in the united states patent trial and appeal board · petition exhibit 1013: ibm, dt/6 1.5 optional...

IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD In re Post-Grant Review of: ) ) U.S. Patent No. 8,843,120 B2 ) U.S. Class: 455/414.1 ) Issued: September 23, 2014 ) ) Inventor: Alex Kurganov ) ) Application No. 13/350,712 ) ) Filed: January 13, 2012 ) ) 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 1-18 of U.S. Patent No. 8,843,120 B2 (“the ’120 patent,” attached as

Petition Exhibit 1001), now purportedly assigned to Parus Holdings, Inc. (“Patent

Owner”).

Case CBM2015-00150 U.S. Patent No. 8,843,120

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An electronic payment in the amount of $31,650.00 for the post-grant review

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

fee and $19,650.00 post-institution fee (including $1,6550 post-institution fee for 3

claims in excess of 15)—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 our deposit account no. 06-0916.


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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 ’120 PATENT AND ITS PROSECUTION HISTORY ....................................................................................................... 3

A. The ’120 Patent ..................................................................................... 3

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

IV. GROUNDS FOR STANDING ...................................................................... 6

A. At Least One Challenged Claim Is Unpatentable ................................. 6

B. The ’120 Patent Is a Covered Business Method Patent ........................ 6

C. The ’120 Patent Is Not Directed to a “Technological Invention” .......10

1. The ’120 patent does not claim a novel, nonobvious technological feature .................................................................11

2. The ’120 patent does not solve a technical problem using a technical solution....................................................................13

D. Petitioner Has Been Sued for Infringement of the ’120 Patent and Is Not Estopped ............................................................................15

V. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED ...............................................................15

A. Claims for which Review is Requested ..............................................15

B. Statutory Grounds of Challenge ..........................................................15

C. Person of Ordinary Skill ......................................................................16

D. Claim Construction..............................................................................16


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1. “voice server” ............................................................................17

2. “web server” ..............................................................................17

3. “database server” .......................................................................18

4. “file server” ...............................................................................18

5. “cluster” ....................................................................................19

6. “speaker-independent speech recognition” ...............................19

7. “natural voice spoken commands”............................................20

8. “the electronic communication device supports the telephone and internet connections” .........................................20

VI. CLAIMS 1-18 OF THE ’120 PATENT ARE UNPATENTABLE ..........21

A. Claims 1-18, Which Recite Nothing More Than The Mere Automation of Conventional Administrative Assistant Tasks, Are Invalid Under 35 U.S.C. § 101 .....................................................21

1. The ’120 patent teaches using a computer to automate the tasks of an administrative assistant ...........................................22

2. Patents like the ’120 patent, which claim abstract ideas and nothing substantially more, are patent ineligible ...............26

3. The ’120 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 .........28

Step 1: The ’120 patent claims the abstract idea of a.managing business communications, a longstanding business practice that is itself not patent eligible ..................................................................28

Step 2: None of the claims of the ’120 patent b.includes an inventive concept sufficient to transform the claim into “significantly more” than the patent ineligible abstract idea itself ..........................33


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4. Because the ’120 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. ....................................................40

B. Claims 1-18 Are Unpatentable Under 35 U.S.C. § 103 ......................41

1. DirectTalk, DirectTalkMail, Hark, and IBM Announcement A95-893 are prior art under 35 U.S.C. §§ 102(a) and 102(b) ......................................................................41

2. The combination of the DirectTalk/6000 manuals and IBM Announcement A95-893 renders claims 1-18 of the ’120 patent obvious ...................................................................43

3. The combination of the DirectTalk/6000 manuals and IBM Announcement A95-893 would have been obvious ..........46

C. Claims 4 and 8 Are More Likely Than Not Unpantable Under 35 U.S.C. § 112, ¶ 1 ............................................................................78

1. The written description fails to demonstrate that the Applicant possessed a pager and facsimile machine capable of transmitting natural voice spoken commands .........79

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


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TABLE OF AUTHORITIES

Cases

Accenture Global Serv., GMBH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) .................................................. 33, 35, 37, 40

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

Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc) .....................................................78

Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012) .....................................................................27

buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) .....................................................................37

C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004) .......................................................................17

Cloud Satchel, LLC v. Amazon.com, Inc., No. 1:13-cv-00041, 2014 WL 7227942 (D. Del. Dec. 18, 2014) .................32

Cogent Medicine, Inc. v. Elsevier, Inc., No. 1:13-cv-04479, 2014 WL 4966326 (N.D. Cal. Sept. 30, 2014) ..............................................................................................................39

Comcast IP Holdings I, LLC v. Spring Comm. Co., LP, 2014 WL 3542055 (D. Del. July 16, 2014) ............................................ 35, 36

Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., No. 2013-1588, 2014 WL 7272219 (Fed. Cir. Dec. 23, 2014) .....................39

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) .....................................................................36

Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) .............................................................. 14, 27

Fort Properties Inc. v. American Master Lease LLC, 671 F.3d 1317 (Fed. Cir. 2012) .............................................................. 14, 27


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In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004) .....................................................................16

Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 10 (P.T.A.B. Jan. 25, 2013) ..................................11

Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) .....................................................................78

Lumen View Tech., LLC v. Findthebest.com, Inc., No. 1:13-cv-03599, 2013 WL 6164341 (S.D.N.Y. Nov. 22, 2013) ..............................................................................................................28

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) ...................................................................... 26, 27, 35

MyMedicalRecords, Inc. v. Walgreens, Inc., No. 2:13-cv-00631, 2014 U.S. Dist. LEXIS 176891 (C.D. Cal. Dec. 23, 2014) ................................................................................................38

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .....................................................................16

Planet Bingo LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014) ..............................................................41

PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) .....................................................................78

SAP Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Paper 36 (P.T.A.B. Jan. 9, 2013) ................................7, 10

Tenon & Groove, LLC v. Plusgrade S.E.C., No. 1:12-cv-01118, 2015 WL 82531 (D. Del. Jan. 6, 2015) .........................38

Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998) .....................................................................78

TurboCare Div. of Demag Delaval TurboMachinery Corp. v. Gen. Elec. Corp., 264 F.3d 1111 (Fed. Cir. 2001) .....................................................................78


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Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) .......................................................................36

Walker Digital, LLC v. Google, Inc., No. 1:11-cv-00318, 2014 WL 4365245 (D. Del. Sept. 3, 2014) ...................33

Federal Statutes

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

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

35 U.S.C. § 103 ............................................................................................... 1, 6, 15

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

35 U.S.C. § 321 .................................................................................................... i, 15

35 U.S.C. § 324 ....................................................................................................6, 80

AIA § 18 ........................................................................................................ 7, 10, 15

Other Authorities

157 Cong. Rec. S1365, (daily ed. March 8, 2011) (statement of Sen. Schumer) .................................. 7

Regulations

37 C.F.R. § 42.300 ...................................................................................................16

37 C.F.R. § 42.301 ...............................................................................................7, 10

37 C.F.R. § 42.302 ...................................................................................................15

77 Fed. Reg. 48,734 .............................................................................................7, 10

77 Fed. Reg. 48,756 .................................................................................................11


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LIST OF EXHIBITS

Petition Exhibit 1001: U.S. Patent No. 8,843,120

Petition Exhibit 1002: Patent File History for U.S. Patent No. 8,843,120

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: IBM, IBM AIX DirectTalk/6000 Version 1 Release 6 Improves Your Voice Processing Services to Callers and Customers, Announcement Number 295-489, November 28, 1995 (“IBM Announcement 295-489”)

Petition Exhibit 1010: IBM, AIX DirectTalk/6000: General Information and Planning, Release 6, GC33-1720-00 (Dec. 1995) (“DirectTalk”)

Petition Exhibit 1011: IBM, DirectTalkMail: Administration, Release 6, SC33-1733-00 (Feb. 1996) (“DirectTalkMail”)

Petition Exhibit 1012: IBM, AIX DirectTalk/6000 Release 6: Speech Recognition with the BBN Hark Recognizer, SC33-1734-00 (Feb. 1996) (“Hark”)


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Petition Exhibit 1013: IBM, DT/6 1.5 Optional Features, Announcement Number A95-893, July 10, 1995 (“IBM Announcement A95-893”)

Petition Exhibit 1014: Amendment and Reply to Feb. 14, 2011 Non-Final Office Action for U.S. Application No. 12/697,869

Case CBM2015-00150 United States Patent No. 8,843,120

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I. PRELIMINARY STATEMENT

All of claims in the ’120 patent are invalid. The claimed systems and

methods were disclosed in their entirety in publically available documents more

than a year before the earliest claimed priority date. Therefore, claims 1-18 of the

’120 patent are eligible for CBM review and are invalid under, at least, 35

U.S.C. § 103 for failing to recite any novel and non-obvious technology. Further,

the claims 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. Finally, several of the claims are invalid under § 112, ¶ 1 for

failing to convey to a person of ordinary skill that the Applicant possessed the

claimed invention.

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-UNA (D. Del.) (see, e.g., Ex. 1005 at 1-2), and the


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lawsuit against SunTrust is captioned Parus Holdings, Inc. v. SunTrust Bank, et al.,

No. 1:14-cv-01429-UNA (D. Del.) (see, e.g., Ex. 1006 at 1-2). Besides the lawsuits

against PNC and SuntTust, Parus also asserted the ’120 patent in the following

lawsuits: Parus Holdings, Inc. v. Sallie Mae Bank, et al., No. 1:14-cv-01427-UNA

(D. Del.). See Ex. 1007.

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: Please send all correspondence to the lead counsel at:

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Two Freedom Square,


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11955 Freedom Drive, Reston, VA 20190-5675. Petitioner consents to service by e-

mail at the following address: [email protected].

III. OVERVIEW OF THE ’120 PATENT AND ITS PROSECUTION HISTORY

A. The ’120 Patent

The ’120 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. The ’120 patent discloses a collection

of known hardware and protocols combined to automate business tasks, generally

performed by a human administrative assistant. See e.g., Ex. 1001 at 6:1-2.


