UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`CBS INTERACTIVE INC., THE NEW YORK TIMES COMPANY,
`G4 MEDIA, LLC, and BRAVO MEDIA, LLC,
`Petitioners,
`
`v.
`
`HELFERICH PATENT LICENSING, LLC and WIRELESS SCIENCE, LLC,
`Exclusive Licensee and Patent Owner.
`______________
`
`Case IPR2013-00033 (JYC)
`Patent 7,155,241
`______________
`
`Before SCOTT R. BOALICK, KEVIN F. TURNER, and JONI Y. CHANG,
`Administrative Patent Judges
`
`
`
`EXHIBIT 2062
`
`DECLARATION OF JOHN R. GRINDON, D.Sc.
`
`1
`
`WIRELESS SCIENCE 2062
`CBS. v. HELFERICH
`IPR2013-00033
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`CBS INTERACTIVE INC., THE NEW YORK TIMES COMPANY,
`G4 MEDIA, LLC, and BRAVO MEDIA, LLC,
`Petitioners,
`
`v.
`
`HELFERICH PATENT LICENSING, LLC and WIRELESS SCIENCE, LLC,
`Exclusive Licensee and Patent Owner.
`______________
`
`Case IPR2013-00033 (JYC)
`Patent 7,155,241
`______________
`
`Before SCOTT R. BOALICK, KEVIN F. TURNER, and JONI Y. CHANG,
`Administrative Patent Judges
`
`
`
`EXHIBIT 2062
`
`DECLARATION OF JOHN R. GRINDON, D.Sc.
`
`1
`
`WIRELESS SCIENCE 2062
`CBS. v. HELFERICH
`IPR2013-00033
`
`
`
`I. INTRODUCTION
`
`1. I, John R. Grindon, D.Sc., submit this declaration setting forth my expert
`
`opinions and the bases for those opinions relating to issues under consideration in
`
`the U.S. Patent Office concerning the Inter Partes Review of Patent No. 7,155,241
`
`in IPR2013-00033.
`
`II. OATH
`
`2. I understand that my duty in providing this declaration is to help the PTO,
`
`and that this duty overrides any obligation to Helferich Patent Licensing, LLC
`
`(“HPL”) or its counsel. I confirm that I have complied and will continue to comply
`
`with my duty.
`
`3. All remarks made in this declaration of my own knowledge are true, and all
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`statements made on information and belief are believed to be true. The opinions I
`
`have expressed in this declaration represent my true and complete professional
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`opinion and are based on my detailed consideration of the issues in view of my
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`skill and expertise.
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`4. Without forming an independent view, I have not included or excluded
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`anything which has been suggested to me by others including HPL or any lawyers
`
`representing HPL.
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`2
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`
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`5. I have not entered into any arrangement where the amount or payment of my
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`fees is in any way dependent on the outcome of the case. I am compensated for
`
`my work in this matter at $300.00/hr., with reimbursement for actual expenses.
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`6. I acknowledge that willful false statements and the like are punishable by
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`fine or imprisonment, or both, under 35 USC §25(b) and 37 CFR § 1.68.
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`7. I previously submitted my qualifications and CV as Exs. 2054 and 2055 in
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`these proceedings and incorporate them herein.
