NO: 439244US
`
`
`
`IN THE UNITED STATES PATENT & 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
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`

`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`II.
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ..................... 1
`
`CERTIFICATION OF GROUNDS FOR STANDING .................................. 2
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`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 2
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`A.
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`B.
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`Prior Art Patents and Printed Publications ............................................ 2
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`Grounds for Challenge .......................................................................... 4
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`IV. BACKGROUND OF THE ’973 PATENT ..................................................... 4
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`A.
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` Unified Messaging Before 1997 ........................................................... 4
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`B.
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`
`
`C.
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`
`
`D.
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`
`
`Different Bandwidths for Different Data Connections or
`Different Messages ................................................................................ 5
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`Overview of the ’973 Patent .................................................................. 8
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`Prosecution History of the ’973 Patent ............................................... 11
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`V.
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`CLAIM CONSTRUCTION .......................................................................... 15
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`A.
`
`B.
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`“Pending messages” ............................................................................ 17
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`“The notification messages are received from an interface with
`independent connections with different bandwidths for different
`types of pending messages” ................................................................ 18
`
`C.
`
`The Means Plus Function Limitations ................................................ 19
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’973 PATENT IS UNPATENTABLE .................... 25
`
`A.
`
`B.
`
`Claims 21–26 are anticipated by Keyworth ........................................ 25
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`Claims 21–26 are rendered obvious by Boaz in view of Krebs .......... 33
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`1.
`
`2.
`
`Statement of Non-redundancy .................................................. 33
`
`Boaz ........................................................................................... 34
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`
`
`ii
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`3.
`Krebs ......................................................................................... 36
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`4.
`
`The combination of Boaz in view of Krebs .............................. 37
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`C.
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`Claims 21–26 are rendered obvious by Greco in view of Krebs ........ 48
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`1.
`
`2.
`
`Statement of Non-redundancy .................................................. 48
`
`The combination of Greco in view of Krebs ............................ 48
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`VII. CONCLUSION .............................................................................................. 58
`
`
`
`iii
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`

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`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
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`consolidated case Rockstar Consortium US LP et al v. ASUSTeK Computer, Inc. et
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`al., Consolidated Case No. 2:13-cv-00894 (E.D. Tex.), which consolidated six
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`different cases filed by Rockstar Consortium US LP. The ’973 patent is also
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`asserted in Google Inc. v. Rockstar Consortium US LP et al., Case No. 4:13-cv-
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`05933-CW (N.D. Cal.). In that case, Google requested a declaration of non-
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`infringement on the ’973 patent; Rockstar counterclaimed for infringement of the
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`’973 patent; and Google then pled the affirmative defense of invalidity with respect
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`to the ’973 Patent. Google’s affirmative defense does not trigger the statutory bar
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`against filing an inter partes review petition. 35 U.S.C. § 315(a)(3). There are no
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`patents or applications that claim the benefit of the filing date of the ’973 patent.
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`Petitioner is also filing petitions for inter partes review challenging claims
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`1-13 and 33 of the ’973 patent. Petitioner recommends assigning all proceedings
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`to the same panel.
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`Counsel: Lead Counsel:
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`Scott A. McKeown (Reg. No. 42,866)
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`Backup Counsel: Greg Gardella (Reg. No. 46,045)
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`Service Information: Email: CPDocketMcKeown@oblon.com
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`
`
`
`
`
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`
`
`
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`CPDocketGardella@oblon.com
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`Post: Oblon Spivak, 1940 Duke St., Alexandria, VA 22314
`1
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`
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`Facsimile: 703-413-2220
`Telephone: 703-412-6297
`II. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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`
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1) –(2) Petitioner challenges
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`claims 21–26 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 priority
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`date”). (Ex. 1201, the ’973 patent.)
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`Prior Art Patents and Printed Publications
`
`A.
`Petitioner relies upon the following patents and printed publications:
`
`Exhibit 1208 – U.S. Patent No. 5,579,472 to Keyworth, II et al.
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`(“Keyworth”) issued on November 26, 1996, prior to the earliest filing date
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`claimed by the ’973 patent (April 23, 1997), and is therefore available as prior art
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`under pre-AIA 35 U.S.C. § 102(a). The PCT application corresponding to
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`Keyworth, published as WO96/15490 was made of record, but not relied upon,
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`during the original prosecution of the ’973 patent. Petitioner presents new
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`supporting evidence and an explanation of Keyworth that has never been
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`considered by the Office.
