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
`COMMUNICATING 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
`II.
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 2
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104 .......................... 2
`A. Grounds for Standing ...................................................................................... 2
`B. Challenge and Relief Requested ...................................................................... 3
`C. Claim Construction .......................................................................................... 3
`IV. SUMMARY OF THE ‘506 PATENT ............................................................. 7
`A. Brief Description ............................................................................................. 7
`B. Summary of the Prosecution History of the ‘506 Patent ................................. 8
`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 ..................................................................... 9
`A. [GROUND 1] – Cannon anticipates claims 8 and 9. .................................... 10
`B. [GROUND 2] – Cannon in view of LaPorta renders obvious Claims 10, 19
`and 21. ............................................................................................................ 19
`C. [GROUND 3] – Cannon in view of Will renders obvious Claims 11-12. .... 35
`D. [GROUND 4] – Cannon in view of Will and in further view of LaPorta
`renders obvious Claims 13-14. ...................................................................... 55
`VI. CONCLUSION .............................................................................................. 60
`
`
`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
`
`Attorney Docket No.: 39521-0003IP1
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`EXHIBITS
`
`U.S. Patent No. 5,894,506 to Gregory J. Pinter (“‘506 Pa-
`tent”)
`
`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 Telecommunica-
`tions 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 Telecommunica-
`tions Technologies, LLC v. Clearwire Corp., Civil Action
`No. 2:12-cv-308-JRG-RSP (E.D. Tex.) (“Clearwire Or-
`der”)
`
`APL-1011
`
`U.S. Patent No. 5,784,001 to Deluca et al. (“Deluca”)
`
`
`
`
`
`
`
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`
`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 Mo-
`
`bile Telecommunications Technologies, LLC (“Patentee” or “MTel”). As ex-
`
`plained in this petition, there exists a reasonable likelihood 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)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Petitioner, Apple Inc., is the real party-in-interest.
`
`
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Apple is not aware of any disclaimers or reexamination certificates for the
`
`‘506 Patent. 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 Telecommunications 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
`
`1 This action has been consolidated with other cases concerning the same patent,
`
`with the lead case 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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`other patents at issue in the MTEL litigation, namely, U.S. Patent Nos. 5,659,891,
`
`5,915,210 and 5,590,403.
`
`C. Counsel Under 37 C.F.R. § 42.8(b)(3), and Service
`Apple designates W. Karl Renner, Reg. No. 41,265, as Lead Counsel and Thomas
`
`A. Rozylowicz, 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 Ac-
`
`count No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition, and au-
`
`thorizes payment for any additional fees to be charged to this Deposit Account.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`A. Grounds for Standing
`Apple certifies that the ‘403 Patent is available 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.
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`2
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`Attorney Docket No.: 39521-0003IP1
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`B. Challenge and Relief Requested
`Apple requests IPR of the Challenged Claims on the grounds set forth in the
`
`table below, and requests that each of the claims be found unpatentable.
`
`Ground
`Ground 1
`Ground 2
`Ground 3
`Ground 4
`
`‘506 Patent
`8 and 9
`10, 19 and 21
`11 and 12
`13 and 14
`
`Basis for Rejection of the IPR Claims
`§ 102 by Cannon
`§ 103 by Cannon in view of LaPorta
`§ 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 poten-
`
`tial 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 ef-
`
`fective filing date of the ‘506 Patent.
`
`C. Claim Construction
`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 “broadest reasonable construction in light of the specification of the pa-
`
`tent in which it appears.”2 37 C.F.R. § 42.100(b). For purposes of this proceeding
`
`
`2 Because the standards of claim interpretation applied in litigation differ from
`
`PTO proceedings, any interpretation of claim terms in this IPR is not binding upon
`
`
`
`3
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`Attorney Docket No.: 39521-0003IP1
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`only, Apple submits constructions for the following terms. All remaining terms
`
`should be given their plain meaning.3
`
`“Canned message” and “canned multiple response options”
`
`i.
`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 conducted in co-pending litigation. See, e.g., Markman Or-
`
`der at pp. 70-71 (“Court …hereby construes the disputed terms as set forth in the
`
`following chart:[]‘canned message’[:] ‘predefined sequence of characters’[.]”).
`
`Furthermore, for purposes of this Petition, the term “canned multiple re-
`
`sponse options” 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
`
`
`Apple in any litigation related to the subject patent. See In re Zletz, 13 USPQ2d
`
`1320, 1322 (Fed. Cir. 1989).