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`III. DATA CONSIDERED
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`8. In addition to my skill, experience, and the information considered in
`
`connection with my prior declarations filed in this proceeding (Exs. 2003, 2054,
`
`and 2056), I have considered selected portions of, among others, the following
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`information in connection with Petitioners’ Opposition (Paper 75) to Patent
`
`Owners’ Motion to Amend (Paper 48):
`
`a. U.S. Patent No. 7,155,241 (the “‘241 patent,” Ex. 1001);
`
`b. Petitioners’ Opposition to Patent Owner’s Motion to Amend (Paper 75,
`
`the “Opposition”);
`
`c. U.S. Patent No. 5,850,520 to Griebenow, et al, (Ex. 1033, “Griebenow”);
`
`d. U.S. Patent No 6,125,281 to Wells, et al. (Ex. 1034, “Wells”);
`
`e. U.S. Patent No. 5,706,434 to Kremen, et al. (Ex. 1037, “Kremen”);
`
`3
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`
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`f. Cross Examination Deposition Transcripts of Dr. Grindon (Vol. I and II)
`
`(Exs. 1038 and 1039);
`
`g. Cross Examination Deposition Transcripts of Mr. Helferich (Vol. I and
`
`II) (Exs. 1040 and 1041);
`
`h. My prior declaration regarding the ‘241 patent filed in Inter Partes
`
`Reexamination, Control No. 95/001,864 on May 14, 2012, a copy of
`
`which was filed in this proceeding on January 13, 2013 (Ex. 2003);
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`i. My prior declaration regarding the ‘241 patent filed in this proceeding on
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`June 7, 2013 (Ex. 2054);
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`j. My prior Declaration regarding the ‘241 patent filed in this proceeding
`
`on June 25, 2013 (Ex. 2056);
`
`k. The patent application (specification, drawings, and claims) filed by Mr.
`
`Helferich on September 19, 1997, assigned Application No. 11/050,775
`
`(Ex. 2063) leading to the issuance of U.S. Patent No. 6,233,430 (the
`
`“‘430 patent”).
`
`l. The patent application (specification, drawings, and claims) filed by Mr.
`
`Helferich on February 7, 2005, assigned Application No. 11/050,775 (Ex.
`
`2064) leading to the issuance of the ‘241 patent, which was filed as a
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`divisional of Application No. 09/688,321, which was a divisional of
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`Application No. 08/934,143 (Ex. 2063).
`
`4
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`
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`IV. EXPERT TESTIMONY
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`A. Summary of Testimony
`
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`9. As set forth below, my testimony herein is responsive to the assertions
`
`made by Petitioners in their Opposition to Patent Owner’s Motion to Amend,
`
`including the following assertions:
`
`a. Testimony responsive to Petitioners’ assertion that Patent Owner provided
`
`no claim construction or remarks addressing the skill set and knowledge of a
`
`person having ordinary skill in the art. See Paras. 10-19, below.
`
`b. Testimony responsive to Petitioners’ assertion that Patent Owner did not
`
`show support for the claim amendments in the original specification of the
`
`‘241 patent. See Paras. 20-24, below.
`
`c. Testimony responsive to Petitioners’ assertion that Patent Owner’s
`
`amendments lacked support or introduced new subject matter. See Paras.
`
`25-43, below.
`
`d. Testimony responsive to Petitioners’ assertion that Patent Owner did not
`
`point to the closest prior art or explain how the amendments distinguish the
`
`claims over the art. See Paras. 44-93, below.
`
`B. Claim Construction
`
`
`10. Petitioners assert in their Opposition (Paper 75, p.2) that “PO failed to
`
`address the basic knowledge and skill set possessed by one with ordinary skill in
`
`5
`
`
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`the art.”
`
`11. That assertion is incorrect. I previously testified on behalf of the Patent
`
`Owner in detailed declarations addressing the basic knowledge and skill set
`
`possessed by one with ordinary skill in the art, as described below.
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`12. In particular, I have previously set forth my opinion of the skill set
`
`possessed by one with ordinary skill in the art to which the ‘241 patent pertains.
`
`See Grindon Declaration, Ex. 2003 ¶ 21. As stated therein, “based on my skill,
`
`experience, expertise, and my review of the '241 patent specification and various
`
`references asserted against the ‘241 patent, it is my opinion that a person having
`
`ordinary skill in the art (PHOSITA) at the time the filing of the ‘241 patent would
`
`have a Bachelor's or technical school degree in electrical engineering or computer
`
`science, and at least one year of practical technical experience in the design and
`
`application of a variety of communication systems, such as radio, telephone, pager,
`
`cell phone and computer network systems. Alternatively, a PHOSITA would have
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`at least three years of practical technical experience in the design and application
`
`of such communication systems.”
`
`13. Petitioners also incorrectly assert in their Opposition (Paper 75, p.1) “Nor
`
`has PO proposed any claim constructions for its newly claimed features.”