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`
`
`2
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`Exhibit 1211 – U.S. Patent No. 5,333,266 to Boaz et al. (“Boaz”) issued on
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`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
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`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.
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`Exhibit 1212 – U.S. Patent No. 5,448,759 to Krebs et al. (“Krebs”) issued on
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`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 1209 – U.S. Patent No. 5,568,540 to Greco et al. (“Greco”) issued on
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`October 22, 1996, which is prior to the earliest filing date claimed by the ’973
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`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
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`was found by the Examiner to disclose all limitations of the independent claims
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`except “where the notification messages are received from an interface with
`
`independent connections with different bandwidths for the different types of
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`
`
`
`3
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`pending messages.” Petitioner presents new supporting evidence and a
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`combination of Greco and Krebs that was never before considered by the Office.
`
`B. Grounds for Challenge
`Petitioner requests cancellation of challenged claims 21–26 under the following
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`statutory grounds:
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`i. Claims 21–26 are anticipated by Keyworth;
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`ii. Claims 21–26 are rendered obvious by Boaz in view of Krebs;
`
`iii. Claims 21–26 are rendered obvious by Greco in view of Krebs;
`
`Section VI demonstrates, for each of the statutory grounds, that there is a
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`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
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`the Expert Declaration of Professor Nader Mir, Ph.D. (Ex. 1207).
`
`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
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`messaging systems already offered unified inboxes collecting paging messages,
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`voicemails, facsimiles, and e-mails. (Ex. 1207, ¶ 37.) For example, AT&T’s
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`Unified Messaging Service (“UMS”) offered unified messaging since at least 1986.
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`
`
`
`4
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`(Ex. 1203.) 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
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`approach was a common-sense approach to market trends: By 1997, it was
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`common for people and businesses to receive many different types of messages,
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`such as phone, fax, e-mail, pager, and the like. (Ex. 1207, ¶ 42.) Integrated
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`messaging systems were a natural way to inform a user of an incoming message in
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`any one of these categories. (Id. at ¶ 42.) As explained by Prof. Mir, these
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`integrated messaging systems generally included a notification feature to notify the
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`user of incoming messages. (Id. at ¶ 42.)
`
`B.
`
` Different Bandwidths for Different Data Connections or
`Different Messages
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`It was also common by 1997 to use different connections for different
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`messaging systems, such as paging, voice, or facsimile, as those distinct messaging
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`systems often used different messaging protocols. Additionally, it was also
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`common by 1997 for communication networks to connect and interface various
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`connections that had different bandwidths. For example, well before 1997, Global
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`System for Mobile (GSM) was a well-known standard for mobile communications.
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`By 1992, the European Telecommunications Standard Institute had released some
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`5200 pages of technical specifications for implementing GSM (Ex. 1213, p. 8), and
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`major commercial GSM networks were already adhering to these specifications in
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`
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`5
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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`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,
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`fax and messaging are integrated into a single mobile terminal.” (Ex. 1204, p. 26.)
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`As the GSM standards explained, this integration was achieved using a network
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`interface that supported multiple channels of varying bandwidths. (Ex. 1207,
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`¶ 58.)
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`In March 1996, the GSM specification included provisions for speech
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`transmission, short message service transmissions, and facsimile transmissions.
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`(Ex. 1214, p. 10.) A Public Land Mobile Network (PLMN) built according to the
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`GSM Specifications provided these services through “use of access to other
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`existing networks (fixed telephone networks, data networks and Integrated
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`Services Digital Network).” (Ex. 1215, p. 16.) The GSM network elements
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`included the user’s mobile device or mobile station (MS), and base station
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`equipment that includes the Base Station System (BSS), which provided radio
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`coverage, and the Mobile Services Switching Center (MSC), which performed all
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`switching and signaling for users’ mobile devices and interfaced the radio system
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`with the fixed networks through interworking functions (IWFs). (Id. at pp. 16–18.)
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`
`
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`6
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`(Id. at Fig. 1 annotation added.)