4

Further, as shown above in Fig. 3, the claims of the ’120 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 2:47-50 (“[Those

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

value from this shared network solution.”). Each claim of the ’120 patent, focuses

on the automated tasks of (1) receiving user related communications, (2) receiving,

recognizing, and interpreting natural speech, and (3) sending a message and a

notification to the user over the telephone and internet. Id. at 7:52-10:47

B. Challenged Claims

The ’120 patent includes 18 claims, two of which (claims 1 and 5) are

independent. Petitioner requests cancellation of every claim. Representative

independent claim 1 recites as follows:1

1. A voice-enabled and user-configured computer system

accessible to a user using an electronic communication device,

via at least one telecommunications network, the voice-enabled

computer system for unifying communications transmitted

through the at least one telecommunications network, the voice-

enabled computer system comprising:

1 Independent claim 5 recites a method for implementing the system of

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


5

at least one cluster of servers with at least one voice server, the

voice server including speaker-independent speech recognition

and execution functionality, the at least one cluster of servers

accessible by the electronic communication device, via at least

one of a telephone connection and an internet connection;

at least one database server, the database server connected to the

cluster of servers and including stored data of interest to the

user, the speaker-independent speech recognition and execution

functionality configured to receive one or more natural voice

spoken commands from the user via the electronic

communication device via a first communication connection

type of the telephone connection or the internet connection and

to interpret the one or more natural voice spoken commands by

comparing each of the one or more natural voice spoken

commands with a set of stored commands, each of the set of

stored commands corresponding to a single voice-enabled

operation and each command in said set of stored commands

being an alternative intuitive description of the single voice-

enabled operation, and the one or more natural voice spoken

commands configured to execute one or more voice-enabled

operations on at least a portion of the stored data based at least

in part on the one or more natural voice spoken commands, the

single voice-enabled operation configured to create computer-

generated communications for selective transmission over the

telephone connection and the internet connection for respective

users; and


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at least one file server and a web server, the file server and the web

server connected to the at least one cluster of servers and

configured to facilitate transmission of a computer-generated

communication-relating to the user via the internet connection,

wherein at least a message and a notification relating to the one

or more voice-enabled operations executed for the user via the

one or more natural voice spoken commands received from the

user are sent to the user over one or more communication

connections, at least one of the message and the notification

sent to the user via at least a second communication connection

type from the one or more communication connections that is

of different type from the first communication connection type,

and wherein each of the message and the notification is at least

from a group consisting of a 1) telephone call, 2) a conference

call, 3) a facsimile message, 4) a voicemail message 5) an email

message, and 6) a message containing data.

IV. GROUNDS FOR STANDING

A. At Least One Challenged Claim Is Unpatentable

As further detailed below, claims 1-18 of the ’120 patent are unpatentable

under at least 35 U.S.C. §§ 101, 112, and 103. Thus, it is more likely than not that,

at least, one of the claims of the ’120 patent is unpatentable. 35 U.S.C. § 324(a).

B. The ’120 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


7

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). The 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 ’120

patent. See, e.g., Ex. 1005 at 4-5; Ex. 1006 at 5; Ex. 1007 at 5. Parus cannot now

deny that the ’120 patent relates to a covered business method.2 Accordingly, each

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

ed. March 8, 2011) (statement of Sen. Schumer).


8

of claims 1-18 is directed to 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 ’120 patent, the patent explains that the purpose of the

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

Ex. 1001 at 1:37-44. Notably, “business people seek to communicate with each

other, obtain useful information [and] interact commercially.” Id. (emphasis

added). Further, the ’120 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 2:42-46. The ’120 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 7:33-35. (emphasis added)

The ’120 patent 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 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.” Id. at 6:18-23


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(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. Id. 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 the above-noted portion of the specification contains

“billing info.” See e.g., Id. at 7:64 (emphasis added). 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. Id.

at Fig. 6; 6:10-14.

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


10

that may include personal financial information (such as personal banking as is

accused in the various litigations filed by the Patent Owner).

C. The ’120 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.

at 48,736; see also CBM2012-00001, Paper 36 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 or method is novel and non-obvious[; or] (c)


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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 ’120 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 ’120 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 ’120 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).

The ’120 patent claims no technology beyond basic and well-known

computing components and functions. Each of the independent claims of the ’120

patent merely recites generic servers connected to conventional telephone and

Internet networks. See e.g., Ex. 1001 7:44-8:3 (reciting only the elements of

servers and networks).

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

known hardware and software:


12

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.

Id. at 5:49-67. The ’120 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.


13

2. The ’120 patent does not solve a technical problem using a technical solution

The challenged claims of the ’120 patent do not address a technical problem.

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

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

system is intended to 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, it uses computing components for computing, and

“standard communication device[s],” for communication. Id. at 6:1-2; 2:19-22.

Accordingly, it is using known technology for ordinary purposes.

The ’120 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


14

confirmed by the patent’s use of conventional and generic hardware to implement

the claimed features. Id. at 5:49-67.

Additionally, 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 ’120 patent is merely computerizing a known

method for organizing and facilitating known communication techniques, using

conventional hardware.


15

D. Petitioner Has Been Sued for Infringement of the ’120 Patent and Is Not Estopped

Petitioner has been sued for infringement of “at least claim 1” of the ’120

patent. See 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 filed an additional CBM petition on the ’120 patent on May

1, 2015, CBM2015-00110. Petitioner asserts that the arguments in the present

petition are distinct from CBM2015-00110 because they apply different prior art

challenges and because the previous petitions challenged the priority date of the

’120 patent.

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 1-18 of the ’120 patent, and the cancellation of these claims as

unpatentable.

B. Statutory Grounds of Challenge

Petitioner requests cancellation of claims 1-18 as unpatentable under

35 U.S.C. §§ 103, 112, and 101. The claim constructions, reasons for

unpatentability, and specific evidence supporting this request are detailed below.


16

C. Person of Ordinary Skill

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

application leading to the ’600 patent was filed) (see Ex. 1004) 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. 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 patent in which it appears.” 37 C.F.R. § 42.300(b).3 Under these principles,

the following term from the claims of the ’120 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. 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.


17

1. “voice server”

Claims 1, 5, 9, 10, 11, 13, 15, 16, and 18 recite a “voice server.” See e.g., Ex.

1001 at 7:58; 8:60; 9:46; 10:6; 10:15; 10:32; 10:43. “Voice server” should be

construed as “hardware and/or software that allow for telephony 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 to “include certain functions, such as telephony, automatic speech

recognition, text-to-speech, [and] conferencing” functions. Ex. 1001 at 3:32-34.

Additionally, “voice” is contextually used within the specification to refer to a

“normal telephone connection.” Id. at 3:41-43.

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. Accordingly, the broadest reasonable construction of a “voice server” is

“hardware and/or software that allow for telephony functions.”

2. “web server”

Claims 10 and 15 recite a “web server.” Ex. 1001 at 10:4; 10:29. “Web

server” should be construed as “hardware and/or software that support a web

protocol.” A “web server,” as used in the specification, is a server “where the web

access and services are located.” Id. at 3:28-29. A “server” is generally understood


18

in the art to mean “a computer providing a service [which is] [u]sually a

combination of hardware and software.” Ex. 1008 at 802. Accordingly, the

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

that support a web protocol.”

3. “database server”

Claim 1 recites a “database server.” Ex. 1001 at 7:64. “Database server”

should be construed as “hardware and/or software that support the use of structured

data.” A “database server,” as used in the specification, may be in the form of a

“Sybase” database server, which includes both hardware and software. Id. at 3:27-

28. “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 “server” is

generally understood in the art to mean “a computer providing a service [which is]

[u]sually a combination of hardware and software.” Id. at 802. Accordingly, the

broadest reasonable construction of a “database server” is “hardware and/or

software that support the use of structured data.”

4. “file server”

Claims 1, 9, and 14 recite a “file server.” Ex. 1001 at 8:20; 9:48; 10:24. “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” Id. at Abstract.


19

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.” Id. at 802.

Accordingly, the broadest reasonable construction of a “file server” is “hardware

and/or software storing accessible files.”

5. “cluster”

Claims 1 and 5 recite a “cluster.” Ex. 1001 at 7:52-8:37; 8:54-9:29.

“Cluster” should be construed as “a group of interconnected servers.” The

specification exemplifies a “cluster of servers” as a plurality of servers. Id. at 3:25-

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

server.” Accordingly, the broadest reasonable construction of a “cluster” as “a

group of interconnected servers.”

6. “speaker-independent speech recognition”

Claims 9, 10, 11, 13, and 15 recite “speaker-independent speech

recognition.” Ex. 1001 at 9:47; 10:3; 10:7; 10:16; 10:27-28. “Speaker-independent

speech recognition” should be construed as “speech recognition functionality able

to recognize speech from any speaker.” The specification uses this term only once

merely stating that the system is able to “recognize and extensive set of simple,

intuitive, speaker-independent speech commands.” Id. at 6:15-17. “Speaker-


20

independent speech recognition” is generally understood in the art to mean

“[t]echnology capable of recognizing any user without prior training or knowledge

of the user.” Ex. 1008 at 832. Accordingly, the broadest reasonable construction of

“speaker-independent speech recognition” is “speech recognition functionality able

to recognize speech from any speaker.”

7. “natural voice spoken commands”

Claims 1, 5, 11, and 18 recite “natural voice spoken commands.” Ex. 1001 at

8:1; 9:5; 10:18; 10:45-46. “Natural voice spoken commands” should be construed

as “commands spoken by the user.” Within the specification, the Patentee refers to

a “natural voice” in similar fashion as it refers to “speaker-independent.” The

patent states that the “voice recognition software us[es] natural voice recognition

[and] [t]herefore, the system does not have to be trained to identify your voice.” Id.

at 5:3-6. In other words, a user may simply speak their commands. Accordingly,

the broadest reasonable construction of “natural voice spoken commands” is

“commands spoken by the user.”

8. “the electronic communication device supports the telephone and internet connections”

Claim 4 recites “wherein the electronic communication device supports the

telephone and internet connections.” Ex. 1001 at 8:51-53. Claim 4 further recites

that the electronic communication device “is at least one of a group of a mobile

telephone, a pager, a personal computer, a facsimile machine, an electronic


21

mailbox[,] and a voice-mail service.” Id. at 8:49-51. “Wherein the electronic

communication device supports the telephone and internet connections” should be

construed as “wherein the electronic communication device supports the telephone

or Internet connection.” Within the specification, the Patentee describes accessing

the network system using only “standard communication device[s].” Id. at 2:31;

6:58-59. Standard facsimile machines and pagers are not capable of supporting

both the telephone and the Internet. Accordingly, the broadest reasonable

construction of “wherein the electronic communication device supports the

telephone and internet connections” is “wherein the electronic communication

device supports the telephone or Internet connection.”

VI. CLAIMS 1-18 OF THE ’120 PATENT ARE UNPATENTABLE

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

The ’120 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 ’120 patent are directed to longstanding business

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

faxes)—tasks typically performed by administrative assistants. Although the

claims of the ’120 patent include certain hardware components, these components

amount to nothing more than generic, off-the-shelf computer and computer-related


22

components functioning in their basic, routine, and expected way to automate

conventional administrative assistant tasks. Indeed, the specification of the ’120

patent suggests that small offices without dedicated administrative support staff

may find value in the described automated system. Ex. 1001 at 2:47-50.

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 the ’120 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 ’120 patent unpatentable.

1. The ’120 patent teaches using a computer to automate the tasks of an administrative assistant

Based on the specification, the claims of the ’120 patent teach using a

computer to automate tasks traditionally performed by a human administrative

assistant, particularly, tasks related to managing business communications. See


23

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 ’120 patent useful because it uses a computer to perform

the administrative functions instead of a person. See id.

