`571-272-7822
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` Paper 10
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` Entered: June 20, 2013
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`RESEARCH IN MOTION CORPORATION
`Petitioner,
`
`v.
`
`WI-LAN USA INC.
`Patent Owner.
`
`
`
`Case IPR2013-00126 (JL)
`Patent 6,240,088
`
`
`
`Before JAMESON LEE, GLENN J. PERRY, and THOMAS L. GIANNETTI,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Universal Electronics Exhibit 2003, Page 1
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`Case IPR2013-00126
`Patent 6,240,088
`
`
`
`I.
`INTRODUCTION
`Research in Motion Corporation (“RIM”) filed a petition (Paper 1)
`requesting inter partes review of claims 19-21 of Patent 6,240,088 (Ex. 1001, “the
`’088 patent”). A corrected petition (Paper 5) was also filed. In this decision, we
`refer to the corrected petition as the petition (“Pet.”). The patent owner, Wi-Lan
`USA Inc. (“WI-LAN”), filed a preliminary response (Paper 9, “Prel. Resp.”). We
`have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides as follows:
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`Upon consideration of the petition1 and WI-LAN’s preliminary response, we
`determine that the information presented in the petition establishes that there is a
`reasonable likelihood that RIM would prevail on at least one alleged ground of
`unpatentability with respect to claims 19-21 of the ’088 patent. Accordingly,
`pursuant to 35 U.S.C. § 314, we authorize an inter partes review to be instituted on
`claims 19-21. The petition for instituting inter partes review is granted.
`
`
`1 The petition does not rely on the testimony of any technical expert.
`2
`
`Universal Electronics Exhibit 2003, Page 2
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`A. Related Proceedings
`
`Case IPR2013-00126
`Patent 6,240,088
`
`
`
`RIM indicates that the following litigation would affect or be affected by a
`decision in this proceeding: Wi-Lan USA Inc. et al. v. Research In Motion Ltd., et
`al., Case No. 12-cv-20232 (S.D. Fla.).
`
`B. The ’088 Patent
`
`The disclosed invention relates to sequential transmission of at least two
`portions of a data package. (Ex. 1001, 1:5-7.) In the background portion of its
`disclosure, the ‘088 patent describes that Narrow-band Personal Communications
`Systems (NPCS), or alternatively two-way paging, is an ideal platform for
`extending electronic mail to wireless devices such as pagers. (Ex. 1001, 1:10-13.)
`Specifically, an e-mail subscriber can designate, in his e-mail account, that e-mail
`communications be forwarded to the subscriber’s two-way pager, and the e-mail
`subscriber, upon receiving the e-mail forwarded to his two-way pager, can send a
`response back to the sender. (Ex. 1001, 1:16-22.)
`One of the problems encountered by the pre-existing interface between e-
`mail systems and two-way pagers is that the e-mail sender can transmit an
`excessively large message or other data to the two-way pager of the recipient. (Ex.
`1001, 1:33-36.) The receipt of such excessively large amount of data can be costly
`to the recipient and can cause RF channel delays and unpredictable RF statistics.
`(Ex. 1001, 1:36-38.)
`According to the specification of the ’088 patent, a need exists for a method
`of transmission of large amounts of data to a wireless device, such as a pager,
`where no large amounts of data are transmitted in a single occurrence on the RF
`3
`
`Universal Electronics Exhibit 2003, Page 3
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
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`
`
`Case IPR2013-00126
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`
`
`channel. (Ex. 1001, 1:56-59.) Also according to the specification of the ‘088
`patent, a need exists for the two-way pager user to control the number of data-
`packages sent, and therefore the cost, if the charge for the data transmission is on a
`data-amount basis. (Ex. 1001, 2:5-8). Further according to the specification of the
`‘088 patent, a need exists for a user to determine, based on the data already sent
`and received, the importance of subsequent data which have not yet been sent.
`(Ex. 1001, 2:9-13.)
