IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Patent of: Gregory J. Pinter
`U.S. Patent No.: 5,894,506 Attorney Docket No.: 39521-0003IP1
`Issue Date:
`April 13, 1999
`Appl. Serial No.: 08/708,696
`Filing Date:
`September 5, 1996
`Title:
`METHOD AND APPARATUS FOR GENERATING AND COMMUNI-
`CATING MESSAGES BETWEEN SUBSCRIBERS TO AN ELECTRONIC
`MESSAGING NETWORK
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 5,894,506
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`

`

`Attorney Docket No.: 39521-0003IP1
`
`TABLE OF CONTENTS
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................................... 1
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .................................................. 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ........................................................... 1
`C. Counsel Under 37 C.F.R. § 42.8(b)(3), and Service .................................................. 2
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ............................................................... 2
`II.
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 ........................................ 2
`III.
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ................................................... 2
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ................................. 2
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ................................................. 3
`IV.
`SUMMARY OF THE ‘506 PATENT ........................................................................... 7
`A. Brief Description ........................................................................................................ 7
`B. Summary of the Prosecution History of the ‘506 Patent ............................................. 7
`V.
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH IPR
`IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD THAT AT
`LEAST ONE IPR CLAIM OF THE ‘506 PATENT IS UNPATENTABLE...................... 8
`[GROUND 1] – Cannon anticipates claims 8 and 9. .................................................. 9
`[GROUND 2] – Cannon in view of LaPorta renders obvious Claims 10, 19 and 21. 20
`[GROUND 3] – Cannon in view of Will renders obvious Claims 11-12. .................... 37
`[GROUND 4] – Cannon in view of Will and in further view of LaPorta renders obvious
`Claims 13-14. .......................................................................................................... 55
`CONCLUSION ......................................................................................................... 60
`
`A.
`B.
`C.
`D.
`
`VI.
`
`
`i
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`

`

`APL-1001
`APL-1002
`APL-1003
`APL-1004
`APL-1005
`APL-1006
`APL-1007
`
`APL-1008
`
`APL-1009
`
`APL-1010
`
`APL-1011
`
`
`
`
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`Attorney Docket No.: 39521-0003IP1
`
`EXHIBITS
`
`
`
`U.S. Patent No. 5,894,506 to Gregory J. Pinter (“‘506 Patent”)
`Prosecution History of the ‘506 Patent
`Declaration of Dr. Rajeev Surati (“Surati”)
`U.S. Patent No. 5,850,594 to Cannon et al. (“Cannon”)
`U.S. Patent No. 5,970,122 to LaPorta et al. (“LaPorta”)
`U.S. Patent No. 5,588,009 to Craig A. Will (“Will”)
`Claim Construction Order from Mobile Telecommunications
`Technologies, LLC v. Apple Inc., Civil Action No. 2:13-cv-258-
`JRG-RSP (E.D. Tex.) (“Markman Order”)
`Plaintiff’s Opening Brief on Issues of Claim Construction from
`Mobile Telecommunications Technologies, LLC v. Apple Inc.,
`Civil Action No. 2:13-cv-258-JRG-RSP (E.D. Tex.)
`Docket for Mobile Telecommunications Technologies, LLC v.
`Apple Inc., Case No. 2:13-CV-258 (E.D. Tex.)
`Claim Construction Order from Mobile Telecommunications
`Technologies, LLC v. Clearwire Corp., Civil Action No. 2:12-cv-
`308-JRG-RSP (E.D. Tex.) (“Clearwire Order”)
`U.S. Patent No. 5,784,001 to Deluca et al. (“Deluca”)
`
`ii
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`Attorney Docket No.: 39521-0003IP1
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`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review (“IPR”) under 35
`
`U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 8-14, 19 and 21 (“the IPR Claims”) of U.S.
`
`Patent No. 5,894,506 (“‘506 Patent”) of assignee Mobile Telecommunications Technologies,
`
`LLC (“Patentee” or “MTel”). As explained in this petition, there exists a reasonable likeli-
`
`hood that Apple will prevail with respect to at least one claim challenged in this petition.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`A.
`Petitioner, Apple Inc., is the real party-in-interest.
`
`
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`B.