`
`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,
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`through its assessment 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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`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 multiple response options’[:] ‘predefined responses to a canned mes-
`
`sage[.]’”), and is consistent with the construction agreed by MTel, see, e.g., id. at
`
`p. 65 (“Court provided the parties with the following preliminary constructions
`
`…’canned multiple response options’ means ‘predefined responses to a canned
`
`message.’ At the March 7, 2014 hearing, all parties agreed to the Court adopting its
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`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 “re-
`
`sponse code” are construed by its plain and ordinary meaning, with the understand-
`
`ing that a “message code” corresponds to a “canned message.” See Surati at ¶¶31-
`
`33. This construction also mimics constructions resolved through Markman pro-
`
`ceedings conducted in co-pending litigation, and is harmonious with constructions
`
`offered by Patentee during those proceedings. See, e.g., Markman Order at p. 71
`
`(“[A]ll parties nonetheless agreed that a “message code” is something that corre-
`
`sponds to a “canned message.”), and at p. 73 (“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”
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`Attorney Docket No.: 39521-0003IP1
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`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 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” are to be construed at least broadly enough to read on “retriev-
`
`ing the file of canned messages and the file of canned multiple response options
`
`from the memory” and “retrieving the file of 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 110, ROM 112 (in-
`
`cluding 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 (“[P]arties have reached
`
`agreement on constructions for certain terms.... 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 se-
`lected canned message for communication to a designated
`other message terminal”
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`6
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`Attorney Docket No.: 39521-0003IP1
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`For purposes of this Petition, the terms “means for selecting one of the
`
`canned messages and the file of canned multiple response options from the
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`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” 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 “selecting one of the
`
`canned messages for communication to a designated other message terminal and
`
`for selecting multiple response options appropriate for the selected canned mes-
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`sage” respectively, when construed as a function. Both the terms are to be con-
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`strued at least broadly enough to read on “terminal keypad 126; or a mouse; or a
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`cursor; and equivalents thereof,” when construed as a structure. These construc-
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`tions are consistent with the constructions agreed to by Patentee in the co-pending
`
`litigation. See, e.g., Markman Order at pp. 6-7 (“[P]arties have reached agreement
`
`on constructions for certain terms.... set forth in Appendix A to this Claim Con-
`
`struction Memorandum and Order. and at p. 78.”) and at pp. 78-79.
`
`IV. SUMMARY OF THE ‘506 PATENT
`A. Brief Description
`Generally, the ‘506 patent is directed towards communicating messages in a
`
`messaging network. The Abstract of the ‘506 Patent states:
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`Attorney Docket No.: 39521-0003IP1
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`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 ter-
`minal 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
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`Office Action 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 rewritten in independent form including all of the limita-
`
`tions of the base claim and any intervening claims.” APL-1002, p. 78. In particu-
`
`lar, the Office stated that:
`
`Regarding claims 5-7, 18 and 21, prior art fail to disclose the feature of se-
`lecting one of the multiple response options at the second terminal, com-
`municating the selected response option to the network center, routing the op-
`tion 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 allowable features of claim 21, while cancelling claim 21.
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`Id. at pp. 84-91. No reason was given for allowance of amended claims 19 and 22.
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`Attorney Docket No.: 39521-0003IP1
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`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH IPR IS REQUESTED, THUS ESTAB-
`LISHING 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 de-
`
`scribed 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 lack-
`
`ing 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 to the first terminal, and display-
`
`ing the selected response option at the first terminal. As described below, the
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`combination of Cannon and LaPorta disclose this feature, together with the other
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`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 ad-
`
`dition, they demonstrate 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, rout-
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`Attorney Docket No.: 39521-0003IP1
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`ing the option from the network center to the first terminal, and displaying the se-
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`lected 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 file.” APL-1002
`
`at p. 78. Indeed, these references yield multiple grounds that render the 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 Pa-
`
`tent, rendering those claims unpatentable under 35 U.S.C. § 102(e) as being antici-
`
`pated 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.
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`Cannon teaches that “relatively short aliases” can be used to communicate “fre-
`
`quently transmitted information” from the PMUs to a system controller, such that
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`“frequently used messages can be represented by message aliases[.]” Id. at 2:19-
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`32. Each of the PMUs and the system controller can store databases of the “fre-
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`quently transmitted information and the associated aliases” “so that each device
`
`can recognize an alias and conveniently interpret the more lengthy message or
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`Attorney Docket No.: 39521-0003IP1
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`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-
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`53, which retrieves the associated message for presentation to the user, id. at 5:3-9.
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`Dr. Rajeev Surati, an authority in the field of communication networks and
`
`network messaging, explains that the “frequently transmitted information” and the
`
`associated “message aliases” in Cannon would qualify as canned messages and
`
`message codes, respectively. See, e.g., Surati at ¶45-47. In disclosing these fea-
`
`tures, 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
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`file.” APL-1002 at p. 78. These and other disclosures of Cannon also fully address
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`the other features of claims 8-9, as shown in the claim chart below.
