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.: 39521-0003IP2
`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
`
`
`
`
`
`
`
`In re Patent of: Gregory J. Pinter
`U.S. Patent No.: 5,894,506 Attorney Docket No.: 39521-0003IP2
`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
`
`
`
`
`
`
`
`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.
`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...................... 7
`A. Rejections Based on LaPorta as Primary Reference .......................................... 10
`1.
`[GROUND 1] – LaPorta in view of Deluca renders obvious Claims 8-14. 10
`2.
`[GROUND 2] – LaPorta in view of Deluca and in further view of Will
`renders obvious Claims 11-14. ............................................................... 35
`B. Rejections Based on Will as Primary Reference ................................................. 53
`1.
`[GROUND 3] – Will anticipates Claims 19 and 21. .................................. 53
`REDUNDACY .......................................................................................................... 59
`CONCLUSION ......................................................................................................... 60
`
`V.
`VI.
`
`
`i
`
`
`
`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. 5,970,122 to LaPorta et al. (“LaPorta”)
`U.S. Patent No. 5,109,390 to Craig A. Will (“Will”)
`U.S. Patent No. 5,784,001 to Deluca et al. (“Deluca”)
`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.) (“Plaintiff’s
`Opening Brief”)
`Docket for Mobile Telecommunications Technologies, LLC v.
`Apple Inc., Case No. 2:13-CV-258 (E.D. Tex.)
`Plaintiff’s ‘506 Patent Infringement Contention from Mobile Tel-
`ecommunications Technologies, LLC v. Apple Inc., Case No.
`2:13-CV-258 (E.D. Tex.)
`U.S. Patent No. 5,850,594 to Cannon et al. (“Cannon”)
`
`APL-1001
`APL-1002
`APL-1003
`APL-1004
`APL-1005
`APL-1006
`APL-1007
`
`APL-1008
`
`APL-1009
`
`APL-1010
`
`APL-1011
`
`
`
`ii
`
`
`
`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 Challenged Claims”)
`
`of U.S. Patent No. 5,894,506 (“‘506 Patent”) of assignee Mobile Telecommunications Tech-
`
`nologies, LLC (“Patentee” or “MTel”). As explained 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)
`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
`
`
`
` 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. 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 IPR39521-0003IP2@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-1011, 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 on the grounds set forth in the table
`
`below, and requests that each of the claims be found unpatentable.
`
`
`
`2
`
`
`
`Ground
`
`‘506 Patent Claims
`
`Basis for Rejection of the Challenged Claims
`
`Ground 1
`
`Ground 2
`
`8-14
`
`11-14
`
`§ 103 by LaPorta in view of Deluca
`
`§ 103 by LaPorta in view of Deluca and Will
`
`Ground 3
`
`19 and 21
`
`§ 102 by Will
`
`
`
`The ‘506 Patent issued from US Application No. 08/708,696, which was filed on Sep-
`
`tember 5, 1996, and which does not claim priority to any earlier application. Accordingly,
`
`claims 8-14, 19 and 21 of the ‘506 Patent may have, at earliest, an effective filing date of
`
`September 5, 1996.2 LaPorta qualifies as prior art under 35 U.S.C § 102(e) because LaPor-
`
`ta was filed on July 24, 1996, which was prior to the effective filing date of the ‘506 Patent.
`
`Will qualifies as prior art under 35 U.S.C § 102(e) because Will was filed on February 3,
`
`1994, which was more than one year prior to the effective filing date of the ‘506 Patent.
`
`Deluca qualifies as prior art under 35 U.S.C § 102(e) because Deluca claims priority to US
`
`Application No. 08/560,604, which was filed on November 20, 1995, which was prior to the
`
`effective filing date of the ‘506 Patent.
`
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`C.
`
`2 Petitioner is not expressing any opinion at this point as to whether the claims of the ’506
`
`Patent are supported by the parent application. In view of the relevant dates of the currently
`
`cited references, the prior art status of the references do not change if claims 8-14, 19 and
`
`21 are not accorded the filing date of the patent application.