The ’120 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 2:25-46. In order to manage communications (including email, voice mail, or

faxes), the ’120 patent teaches combining well-known computer components to

access the various communications via telephone or the Internet. Id. at 3:19-34;

5:58-6:11; Ex. 1003 at ¶¶ 23-25. In fact, the specification of the ’120 patent admits

that the system “combines [existing] state-of-the-art speech recognition, computer,

and telephony technology.” Ex. 1001 at 6:10-11 (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 5:58-6:2. 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


24

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

to provide expected functionality.

None of these components contributed to the allowance of the ’120 patent.

Notably, during prosecution of U.S. Patent 8,098,600,4 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. 1014 at 9 (Amendment and Reply to Feb. 14,

2011 Non-Final Office Action, p. 9); see also Id. at 29-48 (to Feb. 14, 2011 Non-

Final Office Action). The Applicant explained that:

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 4 In an Response to Office Action dated July 16, 2013, the Applicant terminally

disclaimed the ’120 patent based on the issued claims of U.S. Patent 8,098,600,

indicating that the patented subject matter is substantially similar. Thus, for

illustrative purposes regarding patent eligible subject matter, Petitioner refers to

prosecution history of U.S. Patent 8,098,600 as indicative and representative of the

subject matter taught by and the claims issued in the ’120 patent.


25

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. 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 ’120 patent, just like U.S. Patent 8,098,600, from which the

’120 patent is terminally disclaimed, 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 ’120 patent from its general teachings of

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

representative claim of the ’120 patent, focuses on the automated tasks of (1)

receiving instructions from a user by phone or Internet and (2) transmitting a

message or notification by phone or Internet based on those instructions. To

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


26

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

database server, a file server, and a web server.

2. Patents like the ’120 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 determine whether the claims at issue are directed to an abstract idea,


27

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 circumvent the prohibition against


28

patenting abstract ideas and mental processes”); see also Lumen View Tech., LLC

v. Findthebest.com, Inc., No. 1:13-cv-03599, 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 ’120 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 ’120 patent

are patent-eligible under 35 U.S.C. § 101. First, each of the claims of the ’120

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 ’120 patent claims the abstract idea of a.managing business communications, a longstanding business practice that is itself not patent eligible

The claims of the ’120 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 ’120 patent, which is

representative in concept of all of its claims, focuses on the basic communication

management tasks of receiving instructions from a subscriber or sending a message

and a notification based on those instructions. These tasks, however, constitute

fundamental business practices regularly performed by human administrative


29

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

’120 patent in practice in a typical business setting.

Exemplary Language of Claim 1 of the

’120 patent

The abstract idea of claim 1 in practice in a traditional business

setting 1. A voice-enabled and user-configured

computer system accessible to a user

using an electronic communication

device, via at least one

telecommunications network, the voice

Ms. Smith and her assistant, Mr. Jones,

regularly communicate using phone

and email. Ms. Smith can communicate

with Mr. Jones through the telephone.

Ms. Smith has granted Mr. Jones with

access to her phone line, voicemail, and

email. With this access, Mr. Jones

unifies and manages communications

on behalf of Ms. Smith.

at least one cluster of servers with at

least one voice server, the voice server

including speaker-independent speech

recognition and execution functionality,

the at least one cluster of servers

accessible by the electronic

communication device, via at least one

of a telephone connection and an internet

connection;

Mr. Jones recognizes commands and

spoken information that he receives

from Ms. Smith, and Ms. Smith can

access Mr. Jones using the telephone or

by an Internet connection.


30

at least one database server, the database

server connected to the cluster of servers

and including stored data of interest to

the user,

Mr. Jones can access and maintain a

repository including Ms. Smith’s

contact list, administrative data, or

other information of interest to Ms.

Smith.

the speaker-independent speech

recognition and execution functionality

configured to receive one or more

natural voice spoken commands from the

user via the electronic communication

device via a first communication

connection type of the telephone

connection or the internet connection and

to interpret the one or more natural voice

spoken commands by comparing each of

the one or more natural voice spoken

commands with a set of stored

commands, each of the set of stored

commands corresponding to a single

voice-enabled operation and each

command in said set of stored commands

being an alternative intuitive description

of the single voice-enabled operation,

and

Mr. Jones can receive spoken

commands from Ms. Smith by either

the telephone or an Internet connection

and interpret those commands. Mr.

Jones may compare the command with

a mental list of commands that

correspond to tasks that Mr. Jones

regularly completes for Ms. Smith. Mr.

Jones’ mental list of commands may

include an alternative intuitive

description of those commands in his

own words.


31

the one or more natural voice spoken

commands configured to execute one or

more voice-enabled operations on at

least a portion of the stored data based at

least in part on the one or more natural

voice spoken commands,

Mr. Jones may determine which task

the spoken command from Ms. Smith

corresponds to and perform a task on

the contact list, administrative data, or

other information, based on the

command received from Ms. Smith.

the single voice-enabled operation

configured to create computer-generated

communications for selective

transmission over the telephone

connection and the internet connection

for respective users; and

Mr. Jones may, as a result, create

communications for selective

transmission over the telephone and the

Internet connection for Ms. Smith.

at least one file server and a web server,

the file server and the web server

connected to the at least one cluster of

servers and configured to facilitate

transmission of a computer-generated

communication-relating to the user via

the internet connection[.]5

Mr. Jones has access to an electronic

database, a Rolodex, document, or

filing cabinet. Mr. Jones also has access

to the Internet. Mr. Jones’ access to

these resources facilitates his

5 The remainder of language in claim 1 adds no additional functionality, but rather

merely provides that the “message and the notification” may be sent via various

“communication connection types” including “telephone” and/or “email.” Thus,


32

transmission of the communications he

created relating to Ms. Smith via the

Internet.

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.

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

claims similar to those of the ’120 patent as directed to patent ineligible abstract

ideas. See, e.g., Cloud Satchel, LLC v. Amazon.com, Inc., No. 1:13-cv-00041, 2014

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

the additional claim language also fails to recite anything beyond the abstract idea,

as exemplified in the above chart.


33

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

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

00318, 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 ’120 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 ’120 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 ’120 patent includes b.an inventive concept sufficient to transform the claim into “significantly more” than the patent ineligible abstract idea itself

Step 1 of the Alice framework reveals that all of the claims of the ’120 patent

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


34

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 ’120 patent do not contain an “inventive

concept” sufficient to transform the abstract idea into patentable subject matter.

The claims of the ’120 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) messages and notifications being sent based

on verbal instructions from the user.6

For example, use of a general-purpose “telecommunications network” for

sending information to and from a subscriber does not confer patent eligibility to

the claims of the ’120 patent. For example, in Alice, the Supreme Court expressly

6 As the specification explains, voice-recognition hardware and software for

interpreting claimed “verbal instructions” are preferably selected from among

known off-the-shelf components. See, e.g., Ex. 1001, 4:53-6:9.


35

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

“transform the abstract idea into a patent-eligible invention.”7 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 on a computerized telephony network, and a

computer is the one that makes the decision, the claim is still not patentable,” as it

7 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)).

https://a.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2027337692&pubNum=708&originatingDoc=I3eecb2ed161911e38348f07ad0ca1f56&refType=RP&fi=co_pp_sp_708_1294&originationContext=document&transitionType=DocumentItem&contextData=(sc.History*oc.Search)#co_pp_sp_708_1294


36

“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 ’120 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 (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/DTMF Signals/ Electronic Communication Device): Claims 1, 2, 3, 4, 5, 6, 7, 12, 16, 17

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

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


37

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 ’120 patent is to automate the tasks typically performed by

administrative assistants. See Ex. 1001 at 5:37-41. As claimed in the ’120 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

’120 patent where these components are recited.

Server (e.g., Voice, Database, File, Web): Claims 1, 5, 9, 10, 11, 13, 14, 15, 18

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


38

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., No. 2:13-cv-00631, 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., No. 1:12-cv-

01118, 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 ’120 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,


39

faxes, 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 1, 5, 8, 13, 14, 15, 18

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., No. 1:13-cv-04479, 2014 WL 4966326, at *5-6

(N.D. Cal. Sept. 30, 2014); see also Content Extraction & Transmission LLC v.

Wells Fargo Bank, N.A., No. 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).


40

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

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

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

the claims of the ’120 patent into patentable subject matter.

4. Because the ’120 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 ’120 patent claims unpatentable subject matter. The claims of the ’120

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. The claims do not contain an inventive concept sufficient to

transform the claimed abstract idea into patentable subject matter. The claims never

specify how the various general-purpose computer components are configured to

interact with one another, do not specify algorithms used to achieve the

components’ compatibility, do not recite the use of specialized hardware, and are

not limited to a particular application.8 At best, the claims merely require using a

8 While the specification incorporates source code by reference, that does not save

the patent from subject matter ineligibility under § 101. The claims do not require

any source code implementation, and patent eligibility is premised on the claims,

not on the specification. See, e.g., Accenture at 1345 (“[T]he important inquiry for


41

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 ’120 patent are invalid under 35

U.S.C. § 101.

B. Claims 1-18 Are Unpatentable Under 35 U.S.C. § 103

1. DirectTalk, DirectTalkMail, Hark, and IBM Announcement A95-893 are prior art under 35 U.S.C. §§ 102(a) and 102(b)

The earliest filing date, to which the ’120 patent claims priority, is March 3,

1997. IBM, AIX DirectTalk/6000: General Information and Planning, Release 6,

GC33-1720-00 (Dec. 1995) (Ex. 1010, “DirectTalk”) was published in December

a § 101 analysis is to look at the claim . . . the complexity of the implementing

software or the level of detail in the specification does not transform a claim

reciting only an abstract concept into a patent-eligible system or method); see also

Planet Bingo LLC v. VKGS LLC, 576 F. App’x 1005, 1008-09 (Fed. Cir. 2014)

(rejecting the argument that unclaimed features and “complex computer code” are

relevant for patent eligibility purposes).


42

1995, more than one year before the earliest filing date claimed by the ’120 patent.

Thus, DirectTalk is prior art under 35 U.S.C. §§ 102(a) and (b).

IBM, DirectTalkMail: Administration, Release 6, SC33-1733-00 (Feb. 1996)

(Ex. 1011, “DirectTalkMail”) and IBM, AIX DirectTalk/6000 Release 6: Speech

Recognition with the BBN Hark Recognizer, SC33-1734-00 (Feb. 1996) (Ex. 1012,

“Hark”) were published in February, 1996, more than one year before the earliest

filing date claimed by the ’120 patent. Thus, DirectTalkMail and Hark are prior art

under 35 U.S.C. §§ 102(a) and (b).