`Apple is not aware of any disclaimers or reexamination certificates for the ‘506 Pa-
`
`tent. The ‘506 Patent does not have any related continuation application. Apple has been
`
`named as a defendant in a recently-filed litigation concerning the ‘506 Patent, Mobile Tele-
`
`communications Technologies, LLC v. Apple Inc., Civil Action No. 2:13-cv-258-JRG-RSP
`
`(E.D. Tex.) (“MTEL Litigation”).1 Apple has also petitioned—on this same day—for another
`
`Inter Partes Review of the ‘506 Patent on different grounds of rejection, and for Inter Partes
`
`Review of several other patents at issue in the MTEL litigation, namely, U.S. Patent Nos.
`
`5,659,891, 5,915,210 and 5,590,403.
`
`1 This action has been consolidated with other district court cases concerning the same pa-
`
`tent. The consolidated lead case is captioned Mobile Telecommunications Technologies,
`
`LLC v. Sprint Nextel Corporation, Civ. Action No. 2:12-cv-832-JRG-RSP (E.D. Tex.).
`
`1
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`Attorney Docket No.: 39521-0003IP1
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`Counsel Under 37 C.F.R. § 42.8(b)(3), and Service
`C.
`Apple designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel and Thomas A. Rozy-
`
`lowicz, Reg. No. 50,620, as Backup Counsel, both available at 3200 RBC Plaza, 60 South
`
`Sixth Street, Minneapolis, MN 55402 (T: 202-783-5070; F: 202-783-2331. Please address
`
`all correspondence and service to counsel at the address provided in Section I(C). Apple
`
`also consents to electronic service by email at IPR39521-0003IP1@fr.com.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`II.
`Apple authorizes the Patent and Trademark Office to charge Deposit Account No.
`
`06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition, and further authorizes pay-
`
`ment for any additional fees to be charged to this Deposit Account.
`
`III.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`A.
`Apple certifies that the ‘403 Patent is eligible for IPR and that Apple is not barred or
`
`estopped from requesting IPR. The present petition is being filed within one year of when
`
`Apple’s waiver of service was filed in the co-pending district court litigation, Case No. 2:13-
`
`CV-258, which took place on June 27, 2013. See APL-1009, p. 9; see also Macauto U.S.A.
`
`v. BOS GMBH & KG (IPR2012-00004), Paper No. 18 at 16.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`B.
`Apple requests IPR of the Challenged Claims of the ‘506 Patent on the grounds set
`
`forth in the table below, and requests that each of the claims be found unpatentable.
`
`2
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`Attorney Docket No.: 39521-0003IP1
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`Ground
`
`‘506 Patent Claims
`
`Basis for Rejection of the IPR Claims
`
`Ground 1
`
`Ground 2
`
`Ground 3
`
`Ground 4
`
`8 and 9
`
`§ 102 by Cannon
`
`10, 19 and 21
`
`§ 103 by Cannon in view of LaPorta
`
`11 and 12
`
`13 and 14
`
`§ 103 by Cannon in view of Will
`
`§ 103 by Cannon in view of Will and LaPorta
`
`
`
`The ‘506 Patent issued from US Application No. 08/708,696, filed on Sept. 5, 1996,
`
`without a claim of priority, yielding an earliest effective filing date potential of Sept. 5, 1996.
`
`Cannon, Will, LaPorta, and Deluca each qualify as prior art under 35 U.S.C § 102(e) be-
`
`cause each was filed prior to the earliest potential effective filing date of the ‘506 Patent.
`
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`C.
`The subject patent has not expired, such that its claims and claim terms are subject
`
`to amendment. Accordingly, the claims and the claim terms are properly given their “broad-
`
`est reasonable construction in light of the specification of the patent in which it appears.”2
`
`37 C.F.R. § 42.100(b). For purposes of this proceeding only, Apple submits constructions
`
`
`2 Because the standards of claim interpretation applied in litigation differ from PTO proceed-
`
`ings, any interpretation of claim terms in this IPR is not binding upon Apple in any litigation
`
`related to the subject patent. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
`
`3
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`

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`Attorney Docket No.: 39521-0003IP1
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`for the following terms. All remaining terms should be given their plain meaning.3
`
`i.