`
`3
`
`
`
`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.”3
`
`37 C.F.R. § 42.100(b). For purposes of this proceeding only, Apple submits constructions
`
`for the following terms. All remaining terms should be given their plain meaning.4
`
`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 conduct-
`
`ed in 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 message’[:]
`
`‘predefined sequence of characters’[.]”).
`
`
`3 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).
`
`4 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.
`
`4
`
`
`
`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-
`
`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
`
`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
`
`5
`
`
`
`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
`
`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 (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
`
`6
`
`
`
`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
`
`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
`
`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. 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
`
`7
`
`
`
`Apple proposes grounds of rejection for the claims and, thus, explains the justifica-
`
`tion for IPR and, in doing so, establishes a reasonable likelihood that at least one of the
`
`Challenged Claims are unpatentable. Particularly in light of the limited prosecution history
`
`with respect to claims 8-14, 19 and 21, there exists substantial prior art (which was not of
`
`record during prosecution) demonstrating that the features found to justify allowance of
`
`claims 8-14, 19 and 21, as well as the other features of these claims, were known prior to
`
`the ‘506 Patent.
`
`For example, prior art indicated below is sufficiently comprehensive to cover the
`
`Challenged Claims, whether or not viewed consistent with positions articulated by patentee
`
`in other proceedings, namely that claims 8, 19 and 21 of the '506 patent (including, for ex-
`
`ample, the “maintaining at a ...terminal of a ...subscriber, a ...file of canned messages” limi-
`
`tations of claim 8 and the “a memory storing a file of canned messages” limitations of claims
`
`19 and 21) cover a wireless device that includes an Emoji keyboard, where an Emoji (e.g.,
`
`“a smiley face”) is alleged to be a canned message that is allegedly stored with correspond-
`
`ing message codes, such as “:-).” See, e.g., APL-1010, pp. 8-11, 24 and 28-29. While Ap-
`
`ple does not advocate for an image, such as an Emoji, to constitute a canned message,5
`
`
`5 Not only is such a definition of an image, such as an Emoji, inapplicable under the con-
`
`struction of the claim term “canned message” to be a “predefined sequence of characters,”
`
`the '506 Patent itself describes that a canned message is transmitted either in code form or
`
`
`
`8
`
`
`
`application of this interpretation of claims 8, 19 or 21 (including the above limitations) would
`
`simply render those claims more vulnerable to Deluca and LaPorta. Specifically, Deluca
`
`discloses that graphic images can be considered as messages, and LaPorta and Deluca
`
`disclose a network center with a first file, a first terminal with a second file and a second
`
`terminal with a third file, which the Examiner found lacking in the prior art before him with
`
`respect to claims 8-14, as noted above.
`
`LaPorta and Deluca also disclose the other features of claims 8-14. Additionally or
`
`alternatively, LaPorta and Deluca, along with Will, disclose the other features of claims 8-14.
`
`With respect to claim 19, while the Examiner did not indicate which features were
`
`novel, Will fully discloses all the features of claim 19, as well as claim 21, including the fea-
`
`ture of selecting one of the multiple response options at the second terminal, communi-
`
`cating the selected response option to the network center, routing the option from the net-
`
`work center to the first terminal, and displaying the selected response option at the first ter-
`
`minal, with regard to which the Examiner found the prior art before him was lacking.
`
`While not made available to the Examiner during original prosecution, these refer-
`
`ences therefore disclose each of the features of claims 8-14, 19 and 21. In addition, they
`
`
`in text form, and displayed in text form. See, e.g., '506 Patent at 8:7-41 and Figs. 3 and 4.
`
`Accordingly, an image, such as an Emoji, cannot be considered to be a canned message
`
`and therefore MTel’s asserted scopes of these limitations are clearly incorrect.