IBM, DT/6 1.5 Optional Features, Announcement Number A95-893 (Ex.

1013, “IBM Announcement A95-893”) was published on July 10, 1995, more than

one year before the earliest filing date claimed by the ’120 patent. See Ex. 1013 at

2 (showing the date of the announcement letter). Thus, IBM Announcement A95-

893 is prior art under 35 U.S.C. §§ 102(a) and (b).

DirectTalk, DirectTalkMail, and Hark (collectively the “DirectTalk/6000

manuals”) are manuals for products in the IBM Callpath family of products. See

Ex. 1009 at 5. IBM supplied a copy of DirectTalk automatically with each basic

order of the DirectTalk/6000 system and additional copies could be ordered from

IBM. Id. at 20; see also Ex. 1010 at 113-14. IBM also supplied a copy of

DirectTalkMail with each order of the DirectTalkMail feature of DirectTalk/6000

and supplied a copy of Hark with the Hark Speech Recognition feature of


43

DirectTalk/6000. Ex. 1009 at 5; Ex; 1010 at 113-14. IBM Announcement A95-893

is an announcement letter, published by IBM, that describes certain features of

DirectTalk/6000, DirectTalkMail, and the Hark Speech Recognition feature. See

Ex. 1013.

2. The combination of the DirectTalk/6000 manuals and IBM Announcement A95-893 renders claims 1-18 of the ’120 patent obvious

The DirectTalk/6000 manuals disclose DirectTalk/6000, a computer-based

voice processing system that allows callers to access information stored in

databases over the telephone. Ex. 1010 at 1. The DirectTalk/6000 system can

include DirectTalkMail9, an orderable, optional feature of DirectTalk/6000 that

provides a fully functional voice mail system that can be customized to provide

access to e-mail and fax to provide a complete messaging solution. Id. at 15. The

system can also be customized to provide a “single point of access to voice, fax,

and email for office, home-based, or mobile workers.” Ex. 1011 at 37.

DirectTalkMail, a voice application, is a collection of servers that can

include speech recognition in the form of the BBN Hark Recognizer. Ex. 1010 at

15, 21. This speech recognition allows callers to make selections over the phone by 9 Note that when italicized, DirectTalkMail refers to exhibit 1011. When not

italicized, DirectTalkMail refers to the DirectTalkMail system, as is described in

DirectTalkMail.


44

speaking instead of or in addition to using the telephone keypad. Id. at 3. Callers

can access information by calling the system using a telephone or at a workstation.

Id. at 30. Users can also access information, such as voicemail, through the Internet

using a World Wide Web browser that accesses a web server. Ex. 1011 at 75.

The system allows users to read, retrieve, store, and update “all kinds of

information” stored in local and/or remote databases, such as voice messages and

account balances. Ex. 1010 at 5, 11, 59. By bringing together an organization’s

existing telephone network and existing data communications network, the

DirectTalk/6000 system allows users to access information, whether “dial-a-joke,

horoscopes, lottery results, sports events, news, [or] exchange rates” by calling the

system with a telephone. Id. at 1, 5, 14.

Users can control the DirectTalk/6000 and DirectTalkMail systems by

speaking whole sentences over the telephone in addition to pressing DTMF keys


45

on a telephone keypad. Id. at 54. DirectTalkMail sends the speech to the BBN Hark

Recognizer which then converts the speech into a text string that the voice

application parses by assigning a tag to words or phrases. Id. at 54; Ex. 1012 at 2,

3. Each tag can correspond to multiple words or phrases that have the same

meaning in the context of the application such as “that’s all, that’s enough,

finished, stop, quit, and end.” Ex. 1012 at 3, 28. The voice action can then take

“whatever action is appropriate to the caller’s response, [such as] retrieving

information and speaking it to the caller; updating information in a database;

storing or retrieving a voice message; or making another call.” Ex. 1010 at 12.

The DirectTalk/6000 and DirectTalkMail system can generate and transmit

e-mails, faxes, and voicemail to users of both a telephone and a workstation. Id. at


46

30. The system may generate voice information by decompressing compressed

voice information or generate speech by converting faxes and emails into text-to-

speech. Id. at 8, 30. The system may also generate notifications in the form of

textual information displayed on a workstation, a page to the user’s pager, or a

telephone call to a user at a designated number. Id. at 29, 30. The system may, for

example, transmit e-mails, faxes, voicemail, and their related notifications when

another user sends an e-mail, fax, or voicemail through the system. Id. at 54.

Importantly, the DirectTalk/6000 system can be customized. Id. at 8. The

system can be customized to, for example, connect with existing e-mail, fax, and

other servers to integrate into an existing enterprise environment. See id. at 8, 19.

In particular, the voicemail system, DirectTalkMail, can be customized by

following instructions in an included guide or alternatively by writing a custom

voice messaging application. Id. at 16.

3. The combination of the DirectTalk/6000 manuals and IBM Announcement A95-893 would have been obvious

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

invention of the ’120 patent to combine the teachings of the DirectTalk/6000

manuals and IBM Announcement A95-893. Ex. 1003 at ¶ 42. The combination is

obvious because the references all discuss the same product family and expressly

disclose that DirectTalk/6000, DirectTalkMail, and the BBN Hark Recognizer


47

operate together in a voice processing system that allows caller to access

information stored in the databases. See e.g., Ex. 1010 at 1, 3, 15.

As further detailed below,10 the combination of the DirectTalk/6000 manuals

and IBM Announcement A95-893 discloses all elements of claims 1-18 of the ’120

patent.

Claim DirectTalk, DirectTalkMail, & Hark 1. [1.0] A voice-enabled and user-configured computer system accessible to a user using an electronic communication device, via at least one telecommunications network, the voice-enabled computer system for unifying communications transmitted

DirectTalk discloses DirectTalk/6000, a computer-based voice processing system (the claimed “voice enabled and user-configured computer system”) connected to callers over the telephone network (the claimed “at least one telecommunications network”) that includes DirectTalkMail, a voice application, which includes fully functional voice mail and messaging (the claimed “unifying communications”). Ex. 1010 at 1, 15.

“IBM AIX DirectTalk/6000 is a computer-based voice processing system designed to meet the ever-expanding requirement for business information to be available over the telephone. . . . The voice processing system is connected to callers via the telephone network, and to information in databases via your data communications network.” Id. at 1.

“DirectTalkMail is supplied as a separately orderable,

10 All emphasis in the claim charts in the petition are added unless otherwise noted.

Additionally, given the amount of disclosure available, all citations in the claim

charts are exemplary and longer quotations are not always reproduced where the

quotation appears in a previous claim. Appendix B to Exhibit 1003 includes a

version of this chart that repeats quotations of the references for each claim term.


48

Claim DirectTalk, DirectTalkMail, & Hark through the at least one telecommunications network, the voice-enabled computer system comprising:

optional feature of DirectTalk/6000. A Voice Mail System DirectTalkMail is a fully-functional voice mail system, enabling you to make better use of your own time and that of your co-workers by sending and receiving voice messages when a personal interruption is not necessary. It also functions as an answer phone. You can record an up-to-date personal greeting that callers hear when you are unavailable, or already busy on the phone. DirectTalkMail takes messages for you which you can deal with at a more convenient time. DirectTalkMail makes every call productive. . . . DirectTalkMail is not just an off-the-shelf voice mail application-teamed with the open architecture of DirectTalk/6000 it can be customized to enhance your existing investment in e-mail and fax mail servers to provide a complete messaging system for the enterprise. See ‘Providing an Integrated Mail System’ on page 30.” Id. at 15.

DirectTalkMail discloses that DirectTalk/6000 and


49

Claim DirectTalk, DirectTalkMail, & Hark DirectTalkMail can be customized to create a single point of access for voice, fax, and e-mail for office, home-based, or mobile workers (the claimed “unifying communications”). Ex. 1011 at 37.

“DirectTalk/6000 and DirectTalkMail can be customized to form the basis of an integrated mail system that satisfies these requirements: a single point of access to voice, fax, and e-mail for office, home-based, or mobile workers.” Id. at 37.

[1.1] at least one cluster of servers with at least one voice server, the voice server including speaker-independent speech recognition and execution functionality, the at least one cluster of servers

DirectTalk discloses DirectTalkMail, a voice application, is a collection of servers (the claimed “cluster of servers”) that can include speech recognition servers (the claimed “voice server”) running speech recognition with the BBN Hark Recognizer, which provides continuous speaker-independent speech recognition (the claimed “speaker-independent speech recognition and execution functionality”) enabling callers to make choices by speaking instead of using the telephone keypad. Ex. 1010 at 3, 8, 15, 17, 21.

“DirectTalkMail is an application running under DirectTalk/6000. It can interface to other DirectTalk/6000 voice applications to provide a voice messaging capability. . .” Id. at 15. “Essentially, a voice application is a collection of state tables, prompts, voice segments, and servers, which together provide the desired function.” Id. at 17.

“An automated attendant can direct incoming calls to different customer service representatives or departments, or to different automated applications. Callers can make choices by using the telephone keypad-and speech recognition enables them to make choices by speaking.” Id. at 3.

“For continuous speech recognition, DirectTalk/6000 includes a separately orderable feature, Speech Recognition with the BBN Hark Recognizer. This includes both server and client software and a


50

Claim DirectTalk, DirectTalkMail, & Hark complete set of commands ready to be used by your voice applications.” Id. at 21.

“DirectTalk/6000 offers the following speaker-independent speech recognition solutions: . . .

• Speech Recognition with the BBN Hark Recognizer (a separately orderable feature) providing continuous speech recognition, which allows for considerably more sophisticated voice applications that respond to natural spoken input from callers.

DirectTalk/6000 can also be integrated with other speech recognition products.” Id. at 8.

[1.2] accessible by the electronic communication device, via at least one of a telephone connection and an internet connection;

DirectTalk discloses that the DirectTalk/6000 system (part of the claimed “cluster”) is connected to callers via the telephone network (the claimed “telephone connection”) and includes DirectTalkMail. Id. at 1.

“The voice processing system is connected to callers via the telephone network, and to information in databases via your data communications network.” Id. at 1.


51

Claim DirectTalk, DirectTalkMail, & Hark

DirectTalkMail discloses that the DirectTalkMail voice application included with DirectTalk/6000 is accessible over the Internet using a World Wide Web browser (the claimed “internet connection”). Ex. 1011 at 75.

“Implementing World Wide Web Access To DirectTalkMail This chapter tells you how to provide your subscribers with a visual user interface to DirectTalkMail using a World Wide Web (WWW) browser such as Netscape Navigator, NCSA Mosaic, or IBM WebExplorer, as described in ‘Using a Web Browser as a Visual Interface to Voice Mail’ on page 37.” Id. at 75.

“You must have access to a WWW server running under AIX. This server does not have to be in your organization; you can use the service from an Internet provider. Or you can install the WWW server software on the same RISC System/6000 as DirectTalkMail.” Id.