`
`
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`The base station equipment supported connections for different types of
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`data, each with its own bandwidth requirement and specification. The GSM
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`Specifications disclosed that the base station equipment may include a
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`Transcoder/Rate Adapter Unit (TRAU) that could be located at the MSC site of the
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`BSS (Ex. 1216, p. 9), and transcoded at 8000 sample/s for an average bit rate of 13
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`kbit/s for speech. (Ex. 1217, p. 6.) The GSM Specifications distinguish different
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`types of Traffic Channels (TCHs) for different types of user information streams;
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`in addition to a 13 kbit/s channel for full rate speech, it included a channel for 9.6
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`kbit/s user data such as fax and other data messages, and a 0.3 kbit/s slow control
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`channel associated with a traffic channel (SACCH (with TCH)), which supported
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`short message service (SMS). (Ex. 1218, pp. 7–9; Ex. 1219, p. 12; Ex. 1220, p.
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`11.)
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`
`
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`7
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`
`
`(Ex. 1218, Table 1 annotation added.)
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`Accordingly, the ground interface that included the TRAU allowed multiple
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`channels or connection of varying bandwidths to connect to base stations and the
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`mobile stations. Thus, the use of multiple channels or connections of varying
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`bandwidths for different types of messages was well known in GSM and in the art
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`before 1997.
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`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
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`displayed in a searchable list to allow for easy graphical scanning, prioritizing,
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`editing, selection, viewing, forwarding, playback and response by the user.” (Ex.
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`1201, 1:19–24.) The ’973 patent notes that, as of its filing, “telephones have been
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`designed with the capability to directly receive, or download, different types of
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`messages, such as faxes, email, and Short Messaging Services (SMS) messages.”
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`(Id. at 1:40–46.) Some prior art mobile phones (1) detected the message type, (2)
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`stored the messages in a folder according to type, and (3) displayed a note
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`indicating the quantity and type of messages received, for example “You have: 2
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`8
`
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`

`

`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`unread faxes and 2 unread short messages.” (Id. at 1:47–56.) These phones tended
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`to “store in their internal memory all received messages,” which “wastes precious
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`memory space.” (Id. at 2:7–12.) Accordingly, as further explained below, the
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`‘973 patent purportedly solved the problem by allowing the user to retrieve
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`“pending” messages over the network as needed from a “network services
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`provider.”
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`
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`(Id. at Fig. 1)
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`The ‘973 patent discloses an integrated messaging center in a user’s mobile
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`phone 1100. As shown in Fig. 1, “[t]he integrated message center is a logical
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`entity that resides in mobile telephone 1100 and operates in conjunction with
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`network services provider 1200 to inform the user of incoming and pending
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`messages, such as fax, e-mail, voice mail, etc.” (Id. at 3:50–54.) Message servers
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`at network services provider 1200 store “pending” messages from various sources:
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`“[n]etwork service provider 1200 stores many of the messages awaiting retrieval
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`by the user and notifies the user of the pending message.” (Id. at 4:1–3.) Mobile
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`telephone 1100 connects to the network services provider 1200 using a
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`9
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`

`

`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`communication network such as the GSM switching fabric 1800. (Id. at 4:5–7.)
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`The network services provider 1200 is further illustrated in Fig. 5:
`
`
`(Id. at Fig. 5 annotation added.)
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`“Interface 5100”, circled in red above, is the network services provider’s
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`interface to GSM switching fabric 1800. (Id. at 7:7–8, Fig. 1.) Interface 5100
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`depicts three separate connections of differing bandwidths – 13 kb/s for voice, 0.3
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`kb/s for SMS, and 9.6 kb/s for data. (Id. at Fig. 5, 7:7–15.)
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`Once an incoming message is received at the network services provider, an
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`SMS notification alert is sent to the mobile telephone 1100.1 (Id. at 7:15–8:10.)
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`More specifically, upon receipt of an inbound email, fax, or voicemail at network
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`services provider 1200, SMS server 5300 sends SMS notification messages to the
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`user to indicate that a new fax mail, voice mail or e-mail message is “pending” and
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`1 This SMS notification is a network service provider alert especially created by
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`the network for the purpose of populating a single list at the user device, and
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`should not be confused with regular SMS messages exchanged between end-users.
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`(Id. at 4:15–5:9, 7:15–8:10.)
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`
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`10
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`available for retrieval from the network. (Id. at 4:15–5:9, 7:15–8:10.)
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`When SMS notification messages are received at the mobile telephone 1100,
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`those message are displayed in a single selectable list as shown in Figs. 7A and 7B
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`below. (Id. at 2:18–50, 3:40–46.)
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`(Id. at Figs. 7A and 7B.)