`
`9
`
`
`
`demonstrate that the Examiner 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 file.” APL-1002 at p. 78. Indeed, these references yield multiple grounds that render
`
`the Challenged Claims unpatentable. Because the Examiner was not made aware of these
`
`references in granting the ‘506 Patent, none of the well-known nature of these features, the
`
`Office improvidently granted the ‘506 patent.
`
`A.
`
`Rejections Based on LaPorta as Primary Reference
`[GROUND 1] – LaPorta in view of Deluca renders obvious
`1.
`Claims 8-14.
`The features of claims 8-14 of the ‘506 Patent are obvious over LaPorta in view of
`
`Deluca, rendering claims 8-14 unpatentable under 35 U.S.C. § 103(a).
`
`As explained by the Dr. Rajeev Surati in his expert declaration, see Surati at ¶108-
`
`10, it would be obvious for a person of ordinary skill in the art, at the time of the filing date of
`
`the ‘506 Patent application, to apply the teachings of Deluca to that of LaPorta to extend
`
`LaPorta’s sending of message numbers corresponding to a message to the recipient mes-
`
`saging device. Specifically, according to LaPorta, an originating messaging device com-
`
`municates messages to a destination by sending, to a user agent, a predetermined mes-
`
`sage number corresponding to a message that is stored both at the originating device and
`
`10
`
`
`
`the user agent. See, e.g., LaPorta at 1:62-2:4. The user agent expands the coded mes-
`
`sage received from the originator back into the full message, and forwards the full message
`
`to the recipient. See, e.g., id. at 2:8-12.
`
`In complementary fashion, according to Deluca, a paging terminal transmits codes
`
`corresponding to messages selected by the message originator, Deluca at 1:16-17, 2:46-57.
`
`As discussed in §V, supra, upon applying MTel’s apparent interpretation of the claims,
`
`Deluca can be read as describing that the data communication receiver includes a database
`
`for storing image data and associated codes corresponding to messages, see, e.g., id. at
`
`3:1-7, such that the receiver can recover graphic image associated with a message sent by
`
`the originator based on the code received from the paging terminal, see, e.g., id. at 4:33-60.
`
`As explained by Dr. Surati, Deluca’s teaching enables LaPorta to extend the data
`
`transmission using message codes all the way to the recipient, instead of limiting to the first
`
`half of the communication path, namely, from the originating device to the intermediate net-
`
`work node. The combination of LaPorta and Deluca teaches that each of the originator, re-
`
`cipient and the user agent stores predetermined messages and associated message codes.
`
`The originator sends, to the user agent, the message code corresponding to the desired
`
`predetermined message to be conveyed to the recipient, as taught by LaPorta, see, e.g.,
`
`LaPorta at 1:62-2:4. Instead of expanding the code to the full message for sending to the
`
`recipient, the user agent forwards the message code, using which the recipient retrieves the
`
`11
`
`
`
`full message from its memory based on the received message code, as taught by Deluca,
`
`see, e.g., Deluca at 2:46-57. See Surati at ¶108-10.
`
`Claims 8-9. 8(pre). A method of communicating messages be-tween subscribers to
`
`an electronic messaging net-work, comprising the steps of:
`
`LaPorta discloses a two-way wireless messaging system in which subscribers of a
`
`two-way wireless messaging service receive messages (“method of communicating mes-
`
`sages between subscribers”) from the messaging network (“electronic messaging network“):
`
`“[a] two-way wireless messaging system includes a messaging network having at least one
`
`user agent corresponding to a subscriber of a two-way wireless messaging service. The
`
`subscriber receives messages from the messaging network ... in response to an originating
`
`message code that is received from a two-way messaging device of the subscriber,” ab-
`
`stract; see also 3:19-23; LaPorta Fig. 1 (annotated below).