[1.3] at least one database server, the database server connected to the cluster of servers and including stored data of interest to the user,

DirectTalk discloses that the DirectTalk/6000 system (part of the claimed “cluster”) allows callers to read, retrieve, store, and update information in databases (the claimed “database sever”) in the form of either local or remote servers that store voice messages, account balances, and “all kinds of information.” Ex. 1010 at 1, 5, 11, 14, 27, 59.

“Voice processing enables you to bring together your existing telephone network and your existing data communications network to provide database


52

Claim DirectTalk, DirectTalkMail, & Hark information using the telephone.” Id. at 1.

“Your voice applications can also perform computations, read and retrieve information from databases, update databases, communicate information by speaking it back over the telephone, let callers leave a message, transfer calls to other applications, or connect callers to a human operator.” Id. at 11.

“The major components of DirectTalk/6000 are the DirectTalk/6000 software-running on a RISC System/6000 equipped with at least one digital trunk adapter-and one or more digital trunk processors. Your data can be stored either locally or-if the RISC System/6000 is part of a data communications network-on a remote host computer or database server.” Id. at 59.

“Voice applications can give callers the opportunity to leave and retrieve voice messages in electronic mailboxes, and to forward and delete them. In addition, these applications should allow each subscriber to record a greeting for callers to hear. The greetings are recorded as voice segments. . . .


53

Claim DirectTalk, DirectTalkMail, & Hark Some of the state table actions are specifically intended to provide voice messaging functions. State tables and custom servers use the DirectTalk/6000 voice database to access voice messages, greetings and audionames.” Id. at 27. “DirectTalk/6000 can take advantage of any computer applications that your company already uses to retrieve, store, and manipulate information. Because DirectTalk/6000 communicates with existing programs, you can access information in an existing database without writing new host programs for that purpose.” Id. at 14.

“DirectTalk/6000 facilitates the provision of all kinds of information over the phone-time, weather, dial-a-joke, horoscopes, lottery results, sports events, news, exchange rates, and so on. Whether the information you provide is dynamic or static, brief or lengthy, there is a way in which DirectTalk/6000 can be used to deliver it to subscribers.” Id. at 5.

DirectTalkMail discloses that the DirectTalk/6000 system including DirectTalkMail stores voice messages (the claimed “stored data of interest to the user”) in a database. Ex. 1011 at Fig. 22.


54


[1.4] the speaker-independent speech recognition and execution functionality configured to receive one or more natural voice spoken commands from the user via the electronic communication device via a first communication connection type of the telephone connection or the internet to interpret the one or more natural voice spoken commands by

DirectTalk discloses that callers (the claimed “users”) can speak whole sentences (the claimed “natural voice spoken command”) over the telephone (the claimed “electronic communication device” and “telephone connection”) to communicate with DirectTalk/6000 voice applications and that the sentences are sent to the BBN Hark Recognizer (the claimed “speaker-independent speech recognition”) which returns the words to the voice application, which can interpret the output and take appropriate action (the claimed “interpret”). Ex. 1010 at 54.

“With the BBN Hark Recognizer, callers can communicate with DirectTalk/6000 voice applications by speaking connected words. Instead of responding to prompts by pressing keys, or with single spoken words, callers can speak whole sentences, such as "I'd like a large deep pan pizza with tomatoes, chillies, and anchovies", and the voice application sends this to the BBN Hark Recognizer. The Recognizer returns the words recognized to the voice application, which can interpret the output and take appropriate action.” Id. at 54.

Hark discloses that the BBN Hark Recognizer converts


55

Claim DirectTalk, DirectTalkMail, & Hark comparing each of the one or more natural voice spoken commands with a set of stored commands, connection and each of the set of stored commands corresponding to a single voice-enabled operation and each command in said set of stored commands being an alternative intuitive description of the single voice-enabled operation,

speech (the claimed “natural voice spoken command”) into a text string that the voice application parses (the claimed “interpret”) by assigning a tag11 to words or phrases, where each tag corresponds to multiple words or phrases (the claimed “set of stored commands”) that have the same meaning in the context of the application (the claimed “alternative intuitive description of the single voice enabled operation”). Ex. 1012 at 2, 3, 28.

“Speech recognition technology converts speech data into machine-readable format. This means that speech input can be accepted from a caller and processed in the same way as DTMF input, text, or numeric data. It's up to the application to interpret the output of the recognition process.” Id. at 2.

“The grammar Contains a description of the words that are acceptable for the current recognition task, along with the

11 One of ordinary skill in the art would have understood that assigning a tag to

parsed words or phrases, where each tag corresponds to multiple words or phrases,

requires comparing the parsed words or phrases with those words or phrases that

correspond to each particular tag. Ex. 1003 at ¶ 49.


56

Claim DirectTalk, DirectTalkMail, & Hark allowable sequences of words.” Id. at 2.

“It's up to the voice application to interpret the text string returned by the BBN Hark Recognizer. Parsing these text strings can be simplified by careful grammar design. Each word in the grammar can be labeled with a tag that the application can then use instead of the actual word or phrase. For example, a grammar for speech-activated dialing would contain names: JOHN SMITH, ABIGAIL LAFONTAINE, and so on. You could tag each name with the person's telephone number. . . . Another way in which you can use tags to make your application simpler, is to identify words that have the same meaning in the context of the application. For example, THAT'S ALL, THAT'S ENOUGH, FINISHED, STOP, QUIT, and END can a" be tagged as STOP. The voice application just needs to know what to do when it receives the STOP tag, and does not need to know exactly what the caller said.” Id. at 3.

“Valid responses from the caller (and other phrases the caller is likely to say. such as ‘I'd like’, ‘Please could I have’, ‘I think I'll have’, ‘Please’, ‘Thanks’, and so on) should be included in the BBN Hark speech recognition grammar.” Id. at 28.

[1.5] and the one or more natural voice spoken commands configured to execute one or more voice-enabled operations on at least a portion of the stored data based at least in part on

DirectTalk discloses that users can interact with DirectTalk/6000 voice applications by speaking (the claimed “natural voice spoken command”) or by pressing keys on a DTMF phone and in response, the voice application may transmit information to the caller, update information in a database, store or retrieve a voice message, or make another call (collectively, the claimed “one or more voice-enabled operations on at least a portion of the stored data”). Ex. 1010 at 12.

“The heart of a DirectTalk/6000 voice application is its interaction with a caller or called party. Typically, a voice application will either handle inbound calls or


57

Claim DirectTalk, DirectTalkMail, & Hark the one or more natural voice spoken commands,

make outbound calls. . . . The application waits for the caller's response for a set period of time. The caller can either respond by speaking (if speech recognition is implemented) or by pressing keys on a DTMF phone-ranging from a single digit (1 for yes or 2 for no, for example) to multiple digits (such as a catalog number or personal identification number). . . . The application takes whatever action is appropriate to the caller's response: for example, retrieving information and speaking it to the caller; updating information in a database; storing or retrieving a voice message; or making another call.” Id. at 12.

Hark discloses that the DirectTalk/6000 system running the BBN Hark Recognizer allows users to interact with the system using both DTMF and speech (the claimed “based at least in part”). Ex. 1012 at 25.

“Within a state table that is using speech recognition for things like menu choices, you may need to ask the caller to provide a number (such as an account number). It's often better to let the caller enter a number using DTMF keys. Within a state table, it is perfectly feasible to use speech for some interactions and DTMF keys for others.” Id. at 25.

[1.6] the single voice-enabled operation configured to create computer-generated communications for selective transmission over the telephone connection and

DirectTalk discloses that DirectTalk/6000 and DirectTalkMail can be customized create integrated mail system that provides a single point of access to voice, fax, and email, where the system can translate e-mail (the claimed “computer-generated”), using text-to-speech, into voice messages and decompress compressed voice messages (the claimed “computer generated”) for transmission over the phone (the claimed “telephone connection”) and send notifications of incoming voice mail to a workstation (the claimed “computer generated”). Ex. 1010 at 8, 30.


58

Claim DirectTalk, DirectTalkMail, & Hark the internet connection for respective users; and

“The IBM-developed hardware compresses voice traffic at the above-average ratio of 5-to-1, whilst retaining very high voice quality. This increases the system capacity to store audio data.” Id. at 8. “The ideal mail system must therefore provide: • Access to any e-mail, fax, or voice message • Immediate notification of any message • Sufficient data to indicate to the recipient whether they should look at the message immediately or leave it for later. DirectTalk/6000 and DirectTalkMail can be customized to form the basis of an integrated mail system that satisfies these requirements. . . . Workstation Access For example, at their workstation, the user could have an interface that shows them: • E-mail messages in their entirety • Notification of incoming faxes • Notification of incoming voice mail messages-together with the sender's name, date received, and so on. Then the user would be able to call into the DirectTalk/6000-based integrated mail system to listen to voice messages or get fax messages displayed on the screen. Mobile Access For example, you could also customize DirectTalkMail to enable mobile users to receive notification via a paging device and then access all types of incoming mail from a cellular or ordinary phone. They could listen to voice messages, ask for faxes to be sent to the nearest local fax machine, and have e-mail messages translated-using text-to-speech-into voice messages.” Id. at 30.

DirectTalkMail discloses that users can access their voice mail over the World Wide Web (the claimed “internet


59

Claim DirectTalk, DirectTalkMail, & Hark connection”). Ex. 1011 at 30.

“On the web page, you can see a list of all your messages at a glance and immediately select the one you want to hear. Selecting the message downloads and plays it on your personal computer or workstation, or sends it to the phone you specified, which then rings. You can also save or delete messages by selecting buttons on the Web page.” Id. at 30.

[1.7] at least one file server and a web server, the file server and the web server connected to the at least one cluster of servers and configured to facilitate transmission of a computer-

DirectTalk discloses that DirectTalk/6000 (part of the claimed “cluster”) stores administrative files, error files, voice application files (the claimed “file server”) that are used by the system (the claimed “facilitate”). Ex. 1010 at 103-04.

“DirectTalk/6000 requires space to store maintenance and administration files, error files, and statistics. . . . You also need disk space to store voice application files (state tables, voice segments, and messages).” Id. at 103-04.


60

Claim DirectTalk, DirectTalkMail, & Hark generated communication-relating to the user via the internet connection,

DirectTalkMail discloses a web server (the claimed “web server”) that provides a visual user interface to DirectTalkMail over the World Wide Web (the claimed “internet connection”). Ex. 1011 at 75, Fig. 22.