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`
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`The user can select a notification message from the list to retrieve a pending
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`fax mail, voice mail or e-mail message from the network service provider. As the
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`patent explains, “[w]hen the user wants to retrieve the e-mail message after
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`viewing the email notification message, the user first selects the e-mail icon
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`corresponding to the e-mail message from the message center display (FIGS. 7A
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`and 7B), and then instructs mobile telephone 1100 to retrieve the e-mail message
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`by pressing the ‘View’ button. In response, mobile telephone 1100 establishes a
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`connection with network services provider 1200 to download the e-mail message
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`from e-mail server 5800.” (Id. at 10:48–56.)
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`D.
`
` Prosecution History of the ’973 Patent
`As explained below, during prosecution the Examiner rejected the proposed
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`
`
`
`11
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`claims multiple times in view of numerous references disclosing unified message
`
`systems. After multiple amendments, the only limitation the Examiner concluded
`
`was not disclosed in the prior art was the use of “different bandwidths” for each
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`connection in the claimed “interface with independent connections with different
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`bandwidths for the different types of pending messages” – an amendment made at
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`the Examiner’s suggestion, to reflect “architectural concepts of the Applicant’s
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`invention.” (Ex. 1202, Jan. 5, 2001 Interview Summary.)
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`Application No. 08/842,020, which matured into the ’973 patent, was filed
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`on April 23, 1997 with 32 claims. (See generally Ex. 1202.) The first office action
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`was mailed February 11, 1999 and rejected all 32 claims under 35 U.S.C. § 102 as
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`anticipated by U.S. Patent No. 5,608,786 to Gordon. (Id. at p. 96.) The examiner
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`stated that Gordon disclosed an integrated message center for consolidating
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`different types of messages. (Id.)
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`In response, on May 13, 1999, the Applicants amended independent claims
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`1, 8, 14, 21, and 27 to require that notification messages are “automatically”
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`transmitted and/or received. (Id. at pp. 113–16.) On July 16, 1999, the examiner
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`made the rejection final, again rejecting claims 1–28 and 30–33 as anticipated by
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`Gordon under the same reasoning. (Id. at pp. 126–36.)
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`On November 12, 1999, the Applicants again amended independent claims
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`1, 8, 17, and 27 to require that “each of the notification messages is automatically
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`12
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`sent to the user when one of the pending messages is initially received by the
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`integrated message center.” (Id. at pp. 145–48.) On December 10, 1999, the
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`examiner maintained the previous rejections. (Id. at pp. 161–65.) On December
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`21, 1999, the Applicant filed a Continued Prosecution Application. (Id. at pp.
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`166–69.)
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`On March 30, 2000, the examiner rejected claims 1–3, 6–8, 11–16, 18–23,
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`25–28, and 30–33 as anticipated by U.S. Patent No. 5,742,905 to Pepe; claim 29 as
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`unpatentable over Pepe in view of Kotzin; claim 17 as unpatentable over Pepe in
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`view of U.S. Patent No. 5,794,142 to Vantilla; and claims 4-5, 9-10, and 24 as
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`unpatentable over Pepe in view of U.S. Patent No. 5,568,540 to Greco. (Id. at pp.
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`171–86.) In response, on June 29, 2000, the Applicants further amended claims 14
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`and 33 to require that the notification messages provide the user with a single
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`selectable list and argued that Pepe taught away from the amended claims by using
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`separate displays for voice and e-mail. (Id. at pp. 188–99.)
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`On September 11, 2000, the examiner again rejected claims 1–13, 21–26,
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`and 33 as anticipated by Greco; claims 14–20, 27–28, and 31–32 as unpatentable
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`over Pepe in view of U.S. Patent No. 5,815,506 to Gokhale and further in view of
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`Greco; and claim 29 as unpatentable over Pepe in view of Gokhale, Greco, and
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`U.S. Patent No. 5,911,485 to Rossmann. (Id. at pp. 200–14.) On January 5, 2001
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`the Applicants and examiner held an interview to discuss claims 1, 8, and 14. In
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`
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`13
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`that interview the “Examiner suggested to Applicants’ Representative
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`‘Architectural Concepts’ (of applicants’ invention) for distinguishing over the prior
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`art of record.” (Id. at p. 219.)