`The subject matter of claim 19 of the ’088 patent is directed to a method for
`wireless transmission of an alphanumeric message having at least a first portion, a
`second portion, and a third portion from an electronic communication transmitter
`to an electronic communication receiver. Claims 20 and 21 each depend on claim
`19. Claim 19 is reproduced below:
`19. A method for wireless transmission of an alphanumeric message
`having at least a first portion, a second portion, and a third
`portion from an electronic communication transmitter to an electronic
`communication receiver, the method comprising:
`
`transmitting from the electronic communication transmitter to
`the electronic communication receiver the first portion of the
`alphanumeric message, the first portion being an initial portion of the
`alphanumeric message;
`
`having the electronic communication receiver provide a user
`thereof with the first portion in a form comprehensible to the user;
`
`having the electronic communication receiver provide the user
`thereof with a choice of whether to receive the second portion;
`
`
`
`
`
`
`
`4
`
`Universal Electronics Exhibit 2003, Page 4
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
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`
`
`Case IPR2013-00126
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`
`
`the electronic communication receiver
`from
`transmitting
`transmission instructions to the electronic communication transmitter
`in response to an affirmative selection by the user of the electronic
`communication receiver to the choice of whether to have the second
`portion;
`transmitting from the electronic communication transmitter
`
`the second portion in response to the transmission instructions
`from
`the electronic communication
`receiver,
`the electronic
`communication receiver providing the user thereof with the second
`portion in a form comprehensible to the user;
`
`having the electronic communication receiver provide the user
`thereof with a choice of whether to receive the third portion;
`transmitting from the electronic communication receiver
`
`transmission instructions to the electronic communication transmitter
`in response to an affirmative selection by the user of the electronic
`communication receiver to the choice of whether to have the third
`portion; and
`transmitting from the electronic communication transmitter
`the third portion in response to the transmission instructions from
`the electronic communication receiver, the electronic communication
`receiver providing the user thereof with the third portion in a form
`comprehensible to the user.
`
`(Emphasis added.)
`
`Thus, data transmission is divided into three sequential stages, through
`which the user recipient is provided successive opportunities to choose whether or
`not to receive a subsequent portion of the data not yet transmitted.
`
`
`
`5
`
`Universal Electronics Exhibit 2003, Page 5
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`C. Prior Art Relied Upon by Petitioner
`
`Case IPR2013-00126
`Patent 6,240,088
`
`
`
`
`
`RIM relies upon the following prior art references:
`Adler
`Patent 6,157,630 Filed 1/26/1998
`Kikinis
`Patent 5,838,252 Filed 9/9/1996
`
`RIM Inter@ctive Pager User’s Guide (1997)
`(Inter@ctive Pager Guide)
`HP 620LX/660LX Palmtop User Guide (1998)
`(HP Guide)
`Nokia User’s Manual (1998)
`(Nokia Manual)
`
`
`
`
`
`(Ex. 1003)
`(Ex. 1004)
`
`(Ex. 1002)
`
`(Ex. 1005)
`
`(Ex. 1006)
`
`
`
`D.
`
`The Asserted Grounds
`
`RIM alleges that claims 19-21are unpatentable based on the following
`grounds:
`1. Claims 19-21 as anticipated by Inter@ctive Pager Guide under 35 U.S.C.
`§ 102(a);
`2. Claims 19-21 as unpatentable over Inter@ctive Pager Guide under 35 U.S.C.
`§ 103(a);
`3. Claims 19-21 as unpatentable under 35 U.S.C. § 103(a) for obviousness over
`HP Guide and Nokia Manual.
`4. Claims 19-21 as anticipated by Adler under 35 U.S.C. § 102(e); and
`5. Claims 19-21 as anticipated by Kikinis under 35 U.S.C. § 102(e).
`
`
`
`
`6
`
`Universal Electronics Exhibit 2003, Page 6
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`Case IPR2013-00126
`Patent 6,240,088
`
`
`
`In determining patentability over the prior art, the name of the game is the
`
`claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Consistent with
`the statute and the legislative history of the AIA, the Board interprets claim terms
`by applying the broadest reasonable construction in the context of the specification
`in which the claims reside. 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Under that construction, claim
`terms are given their ordinary and customary meaning as would be understood by
`one of ordinary skill in the art in the context of the entire patent disclosure.
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)(en banc).
`
`That ordinary and customary meaning applies unless the inventor, as his or
`her own lexicographer, has set forth in the specification a special meaning for a
`term. Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir.
`1998); York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568,
`1572 (Fed. Cir. 1996). That special definition must be set forth with reasonable
`clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per
`Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). Neither RIM nor WI-LAN contends that any special definition
`has been provided in the specification for any claim term. We conclude the same.
`
`Also, a particular embodiment appearing in the written description should
`not be read into the claim if the claim language is broader than that embodiment.