[1.8] wherein at least a message and a notification relating to the one or more voice-enabled operations executed for the user via the one or more natural voice spoken commands received from the user are sent to the user over one or more communication connections, at least one of the message and the notification sent to the user via at least a second communication connection type from the one or more communication connections that is of different type

DirectTalk discloses that DirectTalk/6000 and DirectTalkMail can transmit emails, voice mail messages, faxes, and “all types of incoming mail” (collectively, the claimed “message”) to callers over the telephone (the claimed “first communication connection type”) or users at their workstations (the claimed “second communication connection type”) and can provide notifications (the claimed “notification”) to users at their workstations or by calling or paging the user. Ex. 1010 at 29, 30.

“The ideal mail system must therefore provide: • Access to any e-mail, fax, or voice message • Immediate notification of any message • Sufficient data to indicate to the recipient whether they should look at the message immediately or leave it for later. DirectTalk/6000 and DirectTalkMail can be customized to form the basis of an integrated mail system that satisfies these requirements. . . . ” Id. at 30.

“Subscribers can tell DirectTalkMail to notify them at a scheduled time if they have sufficient new messages of a specified priority. DirectTalkMail calls or pages the specified number and the subscriber then logs in to receive the messages. Up to four schedules can be specified with different time periods during the different days of the week.” Id. at 29.


61

Claim DirectTalk, DirectTalkMail, & Hark from the first communication connection type,

DirectTalkMail discloses that users can access their voice mail (the claimed “message”) over the World Wide Web (the claimed “second communication type”) and that the system may notify users of new voicemails via email or pager (the claimed “notification” and “second communication type”). Ex. 1011 at 24, 30.

“On the web page, you can see a list of all your messages . . . .” Id. at 30.

[1.9] and wherein each of the message and the notification is at least from a group consisting of a 1) telephone call, 2) a conference call, 3) a facsimile message, 4) a voicemail message 5) an email message, and 6) a message containing data.

DirectTalk discloses that the DirectTalk/6000 and DirectTalkMail systems send voice mail messages (the claimed “a voicemail”), faxes (the claimed “a facsimile message”), and “all types of incoming mail” (the claimed “message containing data”) to users and may notify users on their workstation (the claimed “a message containing data”) or notify users by placing a telephone call to them (the claimed “telephone call”). Ex. 1010 at 29, 30.

“Subscribers can tell DirectTalkMail to notify them at a scheduled time if they have sufficient new messages of a specified priority. DirectTalkMail calls or pages the specified number . . .” Id. at 29.

DirectTalkMail discloses that the system may notify users via email (the claimed “email message”). Ex. 1011 at 24.

“Be aware that the recipient may receive notification (by e-mail or pager, for example) that a message has arrived. Another notification is sent to tell them when a message has been deleted.” Id. at 24.

Claim DirectTalk, DirectTalkMail, & Hark 2. A voice-enabled and user-configured computer system according to claim 1, wherein the one or more operations include at least one of 1)

DirectTalk discloses that the DirectTalk/6000 system allows users to interact with it by speaking or pressing keys on a DTMF phone (the claimed “one or more operations”) to update information in a database or store, retrieve a voice message (the claimed “manipulating and managing the stored data”), or create distribution lists for distributing messages (the claimed “customized public content delivery”). Ex. 1010 at 12, 27.

“The caller can either respond by speaking


62

Claim DirectTalk, DirectTalkMail, & Hark manipulating and managing the stored data and 2) customized public content delivery.

. . . The application takes whatever action is appropriate to the caller's response: for example, retrieving information and speaking it to the caller; updating information in a database; storing or retrieving a voice message; or making another call.” Id. at 12.

“When a voice application includes the logic for it, callers can use the telephone to create distribution lists and send messages to all the mailboxes listed. A distribution list is a list of up to 90 mailboxes to which messages can be sent.” Id. at 27.

Claim DirectTalk, DirectTalkMail, & Hark 3. A voice-enabled and user-configured computer system according to claim 2, wherein the manipulating and managing the stored data include modifying at least a portion of the stored data wherein the stored data includes personal information relating to the user.

DirectTalk discloses that the DirectTalk/6000 system allows users to take advantage of any computer application to retrieve, store, and manipulate (the claimed “manipulating and managing”) information including account balances and voice messages (the claimed “personal information relating to the user”). Id. at 5, 11, 14.

“Your voice applications can also perform computations, read and retrieve information from databases, update databases, communicate information by speaking it back over the telephone, let callers leave a message, transfer calls to other applications, or connect callers to a human operator.” Id. at 11.

“DirectTalk/6000 can take advantage of any computer applications that your company already uses to retrieve, store, and manipulate information. For example, to receive an account balance, a bank customer usually talks to an agent who uses a computer.” Id. at 14.

“DirectTalk/6000 facilitates the provision of all kinds of information over the phone-time, weather, dial-a-joke, horoscopes, lottery results, sports events, news, exchange rates, and so on. Whether the information you provide is dynamic or static, brief or


63

Claim DirectTalk, DirectTalkMail, & Hark lengthy, there is a way in which DirectTalk/6000 can be used to deliver it to subscribers.” Id. at 5.

Claim DirectTalk, DirectTalkMail, & Hark 4. A voice-enabled and user-configured computer system according to claim 1, wherein the electronic communication device is at least one of a group of a mobile telephone, a pager, a personal computer, a facsimile machine, an electronic mailbox and a voice-mail service and wherein the

DirectTalk discloses that users can access the DirectTalk/6000 system through a cellular phone12 (the claimed “mobile telephone”) where the cellular phone supports the telephone connection (the claimed “telephone . . . connection”). Id. at 30. DirectTalkMail discloses that users of one DirectTalk/6000 and DirectTalkMail system (the claimed “electronic communication device,” “electronic mailbox,” and “voice-mail service”) can access another DirectTalk/6000 and DirectTalkMail system (the claimed “user-configured computer system”), where both systems support both the telephone and internet connections. Ex. 1011 at 34, 35.

“You can set DirectTalkMail up so that subscribers can send messages to and receive messages from subscribers on other voice mail systems. This is known as external messaging.” Id. at 34.

“In Figure 7 on page 36, subscribers on the Hursley node can send messages to and receive messages from: • The Alton node, using the basic AMIS analog

12 A person of ordinary skill in the art at the time would not have understood the

Applicant to possess the invention claimed in claim 4 because at least a pager and a

facsimile machine cannot perform all of the functions required in claim 1. See

infra, Section VI.C. Thus, even though DirectTalk discloses that the

DirectTalk/6000 system is accessible to a pager, or fax machine, such disclosure is

omitted here because a pager and fax machine cannot satisfy all of the limitations

of independent claim 1, upon which claim 4 depends. See e.g., Ex. 1010 at 30.


64

Claim DirectTalk, DirectTalkMail, & Hark electronic communication device supports the telephone and internet connections.

protocol • The Wallow node, using digital external messaging • The Ramsey node, using the AMIS analog protocol with a proprietary extension, that is, DirectTalkMail system to DirectTalkMail system. Other links may be available, but these are not shown in Figure 7.” Id. at 35, Fig. 7.


5. [5.0] A method for performing operations on a voice-enabled and user-configured computer system, via at least one telecommunications network, comprising:

DirectTalk discloses DirectTalk/6000, a computer-based voice processing system (the claimed “user-configured computer system”) connected to callers over the telephone network (the claimed “at least one telecommunications network”) that includes DirectTalkMail, a voice application, which includes fully functional voice mail and messaging (the claimed “performing operations”). Ex. 1010 at 1, 15.

“IBM AIX DirectTalk/6000 is a computer-based voice processing system designed to meet the ever-expanding requirement for business information to be available over the telephone. . . . The voice processing system is connected to callers via the telephone network, and to information in databases via your data communications network.” Id. at 1.

DirectTalkMail discloses that DirectTalk/6000 and DirectTalkMail can be customized to create a single point of access for voice, fax, and e-mail for office, home-based, or


65

Claim DirectTalk, DirectTalkMail, & Hark mobile workers (the claimed “operations”). Ex. 1011 at 37.

[5.1] receiving one or more natural voice spoken commands from a user, via an electronic communication device, at one or more clusters of servers wherein at least one cluster of servers includes at least one voice server including speaker-independent speech recognition and execution functionality;

DirectTalk discloses that callers (the claimed “users”) can speak whole sentences (the claimed “natural voice spoken commands”) over the telephone (the claimed “electronic communication device”) to communicate with DirectTalkMail, a voice application, which is a collection of servers (the claimed “clusters of servers”) that can include speech recognition servers (the claimed “voice server”) running speech recognition with the BBN Hark Recognizer, which provides continuous speaker-independent speech recognition (the claimed “speaker-independent speech recognition and execution functionality”) enabling callers to make choices by speaking instead of using the telephone keypad. Ex. 1010 at 3, 8, 15, 17, 21, 54.


[5.2] the user in communication with the at least one cluster of servers, via at least one of a telephone connection and an internet connection, wherein the one or more natural voice

DirectTalk discloses that the DirectTalk/6000 system (part of the claimed “cluster”) is connected to callers via the telephone network (the claimed “telephone connection” and “first communication connection”) over which callers can speak instead of pressing keys when responding to prompts and that the DirectTalk/6000 system includes DirectTalkMail. Id. at 1, 54.

“With the BBN Hark Recognizer, callers can communicate with DirectTalk/6000 voice applications by speaking connected words. Instead of responding to prompts by pressing keys, or with single spoken words, callers can speak whole sentences, such as "I'd


66

Claim DirectTalk, DirectTalkMail, & Hark spoken commands from the user are received over a first communication connection from one or more communication connections, which is one of the telephone connection and the internet connection;

like a large deep pan pizza with tomatoes, chillies, and anchovies", and the voice application sends this to the BBN Hark Recognizer. The Recognizer returns the words recognized to the voice application, which can interpret the output and take appropriate action.” Id. at 54.

“The voice processing system is connected to callers via the telephone network, and to information in databases via your data communications network.” Id. at 1.

DirectTalkMail discloses that the DirectTalkMail voice application included with DirectTalk/6000 is accessible over the Internet using a World Wide Web browser (the claimed “internet connection”). Ex. 1011 at 75, Fig. 22.

[5.3] executing one or more operations on at least a portion of the stored data of interest to the user, based at least in part on, interpreting the one or more natural voice spoken commands received from the user via the electronic communication device,

DirectTalk discloses that users can interact with DirectTalk/6000 voice applications by speaking (the claimed “natural voice spoken command”) or by pressing keys on a DTMF phone and in response the voice application may transmit information to the caller, update information in a database, store or retrieve a voice message or make another call (collectively, the claimed “executing one or more operations on at least a portion of the stored data”). Ex. 1010 at 12. Hark discloses that the DirectTalk/6000 system running the BBN Hark Recognizer allows users to interact with the system using both DTMF and speech (the claimed “based at least in part”). Ex. 1012 at 25.

