:2; 36:3-24; 87:13-17; 87:2-4; 52:1-5.

“The DSP digital signal processors 208 include multiple DSPs. The multiple DSPs as needed are attached to the telephony signal buses 210 through switches 204 and to the computer data bus 211 through which they provide information to the computer processor 201 and receive back control and data e.g. voice messages to play out to the caller. For voice-over-Internet or similar digital connections, voice interface board 207 is connected to the computer data bus 211 and through its own circuit switches 204 to the telephony signal bus 210, through which the voice connections can be


77

Claim Exemplary Disclosure of Rogers and Putz made to/from any telephone instrument 106.”) Id. at 20:10-21. “Unlike existing PBX or other telephone switching systems, the Call Management System routes calls internally within the organization or externally anywhere in the PSTN. . . . For voice calls, the called party may be alerted, receive the call and transfer it to a specified number or VIP rules may specify transfer to another number. . . . Calls utilizing Internet voice capabilities are placed through the Voice-over-Internet interface. The ability to route calls anywhere, not just within the organization, is a major improvement in efficiency for organizations.” Id. at 91:14-92:15. “Callers to system users are transferred to voice mail only because the user makes that choice directly or because of predetermined VIP rules.” Id. at 105:20-22. “Having the Call Management System establish a voice pathway to the user and then instructing the voice mail system to play out the messages selected through that voice pathway.” Id. at 107:13-16. “A voice pathway 121 is created by the call management computer 101 in any variety of ways . . . 4. Connecting to a called party using an external network such as the Internet; . . . 7. Playback of recorded voice messages may be done via a ‘Voice Pathway’ created to the user’s telephone instrument 106 or via the ‘Data Path’ transferring the voice message to the user’s workstation to be played out via the workstation’s sound capability.” Id. at 36:3-24. “When a voice mail message is selected to be heard by the double-click of a mouse or otherwise, the call management computer 101 creates a voice pathway to the user's telephone instrument 106, if one is not already present, which it then uses to play back the selected voice mail messages from the call management database or other storage.” Id. at 108:4-10.

10. [10.0] The computer and telecommunications network described in

Rogers discloses that a user (the claimed “subscriber”) can receive and transmit electronic messages, voicemail, fax, data files, or email (the claimed “telephone calls, e-mail, faxes . . . and voice-mail”) and initiate conference calls (the claimed “conference calls”) when the call management system establishes a voice


78

Claim Exemplary Disclosure of Rogers and Putz claim 9, wherein the information received or transmitted by said subscriber comprises telephone calls, e-mail, faxes, conference calls and voice-mail.

pathway to the user over the telephone or Internet. Id. at 107:13-16; 87:26-88:2; 102:25-103:7; 99:1-8; 30:14-25.

“Having the Call Management System establish a voice pathway to the user and then instructing the voice mail system to play out the messages selected through that voice pathway.” Id. at 107:13-16. “Creating new messages is done by selecting "New" from the list of prerecorded messages, whereupon, the call management computer 101, 201 will establish a voice pathway 121, 221 to the user's telephone instrument 106 and the user will record the message.” Id. at 87:26-88:2. “The Call Management System permits for traveling or out-of-the-office employees to make a single telephone call to receive all of their electronic messages, whether voice mail, Fax messages, data files or e-mail. This feature is a significant improvement over the usual requirement to make several calls, using different technologies to retrieve messages in different forms. Retrieving all of the user's electronic messages during a single telephone call is a major improvement, especially from remote locations where telephone call connections are difficult, unreliable or can take a long time to establish, and re-establish.” Id. at 102:25-103:7. “The caller is then given a menu of delivery options for the electronic messages, including: . . . Read part or all of the messages to [the user] (via text-to-speech).” Id. at 104:22-21. “Fax and data transmission of documents/files created at the desktop computer 114 is also provided through conventional ‘printing’ to the fax/data feature of the call management computer, from whence the document can be transmitted automatically immediately, or at specified times, to one or more recipients in the Call Management System directory or to numbers typed in by the user and with specified retry attempts.” Id. at 99:1-8. “When a system user 113 selects the “Conference” function for an existing active call or with no active call, he then selects one or more destination parties from the call management window 115 directory and/or types in one or more telephone numbers. The call management window 115 sends a


79

Claim Exemplary Disclosure of Rogers and Putz “Conference” message down the organization’s digital network(s) 109 to the call management computer 101, 201, whereupon the call management computer 101 alerts the new system users.” Id. at 30:14-25.

