`
`NO: 439226US
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`MOBILESTAR TECHNOLOGIES LLC,
`Patent Owner.
`__________________
`
`Case IPR2015-_____
`Patent U.S. 6,333,973
`__________________
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,333,973
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ..................... 1
`
`CERTIFICATION OF GROUNDS FOR STANDING .................................. 2
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2
`
`A.
`
`B.
`
`Prior Art Patents and Printed Publications ............................................ 2
`
`Grounds for Challenge .......................................................................... 4
`
`IV. BACKGROUND OF THE ’973 PATENT ..................................................... 4
`
`A. Unified Messaging Before 1997 ........................................................... 4
`
`B.
`
`C.
`
`D.
`
`Different Bandwidths for Different Data Connections or
`Different Messages ................................................................................ 5
`
`Overview of the ’973 Patent .................................................................. 8
`
`Prosecution History of the ’973 Patent ............................................... 11
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 15
`
`A.
`
`B.
`
`C.
`
`“Pending messages” ............................................................................ 17
`
`“The notification messages are received from an interface with
`independent connections with different bandwidths for the
`different types of pending messages” ................................................. 18
`
`“The notification messages are received from an interface with
`independent connections with different bandwidths for the
`different types of the plurality of message senders” ........................... 19
`
`D.
`
`“Automatically transmitting notification messages to the user” ......... 19
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’973 PATENT IS UNPATENTABLE .................... 20
`
`A.
`
`Claims 33 and 8–13 are anticipated by Keyworth .............................. 20
`
`
`
`i
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`B.
`
`Claims 33 and 8–13 are rendered obvious by Boaz in view of
`Krebs .................................................................................................... 30
`
`1.
`
`2.
`
`3.
`
`4.
`
`Statement of Non-redundancy .................................................. 30
`
`Boaz ........................................................................................... 31
`
`Krebs ......................................................................................... 33
`
`The combination of Boaz in view of Krebs .............................. 34
`
`C.
`
`Claims 33 and 8–13 are rendered obvious by Greco in view of
`Krebs .................................................................................................... 46
`
`1.
`
`2.
`
`Statement of Non-redundancy .................................................. 46
`
`The combination of Greco in view of Krebs ............................ 47
`
`VII. CONCLUSION .............................................................................................. 60
`
`
`
`ii
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`Real Party-in-Interest: Google Inc. (“Petitioner”).
`
`Related Matters: U.S. Patent No. 6,333,973 (the “’973 patent”) is asserted in
`
`consolidated case Rockstar Consortium US LP et al v. ASUSTeK Computer, Inc. et
`
`al., Consolidated Case No. 2:13-cv-00894 (E.D. Tex.), which consolidated six
`
`different cases filed by Rockstar Consortium US LP. The ’973 patent is also
`
`asserted in Google Inc. v. Rockstar Consortium US LP et al., Case No. 4:13-cv-
`
`05933-CW (N.D. Cal.). In that case, Google requested a declaration of non-
`
`infringement on the ’973 patent; Rockstar counterclaimed for infringement of the
`
`’973 patent; and Google then pled the affirmative defense of invalidity with respect
`
`to the ’973 Patent. Google’s affirmative defense does not trigger the statutory bar
`
`against filing an inter partes review petition. 35 U.S.C. § 315(a)(3). There are no
`
`patents or applications that claim the benefit of the filing date of the ’973 patent.
`
`Petitioner is also filing petitions for inter partes review challenging claims
`
`1–7 and 21–26 of the ’973 patent. Petitioner recommends assigning all
`
`proceedings to the same panel.
`
`Counsel:
`
`Lead Counsel:
`
`Scott A. McKeown (Reg. No. 42,866)
`
`Backup Counsel: Greg Gardella (Reg. No. 46,045)
`
`Service Information : Email : CPDocketMcKeown@oblon.com
`
`CPDocketGardella@oblon.com
`
`
`
`1
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`Post: Oblon Spivak, 1940 Duke St., Alexandria, VA 22314
`
`Telephone: 703-412-6297
`
`Facsimile: 703-413-2220
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioner challenges
`
`claims 8–13 and 33 of the ’973 patent. The’973 patent claim priority to U.S.