[5.4] by comparing each of the one or more natural voice spoken commands with a set of

DirectTalk discloses that callers (the claimed “users”) can speak whole sentences (the claimed “natural voice spoken command”) over the telephone to communicate with DirectTalk/6000 voice applications and that the sentences are sent to the BBN Hark Recognizer which returns the words to the voice application, which can interpret the


67

Claim DirectTalk, DirectTalkMail, & Hark stored commands wherein each of the set of stored commands corresponds to a single voice-enabled operation,

output and take appropriate action (the claimed “single voice-enabled operation”). Ex. 1010 at 54.

Hark discloses that the BBN Hark Recognizer converts speech (the claimed “natural voice spoken command”) into a text string that the voice application parses (the claimed “interpreting”) by assigning a tag13 to words or phrases, where each tag corresponds to multiple words or phrases (the claimed “set of stored commands”) that have the same meaning in the context of the application (the claimed “corresponds to a single voice-enabled operation”). Ex. 1012 at 2, 3, 28.

[5.5] the single voice-enabled operation configured to create a computer-generated communication for selective transmission for respective users over one of the telephone connection and the internet connection; and

DirectTalk discloses that DirectTalk/6000 and DirectTalkMail can be customized create integrated mail system that provides a single point of access to voice, fax, and email, where the system can translate e-mail (the claimed “computer-generated”), using text-to-speech, into voice messages and decompress compressed voice messages (the claimed “computer generated”) for transmission over the phone (the claimed “telephone connection”) and send notifications of incoming voice mail to a workstation (the claimed “computer generated”). Ex. 1010 at 8, 30.

DirectTalkMail discloses that users can access their voice mail over the World Wide Web (the claimed “internet connection”). Ex. 1011 at 30.

[5.6] facilitating at least transmission of computer-generated communications including a message and a notification relating to the one

DirectTalk discloses that DirectTalk/6000 and DirectTalkMail can transmit emails, voice mail messages, faxes, and “all types of incoming mail” (collectively, the claimed “message”) to callers over the telephone (the claimed “first communication connection type” and “communication connection over which the one or more natural voice spoken commands were received”) or users at their workstations (the claimed “communication connection[] of different type”) and can provide

13 See supra n.11; see also Ex. 1003 at ¶ 68.


68

Claim DirectTalk, DirectTalkMail, & Hark or more operations performed for the user via the one or more communication connections wherein at least one communication connection from the one or more communication connections is of different type from the communication connection over which the one or more natural voice spoken commands were received, and the message and the notification relating to the one or more operations executed via the one or more natural voice spoken commands received from the user

notifications (the claimed “notification”) to users at their workstations or by calling or paging the user (the claimed “communication connection[] of different type”). Ex. 1010 at 29, 30.

“The ideal mail system must therefore provide: • Access to any e-mail, fax, or voice message • Immediate notification of any message • Sufficient data to indicate to the recipient whether they should look at the message immediately or leave it for later. DirectTalk/6000 and DirectTalkMail can be customized to form the basis of an integrated mail system that satisfies these requirements. . . . ” Id. at 30. “Subscribers can tell DirectTalkMail to notify them at a scheduled time if they have sufficient new messages of a specified priority. DirectTalkMail calls or pages the specified number and the subscriber then logs in to receive the messages. Up to four schedules can be specified with different time periods during the different days of the week.” Id. at 29.

DirectTalkMail discloses that users can access their voice mail (the claimed “message”) over the World Wide Web (the claimed “communication connection[] of different type”) and that the system may notify users of new voicemails via email or pager (the claimed “notification” and “communication connection[] of different type”). Ex. 1011 at 24, 30.

“On the web page, you can see a list of all your messages at a glance and immediately select the one you want to hear. Selecting the message downloads and plays it on your personal computer or workstation, or sends it to the phone you specified, which then rings. You can also save or delete messages by selecting buttons on the Web page.” Id. at 30.

[5.7] and the DirectTalk discloses that the DirectTalk/6000 and


69

Claim DirectTalk, DirectTalkMail, & Hark message and the notification, each including at least 1) a telephone call, 2) a conference call, 3) a facsimile message, 4) a voicemail message 5) an email message, and 6) a message containing data.

DirectTalkMail systems send voice mail messages (the claimed “a voicemail”), faxes (the claimed “a facsimile message”), and “all types of incoming mail” (the claimed “message containing data”) to users and may notify users on their workstation (the claimed “a message containing data”) or notify users by placing a telephone call to them (the claimed “telephone call”). Ex. 1010 at 29, 30.

DirectTalkMail discloses that the system may notify users via email (the claimed “email message”). Ex. 1011 at 24.

Claim DirectTalk, DirectTalkMail, & Hark 6. A method for performing operations on a voice-enabled and user-configured computer system according to claim 5, wherein the one or more operations include manipulating and managing the stored data of interest to the user.

DirectTalk discloses that the DirectTalk/6000 system allows users to interact with it by speaking or pressing keys on a DTMF phone (the claimed “operations”) to update information in a database or, store or retrieve a voice message (the claimed “manipulating and managing the stored data”). Ex. 1010 at 12.

“The application waits for the caller's response for a set period of time. The caller can either respond by speaking (if speech recognition is implemented) or by pressing keys on a DTMF phone-ranging from a single digit (1 for yes or 2 for no, for example) to multiple digits (such as a catalog number or personal identification number). . . . The application takes whatever action is appropriate to the caller's response: for example, retrieving information and speaking it to the caller; updating information in a database; storing or retrieving a voice message; or making another call.” Id. at 12.

Claim DirectTalk, DirectTalkMail, & Hark 7. A method for performing operations on a voice-enabled and

DirectTalk discloses that the DirectTalk/6000 system allows users to take advantage of any computer application to retrieve, store, and manipulate (the claimed “manipulating and managing”) information including account balances and


70

Claim DirectTalk, DirectTalkMail, & Hark user-configured computer system according to claim 6, wherein the manipulating and managing the stored data include modifying at least a portion of the stored data of interest to the user.

voice messages (the claimed “stored data of interest to the user”). Id. at 5, 11, 14.

“Your voice applications can also perform computations, read and retrieve information from databases, update databases . . . .” Id. at 11.

“DirectTalk/6000 can take advantage of any computer applications that your company already uses to retrieve, store, and manipulate information.” Id. at 14.

“DirectTalk/6000 facilitates the provision of all kinds of information over the phone-time, weather, dial-a-joke, horoscopes, lottery results, sports events, news, exchange rates, and so on. Whether the information you provide is dynamic or static, brief or lengthy, there is a way in which DirectTalk/6000 can be used to deliver it to subscribers.” Id. at 5.

Claim DirectTalk, DirectTalkMail, & Hark 8. A method for performing operations on a voice-enabled and user-configured

DirectTalk discloses that users can access the DirectTalk/6000 system through a cellular phone14 (the claimed “mobile telephone”) where the cellular phone supports the telephone connection (the claimed “telephone

14 A person of ordinary skill in the art at the time would not have understood the

Applicant to possess the invention claimed in claim 8 because at least a pager and a

facsimile machine cannot perform all of the functions required in claim 5. See

infra, Section VI.C. Thus, even though DirectTalk discloses that the

DirectTalk/6000 system is accessible to a pager, or fax machine, such disclosure is

omitted here because a pager and fax machine cannot satisfy all of the limitations

of independent claim 5, upon which claim 8 depends. See e.g., Ex. 1010 at 30.


71

Claim DirectTalk, DirectTalkMail, & Hark computer system according to claim 5, wherein the electronic communication device is at least one of a group of a mobile telephone, a pager, a personal computer, a facsimile machine, an electronic mailbox and a voice-mail service.

. . . connection”). Id. at 30.

DirectTalkMail discloses that users of one DirectTalk/6000 and DirectTalkMail system (the claimed “electronic communication device,” “electronic mailbox,” and “voice-mail service”) can access another DirectTalk/6000 and DirectTalkMail system (the claimed “user-configured computer system”), where both systems support both the telephone and internet connections. Ex. 1011 at 34, 35, Fig. 7.

“You can set DirectTalkMail up so that subscribers can send messages to and receive messages from subscribers on other voice mail systems. This is known as external messaging.” Id. at 34. “In Figure 7 on page 36, subscribers on the Hursley node can send messages to and receive messages from: • The Alton node, using the basic AMIS analog protocol • The Wallow node, using digital external messaging • The Ramsey node, using the AMIS analog protocol with a proprietary extension, that is, DirectTalkMail system to DirectTalkMail system. Other links may be available, but these are not shown in Figure 7.” Id. at 35.

Claim DirectTalk, DirectTalkMail, & Hark 9. A voice-enabled and user-configured computer system according to claim 1, wherein the at least one voice server including speaker-independent speech recognition and execution functionality is

DirectTalk discloses that DirectTalk/6000 (the claimed “computer system”) uses speech recognition servers (the claimed “voice server”) running the BBN Hark Recognizer (the claimed “speaker independent speech recognition”) and stores administrative files, error files, voice application files (the claimed “file server”) and that both the speech recognition and stored files are used by the system (the claimed “operatively coupled”). Ex. 1010 at 15, 54, 103-04.

“DirectTalkMail is an application running under DirectTalk/6000. It can interface to other DirectTalk/6000 voice applications to provide a voice messaging capability. . .” Id. at 15.


72

Claim DirectTalk, DirectTalkMail, & Hark operatively coupled to a file server.

“DirectTalk/6000 requires space to store maintenance and administration files, error files, and statistics. At midnight and each time the system is restarted, the old files are saved and new files are created. One set of files can take up to 1.5 MB of disk space. You also need disk space to store voice application files . . . .” Id. at 103-04.

Claim DirectTalk, DirectTalkMail, & Hark 10. A voice-enabled and user-configured computer system according to claim 1, wherein the at least one voice server including speaker-independent speech recognition and execution functionality is operatively coupled to a web server.

DirectTalk discloses that the DirectTalk/6000 (the claimed “computer system”) uses speech recognition servers (the claimed “voice server”) running the BBN Hark Recognizer (the claimed “speaker independent speech recognition”) that works with voice applications, including DirectTalkMail (the claimed “operatively coupled”). Id. at 15, 54.


DirectTalkMail discloses a web server (the claimed “web server”) that provides a visual user interface to DirectTalkMail over the world wide web. Ex. 1011 at 75, Fig. 22.

Claim DirectTalk, DirectTalkMail, & Hark 11. A voice-enabled and user-configured computer system according to claim 1, wherein the at least one voice

DirectTalk discloses that DirectTalk/6000 (the claimed “computer system”) uses speech recognition servers (the claimed “voice server”) running the BBN Hark Recognizer (the claimed “speaker independent speech recognition”) and allows callers to read, retrieve, store, and update information in databases (the claimed “database sever”) in the form of either local or remote servers that store voice


73

Claim DirectTalk, DirectTalkMail, & Hark server including speaker-independent speech recognition and execution functionality is operatively coupled to one or more databases on which the data of interest to the user is stored.

messages, account balances, and “all kinds of information” by speaking (the claimed “operatively coupled”). Ex. 1010 at 1, 3, 11, 15, 54, 59.