`In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`7
`
`Universal Electronics Exhibit 2003, Page 7
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
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`
`Case IPR2013-00126
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`
`
`
`alphanumeric message
`Claim 19 begins with the recitation: “A method for wireless transmission of
`
`an alphanumeric message . . . .” Under the rule of broadest reasonable
`interpretation in light of the specification, we construe an “alphanumeric message”
`as message containing one or more alphabets and/or one or more numerals, in any
`language. The specification does not require that both alphabets and numerals are
`present in the message or that the message must be any particular language. Also,
`the specification does not exclude other types of symbols within the message, such
`as special characters “@,” “#,” and “*,” emoticons, and punctuation marks.
`
`The term “alphanumeric message” is broad and has no special definition in
`the specification of the ’088 patent. In connection with e-mails, we determine that
`it can read on either (1) the substantive text portion in the body of the entire email
`data package, after the header portion including information such as sender
`address, recipient address, date, and the subject matter field, or (2) the entire e-mail
`data package including the header information.
`wireless transmission of an alphanumeric message having
`a first portion, a second portion, and a third portion
`
`Generally speaking, nothing precludes a portion from being a whole portion
`
`of the entire element. However, in the context of the specification of the ’088
`patent, the recitation of an alphanumeric message having a first portion, a second
`portion, and a third portion precludes any such “portion” from constituting the
`entirety of the message. That would be an unreasonable construction in light of the
`specification. The invention is about making more efficient data communication,
`by transmitting one message in separate portions. (Ex. 1001, Abstract:1-4; 2:7-10.)
`8
`
`Universal Electronics Exhibit 2003, Page 8
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
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`Case IPR2013-00126
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`
`
`The first portion, the second portion, and the third portion of the message,
`
`possibly with additional portions, collectively would combine to yield the whole of
`the message. The claims do not require the absence of additional portions of the
`message, beyond the first, second, and third portions.
`the first portion being
`“an initial portion” of the alphanumeric message
`
`The term “initial portion” was not present in the specification of the ’088
`
`patent as originally filed. Rather, the limitation “the first portion being an initial
`portion of the alphanumeric message” was added by amendment during
`prosecution to overcome a rejection based on prior art. A copy of the amendment
`has been submitted by WI-LAN as Exhibit 2001. In that amendment, the
`Applicant stated:
`New Claims 24-27 are fully supported in the specification by
`originally filed Claim 1 and page 4, lines 17-19. Independent Claim
`24 recites in pertinent part, "the first portion being an initial portion of
`the alphanumeric message. . . ." In contrast, the cited reference
`(Foladare et al.) only discloses that an e-mail message summary is
`sent followed by the email message. It is clear that this summary is
`not a first portion of the message. Rather, according to the
`technique disclosed by the cited reference, the first portion (along
`with the rest of the message) would be transmitted in response to
`a selection signal sent by the user. Therefore, the cited reference
`fails to anticipate independent Claim 24 and dependent Claims 25-27.
`(Ex. 2001, 2:20-3-2.)
`
` (Emphasis added.)
`
`
`
`
`9
`
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`Case IPR2013-00126
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`
`We construe “initial portion” as a part of the original message for
`
`transmission, which precedes all remaining portions of the message. Thus, an
`initial portion has to include the very first or leading part of the message for
`transmission.
`RIM in its petition urges that the “initial portion” does not have to include
`any portion of “the body of the alphanumeric message.” (Pet. 4:14-16.) That
`characterization is unhelpful because it is uncertain just what RIM means by
`“body.” It suffices here to state only that if the alphanumeric message has nothing
`else preceding the “body,” then the “initial portion” of the alphanumeric message
`must include a portion of that body. On the other hand, if something precedes the
`“body,” then the “initial portion” does not have to include any part of that body.
`While it is true that in the e-mail message embodiment described in the
`specification of the ’088 patent, a portion of the data content in the body of the e-
`mail is transmitted as a part of the initial portion also including header information
`(Ex. 1001, 43:64 to 4:3), that is more limiting than what is required by the claims.
`No disclosure indicates that it is necessary to have at least some part of the body
`portion of an e-mail message also containing a header to be included in the first
`portion being transmitted. The rule of broadest reasonable interpretation precludes
`importation into the claims of an “extraneous limitation” from the specification. In
`re Paulsen, 30 F.3d at 1480. A limitation is extraneous if there is no need for its
`inclusion in the claim for the claim to have a reasonable meaning. See id.; E.I. du
`Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.
`1988). In patent law, “the name of the game is the claim.” In re Hiniker Co.,
`150 F.3d at 1369.