`
`“Canned message” and “canned multiple response op-
`tions”
`For purposes of this Petition, the term “canned message” is to be construed at least
`
`broadly enough to read on “predefined sequence of characters.” See Surati at ¶¶31-33.
`
`This construction also mimics the construction resolved through Markman proceedings con-
`
`ducted in co-pending litigation. See, e.g., Markman Order at pp. 70-71 (“The Court accord-
`
`ingly hereby construes the disputed terms as set forth in the following chart:[]‘canned mes-
`
`sage’[:] ‘predefined sequence of characters’[.]”).
`
`Furthermore, for purposes of this Petition, the term “canned multiple response op-
`
`tions” is to be construed at least broadly enough to read on “predefined responses to a
`
`canned message.” See Surati at ¶¶31-33. This construction also mimics the construction
`
`resolved through Markman proceedings conducted in the co-pending litigation, see, e.g.,
`
`Markman Order at pp. 70-71 (“The Court accordingly hereby construes the disputed terms
`
`as set forth in the following chart:[] ‘canned multiple response options’[:] ‘predefined re-
`
`sponses to a canned message[.]’”), and is consistent with the construction agreed by MTel,
`
`see, e.g., id. at p. 65 (“[T]he Court provided the parties with the following preliminary con-
`
`
`3 In as much as 37 C.F.R. § 42.104(b)(2) defines a narrow scope of inquiry in this Petition,
`
`Apple does not acknowledge claim compliance with 35 U.S.C. § 112, through its assess-
`
`ment of a broadest reasonable interpretation for terms that follow, or otherwise.
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`4
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`Attorney Docket No.: 39521-0003IP1
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`structions for these disputed terms…’canned multiple response options’ means ‘predefined
`
`responses to a canned message.’ At the March 7, 2014 hearing, all parties agreed to the
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`Court adopting its preliminary construction of ‘canned multiple response options.’”).
`
`“Message code” and “Response code”
`ii.
`For purposes of this Petition, each of the terms “message code” and “response
`
`code” are construed by its plain and ordinary meaning, with the understanding that a “mes-
`
`sage code” corresponds to a “canned message.” See Surati at ¶¶31-33. This construction
`
`also mimics constructions resolved through Markman proceedings conducted in co-pending
`
`litigation, and is harmonious with constructions offered by Patentee during those proceed-
`
`ings. See, e.g., Markman Order at p. 71 (“[A]ll parties nonetheless agreed that a “message
`
`code” is something that corresponds to a “canned message.”), and at p. 73 (“The Court
`
`therefore hereby construes the disputed terms as set forth in the following chart: [] ‘message
`
`code’[:] Plain meaning [and] ‘response code’[:] Plain meaning[.]”); see also APL-1008, p. 16.
`
`iii.
`
`“Means for retrieving the file of canned messages and the
`file of canned multiple response options from the memory”
`and “means for retrieving the file of canned messages and
`message codes from the memory”
`For purposes of this Petition, the terms “means for retrieving the file of canned mes-
`
`sages and the file of canned multiple response options from the memory” and “means for
`
`retrieving the file of canned messages and message codes from the memory” are to be
`
`construed at least broadly enough to read on “retrieving the file of canned messages and
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`the file of canned multiple response options from the memory” and “retrieving the file of
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`5
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`Attorney Docket No.: 39521-0003IP1
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`canned messages and message codes from the memory” respectively, when construed as
`
`a function. Both of the terms are to be construed at least broadly enough to read on “CPU
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`110, ROM 112 (including stored application program for controlling terminal operation), and
`
`system bus 130 (which interconnects system components such as CPU 110, ROM 112, and
`
`RAM 114); and equivalents thereof,” when construed as a structure. These constructions
`
`are consistent with the constructions agreed to by Patentee in the co-pending litigation.
`
`See, e.g., Markman Order at pp. 6-7 (“The parties have reached agreement on construc-
`
`tions for certain terms.... The parties’ agreements are set forth in Appendix A to this Claim
`
`Construction Memorandum and Order. and at p. 78.”) and at pp. 78-79.
`
`iv.