12. A voice-enabled and user-configured computer system according to claim 1, further configured to receive DTMF signals and receive user input via a touchtone functionality in the electronic communication device used by the user.

DirectTalk discloses that users can interact with DirectTalk/6000 voice applications by speaking or by pressing keys on a DTMF phone (the claimed “DTMF signals” and “touchtone functionality”). Id. at 12.

“The heart of a DirectTalk/6000 voice application is its interaction with a caller or called party. Typically, a voice application will either handle inbound calls or make outbound calls. . . . The application waits for the caller's response for a set period of time. The caller can either respond by speaking (if speech recognition is implemented) or by pressing keys on a DTMF phone-ranging from a single digit (1 for yes or 2 for no, for example) to multiple digits (such as a catalog number or personal identification number). . . . The application takes whatever action is appropriate to the caller's response: for example, retrieving information and speaking it to the caller; updating information in a database; storing or retrieving a voice message; or making another call.” Id. at 12.

Claim DirectTalk, DirectTalkMail, Hark, & IBM Announcement A95-893


74

Claim DirectTalk, DirectTalkMail, & Hark 13. A voice-enabled and user-configured computer system according to claim 1, wherein the at least one voice server including the speaker-independent speech recognition and execution functionality is configured to analyze phonemes of the one or more natural voice spoken commands to execute the one or more voice-enabled operations.

DirectTalk discloses that the DirectTalk/6000 system (the claimed “computer system”) uses the BBN Hark Recognizer (the claimed “speaker-independent speech recognition functionality”) to control the system (the claimed “execute the one or more voice-enabled operations”). Id. at 54.


IBM Announcement A95-893 discloses that the Hark Recognizer is a phoneme based speech recognition system (the claimed “configured to analyze phonemes”). Ex. 1013 at 3.

“Speech Recognition with the HARK Recognizer allows DirectTalk/6000 voice applications to understand and respond to speech input from telephone callers. The HARK Recognizer is a phoneme based speech recognition system that allows recognition of complex sentences.” Id. at 3.

Claim DirectTalk, DirectTalkMail, & Hark 14. A method for performing operations on a voice-enabled and user-configured computer system according to claim 5, wherein the at least one voice server including

DirectTalk discloses that the DirectTalk/6000 (the claimed “computer system”) uses speech recognition servers (the claimed “voice server”) running the BBN Hark Recognizer (the claimed “speaker independent speech recognition”) and stores administrative files, error files, voice application files (the claimed “file server”) and that both the speech recognition and stored files are used by the system (the claimed “operatively coupled”). Ex. 1010 at 15, 54, 103-04.

“With the BBN Hark Recognizer, callers can


75

Claim DirectTalk, DirectTalkMail, & Hark speaker-independent speech recognition and execution functionality is operatively coupled to a file server.

communicate with DirectTalk/6000 voice applications by speaking connected words. Instead of responding to prompts by pressing keys, or with single spoken words, callers can speak whole sentences, such as "I'd like a large deep pan pizza with tomatoes, chillies, and anchovies", and the voice application sends this to the BBN Hark Recognizer. The Recognizer returns the words recognized to the voice application, which can interpret the output and take appropriate action.” Id. at 54. “DirectTalk/6000 requires space to store maintenance and administration files, error files, and statistics. . . . You also need disk space to store voice application files (state tables, voice segments, and messages).” Id. at 103-04.

Claim DirectTalk, DirectTalkMail, & Hark 15. A method for performing operations on a voice-enabled and user-configured computer system according to claim 5, wherein the at least one voice server including speaker-independent speech recognition and execution functionality is operatively coupled to a web server.

DirectTalk discloses that the DirectTalk/6000 (the claimed “computer system”) uses speech recognition servers (the claimed “voice server”) running the BBN Hark Recognizer (the claimed “speaker independent speech recognition”) that works with voice applications, including DirectTalkMail (the claimed “operatively coupled”). Id. at 15, 54.

“DirectTalkMail is an application running under DirectTalk/6000. It can interface to other DirectTalk/6000 voice applications to provide a voice messaging capability. . .” Id. at 15.

DirectTalkMail discloses a web server (the claimed “web server”) that provides a visual user interface to DirectTalkMail over the world wide web. Ex. 1011 at 75, Fig. 22.



76

Claim DirectTalk, DirectTalkMail, & Hark 16. A method for performing operations on a voice-enabled and user-configured computer system according to claim 5, wherein the at least one voice server including speaker-independent speech recognition and execution functionality is operatively coupled to one or more databases on which the data of interest to the user is stored.

DirectTalk discloses that the DirectTalk/6000 (the claimed “computer system”) uses speech recognition servers (the claimed “voice server”) running the BBN Hark Recognizer (the claimed “speaker independent speech recognition”) and allows callers to read, retrieve, store, and update information in databases (the claimed “database sever”) in the form of either local or remote servers that store voice messages, account balances, and “all kinds of information” by speaking (the claimed “operatively coupled”). Ex. 1010 at 1, 3, 11, 15, 54, 59.

Claim DirectTalk, DirectTalkMail, & Hark 17. A method for performing operations on a voice-enabled and user-configured computer system according to claim 5, further comprising receiving DTMF signals and receiving user input via a touchtone functionality in the electronic

DirectTalk discloses that users can interact with DirectTalk/6000 voice applications by speaking or by pressing keys on a DTMF phone (the claimed “DTMF signals” and “touchtone functionality”). Id. at 12.

“The heart of a DirectTalk/6000 voice application is its interaction with a caller or called party. Typically, a voice application will either handle inbound calls or make outbound calls. . . . The application waits for the caller's response for a set period of time. The caller can either respond by speaking (if speech recognition is implemented) or by pressing keys on a DTMF phone-ranging from a single digit (1 for yes or 2 for no, for example) to multiple digits (such as a catalog number or personal identification number).


77

Claim DirectTalk, DirectTalkMail, & Hark communication device used by the user.

. . . The application takes whatever action is appropriate to the caller's response: for example, retrieving information and speaking it to the caller; updating information in a database; storing or retrieving a voice message; or making another call.” Id. at 12.

Claim DirectTalk, DirectTalkMail, Hark, & IBM Announcement A95-893

18. A method for performing operations on a voice-enabled and user-configured computer system according to claim 5, wherein the at least one voice server including the speaker-independent speech recognition and execution functionality is configured to analyze phonemes of the one or more natural voice spoken commands to execute the one or more voice-enabled operations.

DirectTalk discloses that the DirectTalk/6000 system (the claimed “computer system”) uses the BBN Hark Recognizer (the claimed “speaker-independent speech recognition functionality”) to control the system (the claimed “execute the one or more voice-enabled operations”). Id. at 54.


IBM Announcement A95-893 discloses that the Hark Recognizer is a phoneme based speech recognition system (the claimed “configured to analyze phonemes”). Ex. 1013 at 3.

“Speech Recognition with the HARK Recognizer allows DirectTalk/6000 voice applications to understand and respond to speech input from telephone callers. The HARK Recognizer is a phoneme based speech recognition system that allows recognition of complex sentences.” Id. at 3.


78

C. Claims 4 and 8 Are More Likely Than Not Unpantable Under 35 U.S.C. § 112, ¶ 1

Claims 4 and 8 are more likely than not unpatentable under § 112, ¶ 1,

because the written description fails to demonstrate to a person of ordinary skill in

the art at the time that the Applicant possessed the subject matter in those claims.

To satisfy the written description requirement of 35 U.S.C. § 112, ¶ 1, a

patent’s specification must reasonably convey to those of skill in the art that, as of

the filing date, the inventor possessed the claimed subject matter. Ariad Pharms.,

Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “One shows

that one is ‘in possession’ of the invention by describing the invention, with all its

claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines,

Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997). “[A]ll the limitations must appear in the

specification.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed.

Cir. 2008) (quoting Lockwood). To find the written description requirement

satisfied where the claimed subject matter is not expressly described in the

specification, the “missing descriptive matter must necessarily be present in the

[original] application’s specification such that one skilled in the art would

recognize such a disclosure.” TurboCare Div. of Demag Delaval TurboMachinery

Corp. v. Gen. Elec. Corp., 264 F.3d 1111, 1119 (Fed. Cir. 2001) (quoting Tronzo v.

Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998)) (alteration in original).


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1. The written description fails to demonstrate that the Applicant possessed a pager and facsimile machine capable of transmitting natural voice spoken commands

Claims 4 and 8 of the ’120 patent are more likely than not unpatentable

under § 112, ¶ 1, because the written description fails to disclose how “the

electronic communication device [that] is at least one of a group of a . . . a pager

[or] or fax machine” can perform the functions required in claim 1 and 5

respectively. Ex. 1001 at 8:47-53; 9:39-44.

Claim 1 of the ’120 patent recites “receive one or more natural voice spoken

commands from the user via the electronic communication device.” Id. at 8:1-2.

Similarly, claim 5 of the ’120 patent recites “. . . natural voice spoken command

received from the user via the electronic communication device . . .” Id. at 9:5-7.

However, claims 4 and 8, which depend from claims 1 and 5 respectively, each

recites that “the electronic communication device is at least one of a group of a . . .

a pager [or] or fax machine.” Id. at 8:47-53; 9:39-44.

The ’120 patent does not disclose how the invention is capable of receiving

natural speech input from at least a pager or a fax machine. Ex. 1003 at ¶¶ 99-100.

The specification of the ’120 patent does not disclose a pager or fax machine

capable of transmitting natural speech. Id. The ’120 patent describes accessing the

system through the telephone or the internet using “standard communication


80

device[s],” and neither a standard fax machine nor a standard pager can transmit

natural speech. See id.; Ex. 1001 at 2:31; 6:58-59.

One of ordinary skill in the art at the time, having read the ’120 patent,

would not have understood the Applicant to possess an invention capable of

receiving natural speech input from at least a pager or a fax machine. Ex. 1003 at

¶¶ 99-100. Thus, claims 4 and 8 of the ’120 patent fail to satisfy the written

description requirement of 35 U.S.C. § 112, ¶ 1, and are therefore more likely than

not unpatentable.

VII. CONCLUSION

Claims 1-18 of the ’120 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: June 22, 2015 By: /Lionel M. Lavenue/ Lionel M. Lavenue, Lead Counsel Reg. No. 46,859


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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 June

22, 2015, by Federal Express at the following addresses of record for the subject

patents. The associated Exhibits 1001 through 1014 and Powers of Attorney were

served on June 22, 2015.

Reena Kuyper Patent Law Works, LLP

201 South Main Street, Suite 250 Salt Lake City, UT 84111

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: June 22, 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 · petition exhibit 1013: ibm, dt/6 1.5 optional...

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