`
`Patent Application No. 08/842,020, which was filed on April 23, 1997 (“the
`
`prioirty date”). (Ex. 1001, the ’973 patent.)
`
`A. Prior Art Patents and Printed Publications
`Petitioner relies upon the following patents and printed publications:
`
`Exhibit 1008 – U.S. Patent No. 5,579,472 to Keyworth, II et al.
`
`(“Keyworth”) issued on November 26, 1996, prior to the earliest filing date
`
`claimed by the ’973 patent (April 23, 1997) and is therefore available as prior art
`
`under pre-AIA 35 U.S.C. § 102(a). The PCT application corresponding to
`
`Keyworth, published as WO96/15490 was made of record, but not relied upon,
`
`during the original prosecution of the ’973 patent. Petitioner presents new
`
`
`
`2
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`supporting evidence and an explanation of Keyworth that has never been
`
`considered by the Office.
`
`Exhibit 1011 – U.S. Patent No. 5,333,266 to Boaz et al. (“Boaz”) issued on
`
`July 26, 1994, which is more than one year prior to the earliest filing date claimed
`
`by the ‘973 patent (April 23, 1997) and is therefore available as prior art under pre-
`
`AIA 35 U.S.C. § 102(b). Boaz was not considered during the original prosecution
`
`of the ‘973 patent and is not cumulative of any prior art considered by the Office.
`
`Exhibit 1012 – U.S. Patent No. 5,448,759 to Krebs et al. (“Krebs”) issued on
`
`September 5, 1995, which is more than one year prior to the earliest filing date
`
`claimed by the ’973 patent (April 23, 1997) and is therefore available as prior art
`
`under pre-AIA 35 U.S.C. § 102(b). Krebs was not considered during the original
`
`prosecution of the ’973 patent and is not cumulative of any prior art considered by
`
`the Office.
`
`Exhibit 1009 – U.S. Patent No. 5,568,540 to Greco et al. (“Greco”) issued on
`
`October 22, 1996, which is prior to the earliest filing date claimed by the ’973
`
`patent (April 23, 1997) and is therefore available as prior art under pre-AIA 35
`
`U.S.C. § 102(a). Greco was relied upon by the Examiner during prosecution and
`
`was found by the Examiner to disclose all limitations of the independent claims
`
`except “wherein the notification messages are received from an interface with
`
`independent connections with different bandwidths for the different types of
`
`
`
`3
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`pending messages.” Petitioner presents new supporting evidence and a
`
`combination of Greco and Krebs that was never before considered by the Office.
`
`B. Grounds for Challenge
`Petitioner requests cancellation of challenged claims 8–13 and 33 under the
`
`following statutory grounds:
`
`i. Claims 8–13 and 33 are anticipated by Keyworth;
`
`ii. Claims 8–13 and 33 are rendered obvious by Boaz in view of Krebs; and
`
`iii. Claims 8–13 and 33 are rendered obvious by Greco in view of Krebs.
`
`Section VI demonstrates, for each of the statutory grounds, that there is a
`
`reasonable likelihood that the Petitioner will prevail. See 35 U.S.C. § 314(a).
`
`Additional explanation and support for each ground of the rejection is set forth in
`
`the Expert Declaration of Professor Nader Mir, Ph.D. (Ex. 1007.)
`
`IV. BACKGROUND OF THE ’973 PATENT
`A. Unified Messaging Before 1997
`As explained in the detail by Prof. Mir in his declaration, so-called “unified
`
`messaging” – the presentation of multiple types of messages (email, fax,
`
`voicemail, etc.) in a single message list – was already well known by 1997. Many
`
`messaging systems already offered unified inboxes collecting paging messages,
`
`voicemails, facsimiles, and e-mails. (Ex. 1007, ¶ 37.) For example, AT&T’s
`
`Unified Messaging Service (“UMS”) offered unified messaging since at least 1986.
`
`
`
`4
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`(Ex. 1003.) AT&T’s UMS system included a unified mailbox that “is the one
`
`access point for all messages regardless of their type or the sender’s system,” (id.