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`8(pre). A method of communicating messages between subscribers to an
`
`electronic messaging network, comprising the steps of:
`
`Cannon discloses a communication system that provides two-way communi-
`
`cation between a portable messaging unit (“subscribers”) that sends a signal (“mes-
`
`sages”) to a recipient (“subscribers”) over a wireless communication channel
`
`(“electronic messaging network”). See Abstract. Cannon discloses methods asso-
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`Attorney Docket No.: 39521-0003IP1
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`ciated with wireless communications systems (“electronic messaging network”) in
`
`which portable messaging units or PMUs (“subscribers”) send and receive messag-
`
`es. See 1:14-23.
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`8(a) maintaining, at a network operation center, a first file of canned mes-
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`sages and message codes respectively assigned to the canned messages;
`
`Cannon discloses a communications system that includes PMUs and a sys-
`
`tem controller (“network operation center”). The system controller stores a data-
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`base (“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 accord-
`
`ing to the present invention,” 1:41-43; see also Cannon Fig. 1. See also 1:59-60
`
`and Fig. 12 (annotated below).
`
`
`
`“[T]he communication system 100 according to the present invention em-
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`ploys relatively short aliases to communicate frequently transmitted information
`
`from the PMUs 105 to the system controller 110. Specifically, frequently used
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`Attorney Docket No.: 39521-0003IP1
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`messages can be represented by message aliases,” 2:19-26. “Databases of the fre-
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`quently transmitted information and the associated aliases are preferably stored at
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`the PMUs 105 and at the system controller 110,” 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 messages and message codes corresponding to the first file;
`
`Cannon discloses a communications system that includes PMUs, as de-
`
`scribed 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 equivalent to that stored in the system controller (“corre-
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`sponding to the first file”): “FIG. 1 is an illustration of a communication system
`
`including portable messaging units (PMUs) and a system controller,” 1:41-43; see
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`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
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`coupled to the processor 210 for storing the frequent recipient, i.e., friend, list and
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`the frequent message list. Preferably, the lists in the database 230 are maintained in
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`accordance with instructions by the user of the PMU 105 by over-the-air pro-
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`gramming,” 2:39-52; “each message included in the message list is associated with
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`a message alias. These "canned messages" are also preferably associated with a
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`message designation, which could be set by the user, so that the user can easily re-
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`member the message and select it for transmission by providing information to the
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`processor 210 via the controls 215. An entry in the message list could, for example,
`
`include a number as a designator and be as follows:
`
`” 3:11-34. See also 6:4-10 and 9:21-26.
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`8(c) maintaining, at a second terminal of a second subscriber, a third file of
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`canned messages and message codes corresponding to the first file;
`
`Cannon discloses that a communications system includes at least two PMUs,
`
`as described in 8(a) and 8(b) above. See also Fig. 1. Similar to that described in
`
`8(b), Cannon discloses that a PMU 105 that is a receiver (“a second terminal of a
`
`second subscriber”) stores a database (“third file”) of frequently transmitted infor-
`
`mation (“canned messages”) and associated aliases (“message codes”) where the
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`Attorney Docket No.: 39521-0003IP1
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`databases stored in the PMUs 105 and the system controller are equivalent (“corre-
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`sponding to the first file”): “receiver 245 then compares, at step 345, the received
`
`message information with aliases stored in the message list. When the received
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`message information is equivalent to a canned message alias, the message associ-
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`ated with the matching alias is retrieved from the list and stored, at step 355, in the
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`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
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`transmission to the second terminal;
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`Cannon discloses that a PMU 105 (“a first terminal of a first subscriber”)
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`stores a database (“second file”) of frequently transmitted information (“canned
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`messages”) and associated aliases (“message codes”), as described above. See 8(a).
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`A sender 240 in the PMU 105 prepares the information (“selecting an appropriate
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`canned message from the second file”) for transmission to a receiver 245: “A send-
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`er 240 included in the PMU 105 prepares information for transmission from the
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`PMU 105, and a receiver 245 processes received information. Preferably, the send-
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`er 240 and the receiver 245 comprise firmware stored in the device memory 235
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`and executed by the processor 210. Alternatively, the sender 240 and receiver 245
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`could be implemented using hardware capable of performing equivalent opera-
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`tions,” 4:1-8; “When, at step 465, the signal includes a message code, indicating
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`that a message is to be transmitted to another device, the sender 240 refer-
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`Attorney Docket No.: 39521-0003IP1
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`ences...the database 230 to determine...whether the entered message is a canned
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`message. Thereafter, at step 475, the message code, the friend alias or recipient
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`address, and the message information or message alias are provided to the trans-
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`ceiver 205,” 5:56-63; see also Fig. 5 and 10:7-13.