`
`14. In fact, I previously testified on behalf of PO detailed declarations and oral
`
`testimony regarding the meaning of important claim phrases including for the
`
`6
`
`
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`newly amended claims (and original claim 41). In particular, I have previously
`
`proposed claim constructions for the following claimed features:
`
`a. Message identifier that identifies the message – “a label, symbol, or token
`
`that establishes the identity of the message that is stored in the system, such
`
`as a code or the message’s address in the system.” Ex. 2054 ¶ 17; see also
`
`Ex. 2052 ¶¶ 38-48.
`
`b. Specifies an address of the information stored in the storage unit – “states
`
`an unambiguous name, label, or number of the location of the information
`
`retained within the storage unit.” Ex. 2054 ¶ 78.
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`c. Message – “a communication containing some information.” Ex. 2003 ¶
`
`25(f).
`
`d. Selective call signal – “a paging call that identifies one or more recipients
`
`and that automatically activates, or initiates or establishes contact with a
`
`device.” Ex. 2003 ¶ 25(b)
`
`e. Acknowledgment request – “an asked for response from a receiver to
`
`indicate success receipt of a transmission.” Ex. 2003 ¶ 25(j)
`
`f. Communication session – “a temporary logical connection to support the
`
`flow of information between two addressable units; e.g., an HTTP, telnet,
`
`SIP call, or TCP session.” Ex. 2003 ¶ 25(k)
`
`7
`
`
`
`g. Two-way communication session with the system – “a temporary logical
`
`connection to support the flow of information in both directions between the
`
`system storing the information or message and a remote device.” Ex. 2003 ¶
`
`25(l)
`
`h. Means for transmitting to one or more devices – “transmitter or transceiver
`
`that includes a transmitter.” Ex. 2054 ¶ 47.
`
`i. Means for receiving a request transmitted from any one of the one or more
`
`devices – “receiver or transceiver that includes a receiver.” Ex. 2054 ¶ 47.
`
`j. Means for performing an action – “including a processor.” Ex. 2054 ¶ 47.
`
`15. In addition to the above, set forth below are proposed claim constructions
`
`for terms or phrases recited in the ‘241 claims as proposed to be amended.
`
`a. Specifying the address in the storage unit for the message – stating an
`
`unambiguous name, label, or number of the location for the message within
`
`the storage unit. See Ex. 2054 ¶ 78 and Ex. 1001, Figure 11 and 18:60-64.
`
`b. Transmit an acknowledgment to the one or more devices that the identified
`
`message has been deleted – send affirmation to the requesting one of the
`
`one or more devices that the particular message has been removed from
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`storage. The “particular message” is the message that was identified by the
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`selective call signal sent to that device. See, e.g., Ex. 1001, 10:29-34, 10:65-
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`11:3, 12:3-7, 12:45-52, and 14:27-35.
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`8
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`
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`c. Transmit an acknowledgment to the one or more devices that the action
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`has been performed – send affirmation to the requesting one of the one or
`
`more devices that the operation to forward or reply to an identified message
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`has been completed. See, e.g., Ex. 1001, 10:29-34, 10:65-11:3, 12:3-7,
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`12:45-52, and 14:27-35.
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`d. Transmit one or more additional selective call signals to the one or more
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`devices until the system determines that the identified message has been
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`read by a user of the one or more devices based on the priority of the
`
`message – based on the priority of the message, send additional selective
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`call signals identifying the message to the device that previously received a
`
`selective call signal identifying the message until the system decides that the
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`identified message has been obtained by a user of the one or more devices.
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`See, e.g., Ex. 1001, 8:44-57 and 8:58-9:17. See also Figure 5.
`
`e. Receive a return receipt request from the original sender of the message –
`
`receive a request to the system from the original sender of the message for
`
`the system to communicate to the original sender that the intended recipient
`
`of the message has obtained the message. See, e.g., Ex. 1001, 7:30-38.