`
`“Means for selecting one of the canned messages and the
`file of canned multiple response options from the memory”
`and “means for selecting one of the canned messages and
`at least one of the multiple response options appropriate
`for the selected canned message for communication to a
`designated other message terminal”
`For purposes of this Petition, the terms “means for selecting one of the canned mes-
`
`sages and the file of canned multiple response options from the memory” and “means for
`
`selecting one of the canned messages and at least one of the multiple response options
`
`appropriate for the selected canned message for communication to a designated other
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`message terminal” are to be construed at least broadly enough to read on “selecting one of
`
`the canned messages and at least one of the multiple response options appropriate for the
`
`selected canned message for communication to a designated other message terminal” and
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`“selecting one of the canned messages for communication to a designated other message
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`6
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`

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`Attorney Docket No.: 39521-0003IP1
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`terminal and for selecting multiple response options appropriate for the selected canned
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`message” respectively, when construed as a function. Both the terms are to be construed
`
`at least broadly enough to read on “terminal keypad 126; or a mouse; or a cursor; and
`
`equivalents thereof,” when construed as a structure. These constructions are consistent
`
`with the constructions agreed to by Patentee in the co-pending litigation. See, e.g., Mark-
`
`man Order at pp. 6-7 (“The parties have reached agreement on constructions for certain
`
`terms.... The parties’ agreements are set forth in Appendix A to this Claim Construction
`
`Memorandum and Order. and at p. 78.”) and at pp. 78-79.
`
`IV.
`
`SUMMARY OF THE ‘506 PATENT
`Brief Description
`A.
`Generally, the ‘506 patent is directed towards communicating messages in a mes-
`
`saging network. The Abstract of the ‘506 Patent states:
`
`An electronic messaging network comprises a network operation center and plural
`message terminals, all including memories for storing corresponding files of canned
`messages and associated message codes. To send a canned message, a calling
`party selects a canned message stored at one message terminal and transmits the
`assigned message code to a receiving party at another message terminal via the
`network operation center.
`Summary of the Prosecution History of the ‘506 Patent
`B.
`Prosecution resulted in an improvident grant of the ‘506 Patent. In the first Office Ac-
`
`tion dated February 26, 1998, the Office immediately allowed claims 8-14, rejected claim 19
`
`based on U.S. Patent No. 5,327,486, and indicated that claim 21 “would be allowable if re-
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`Attorney Docket No.: 39521-0003IP1
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`written in independent form including all of the limitations of the base claim and any inter-
`
`vening claims.” APL-1002, p. 78. In particular, the Office stated that:
`
`Regarding claims 5-7, 18 and 21, prior art fail to disclose the feature of selecting one
`of the multiple response options at the second terminal, communicating the selected
`response option to the network center, routing the option from the network center to
`the first terminal, and displaying the selected response option at the first terminal.
`Regarding claims 8-14, prior art fail to teach a network center with a first file, a first
`terminal with a second file and a second terminal with a third file.
`
`Id. In the July 24, 1998 response, Applicant amended claim 19 and added new claim 22
`
`that included the allowable features of claim 21, while cancelling claim 21. Id. at pp. 84-91.
`
`No reason was given for allowance of claims amended claims 19 and 22.
`
`V.
`
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE IPR CLAIM OF THE ‘506 PATENT IS
`UNPATENTABLE
`The Office found the prior art lacking a network center with a first file, a first terminal
`
`with a second file, and a second terminal with a third file. As described below, Cannon,
`
`LaPorta and Will disclose this feature, together with the other features of claims 8-14.
`
`With respect to claim 19, while the Office did not indicate which features were novel
`
`over the prior art, a combination of Cannon and LaPorta discloses all features of claim 19.
`
`With respect to claim 21, the Office found the prior art lacking with regard to the feature of
`
`selecting one of the multiple response options at the second terminal, communicating the
`
`selected response option to the network center, routing the option from the network center
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`8
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`Attorney Docket No.: 39521-0003IP1
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`to the first terminal, and displaying the selected response option at the first terminal. As de-
`
`scribed below, the combination of Cannon and LaPorta disclose this feature, together with
`
`the other features of claim 21.