`
`at 30), including email and voicemail. (Id. at Fig. 2.) This unified messaging
`
`approach was a common-sense approach to market trends: By 1997, it was
`
`common for people and businesses to receive many different types of messages,
`
`such as phone, fax, e-mail, pager, and the like. (Ex. 1007, ¶ 42.) Integrated
`
`messaging systems were a natural way to inform a user of an incoming message in
`
`any one of these categories. (Id. at ¶ 42.) As explained by Prof. Mir, these
`
`integrated messaging systems generally included a notification feature to notify the
`
`user of incoming messages. (Id. at ¶ 42.)
`
`B. Different Bandwidths for Different Data Connections or Different
`Messages
`
`It was also common by 1997 to use different connections for different
`
`messaging systems, such as paging, voice, or facsimile, as those distinct messaging
`
`systems often used different messaging protocols. Additionally, it was also
`
`common by 1997 for communication networks to connect and interface various
`
`connections that had different bandwidths. For example, well before 1997, Global
`
`System for Mobile (GSM) was a well-known standard for mobile communications.
`
`By 1992, the European Telecommunications Standard Institute had released some
`
`5200 pages of technical specifications for implementing GSM (Ex. 1013, p. 8), and
`
`
`
`5
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`major commercial GSM networks were already adhering to these specifications in
`
`Europe. (Id. at p. 29.)
`
` Before the ’973 patent was filed, it was already standard practice on GSM
`
`networks to support “fully integrated personal communicators, where voice, data,
`
`fax and messaging are integrated into a single mobile terminal.” (Ex. 1004, p. 26.)
`
`As the GSM standards explained, this integration was achieved using a network
`
`interface that supported multiple channels of varying bandwidths. (Ex. 1007,
`
`¶ 58.)
`
`In March 1996, the GSM specification included provisions for speech
`
`transmission, short message service transmissions, and facsimile transmissions.
`
`(Ex. 1014, p. 10.) A Public Land Mobile Network (PLMN) built according to the
`
`GSM Specifications provided these services through “use of access to other
`
`existing networks (fixed telephone networks, data networks and Integrated
`
`Services Digital Network).” (Ex. 1015, p. 16.) The GSM network elements
`
`included the user’s mobile device or mobile station (MS), and base station
`
`equipment that includes the Base Station System (BSS), which provided radio
`
`coverage, and the Mobile Services Switching Center (MSC), which performed all
`
`switching and signaling for users’ mobile devices and interfaced the radio system
`
`with the fixed networks through interworking functions (IWFs). (Id. at pp. 16–18.)
`
`
`
`6
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`
`(Id. at Fig. 1,annotation added.)
`
`The base station equipment supported connections for different types of
`
`data, each with its own bandwidth requirement and specification. The GSM
`
`Specifications disclosed that the base station equipment may include a
`
`Transcoder/Rate Adapter Unit (TRAU) that could be located at the MSC site of the
`
`BSS (Ex. 1016, p. 9), and transcoded at 8000 sample/s for an average bit rate of 13
`
`kbit/s for speech. (Ex. 1017, p. 6.) The GSM Specifications distinguish different
`
`types of Traffic Channels (TCHs) for different types of user information streams;
`
`in addition to a 13 kbit/s channel for full rate speech, it included a channel for 9.6
`
`kbit/s user data such as fax and other data messages, and a 0.3 kbit/s slow control
`
`channel associated with a traffic channel (SACCH (with TCH)), which supported
`
`short message service (SMS). (Ex. 1018, pp. 7–9; Ex. 1019, p. 12; Ex. 1020, p.
`
`11.)
`
`
`
`
`
`7
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`(Ex. 1018, Table 1, annotation added.)
`
`Accordingly, the ground interface that included the TRAU allowed multiple
`
`channels or connection of varying bandwidths to connect to base stations and the
`
`mobile stations. Thus, the use of multiple channels or connections of varying
`
`bandwidths for different types of messages was well known in GSM and in the art
`
`before 1997.
`
`C. Overview of the ’973 Patent
`The ’973 patent is directed to presenting an “integrated messaging center” to
`
`a user, such that messages of different types are “consolidated and graphically
`
`displayed in a searchable list to allow for easy graphical scanning, prioritizing,
`
`editing, selection, viewing, forwarding, playback and response by the user.” (Ex.