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`f. Subsequent to receiving the acknowledgment, the system further
`
`configured to determine whether the identified information has been read
`
`– after the system having received affirmation that the selective call signal
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`9
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`
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`was received by the device, the system then being further configured to
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`decide whether the message identified in the selective call signal has been
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`obtained by the device. See, e.g., Ex. 1001, 9:53-66, 8:28-55.
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`16. Of particular pertinence to the proposed claim amendments of the ‘241
`
`patent are the changes to claim 1, replacing the previously claimed “information
`
`identifier identifying the information” with the phrase “message identifier
`
`identifying the message by specifying the address in the storage unit for the
`
`message.” See Paper 48 at 3.
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`17. I have previously provided extensive testimony on the meaning of the
`
`phrase “message identifier identifying the message.” See Ex. 2054 ¶ 17; Ex. 2056
`
`¶¶ 132-138; Grindon Deposition Vol. 1, Ex. 1038 at: 67:8-68:10, 89:15-90:7,
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`99:2-17, 102:16-106:11, 116:8-22, 118:15-119:14, 121:9-124:12, 131:11-133:1,
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`135:5-136:12, 144:6-12; Grindon Deposition Vol. 2, Ex. 1039 at: 274:23-276:24,
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`278:5-12, 287:12-288:11.
`
`18. As established by the above prior testimony in these proceedings, I have
`
`previously construed the phrase “message identifier identifying the message” to
`
`mean: “a label, symbol, or token that establishes the identity of the message that is
`
`stored in the system, such as a code or the message’s address in the system.”
`
`19. After submission of my testimony regarding proposed claim
`
`constructions as identified above, I am aware that Petitioners cross-examined the
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`10
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`
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`inventor of the ‘241 patent, Mr. Helferich, regarding his understanding as to the
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`meaning of a “message identifier.” I have reviewed the pertinent portions of the
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`subsequent cross-examination testimony of Mr. Helferich (Exs. 1040-41) to
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`determine whether my previously offered construction of “message identifier” was
`
`consistent with the inventor’s testimony. I determined that Mr. Helferich’s cross
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`examination testimony is fully consistent with my construction of the phrase
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`“message identifier identifying the message,” as set forth above. See Helferich
`
`Deposition, Vol. 1, Ex. 1040, at: 27:4-21, 28:9-24, 246:10-23, 247:2-248:8,
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`Helferich Deposition, Vol. 2, Ex. 2041 at: 294:8-297:3, and 304:23-306:14.
`
`B. Support in the Original Specifications
`
`20. Petitioners assert in their Opposition (Paper 75 at 2) that “PO has not
`
`identified where the written description support is found in the original disclosure
`
`of the application (Application No. 09/688,321) that issued as the ‘304 patent or
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`the original disclosure of the application (Application No. 08/934,143) that issued
`
`as the ‘430 patent.”
`
`21. I have reviewed the portions of the ‘241 patent and ‘430 patent cited in
`
`Patent Owner Motion to Amend (Paper 48 at 10-16) as support for the proposed
`
`claim amendments. As discussed further below, the disclosure of the ‘241 patent
`
`and ‘430 patent fully support the proposed amendments.
`
`11
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`
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`22. I have also reviewed the original ‘241 patent application disclosure
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`(attached as Ex. 2064 for Appl. No. 11/050,775) which resulted in issuance of the
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`‘241 patent, and have also reviewed the original patent application disclosure
`
`(attached as Ex. 2063, Appl. No. 08/934,143) filed on September 19, 1997, which
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`resulted in issuance of U.S. Patent No. 6,233,430 to which the ‘241 patent claims
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`priority.
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`23. I have determined that all of the supporting text cited and quoted in the
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`Patent Owner’s Motion to Amend (Paper 48) for support of each proposed claim
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`amendment is present in both of those originally filed applications (Exs. 2063 and
`
`2064) as shown on Appendix A, hereto. I have also determined that one non-
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`substantive typographical correction was made in a cited passage of the ‘241
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`patent, which was to change “selective call” to “selective call signals” at 8:67 of
`
`the ‘241 patent. I have also reviewed Ex. 2017, which I have been informed by
`
`Patent Owner’s Counsel are handwritten specifications created by Mr. Helferich.