11. The computer and telecommunications network described in claim 9, wherein manipulating and managing said data comprises creating and modifying a contact list.

Rogers discloses “wherein manipulating and managing said data comprises creating and modifying a contact list” because Rogers discloses adding, editing, and deleting entries (the claimed “manipulating and managing” and “creating and modifying”) in a directory (the claimed “contact list”). Id. at 75:24-25; 76:13-15.


12. The computer and telecommunications network in claim 11, wherein manipulating and managing comprises utilizing said contact list to place calls, send e-mail, voice-mail and faxes, and modify conference calls.

Rogers discloses using the directory (the claimed “contact list”) to originate calls at any time (the claimed “place telephone calls”), to route VIP rules, which includes transmission of voice-mail, faxes, and email (the claimed “e-mail, voice-mail and faxes”), and to transfer and conference calls (the claimed “create or modify conference calls”). Id. at 77:22-26; 77:11-15; 86:26-28; 104:5-15.

“The user may originate a call at any time, even while other calls are active or waiting, by opening the ‘Directory’ described above, selecting an entry and clicking ‘Call’ or pressing ‘Enter.’” Id. at 77:22-26. “Fax and data transmission of documents/files created at the desktop computer 114 is also provided through conventional “printing” to the fax/data feature of the call management computer, from whence the document can be transmitted automatically immediately, or at specified times, to one or more recipients in the Call Management System directory.” Id. at 99:1-8. “The directory is used throughout the call management window 115 functions for routing calls VIP rules, originating calls 688, reviewing user status, [and] transferring and conferencing calls.” Id. at 77:11-15.


80

Claim Exemplary Disclosure of Rogers and Putz “One special feature the Call Management System provides is the ability to record a voice message and attach that message to an e-mail message for later retrieval by the recipient.” Id. at 67:6-8. “‘You have two new Faxes and three new e-mail messages, press one for immediate delivery.” . . . ‘send them to my home computer . . . send them to my home fax machine . . . I will attach my laptop computer and then send them to me electronically now.” Id. at 104:5-15. “[T]he call management computer 101 will respond accordingly including providing translations as needed, e.g., e-mail sent to a Fax machine is converted to Fax format.” Id. at 104:23-25.

VII. CONCLUSION

Claims 1-12 of the ’600 patent are unpatentable. Petitioners therefore request

that a post-grant review of these claims be instituted under 35 U.S.C. § 324.

If there are any additional fees due with the filing of this paper, please charge

the required fees to our deposit account no. 06-0916.

Respectfully submitted,

Dated: May 1, 2015 By: /Lionel M. Lavenue/ Lionel M. Lavenue, Lead Counsel Reg. No. 46,859 Kara Specht, Back-up Counsel Reg. No. 69,560 Guang-Yu Zhu, Back –up Counsel Reg. No. 66,250 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Counsel for Petitioner PNC Bank N.A., and SunTrust Bank


81

CERTIFICATE OF SERVICE

The undersigned certifies that the foregoing for Post Grant Review under 35

U.S.C. § 321 and § 18 of the Leahy-Smith America Invents Act was served on May 1,

2015, by Federal Express at the following addresses of record for the subject patents.

The Exhibits 1001 through 1010 and Powers of Attorney were served on May 1,

2015.

Shawn Diedtrich 90906 W Cora Vista Buckeye, AZ 85396

Frank V. Pietrantonio Jonathan G. Graves

Nathan K. Cummings COOLEY LLP

One Freedom Square Reston Town Center 11951 Freedom Drive

Reston, VA 20190-5656

Date: May 1, 2015

/Ashley F. Cheung/ Ashley F. Cheung Case Manager FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.

IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD · fee specified by 37 C.F.R. §...

Documents

Transcript of IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD · fee specified by 37 C.F.R. §...