`
`
`8(a) maintaining, at a network operation center, a first file of canned messages and
`
`message codes respectively as-signed to the canned messages;
`
`12
`
`
`
`LaPorta discloses that a user agent (“network operation center”) in the two-way
`
`messaging network stores messages that are associated with predetermined message
`
`codes (“a first file of canned messages and message codes respectively assigned to the
`
`canned messages”): “Each such message is coded in a predetermined manner and in-
`
`cludes, among other things, a message number that uniquely identifies a message stored
`
`both locally at the device and at the user agent, a modifier representing the customization to
`
`be applied to the message, and personalized address aliases. A user agent inside the two-
`
`way messaging network…stores among other things, a plurality of messages …. When a
`
`user agent receives a coded message from its associated subscriber, it expands the mes-
`
`sage back to the desired full message…by selecting from the stored messages…according
`
`to the code,” 1:66-2:12; 4:7-12; “the user agent 12 includes a plurality of stored messages.
`
`A predetermined message is forwarded to a desired destination ...in response to an originat-
`
`ing message code that is received from a two-way messaging device 11 of the subscriber
`
`….Also, the selected destination could be a second two-way messaging device,” 4:47-59,
`
`LaPorta Fig. 1 (annotated above); 19:29-34.
`
`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;
`
`LaPorta discloses that a wireless messaging device (“first terminal of first subscrib-
`
`er”) stores messages similar to the messages stored at a user agent, where predetermined
`
`codes are associated with the messages (“second file of canned messages and message
`
`13
`
`
`
`codes corresponding to the first file”). The message tables at the user agents are identical
`
`to that at the associated messaging devices: “The user agents mirror the state and context
`
`(e.g., any address and message tables in the user agent) of their messaging devices 11
`
`(FIG. 1), 50a, 58,” 5:33-41; 5:57-58; “Any user agent…maintains…an identical copy of the
`
`address and message tables as the messaging devices. The address and message infor-
`
`mation stored in the messaging device and respective user agent should always be con-
`
`sistent with each other,” 5:62-67; 1:62-2:4; see also LaPorta Fig. 3 (annotated herein).
`
`
`LaPorta further discloses that a first pager (“first terminal of first subscriber”) stores a
`
`plurality of messages (“canned messages”) and corresponding message codes that are
`
`identical to messages and message codes stored at the user agent (“second file of canned
`
`messages and message codes corresponding to the first file”). See 19:27-34.
`
`8(c) maintaining, at a second terminal of a second subscriber, a third file of canned
`
`messages and message codes corresponding to the first file;
`
`As described in claim 8(b), LaPorta discloses that a wireless messaging device (“se-
`
`cond terminal of second subscriber”) stores messages same as the messages stored at a
`
`14
`
`
`
`user agent, with predetermined codes associated with the messages (“third file of canned
`
`messages and message codes corresponding to the first file”). The message tables at the
`
`user agents are identical to that at the associated messaging devices. LaPorta further dis-
`
`closes that a first pager (“second terminal of second subscriber”) stores a plurality of mes-
`
`sages (“canned messages”) and corresponding message codes that are identical to mes-
`
`sages and message codes stored at the user agent (“third file of canned messages and
`
`message codes corresponding to the first file”): “the selected destination could be a second
`
`two-way messaging device 44,” 4:47-59; see also 8(b); 4:7-14; 7:56-58 and LaPorta Fig. 1.
`
`Additionally, Deluca discloses a data communication receiver that includes a
`
`graphics database (“first terminal of a first subscriber”) for storing image data (“canned
`
`messages”) and code (“message codes”) in a predetermined list (“second file”): “FIG. 2 is
`
`an example of codes and image data stored in a graphics database included in the data
`
`communication receiver of FIG. 1,” 1:46-48; “graphic images available for presenting graph-
`
`ic messages are preferably stored by the data communication receiver 100 in…a graphics
`
`database 155…the graphics database 155 stores a predetermined list of codes…Each code
`
`is associated with image data stored in the database 155,” 3:1-7; “FIG. 2 is an example of
`
`entries in the graphics database 155…up to one-hundred codes, each associated with im-
`
`age data, could be programmed into the database 155,” 3:18-23; see also Deluca Figs. 1
`
`(annotated herein) and 2.