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`From my review, I have determined that all of the challenged ‘241 claims
`
`(including as proposed to be amended) find conceptual support in Ex. 2017. See
`
`Ex. 2029 regarding the unamended claims, and Ex. 2065 regarding the amended
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`claims.
`
`24. Additionally, I have previously discussed the extensive support throughout
`
`the ‘241 patent for the “message identifier” claim limitations. See Ex. 2054 ¶ 48-
`
`12
`
`
`
`65 discussing Figure 11 and the accompanying text at 17:46-18:63 of the ‘241
`
`patent as well as numerous other references in the ‘241 patent.
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`25. Petitioners object in their Opposition (Paper 75 at 3-7) to the support for a
`
`portion of the proposed amendments. The Petitioners do not allege lack of support
`
`for the amendments to claims 1, 23, 24, 51, and 53. Therefore, support for these
`
`amendments has not been challenged.
`
`26. For claims 3-5 and 73-75, Petitioners do not contest that the ‘241 patent
`
`describes a system that is configured to transmit an acknowledgment that a
`
`requested action was performed on the information or message (e.g., deleting,
`
`forwarding, etc.). Petitioners incorrectly assert the following:
`
`“On pg. 12, PO cites 10:65-11:3 of Ex. 1001 as written description support
`
`for the amendments to claims 3, 4, 5, 73, 74, and 75. However, 10:65 - 11:3
`
`is limited to the situation in which ’a call is in progress.’ PO cites no
`
`disclosure in the '241 patent for any function to be performed unless a call is
`
`in progress. See Ex. 1001, 11:65-12:7. However, the claims are not so
`
`limited. Given the breadth of the claimed invention vis-a-vis the disclosure,
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`there is no written description support for the claims.”
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`Paper 75 at 3. In other words, Petitioners assert (incorrectly, as will be shown) that
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`the ‘241 patent specification requires there to be a “call in progress” in order for
`
`the system to transmit an acknowledgment that a requested action was performed
`
`on the information or message. That assertion is contradicted by the text of the
`
`‘241 patent, as shown below.
`
`13
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`
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`27. In particular, the “call in progress” discussed in the ‘241 patent relates to
`
`the process of sending a command from the paging transceiver to the remote
`
`system. It is incorrect for Petitioners to say that the “call in progress” applies to
`
`the acknowledgment sent from the system to the paging transceiver. The ‘241
`
`patent states:
`
`“FIG. 9 depicts processing performed by the paging transceiver 100 in
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`response to the selection of any one of the functions 112 to 117 shown in
`
`FIG. 8. At step 131, the function is identified by the CPU 27 and other
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`processing occurs prior to step 132 where the CPU 27 determines whether a
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`call is required. If a call is not required to perform the function, then at step
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`133 the CPU 27 performs the requested function and the process ends at step
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`140. If, on the other hand, a call is required, then at step 134 the CPU 27
`
`next determines whether a call is already in progress. If a call is in progress,
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`the CPU 27 exchanges data with the system 30 and base station 34 at step
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`135 and the function is performed or executed at step 136. The data that is
`
`exchanged at step 135 includes a request signal that is sent from the paging
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`transceiver 100 to the system 30 specifying the desired action and the
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`particular information or message. If a call is not in progress, then at step
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`137 the CPU 27 preferably asks the user if a call should be made and
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`receives the user’s feedback at step 138. If the user elects not to call, then
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`a delay occurs at step 141 with delay circuit 28.”
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`Ex. 1001, 10:55-11:7, emphasis added.
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`28. As shown above, the ‘241 patent describes an example of a user of a
`
`paging transceiver selecting and performing a function on an available message or
`
`14
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`
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`item of information. The ‘241 patent discloses that to request a function, the CPU
`
`of the paging transceiver can ask the user if a call should be made. There is no
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`disclosure in the ‘241 patent limiting the transmission of the acknowledgment from
`
`the system that a request command was completed to situations in which a call
`
`from the paging transceiver is in progress.