`
`10
`
`Universal Electronics Exhibit 2003, Page 10
`Universal Remote Control v. Universal Electronics, Trial No. IPR2014-01104
`
`
`
`Case IPR2013-00126
`Patent 6,240,088
`
`
`
`WI-LAN contends (Prel. Resp. 5:9-10) that it is contrary to the prosecution
`history of the ’088 patent to take the position that the body portion of an e-mail
`message need not be included in the “initial portion” that constitutes the first
`portion. WI-LAN cites to the following text from the amendment adding the term
`“initial portion” to a claim to overcome a rejection (Ex. 2001, 2:22 to 3:1):
`In contrast, the cited reference only discloses that an email-message
`summary is sent followed by the email message. It is clear that this
`summary is not a first portion of the message. Rather, according to
`the technique disclosed by the cited reference, the first portion (along
`with the rest of the message) would be transmitted in response to a
`selection signal sent by the user.
`
`The purported inconsistency is not explained adequately by WI-LAN. No
`
`such inconsistency is evident from the above-quoted text, which indicates only that
`the e-mail message summary transmitted prior to sending of the e-mail message is
`not a part of the first portion of the email message. We decline to speculate on
`how that translates to requiring an initial portion of an e-mail to include text from
`the body portion of an e-mail.
`
`WI-LAN further argues that construing “initial portion” as not necessarily
`including some text from the body portion of a message ignores the difference in
`language between claim 19 and other claims, i.e., claims 1, 10, 13. The argument
`is unpersuasive, as discussed below,
`
`WI-LAN does not explain adequately why claim 19 would have identical
`scope with claims 1, 10, and 13 with respect to what constitutes the first portion, if
`“initial portion” is construed such that it does not have to include some text from
`the body portion of a message. We recognize that claim 19 recites “the first
`
`11
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`Case IPR2013-00126
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`
`portion being an initial portion of the alphanumeric message,” and that claims 1,
`10, and 13 each recites “the first portion of the data package including identifying
`information pertaining to a second portion of the data package.” The difference in
`language extends clearly beyond the question whether text from the substantive
`body of the message is included in the first portion. We have construed “initial
`portion” as that part of the message preceding all other portions. That requirement
`is absent from the language of the other claims. In any event, because claim 19 is
`unrelated to claims 1, 10, and 13 in dependency, nothing precludes use of
`alternative language in claim 19 to cover the same feature, even assuming that the
`different language sets forth identical limitation.
`
`WI-LAN further argues that the interpretation urged by RIM in its petition is
`drastically different from and inconsistent with that urged by RIM in the related
`civil litigation between the parties, i.e., Wi-Lan USA, Inc. et al. v. Research In
`Motion Ltd., et al., Case No. 12-cv-20232 (S.D. Fla.). WI-LAN produces the
`following table to illustrate the comparison (Prel. Resp. p.7):
`
`12
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`Case IPPR2013-00126
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`Patent 66,240,088
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`TThe allegatiion of drasstic differennce and incconsistenccy is not exxplained
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`adequattely. For innstance, thhe discussioon in the riight colummn does nott require thhe
`
`
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`
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`first porrtion to incclude a porrtion of thee body of aan alphanummeric messsage. Nothhing
`
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`appears inconsisteent. It is noot even cleear that thee discussionn in the rigght columnn
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`concernns what muust be incluuded in thee first portioon of the mmessage.
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`Inn any evennt, the contention is uunhelpful thhat RIM shhould be esstopped froom
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`
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`
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`arguingg a claim innterpretatioon that is different froom what it
`
`
`has urgedd in parallell
`
`
`
`
`civil litiigation. WWhether or nnot estoppel applies t
`
`
`does not aapply to thee
`to RIM, it
`
`
`
`
`
`Board. Thus, the Board mayy itself inteerpret a claaim term a
`
`s a matter of law
`
`
`what is or inotwithhstanding w
`
`
`
`
`s not argueed by a parrty. The BBoard’s connclusion is
`not
`
`
`
`
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`subject to any resttriction bassed on a paarty’s conteentions in
`
`
`another prroceeding oor
`
`
`ing. even thiis proceedi
`
`13
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`B. Claims 19-21 – Anticipated by Inter@ctive Pager Guide
`
`Claim 19 requires the sending of one alphanumeric message in three
`
`separate transmissions, each for a different portion of the same message.
`Specifically, after a first portion of the message is transmitted from a transmitter to
`a receiver, and after the receiver’s presenting of that first portion to a user, the
`receiver provides the user with a choice of whether to receive a second portion.