`
`15
`
`
`
`
`8(d) selecting an appropriate canned message from the second file for transmission
`
`to the second terminal;
`
`LaPorta discloses that a pre-canned message can be selected by a user in his pager
`
`for sending to other users’ pagers (“second terminal”): “Thomas can originate through his
`
`pager 50a a message to his lunch group members, Dan, Mary and Paul, and inquire about
`
`lunch choices,” 5:12:25; “Thomas can send the message as a pre-canned message with an
`
`embedded response,” 5:57-58; “The most basic type of supported message is fixed pre-
`
`canned messages,” 13:18-19; see also LaPorta Fig. 3 (annotated above).
`
`Deluca also discloses that a message originator selects messages for transmission
`
`to the receiver: “predetermined characters…can be used to designate selected codes rep-
`
`resentative of predetermined graphic images. A message originator can therefore press the
`
`buttons associated with the codes to provide graphics information to a selective call termi-
`
`nal, which transmits the codes as a radio signal,” 2:51-57; 1:14-7.
`
`8(e) sending the message code assigned to the selected canned message to the
`
`network operation center;
`
`LaPorta discloses that a subscriber sends a coded message to the associated user
`
`agent (“network operation center”): “a wireless messaging device can originate new mes-
`
`16
`
`
`
`sages or reply to previously received messages…Each such message is coded in a prede-
`
`termined manner and includes… a message number that uniquely identifies a message
`
`stored both locally at the device and at the user agent…. A user agent inside the two-way
`
`messaging network…stores…a plurality of messages…. When a user agent receives a
`
`coded message…, it expands the message back to the desired full message,” 1:62-2:10:
`
`“The coded message is much shorter than the corresponding full-text message,” 2:29-31.
`
`A user sends an uplink message to the user agent that includes “a short group iden-
`
`tifier and a message number” (message code), which are used by the user agent as indices
`
`to respective data tables: “In the case in which messages and addresses of recipients are
`
`coded, messages received by the two-way messaging network 14 are forwarded to a user
`
`agent 12,” 4:43-46; 5:33-41; 14:3-13, see also LaPorta Fig. 3 (annotated above); Fig. 7.
`
`Deluca also discloses that a message originator sends codes corresponding to the
`
`graphics messages to a paging terminal for transmission to the receiver. See 2:51-57.
`
`8(f) relaying the message code assigned to the selected canned message from the
`
`network operation center to the second terminal;
`
`LaPorta discloses that a user agent (“network operation center”) forwards (“relaying”)
`
`a predetermined message to the desired destination (“second terminal”) based on a mes-
`
`sage code received at the user agent from a sender: 2:5-12; “In the case in which messag-
`
`es and addresses of recipients are coded, messages received by the two-way messaging
`
`network 14 are forwarded to a user agent 12…the user agent 12 includes a plurality of
`
`17
`
`
`
`stored messages. A predetermined message is forwarded to a desired destination…in re-
`
`sponse to an originating message code that is received from a two-way messaging device
`
`11 of the subscriber 40…. This originating message code is expanded by the user agent 12
`
`so that the downlink message to the desired destination can include full information. Also,
`
`the selected destination could be a second two-way messaging device 44,” 4:43-58; 5:33-
`
`41; 14:61-67.
`
`Deluca discloses that a paging terminal (“network operation center”) transmits a
`
`message to the receiver (“second terminal”): “A message is usually provided to a paging
`
`terminal, then transmitted as a radio signal to the receiver,” 1:16-17. The paging terminal
`
`transmits codes corresponding to the graphics messages selected by the message origina-
`
`tor (“message code assigned to the selected canned message”). See 2:46-57. The paging
`
`terminal transmits encoded messages (“message code”) to the receiver: “The terminal 305
`
`further comprises an encoder 330 for encoding messages and addresses…and a transmit-
`
`ter 335 for transmitting the encoded information as a radio signal,” 5:33-37; 5:18-22; see
`
`also Deluca Fig. 11 (annotated below).
`
`
`8(g) retrieving the selected canned message from the third file using the assigned
`
`message cod
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