`
`While not made available to the Office during original prosecution, these references
`
`therefore disclose each of the features of claims 8-14, 19 and 21. In addition, they demon-
`
`strate that the Office was incorrect in concluding that the prior art failed to show “selecting
`
`one of the multiple response options at the second terminal, communicating the selected
`
`response option to the network center, routing the option from the network center to the first
`
`terminal, and displaying the selected response option at the first terminal,” or “a network
`
`center with a first file, a first terminal with a second file and a second terminal with a third
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`file.” APL-1002 at p. 78. Indeed, these references yield multiple grounds that render the
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`IPR Claims unpatentable. Because the Office was not made aware of these references, nor
`
`of the well-known nature of these features, the Office improvidently granted the ‘506 patent.
`
`[GROUND 1] – Cannon anticipates claims 8 and 9.
`A.
`Cannon teaches each and every limitation of claims 8 and 9 of the ‘506 Patent, ren-
`
`dering those claims unpatentable under 35 U.S.C. § 102(e) as being anticipated by Cannon.
`
`In particular, Cannon describes a communication system that provides two-way
`
`communication between portable messaging units (PMUs) for exchanging messages over a
`
`wireless communication channel. Cannon, abstract, 1:14-23. Cannon teaches that “rela-
`
`tively short aliases” can be used to communicate “frequently transmitted information” from
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`Attorney Docket No.: 39521-0003IP1
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`the PMUs to a system controller, such that “frequently used messages can be represented
`
`by message aliases[.]” Id. at 2:19-32. Each of the PMUs and the system controller can
`
`store databases of the “frequently transmitted information and the associated aliases” “so
`
`that each device can recognize an alias and conveniently interpret the more lengthy mes-
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`sage or friend address associated therewith.” Id. Cannon further discloses that a PMU
`
`seeking to transmit a message to a friend may send “the message code, the friend alias,
`
`and the message alias” to the system controller. Id. at 6:46-57. The system controller, in
`
`turn, transmits the message alias to the recipient device, id. at 9:38-53, which retrieves the
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`associated message for presentation to the user, id. at 5:3-9.
`
`Dr. Rajeev Surati, an authority in the field of communication networks and network
`
`messaging, explains that the “frequently transmitted information” and the associated “mes-
`
`sage aliases” in Cannon would qualify as canned messages and message codes, respec-
`
`tively. See, e.g., Surati at ¶45-47. In disclosing these features, Cannon addresses each
`
`feature believed by the handling examiner to be missing from the prior art with regard to
`
`claims 8-9, namely “a network center with a first file, a first terminal with a second file and a
`
`second terminal with a third file.” APL-1002 at p. 78. These and other disclosures of Can-
`
`non also fully address the other features of claims 8-9, as shown in the claim chart below.
`
`8(pre). A method of communicating messages between subscribers to an electronic
`
`messaging network, comprising the steps of:
`
`10
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`Attorney Docket No.: 39521-0003IP1
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`Cannon discloses a communication system that provides two-way communication
`
`between a portable messaging unit (“subscribers”) that sends a signal (“messages”) to a
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`recipient (“subscribers”) over a wireless communication channel (“electronic messaging
`
`network”). See Abstract. Cannon discloses methods associated with wireless communica-
`
`tions systems (“electronic messaging network”) in which portable messaging units or PMUs
`
`(“subscribers”) send and receive messages. See 1:14-23.
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`8(a) maintaining, at a network operation center, a first file of canned messages and
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`message codes respectively assigned to the canned messages;
`
`Cannon discloses a communications system that includes PMUs and a system con-
`
`troller (“network operation center”). The system controller stores a database (“first file”) of
`
`frequently transmitted information (“canned messages”) and associated aliases (“message
`
`codes”): “FIG. 1 is an illustration of a communication system including portable messaging
`
`units (PMUs) and a system controller according to the present invention,” 1:41-43; see also
`
`Cannon Fig. 1; “FIG. 12 is an electrical block diagram of the system controller included in
`
`the communication system[.]” 1:59-60; see also Fig. 12 (annotated below).
`
`“[T]he communication system 100 according to the present invention employs rela-
`
`tively short aliases to communicate frequently transmitted information from the PMUs 105 to
`
`the system controller 110. Specifically, frequently used messages can be represented by
`
`message aliases,” 2:19-26. “Databases of the frequently transmitted information and the as-
`
`sociated aliases are preferably stored at the PMUs 105 and at the system controller 110 so
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`Attorney Docket No.: 39521-0003IP1
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`that each device can recognize an alias and conveniently interpret the more lengthy mes-
`
`sage or friend address associated therewith…. [T]he databases of both the system control-
`
`ler 110 and the PMUs 105 are updated, when necessary, by the controller 110 to avoid sit-
`
`uations in which information stored in a PMU database is not equivalent to that stored in the
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`controller database,” 2:28-38; 9:38-42.