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`29. Accordingly, the amendments to claims 3-5 and 73-75 are supported by the
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`‘241 patent specification and Petitioners’ assertions of lack of support against
`
`claims 3-5 and 73-75 are unfounded.
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`30. For the amendments to claims 11 and 81, Petitioners misinterpret the
`
`requirements of the claims. As a result, Petitioners attempt to argue lack of
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`support for a concept which is not claimed.
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`31. Specifically, claim 11 (and similarly for claim 81) as proposed to be
`
`amended recites the following (emphasis added):
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`“11. The system of claim 1, wherein the selective call signal further
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`includes a device identifier, wherein the device identifier is associated only
`
`with one of the one or more devices, and wherein the means for transmitting
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`is configured to transmit one or more additional selective call signals to the
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`one more devices until the system determines that the identified message has
`
`been read by a user of the one or more devices based on the priority of the
`
`message.”
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`32. The above claim requires the system to be configured to “transmit one or
`
`more additional selective call signals” “based on the priority of the information.”
`
`15
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`
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`In other words, for important messages, the system can send multiple selective call
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`signals (e.g., paging signals) until the user has read the available message.
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`33. As cited in the Motion to Amend (Paper 48 at 13-14), the ‘241 patent
`
`specification discloses this additional unique feature, stating for example the
`
`following:
`
`“If, at step 65, the message had not been read, then at step 68 the system 30
`
`determines the priority of the message and proceeds to step 69. If the
`
`priority is high, as determined at step 69, then at step 61 the page call is
`
`returned to the transmission stack at the designated priority level for re-
`
`transmission. If, on the other hand, the priority is not high as determined at
`
`step 69, then the message has a low priority and the process ends at step
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`67.”
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`Ex. 1001, 8:50-57, emphasis added.
`
`34. As shown in the ‘241 text above, the specification can use the priority of
`
`the available message to determine whether to retransmit additional paging calls.
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`35. Petitioners’ incorrect argument against claims 11 and 81 is based on the
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`incorrect assertion that the priority is used to determine whether the message has
`
`been read. Paper 75 at 4. As shown above, neither claim 11 nor 81, nor the ‘241
`
`patent support Petitioners’ argument. Thus, Petitioners’ assertions of lack of
`
`support against claims 11 and 81 are unfounded.
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`36. For claims 13 and 84, Petitioners do not contest that the ‘241 patent
`
`describes a “return receipt request from the original sender of the message.”
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`16
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`
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`Instead, Petitioners assert, incorrectly, that disclosure is for only a “voice response
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`system.” Paper 75 at 5.
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`37. To show that Petitioners’ assertion is incorrect, note first – as also noted in
`
`the Patent Owner Motion to Amend (Paper 48 at 14) – that the ‘241 patent
`
`describes the following regarding a “return receipt request from the original sender
`
`of the message”:
`
`“If no error was detected by the system 30 at step 51, a message, such as a
`
`voice message, is recorded and stored in the storage and retrieval unit 32 at
`
`step 52. At step 53, the system 30 determines whether a return receipt or a
`
`reply message is requested. If a return receipt or reply message is requested,
`
`the return address is entered by the caller or optionally issued by the system
`
`30 and is stored by the system 30 in the storage and retrieval unit 32 at step
`
`54. The system 30, for instance, may detect the address signal of the
`
`incoming call and, by default, store this number as the return address. After
`
`the return address is stored at step 54 or if a return address is not requested,
`
`the stored message is cross referenced to selective call data corresponding to
`
`the intended paging transceiver 100 at step 55. Also at step 55, a flag is set
`
`in a transmission stack file at the paging terminal controller 31 for
`
`subsequently transmitting selective call signals representative of the
`
`selective call data to the targeted paging transceiver 100. Housekeeping is
`
`performed by the system 30 and the call ends at step 56.”
`
`Ex. 1001, 7:30-49, emphasis added.