`The user’s affirmative selection is sent back to the transmitter as instruction. In
`response to that instruction, the transmitter transmits the second portion of the
`message to the receiver. After the receiver’s presenting that second portion to a
`user, the receiver provides the user a choice of whether to receive yet a third
`portion of the message. The user’s affirmative selection is sent back to the
`transmitter as an instruction. In response to that instruction, the transmitter
`transmits the third portion of the message to the receiver. And then the receiver
`presents the third portion to the user.
`
`Anticipation under 35 U.S.C. § 102 requires that each and every element as
`set forth in the claim is found, either expressly or inherently described, in a single
`prior art reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999);
`Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). We
`focus on the separate transmission requirement for multiple portions of the same
`message. It is insufficient to meet that requirement by having a single transmission
`of the entire message, followed by separate presentations of different portions of
`the received message to the user.
`
`The Inter@ctive Pager Guide describes wireless transmission of two-way
`messages, Internet E-mail, etc., over a messaging service to a pager. (Ex. 1002,
`14
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`p.1) Acccording too RIM, the Inter@ctivve Pager GGuide disclloses (Ex.
`
`1002, p.344) a
`
`
`
`
`
`er, messagat the pagereceiving, “more eefficient manner” of r
`than 512
`es greater
`:10-11.)
`
`
`characteers in lengtth. (Pet. 6
`
`
`
`
`
`
`
`
`TThe pertineent part of tthe cited paage is reprroduced beelow:
`
`
`
`
`
`
`
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`
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`
`
`TThe above-rreproducedd material refers to a a more efficcient mannner of
`
`
`
`, not of “reeceiving” tthat
`
`
`
`
`s in length,“handlinng” a messsage that iss over 512 characters
`
`
`
`
`messagee. The meessage mayy have alreaady been r
`eceived at
`the pager
`
`prior to suuch
`
`handling.
`
`may be
`r than 512 RRIM states that a receeived message longer
`
`
`
`
`
`characters
`lly.
`
`
`
`
`
`
`
`nly generatrue, but on.) That is tet. 6:12-13.rtions. (Per more porbroken into two or
`
`
`
`
`
`
`
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`The devvil is in thee details. Itt is not at aall clear froom the Inteer@ctive PPager Guidde
`
`
`
`
`that a “llong” messsage is brooken up at tthe host se
`rver prior
`to transmi
`
`ssion for thhe
`ved at the
`
`
`
`
`
`purposee of separatte transmisssion as oppposed to bbeing receiv
`pager and
`
`
`
`
`
`
`
`
`then brooken into ppieces for sseparate prresentationn to the useer of the paager. It is aalso
`
`
`
`
`
`
`not cleaar whether “receive” means receeived remootely at thee host serv
`er of the
`15
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`hose t address thon does notitself. RIMM’s petitio
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`pager, oor receivedd locally at the pager
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`
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`
`
`
`
`
`
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`uncertaiinties or prrovide adeqquately an explanatioon. The diisclosure oof the
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`Inter@cctive Pagerr Guide, ass applied byy RIM, is nnot sufficieently speciific. We arre
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`unpersuuaded that tthe Inter@@ctive Pageer Guide diiscloses a ““more efficcient mannner”
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`of receiving, at thee pager, mmessages grreater than
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`512 characcters in lenngth.
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`RRIM correcctly notes (
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`Pet. 6:14-116) that in
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`a system ddescribed bby the
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`Inter@cctive Pagerr Guide, affter a user sscrolls throough a firstt portion oof a messagge,
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`the userr may chooose to retrieeve a seconnd portion
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`of the messsage by p
`ressing an
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`“M” keyy, and thenn upon scroolling throuugh the seccond portioon similarlly may
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`retrieve a third portion of thee message by again ppressing thhe “M” keyy. The
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`pertinennt descriptiion relied oon by RIMM is reproduuced beloww (Ex. 10022, 35: ¶¶3--5):
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`Based on the above-reproduced disclosure, RIM correctly states (Pet. 7-8,
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`¶ 14) that the Inter@ctive Pager Guide describes that, each time the user presses
`the M key, the pager displays a dialog box that states “Retrieving More,”
`indicating that the pager is adding more of the message to the text that already was
`read.