`
`
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`8(b) maintaining at a first terminal of a first subscriber, a second file of canned mes-
`
`sages and message codes corresponding to the first file;
`
`Cannon discloses a communications system that includes PMUs, as described in
`
`8(a) above. Cannon discloses that a PMU 105 (“a first terminal of a first subscriber”) stores
`
`a database (“second file”) of frequently transmitted information (“canned messages”) and
`
`associated aliases (“message codes”) where the database stored in the PMU 105 is equiva-
`
`lent to that stored in the system controller (“corresponding to the first file”): “FIG. 1 is an il-
`
`lustration of a communication system including portable messaging units (PMUs) and a sys-
`
`tem controller,” 1:41-43; see also Fig. 1 and Fig. 2 (annotated herein), 2:28-38.
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`Attorney Docket No.: 39521-0003IP1
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`
` “FIG. 2 is an electrical block diagram of a PMU 105…a database 230 is coupled to
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`the processor 210 for storing the frequent recipient, i.e., friend, list and the frequent mes-
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`sage list. Preferably, the lists in the database 230 are maintained in accordance with in-
`
`structions by the user of the PMU 105 by over-the-air programming,” 2:39-52; “each mes-
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`sage included in the message list is associated with a message alias. These "canned mes-
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`sages" are also preferably associated with a message designation, which could be set by
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`the user, so that the user can easily remember the message and select it for transmission
`
`by providing information to the processor 210 via the controls 215. An entry in the message
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`list could, for example, include a number as a designator and be as follows:
`
`” 3:11-34; “the system controller 110 modifies the da-
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`tabase 230 of the PMU 105 so that the lists stored in the controller 110 and the lists stored
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`Attorney Docket No.: 39521-0003IP1
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`in the PMU 105 remain equivalent. [O]ther methods for ensuring agreement between the
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`PMU lists and the controller lists can…be employed,” 6:4-10; “the portable unit maintains
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`lists of frequently used…messages. Each entry in the lists is aliased with a code that is usu-
`
`ally shorter than the referenced message…. For instance, a very long message that is often
`
`transmitted could be aliased with a message alias comprising six bits,” 9:21-26.
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`8(c) maintaining, at a second terminal of a second subscriber, a third file of canned
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`messages and message codes corresponding to the first file;
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`Cannon discloses that a communications system includes at least two PMUs, as de-
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`scribed in 8(a) and 8(b) above. See also Fig. 1. Similar to that described in 8(b), Cannon
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`discloses that a PMU 105 that is a receiver (“a second terminal of a second subscriber”)
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`stores a database (“third file”) of frequently transmitted information (“canned messages”)
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`and associated aliases (“message codes”) where the databases stored in the PMUs 105
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`and the system controller are equivalent (“corresponding to the first file”): “receiver 245 then
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`compares, at step 345, the received message information with aliases stored in the mes-
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`sage list. When the received message information is equivalent to a canned message alias,
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`the message associated with the matching alias is retrieved from the list and stored, at step
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`355, in the message memory 225,” 5:1-6. See also 8(b) above.