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`On February 12, 2001, the Applicants amended claims to specify a particular
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`“interface” from which messages were received: claims 1, 8, 21 and 33 were
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`limited to require “wherein the notification messages are received from an
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`interface with connections for each of the different types of pending messages,”
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`and claims 14 and 27 now required “an interface with independent connections for
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`each of the different types of received messages.” (Id. at pp. 228–40.) But on
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`April 6, 2001, the examiner again rejected claims 1–13, 21–26, and 33 as
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`unpatentable over Greco in view of Pepe, claims 14–20, 27–28, and 31–32 as
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`unpatentable over Pepe in view of Gokhale and Greco, and claim 29 as
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`unpatentable over Pepe in view of Gokhale, Greco, and further in view of
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`Rossmann. (Id. at pp. 241–58.) With respect to claims 1–13, 21–26, and 33, the
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`Examiner concluded that Greco disclosed all claim limitations except “wherein the
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`notification message are received from an interface with independent connections
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`for the different types of pending messages” but noted that this use of “an interface
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`with independent connections for the different types of pending messages” was
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`disclosed in Pepe. (Id. at pp. 245, 247–50.)
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`The examiner then suggested that applicants “further amend the claims to
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`
`
`14
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`

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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`recite ‘independent connections having different bandwidths’ for overcoming the
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`prior art of record.” (Id. at p. 257.) On May 29, 2001, the Applicants amended
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`each of claims 1, 8, 14, 21, 27, and 33 to require that the notification messages
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`were received from an interface with “independent connections with different
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`bandwidths for the different types” of pending messages. (Id. at pp. 261–75.) The
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`claims were then allowed. (Id. at pp. 276–77.)
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`V. CLAIM CONSTRUCTION
`
`The ’973 patent contains 33 claims. At issue in this petition are claims 21–
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`26. Independent claim 21 and claims 22-26 depending therefrom, directed to user
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`equipment for notifying a user of pending messages.
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`In an inter partes review, claim terms in an unexpired patent are interpreted
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`according to their broadest reasonable interpretation (“BRI”) in view of the
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`specification in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The USPTO uses
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`BRI because, among other reasons, the patentee has the opportunity to amend its
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`claims in this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,764 (Aug. 14, 2012) (“Since patent owners have the opportunity to amend
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`their claims during IPR, PGR, and CBM trials, unlike in district court proceedings,
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`they are able to resolve ambiguities and overbreadth through this interpretive
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`approach, producing clear and defensible patents at the lowest cost point in the
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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`system.”). Thus, as required by the rules, this Petition uses the BRI standard.
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`The BRI of claim terms here may be different from the construction that
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`those same terms may receive following claim construction proceedings in district
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`court. See, e.g., In re Trans Texas Holdings Corp., 498 F.3d 1290, 1297 (Fed. Cir.
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`2007). Thus the claim constructions presented in this Petition, including where
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`Petitioner does not propose an express construction, do not necessarily reflect the
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`claim constructions that Petitioner believes should be adopted by a district court
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`under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). In presenting this
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`Petition, unless otherwise stated, the grounds set forth herein are based on (1) the
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`proposed claim construction offered by the Patent Owner in Google Inc. v.
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`Rockstar Consortium US LP et al., Case No. 4:13-cv-5933-CW (N.D. Cal.) (Ex.
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`1206), or (2) for terms where Patent Owner has not explicitly offered a claim
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`construction, on petitioner’s understanding of Patent Owner’s infringement
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`contentions in Rockstar Consortium US LP et al. v. Samsung Electronics Co., Ltd.
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`et al., Case No. 2:13-cv-00900-JRG (E.D. Tex.) (Ex. 1205).
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`In presenting the grounds set forth in this Petition, petitioner does not
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`concede that any claim constructions impliedly or expressly proposed by Patent
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`Owner are appropriate for the district court litigation, where a different legal
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`standard applies to the construction of the asserted claim terms. Petitioner does not
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`believe that many of the Patent Owner’s implied or express proposed constructions
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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`are appropriate under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
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`Instead, petitioner presents these proposed constructions to the Board for
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`consideration in determining the BRI because Patent Owner considers these
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`constructions correct under Phillips, and therefore necessarily also considers them
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`within the appropriate scope of the BRI. Petitioner further submits these
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`constructions under 35 U.S.C. § 301(a)(2), which encourages submission of Patent
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`Owners’ statements on claim scope, to prevent patentees from arguing broad
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`constructions under Phillips but simultaneously using narrow constructions as BRI.
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`“Pending messages”
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`A.
`Claims 21-23 and 25 recite “pending messages.” In the pending litigation,
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`Patent Owner offered no explicit construction for this term. (Ex. 1206, Exhibit B.)