`
`1001, 1:19–24.) The ’973 patent notes that, as of its filing, “telephones have been
`
`designed with the capability to directly receive, or download, different types of
`
`messages, such as faxes, email, and Short Messaging Services (SMS) messages.”
`
`(Id. at 1:40–46.) Some prior art mobile phones (1) detected the message type, (2)
`
`stored the messages in a folder according to type, and (3) displayed a note
`
`indicating the quantity and type of messages received, for example “You have: 2
`
`unread faxes and 2 unread short messages.” (Id. at 1:47–56.) These phones tended
`
`to “store in their internal memory all received messages,” which “wastes precious
`
`memory space.” (Id. at 2:7–12.) Accordingly, as further explained below, the
`
`
`
`8
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`‘973 patent purportedly solved the problem by allowing the user to retrieve
`
`“pending” messages over the network as needed from a “network services
`
`provider.”
`
`(Id. at Fig. 1)
`
`
`
`The ’973 patent discloses an integrated messaging center in a user’s mobile
`
`phone 1100. As shown in Fig. 1, “[t]he integrated message center is a logical
`
`entity that resides in mobile telephone 1100 and operates in conjunction with
`
`network services provider 1200 to inform the user of incoming and pending
`
`messages, such as fax, e-mail, voice mail, etc.” (Id. at 3:50–54.) Message servers
`
`at network services provider 1200 store “pending” messages from various sources:
`
`“[n]etwork service provider 1200 stores many of the messages awaiting retrieval
`
`by the user and notifies the user of the pending message.” (Id. at 4:1–3.) Mobile
`
`telephone 1100 connects to the network services provider 1200 using a
`
`communication network such as the GSM switching fabric 1800. (Id. at 4:5–7.)
`
`The network services provider 1200 is further illustrated in Fig. 5:
`
`
`
`9
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`
`(Id. at Fig. 5, annotation added.)
`
`“Interface 5100”, circled in red above, is the network services provider’s
`
`interface to GSM switching fabric 1800. (Id. at 7:7–8, Fig. 1.) Interface 5100
`
`depicts three separate connections of differing bandwidths – 13 kb/s for voice, 0.3
`
`kb/s for SMS, and 9.6 kb/s for data. (Id. at Fig. 5, 7:7–15.)
`
`Once an incoming message is received at the network services provider, an
`
`SMS notification alert is sent to the mobile telephone 1100.1 (Id. at 7:15–8:10.)
`
`More specifically, upon receipt of an inbound email, fax, or voicemail at network
`
`services provider 1200, SMS server 5300 sends SMS notification messages to the
`
`user to indicate that a new fax mail, voice mail or e-mail message is “pending” and
`
`available for retrieval from the network. (Id. at 4:15–5:9, 7:15–8:10.)
`
`When SMS notification messages are received at the mobile telephone 1100,
`
`1 This SMS notification is a network service provider alert especially created by
`
`the network for the purpose of populating a single list at the user device, and
`
`should not be confused with regular SMS messages exchanged between end-users.
`
`(Id. at 4:15–5:9, 7:15–8:10.)
`
`
`
`10
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`those message are displayed in a single selectable list as shown in Figs. 7A and 7B
`
`below. (Id. at 2:18–50, 3:40–46.)
`
`(Id. at Figs. 7A and 7B.)
`
`
`
`The user can select a notification message from the list to retrieve a pending
`
`fax mail, voice mail or e-mail message from the network service provider. As the
`
`patent explains, “[w]hen the user wants to retrieve the e-mail message after
`
`viewing the email notification message, the user first selects the e-mail icon
`
`corresponding to the e-mail message from the message center display (FIGS. 7A
`
`and 7B), and then instructs mobile telephone 1100 to retrieve the e-mail message
`
`by pressing the ‘View’ button. In response, mobile telephone 1100 establishes a
`
`connection with network services provider 1200 to download the e-mail message
`
`from e-mail server 5800.” (Id. at 10:48–56.)