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`8(e) sending the message code assigned to the selected canned message to
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`the network operation center;
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`A sender 240 in the PMU 105 prepares information for transmission to a re-
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`ceiver 245, as described in 8(d). Cannon discloses that the sender provides the
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`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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`
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`“FIGS. 10 and 11 show examples of message transmissions from the PMU
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`105. In FIG. 10, the PMU 105 transmits a frequently transmitted message to a
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`friend by sending the message code, the friend alias, and the message alias. The
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`controller 110 receives the signal,” 6:46-57; see also Fig. 10.
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`8(f) relaying the message code assigned to the selected canned message
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`from the network operation center to the second terminal;
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`Cannon discloses that a router is included as part of the system controller
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`(“network operation center”). When the system controller receives a message alias
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`from a source terminal and determines that the message alias is present in its data-
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`base, the router is activated to relay the message alias (“message code”) to the re-
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`cipient device (“second terminal”): “FIG. 14 is a flowchart depicting an operation
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`of a router included in the system controller,” 1:65-66; “When a message alias is
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`included in the signal from the PMU 105, the CPU 515 references, at step 584, the
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`subscriber database 530 to determine whether the received message alias is includ-
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`ed in the canned message list associated with the PMU 105. When it is, the mes-
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`sage associated with the canned message alias is recovered, at step 586, and the
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`router 540 is activated, at step 578....Referring next to FIG. 14, a flowchart depicts
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`an operation of the router 540…When, at step 635, the message to be sent to the
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`device comprises a canned message stored in the device's list, the message alias
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`representative of the message is recovered. The recipient address, the message
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`code, the message number, and the message alias are then provided, at step 640, to
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`the transceiver 505 for transmission to the recipient device, which can, for in-
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`stance, comprise another PMU.” 8:30-58. See also Fig. 14 and 9:38-53.
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`8(g) retrieving the selected canned message from the third file using the as-
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`signed 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
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`the system controller (“network operation center”), and compares the received
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`message information to aliases (“message code”) stored in the message list (“third
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`file”) and retrieves the message associated with the matching alias (“retrieving the
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`selected canned message”). See 1:50-51; see also Fig. 4 (partly reproduced herein).
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`
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`“When, at step 335, the information received by the receiver 245 includes a
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`message code, indicating that the system controller 110 is routing a message to the
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`PMU 105 over the wireless communication channel, a message number associated
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`with the message and included in the signal is stored, at step 340, in the message
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`memory 225. The receiver 245 then compares, at step 345, the received message
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`information with aliases stored in the message list. When the received message in-
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`formation is equivalent to a canned message alias, the message associated with the
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`matching alias is retrieved from the list and stored, at step 355, in the message
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`memory 225,” 4:62-5:6.
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`8(h) displaying the selected canned message retrieved from the third file.
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`Cannon discloses that a PMU 105 includes a display for presenting infor-
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`mation to the user. When the received message information is equivalent to a
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`canned message alias, the message associated with the matching alias is retrieved
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`from the message list (“third file”) and presented to the user: “When the received
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`message information is equivalent to a canned message alias, the message associ-
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`ated with the matching alias is retrieved from the list and stored, at step 355, in the
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`message memory 225....Thereafter, the message can be presented to the user in a
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`conventional manner.” 5:3-9. See also 2:39-51; Fig. 2 and 2:28.
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`9. The method defined in claim 8, further including the step of updating the
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`first, second, and third canned message files.
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`Cannon discloses that the system controller updates the databases at the sys-
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`tem controller (“first” “canned message file”) and at the PMUs 105 (“second, and
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`third canned message files”). See 2:28-38; 6:4-10. See also 9:54-60.
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`B.
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` [GROUND 2] – Cannon in view of LaPorta renders obvi-
`ous Claims 10, 19 and 21.
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`As explained below, the features of claims 10, 19 and 21 of the ‘506 Patent
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`are rendered obvious over Cannon in view of LaPorta, rendering claims 10, 19 and
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`21 unpatentable under 35 U.S.C. § 103(a).
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`As explained in Surati at ¶92-94, it would be obvious for a person of ordi-
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`nary skill in the art, at the time of the effective filing date of the ‘506 Patent, to
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`combine the teachings of Cannon and LaPorta, to send frequently transmitted mes-
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`sages with customizations, as taught by LaPorta, where the messages are commu-
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`nicated using message aliases