`
`38. As shown above, nothing in the ‘241 patent limits the use of the return
`
`receipt to only voicemails or to voice response systems. To the contrary, the above
`
`17
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`
`
`passage expressly refers more generally to “a message, such as a voice message,”
`
`thereby indicating that the discussion applies to other types of messages.
`
`39. In addition to and consistent with the above passage, the ‘241 patent also
`
`describes that the systems and procedures apply equally to other content such as
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`video, image, and text content, as shown in the sequence of citations below:
`
`“The messages stored by the systems and delivered to the paging
`
`transceiver may be of different types, such as voice, text, audio, or even
`
`video. In addition to messages, the paging system can store other
`
`information for the user, such as songs or video clips that the user can
`
`sample or updates on weather or stock rates.”
`
`Ex. 1001, Abstract. Further, the ‘241 patent states,
`
`“The paging transceiver 100 and system 30 are not limited to voice
`
`messages in a paging system. Rather, the paging transceiver 100 and system
`
`30 may operate with any type of message or information, including but not
`
`limited to numeric messages, alphanumeric messages, voice or other audio
`
`messages, video messages, graphics or even data.”
`
`Ex. 1001, 15:50-16:21, emphasis added. Additionally, the ‘241 patent states,
`
`“As an example, system 30A may store voice mail messages and email
`
`messages directed to the user's office, system 30B may store voice mail
`
`messages directed to the user's home, and system 30C may store audio
`
`messages. The base station 34A acts as a clearinghouse for all messages
`
`delivered to the user to any of the systems 30 and pages the paging
`
`transceiver 100 whenever a message is received. Thus, when a voice mail
`
`message or email message is received at system 30A, the system 30A
`
`18
`
`
`
`delivers a page to base station 34A which is then delivered to paging
`
`transceiver 100.”
`
`Ex. 1001, 17:29-39.
`
`40. As shown in these selections of text from the patent, the ‘241 patent
`
`describes that the same “system 30” can be configured to operate with various
`
`types of information, not only voice messages. There is no requirement in the ‘241
`
`patent that return receipts can only be used with a voice response system. Thus,
`
`Petitioners’ lack of support assertions against claims 13 and 84 are unfounded.
`
`41. For claim 82, Petitioners incorrectly state that “there is no disclosure for
`
`the system ‘to determine whether the identified information has been read’ as
`
`recited in claim 82 when an acknowledgment is used.” Paper 75 at 7. In other
`
`words, Petitioners do not contest that the ‘241 patent discloses the system being
`
`configured to “determine whether the identified information has been read.”
`
`Rather, Petitioners incorrectly argue that such feature is limited only to the
`
`situation in which an acknowledgment is used.
`
`42. Petitioners’ argument is incorrect because, as shown below, the ‘241 patent
`
`describes that the system determines whether the message or information has been
`
`read regardless of whether acknowledgments are used. For example, the ‘241
`
`patent states:
`
`“With reference to FIG. 5, a flow diagram 60 for performing a page call is
`
`shown. At step 61, the system 30 locates the current message flag from its
`
`19
`
`
`
`transmission stack within paging terminal controller 31 and communicates
`
`with base station 34 for setting up a page call. The base station 34 transmits
`
`selective call signals and CI data to the targeted paging transceiver 100. At
`
`step 62, the system 30 determines whether an acknowledgment (Ack) was
`
`received from the paging transceiver 100 indicating that the page call was
`
`received. If an acknowledgment was not received, then at step 70 the system
`
`30 determines whether an acknowledgment is a system 30 option. If an
`
`acknowledgment is required, then at step 71 the system 30 assigns the page
`
`call a priority in the transmission stack and eventually returns to step 61 for
`
`re-transmission. If the acknowledgment is received at step 62, the system 30
`
`sets an acknowledgment flag (Ack flag) corresponding to the stored
`
`message.