`However, RIM makes the unsupported assumption that when the “M” key is
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`pressed, the pager sends instruction back to the remote transmitter to send another
`portion of the message, and that when the pager thereafter displays “Retrieving
`More,” an additional portion is sent by the remote transmitter in response to that
`instruction. According to RIM, pressing the “M” key necessarily causes the pager
`to transmit instructions to the base station transmitter, which will not send another
`portion of the message until the “M” key is pressed. (Pet. 17:17 to 18:3; 20:20 to
`21:2.) Also according to RIM, when the “Retrieving More” dialog box is
`displayed, a subsequent portion requested by the user via pressing the “M” key is
`sent from the transmitter to the pager (Pet. 18:18-19; 21:15-17.) The portions of
`Inter@ctive Pager Guide cited by RIM do not support those contentions.
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`WI-LAN correctly points out that RIM’s petition is deficient in not having
`pointed out a specific disclosure of successive transmission of different portions of
`one alphanumeric message. WI-LAN correctly notes that the disclosure identified
`by RIM is consistent with a single message being transmitted and received all in
`one session, without additional or subsequent transmissions, and only presented on
`display by the pager to the user in separate portions. In particular, WI-LAN notes
`that the Inter@ctive Pager Guide states (Ex. 1002, 34:13-15): “If you receive a
`message greater than 512 characters in length, the Inter@ctive Pager will
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`handle the message in a more efficient manner.” (Emphasis added.) That
`description reasonably may be read as indicating not that the message is
`transmitted and received in multiple segments, upon request for each subsequent
`portion, but that the entire message already is received by the pager and then
`presented to the user more efficiently through the disclosed method.
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`With respect to all of the foregoing, RIM has not presented the testimony of
`any technical expert, much less testimony with regard to how one with ordinary
`skill in the art would have read and understood the disclosure of the Inter@ctive
`Pager Guide. We note also that inherent disclosure may not be established by
`probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). To
`establish inherency, the evidence must make clear that the missing description is
`necessarily present in the thing described in the reference, and that it would be so
`recognized by persons of ordinary skill. In re Robertson, 169 F.3d 743, 745 (Fed.
`Cir. 1999). The mere fact that a certain thing may result from a given set of
`circumstances is not sufficient. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir.
`1993).
`Because the material from Inter@ctive Pager Guide, relied on by RIM’s
`petition, is consistent with a message’s not being transmitted in multiple portions
`in successive and separate transmissions, in response to an indication from a user
`whether a subsequent portion should be transmitted, we determine that RIM has
`not shown a reasonable likelihood that it would prevail in establishing anticipation
`of claim 19 by the Inter@ctive Pager Guide. Because each of claims 20 and 21
`depend on claim 19, we also determine that RIM has not shown a reasonable
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`likelihood that it would prevail in establishing anticipation of claims 20 and 21 by
`the Inter@ctive Pager Guide.
`C. Claims 19-21 – Obvious over Inter@ctive Pager Guide
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains. KSR
`Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
`resolved on the basis of underlying factual determinations including: (1) the scope
`and content of the prior art, (2) any differences between the claimed subject matter
`and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-
`called secondary considerations. Graham v. John Deere Co. of Kansas City,
`383 U.S. 1, 17-18 (1966).
`RIM, as discussed above, has contended that claims 19-21 are anticipated by
`the Inter@ctive Pager Guide. That means, according to RIM, the Inter@ctive
`Pager Guide discloses each and every element of claims 19-21, arranged precisely
`as claimed. Here, the obviousness contention is premised on one circumstance that
`the Board disagrees with RIM’s contention that at the end of the user’s having read
`the second portion of the message, the pager provides the user a choice of whether
`to retrieve a third portion of the message. (Pet. 23:3-6.) In its petition, RIM
`explains that it would have been obvious to one with ordinary skill in the art to do
`the same, upon the user’s having finished reading the second portion, as is done at
`the end of the user’s having finished reading the first portion, for the same benefits.
`In other words, if the “M” key is available at the end of the presentation of the first
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`portion, for the user to choose to have another portion presented, it would have
`been readily recognized by one with ordinary skill in the art that the key is equally
`available at the end of the user’s having reached the end of the second portion.
`We agree with RIM that the Inter@ctive Pager Guide discloses presenting
`the “M” key to the user at the end of the user’s reading of the second portion, for
`the user to press in order to have a third portion retrieved for display to the user.
`There is no need to resort to an obviousness analysis to account for that feature.
`However, the same deficiency that undermines RIM’s anticipation argument for
`claims 19-21 based on the Inter@ctive Pager Guide also undermines RIM’s
`obviousness argument. RIM assumes, without adequate support in the record, that
`wh