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`8(d) selecting an appropriate canned message from the second file for transmission
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`to the second terminal;
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`Attorney Docket No.: 39521-0003IP1
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`Cannon discloses that a PMU 105 (“a first terminal of a first subscriber”) stores a da-
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`tabase (“second file”) of frequently transmitted information (“canned messages”) and asso-
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`ciated aliases (“message codes”), as described above. See 8(a). Cannon discloses that a
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`sender 240 in the PMU 105 prepares the information (“selecting an appropriate canned
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`message from the second file”) for transmission to a receiver 245: “A sender 240 included in
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`the PMU 105 prepares information for transmission from the PMU 105, and a receiver 245
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`processes received information. Preferably, the sender 240 and the receiver 245 comprise
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`firmware stored in the device memory 235 and executed by the processor 210. Alternative-
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`ly, the sender 240 and receiver 245 could be implemented using hardware capable of per-
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`forming equivalent operations,” 4:1-8; “When, at step 465, the signal includes a message
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`code, indicating that a message is to be transmitted to another device, the sender 240 ref-
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`erences...the database 230 to determine...whether the entered message is a canned mes-
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`sage. Thereafter, at step 475, the message code, the friend alias or recipient address, and
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`the message information or message alias are provided to the transceiver 205,” 5:56-63;
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`see also Fig. 5. “[T]he user is provided with a convenient way of entering message and ad-
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`dress information. Specifically, the user does not have to remember relatively long address-
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`es for entry into the portable messaging unit. Instead, the user only has to remember and
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`enter a relatively short recipient alias or message designation rather than a lengthy address
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`or message.” 10:7-13.
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`Attorney Docket No.: 39521-0003IP1
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`8(e) sending the message code assigned to the selected canned message to the
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`network operation center;
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`Cannon discloses that a sender 240 in the PMU 105 prepares information for trans-
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`mission to a receiver 245, as described in 8(d). Cannon discloses that the sender provides
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`the message code to the transceiver 205, which sends the message code to the system
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`controller 110 (“network operation center”). See 5:56-63. See also Fig. 5.
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`“FIGS. 10 and 11 show examples of message transmissions from the PMU 105. In
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`FIG. 10, the PMU 105 transmits a frequently transmitted message to a friend by sending the
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`message code, the friend alias, and the message alias. The controller 110 receives the sig-
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`nal,” 6:46-57; see also Fig. 10 (annotated herein).
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`8(f) relaying the message code assigned to the selected canned message from the
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`network operation center to the second terminal;
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`Cannon discloses that a router is included as part of the system controller (“network
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`operation center”). When the system controller receives a message alias from a source
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`terminal and determines that the message alias is present in its database, the router is acti-
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`vated to relay the message alias (“message code”) to the recipient device (“second termi-
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`nal”): “FIG. 14 is a flowchart depicting an operation of a router included in the system con-
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`troller,” 1:65-66; “When a message alias is included in the signal from the PMU 105, the
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`Attorney Docket No.: 39521-0003IP1
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`CPU 515 references, at step 584, the subscriber database 530 to determine whether the
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`received message alias is included in the canned message list associated with the PMU
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`105. When it is, the message associated with the canned message alias is recovered, at
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`step 586, and the router 540 is activated, at step 578....Referring next to FIG. 14, a
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`flowchart depicts an operation of the router 540…When, at step 635, the message to be
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`sent to the device comprises a canned message stored in the device's list, the message ali-
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`as representative of the message is recovered. The recipient address, the message code,
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`the message number, and the message alias are then provided, at step 640, to the trans-
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`ceiver 505 for transmission to the recipient device, which can, for instance, comprise anoth-
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`er PMU.” 8:30-58. See also Fig. 14 (partly reproduced and annotated below). and 9:38-53.
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`
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`8(g) retrieving the selected canned message from the third file using the assigned
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`message code received from the network operation center; and
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`Cannon discloses that a PMU 105 that is a receiver receives a message from the
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`system controller (“network operation center”), and compares the received message infor-
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`mation to aliases (“message code”) stored in the message list (“third file”) and retrieves the
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`Attorney Docket No.: 39521-0003IP1
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`message associated with the matching alias (“retrieving the selected canned message”):
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`“FIG. 4 is a flowchart of an operation of a receiver included in the PMU of FIG. 2,” 1:50-51;
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`see also Fig. 4 (partly reproduced and annotated herein).
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`“When, at step 335, the information received by the receiver 245 includes a message
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`code, indicating that the system controller 110 is routing a message to the PMU 105 over
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`the wireless communication channel, a message number associated with the message and
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`included in the signal is stored, at step 340, in the message memory 225. The receiver 245
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`then compares, at step 345, the received message information with aliases stored in the
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`message list. When the received message information is equivalent to a canned message
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`alias, the message associated with the matching alias is retrieved from the list and stored,
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`at step 355, in the message memory 225,” 4:62-5:6.
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`
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`8(h) displaying the selected canned message retrieved from the third file.
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`Cannon dis