`
`D. Prosecution History of the ’973 Patent
`As explained below, during prosecution the Examiner rejected the proposed
`
`claims multiple times in view of numerous references disclosing unified message
`
`systems. After multiple amendments, the only limitation the Examiner concluded
`
`
`
`11
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`was not disclosed in the prior art was the use of “different bandwidths” for each
`
`connection in the claimed “interface with independent connections with different
`
`bandwidths for the different types of pending messages” – an amendment made at
`
`the Examiner’s suggestion, to reflect “architectural concepts of the Applicant’s
`
`invention.” (Ex. 1002, Jan. 5, 2001 Interview Summary.)
`
`Application No. 08/842,020, which matured into the ’973 patent, was filed
`
`on April 23, 1997 with 32 claims. (See generally Ex. 1002.) The first office action
`
`was mailed February 11, 1999 and rejected all 32 claims under 35 U.S.C. § 102 as
`
`anticipated by U.S. Patent No. 5,608,786 to Gordon. (Id. at p. 96.) The examiner
`
`stated that Gordon disclosed an integrated message center for consolidating
`
`different types of messages. (Id.)
`
`In response, on May 13, 1999, the Applicants amended independent claims
`
`1, 8, 14, 21, and 27 to require that notification messages are “automatically”
`
`transmitted and/or received. (Id. at pp. 113–16.) On July 16, 1999, the examiner
`
`made the rejection final, again rejecting claims 1–28 and 30–33 as anticipated by
`
`Gordon under the same reasoning. (Id. at pp. 126–36.)
`
`On November 12, 1999, the Applicants again amended independent claims
`
`1, 8, 17, and 27 to require that “each of the notification messages is automatically
`
`sent to the user when one of the pending messages is initially received by the
`
`integrated message center.” (Id. at pp. 145–48.) On December 10, 1999, the
`
`
`
`12
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`examiner maintained the previous rejections. (Id. at pp. 161–65.) On December
`
`21, 1999, the Applicant filed a Continued Prosecution Application. (Id. at pp.
`
`166–69.)
`
`On March 30, 2000, the examiner rejected claims 1–3, 6–8, 11–16, 18–23,
`
`25–28, and 30–33 as anticipated by U.S. Patent No. 5,742,905 to Pepe; claim 29 as
`
`unpatentable over Pepe in view of Kotzin; claim 17 as unpatentable over Pepe in
`
`view of U.S. Patent No. 5,794,142 to Vantilla; and claims 4-5, 9-10, and 24 as
`
`unpatentable over Pepe in view of U.S. Patent No. 5,568,540 to Greco. (Id. at pp.
`
`171–86.) In response, on June 29, 2000, the Applicants further amended claims 14
`
`and 33 to require that the notification messages provide the user with a single
`
`selectable list and argued that Pepe taught away from the amended claims by using
`
`separate displays for voice and e-mail. (Id. at pp. 188–99.)
`
`On September 11, 2000, the examiner again rejected claims 1–13, 21–26,
`
`and 33 as anticipated by Greco; claims 14–20, 27–28, and 31–32 as unpatentable
`
`over Pepe in view of U.S. Patent No. 5,815,506 to Gokhale and further in view of
`
`Greco; and claim 29 as unpatentable over Pepe in view of Gokhale, Greco, and
`
`U.S. Patent No. 5,911,485 to Rossmann. (Id. at pp. 200–14.) On January 5, 2001
`
`the Applicants and examiner held an interview to discuss claims 1, 8, and 14. In
`
`that interview the “Examiner suggested to Applicants’ Representative
`
`‘Architectural Concepts’ (of applicants’ invention) for distinguishing over the prior
`
`
`
`13
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`art of record.” (Id. at p. 219.)