`
`If an acknowledgment is not a system requirement, as determined at step
`
`70, or after posting the acknowledgment flag at step 63, the system 30 sets
`
`a timer at step 64 and waits a period of time before proceeding to step 65. At
`
`step 65, the paging terminal controller 31 determines if the stored message
`
`has been read. If the message has been read, then at step 66 the system 30
`
`posts a read flag in the subscriber data base to indicate that the message
`
`was delivered and read and at step 67 the process ends.”
`
`Ex. 1001, 8:24-49, emphasis added.
`
`43. Thus, as shown above, the ‘241 patent describes that the system can either
`
`require or not require acknowledgment of the paging call. In either instance, the
`
`system “determines if the stored message has been read.” Thus, Petitioners
`
`assertion of lack of support against claim 82 is unfounded.
`
`20
`
`
`
`C. Petitioners’ Obviousness Assertions Based on Newly Cited References
`
`1. Claims 1 and 41
`
`44. Claim 1 of the ‘241 patent, as proposed to be amended, recites:
`
`“A system, comprising:
`
`a storage unit that stores a message for transmission to one or more
`
`devices;
`
`means for transmitting to the one or more devices a selective call signal
`
`comprising a message ID identifying the message by specifying the address
`
`in the storage unit for the message and an acknowledgment request, wherein
`
`the message is not included in the selective call signal;
`
`means for receiving a request transmitted from any one of the one or more
`
`devices, wherein the request is transmitted via a two-way communication
`
`session with the system and the request identifies the message and an action
`
`to be performed on the message; and means for performing the action.”
`
`45. Original claim 41 of the ‘241 patent, recites
`
`“In a communications network comprising a transmitting and receiving
`
`device for transmitting data to and receiving data from a system remote from
`
`the transmitting and receiving device, a method performed by the system,
`
`comprising the steps of:
`
`storing a message intended for the transmitting and receiving device;
`
`transmitting to the transmitting and receiving device a selective call signal
`
`comprising an acknowledgment request and a message identifier identifying
`
`the message, wherein the message is not included in the selective call signal;
`
`receiving a request transmitted from the transmitting and receiving device
`
`via a two-way communication session with the system, wherein the request
`
`21
`
`
`
`identifies the message and an action to be performed on the message; and
`
`performing the action after receiving the request.”
`
`46. As shown above, as originally issued, claim 41 recites: “a message
`
`identifier identifying a message.” As proposed to be amended, claim 1 recites “a
`
`message ID identifying the message by specifying the address in the storage unit
`
`for the message.”
`
`47. As also shown above, claim 1 as proposed to be amended requires that the
`
`message identifier identify “the message.” Use of the word “the” preceding
`
`“message” requires that the message that is identified be the one referred to earlier
`
`in claim 1 as that which is stored in the storage unit. Claim 1 further requires that
`
`“the message is not included in the selective call signal.” Still further, claim 1 as
`
`amended requires that the message identifier identify that specific message by
`
`“specifying the address in the storage unit for that specific message.”
`
`48. Similarly, claim 41 (not amended) requires that the message identifier
`
`identify “the message” which must be “the message” referred to earlier in claim 41
`
`as that which the system is storing intended for the transmitting and receiving
`
`device. Claim 41 further requires that “the message is not included in the selective
`
`call signal.”
`
`49. With respect to the above claims, the Opposition (Paper 75 at 9-10)
`
`incorrectly asserts that Smith (Ex. 1006) discloses “message identifiers, i.e.,
`
`message IDs.” The Opposition does not provide any discussion or analysis of that
`
`22
`
`
`
`statement, but only cites the following passages of Smith for Petitioners’ incorrect
`
`assertion of disclosure of a message ID:
`
`“FIG. 1 is a diagram of a communications network containing the
`
`integrated message center consistent with the principles of the present
`
`invention. The integrated message center is a logical entity that resides in
`
`mobile telephone 1100 and operates in conjunction with network services
`
`provider 1200 to inform a user of incoming and pending messages, such as
`
`fax mail, e-mail, voice mail, etc. The integrated message center also serves
`
`as a mechanism by which the user can retrieve, manipulate, and reply to all
`
`types of messages. User manipulation of the pending messages might
`
`include the ability to view, prioritize, edit, playbac
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