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`In its infringement contentions, the Patent Owner claims that this term is broad
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`enough to cover messages already received by the phone. Specifically, Patent
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`Owner identifies local processes running on the accused Android handsets,
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`“includ[ing] at least BroadcastReceiver, ConnectivityService,
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`ConnectivityManager, NotificationManager and NotificationBuilder” classes, and
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`claims that these local processes “automatically send notification message to the
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`user when one of the pending messages is initially received.” (Ex. 1205, p. 148.)
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`Accordingly, the Patent Owner’s BRI for “pending messages” is “messages that
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`are downloaded or awaiting download.”
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`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 different
`types of pending messages”
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`Claim 21 recites the phrase “the notification messages are received from an
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`interface with independent connections with different bandwidths for different
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`types of pending messages.” In the pending litigation, Patent Owner offered no
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`explicit construction for this term. (Ex. 1206, Exhibit B.) In its infringement
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`contentions, the Patent Owner claims that this term is broad enough to cover any
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`user interface displaying messages received through different connections of
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`different bandwidths. The Patent Owner states that a display of notifications to the
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`user constitutes the claimed “interface” where the phone received some underlying
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`messages via WiFi and received other messages via a cellular connection:
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`(Ex. 1205, pp. 149–150.) Thus, according to Patent Owner’s infringement
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`contentions, the accused Android handsets meet this claim limitation by (1)
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`displaying notification messages, and (2) having multiple communication
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`connections such as Wi-Fi, Mobile Data connection, WiMax, Bluetooth, voice, etc.
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`U.S. Patent No. 6,333,973
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`Accordingly, the Patent Owner’s BRI for “the notification messages are
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`received from an interface with independent connections with different bandwidths
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`for the different types of pending messages” is “the notification messages are
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`displayed on a device having multiple communication connections of different
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`bandwidths.”
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`C. The Means Plus Function Limitations
`As addressed below, claims 21–26 of the ’973 patent each recite means-
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`plus-function limitations that recite the operative language “means for…” to
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`invoke 35 U.S.C. § 112(f). See 37 C.F.R. § 42.104(a)(3) (requiring the
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`corresponding structure for means-plus function limitations to be set forth in a
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`petition for inter partes review). Furthermore, no structure is present in the claims
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`that modify the “means for …” terms, and as such, the claim limitations
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`presumptively invoke § 112(f). See, e.g., York Prods., Inc. v. Cent. Tractor Farm
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`& Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (“[T]he use of the word
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`‘means’ triggers a presumption that the inventor used this term advisedly to invoke
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`the statutory mandates for means-plus-function clauses”); Mass. Inst. of Tech. &
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`Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)
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`(“The generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do
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`not connote sufficiently definite structure”).
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`
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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`The specification discloses little to no structure for some means-plus-
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`function elements, raising questions regarding indefiniteness. There is no general
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`flow chart of the disclosed software elements, let alone a specific algorithm, to
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`support the recited functions. However, because indefiniteness challenges are not
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`available in inter partes review proceedings, Petitioner sets forth below the
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`structure identified by Patent Owner in the co-pending litigation that allegedly
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`corresponds to each means-plus-function element (see Ex. 1206.)
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`Limitation
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`Function
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`Structure
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`means for associating a
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`associating a message type
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`Feature processor 3300,
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`message type indicator
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`indicator with each of the
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`memory 3400, and
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`with each of the received
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`received notification
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`message center 6100,
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`notification messages
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`messages based on the
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`including as recited and
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`based on the message
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`message type of the
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`described in Figures 3, 6,
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`type of the corresponding
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`corresponding pending
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`7A, and 7B, and
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`pending message
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`message
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`equivalents
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`
`
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`U.S. Patent No. 6,333,973
`Petition for Inter Partes Review
`Limitation
`Function
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`Structure
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`means for displaying on
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`displaying on the display
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`Display 2400, feature
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`the display screen an
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`screen an identification of
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`processor 3300, memory
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`identification of the
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`the sender and the
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`3400, display module
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`sender and the associated
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`associated message type
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`3700, and message center
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`message type indicator
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`indicator for each of the
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`6100, including as recited
`
`for each of the received
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`received notification
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`and described in Figures
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`notification messages as
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`messages as entries in a
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`2, 3, 6, 7A, and 7B, and
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`entries in a single
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`single selectable list to
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`equivalent
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`selectable list to a