`
`On February 12, 2001, the Applicants amended claims to specify a particular
`
`“interface” from which messages were received: claims 1, 8, 21 and 33 were
`
`limited to require “wherein the notification messages are received from an
`
`interface with connections for each of the different types of pending messages,”
`
`and claims 14 and 27 now required “an interface with independent connections for
`
`each of the different types of received messages.” (Id. at pp. 228–40.) But on
`
`April 6, 2001, the examiner again rejected claims 1–13, 21–26, and 33 as
`
`unpatentable over Greco in view of Pepe, claims 14–20, 27–28, and 31–32 as
`
`unpatentable over Pepe in view of Gokhale and Greco, and claim 29 as
`
`unpatentable over Pepe in view of Gokhale, Greco, and further in view of
`
`Rossmann. (Id. at pp.241–58.) With respect to claims 1–13, 21–26, and 33, the
`
`Examiner concluded that Greco disclosed all claim limitations except “wherein the
`
`notification message are received from an interface with independent connections
`
`for the different types of pending messages” but noted that this use of “an interface
`
`with independent connections for the different types of pending messages” was
`
`disclosed in Pepe. (Id. at pp. 245, 247–50.)
`
`The examiner then suggested that applicants “further amend the claims to
`
`recite ‘independent connections having different bandwidths’ for overcoming the
`
`prior art of record.” (Id. at p. 257.) On May 29, 2001, the Applicants amended
`
`
`
`14
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`each of claims 1, 8, 14, 21, 27, and 33 to require that the notification messages
`
`were received from an interface with “independent connections with different
`
`bandwidths for the different types” of pending messages. (Id. at pp. 261–75.) The
`
`claims were then allowed. (Id. at pp. 276–77.)
`
`V. CLAIM CONSTRUCTION
`The ’973 patent contains 33 claims. At issue in this petition are claims 8–13
`
`and 33. Independent claims 8 and 33, and claims 9–13 depending therefrom, recite
`
`methods for consolidating messages of different types for viewing and
`
`manipulation by a user of telecommunications equipment.
`
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable interpretation (“BRI”) in view of the
`
`specification in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The USPTO uses
`
`BRI because, among other reasons, the patentee has the opportunity to amend its
`
`claims in this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,764 (Aug. 14, 2012) (“Since patent owners have the opportunity to amend
`
`their claims during IPR, PGR, and CBM trials, unlike in district court proceedings,
`
`they are able to resolve ambiguities and overbreadth through this interpretive
`
`approach, producing clear and defensible patents at the lowest cost point in the
`
`system.”). Thus, as required by the rules, this Petition uses the BRI standard.
`
`
`
`15
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`The BRI of claim terms here may be different from the construction that
`
`those same terms may receive following claim construction proceedings in district
`
`court. See, e.g., In re Trans Texas Holdings Corp., 498 F.3d 1290, 1297 (Fed. Cir.
`
`2007). Thus the claim constructions presented in this Petition, including where
`
`Petitioner does not propose an express construction, do not necessarily reflect the
`
`claim constructions that Petitioner believes should be adopted by a district court
`
`under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). In presenting this
`
`Petition, unless otherwise stated, the grounds set forth herein are based on (1) the
`
`proposed claim construction offered by the Patent Owner in Google Inc. v.
`
`Rockstar Consortium US LP et al., Case No. 4:13-cv-5933-CW (N.D. Cal.) (Ex.
`
`1006), or (2) for terms where Patent Owner has not explicitly offered a claim
`
`construction, on petitioner’s understanding of Patent Owner’s infringement
`
`contentions in Rockstar Consortium US LP et al. v. Samsung Electronics Co., Ltd.
`
`et al., Case No. 2:13-cv-00900-JRG (E.D. Tex.) (Ex. 1005).
`
`In presenting the grounds set forth in this Petition, petitioner does not
`
`concede that any claim constructions impliedly or expressly proposed by Patent
`
`Owner are appropriate for the district court litigation, where a different legal
`
`standard applies to the construction of the asserted claim terms. Petitioner does not
`
`believe that many of the Patent Owner’s implied or express proposed constructions
`
`are appropriate under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`
`
`
`16
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`Instead, petitioner presents these proposed constructions to the Board for
`
`consideration in determining the BRI because Patent Owner considers these
`
`constructions correct under Phillips, and therefore necessarily also considers them
`
`within the appropriate scope of the BRI. Petitioner further submits these
`
`constructions under 35 U.S.C. § 301(a)(2), which encourages submission of Patent
`
`Owners’ statements on claim scope, to prevent patentees from arguing broad
`
`constructions under Phillips but simultaneously using narrow constructions as BRI.
`
`A. “Pending messages”
`Claims 8–13 recite “pending messages.” In the pending litigation, Patent
`
`Owner offered no explicit construction for this term. (Ex. 1006, Exhibit B.) In its
`
`infringement contentions, the Patent Owner claims that this term is broad enough
`
`to cover messages already received by the phone. Specifically, Patent Owner
`
`identifies local processes running on the accused Android handsets, “includ[ing] at
`
`least BroadcastReceiver, ConnectivityService, ConnectivityManager,
`
`NotificationManager and NotificationBuilder” classes, and claims that these local
`
`processes “automatically send notification message to the user when one of the
`
`pending messages is initially received.” (Ex. 1005, p. 148.) Accordingly, the
`
`Patent Owner’s BRI for “pending messages” is “messages that are downloaded or
`
`awaiting download.”
`
`
`
`17
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`B.
`
`“The notification messages are received from an interface with
`independent connections with different bandwidths for the
`different types of pending messages”
`
`Claims 8-13 recite “the notification messages are received from an interface
`
`with independent connections with different bandwidths for the different types of
`
`pending messages.” In the pending litigation, Patent Owner offered no explicit
`
`construction for this term. (Ex. 1006, Exhibit B.) In its infringement contentions,
`
`the Patent Owner claims that this term is broad enough to cover any user interface
`
`displaying messages received through different connections of different
`
`bandwidths. The Patent Owner states that a display of notifications to the user
`
`constitutes the claimed “interface” where the phone received some underlying
`
`messages via WiFi and received other messages via a cellular connection:
`
`
`
`(Ex. 1005, pp. 149–50.) Thus, according to Patent Owner’s infringement
`
`contentions, the accused Android handsets meet this claim limitation by (1)
`
`displaying notification messages, and (2) having multiple communication
`
`connections such as Wi-Fi, Mobile Data connection, WiMax, Bluetooth, voice, etc.
`
`
`
`18
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`Accordingly, the Patent Owner’s BRI for “the notification messages are
`
`received from an interface with independent connections with different bandwidths
`
`for the different types of pending messages” is “the notification messages are
`
`displayed on a device having multiple communication connections of different
`
`bandwidths.”
`
`C.
`
`“The notification messages are received from an interface with
`independent connections with different bandwidths for the
`different types of the plurality of message senders”
`
`Claim 33 recites “the notification messages are received from an interface
`
`with independent connections with different bandwidths for the different types of
`
`the plurality of message senders.” The Patent Owner’s allegations regarding claim
`
`scope in its infringement contentions draw no distinctions between this term and
`
`the previously-discussed term “the notification messages are received from an
`
`interface with independent connections with different bandwidths for the different
`
`types of pending messages.” Thus, for the same reasons stated above regarding the
`
`“the notification messages . . . pending messages” term, the PTAB should use the
`
`following as BRI for the “the notification messages . . . the plurality of message
`
`senders” term: “the notification messages are displayed on a device having
`
`multiple communication connections of different bandwidths.”
`
`“Automatically transmitting notification messages to the user”
`
`D.
`Claim 33 claims a method for receiving messages at network equipment
`
`
`
`19
`
`
`
`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`(e.g., network services provider 1200), and then “automatically transmitting
`
`notification messages to the user.” In its infringement contentions, the Patent
`
`Owner does not point to any transmission of notification messages from network
`
`equipment to the user. Instead, the Patent Owner relies on the display of messages
`
`to the user. (Id. at p. 790.) In light of the Patent Owner’s statements on claim
`
`scope, this petition uses the following as BRI for this term: “automatically
`
`displaying notification messages to the user.”
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’973 PATENT IS UNPATENTABLE
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), Petitioner provides the following
`
`claim charts comparing the claimed subject matter and the prior art specifying
`
`where each element of the challenged claims is found in the prior art references.
`
`A. Claims 33 and 8–13 are anticipated by Keyworth
`Keyworth discloses a “Group-Oriented Communications User Interface” that
`
`receives messages (e-mail, voice mail, pager, and facsimile) both wirelessly and
`
`over telephone wireline, through a combination fax/modem and wireless receiver
`
`26, and displays the messages to the us
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
