Paper 5
`Trials@uspto.gov
`571-272-7822 Entered: July 29, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`YOZMOT 33 LTD.,
`Patent Owner
`____________
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, PATRICK R. SCANLON, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 29, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`YOZMOT 33 LTD.,
`Patent Owner
`____________
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`____________
`
`
`
`
`
`Before MICHAEL R. ZECHER, PATRICK R. SCANLON, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`I. INTRODUCTION
`Apple Inc. (“Apple” or “Petitioner”) filed a Petition (“Pet.”)
`requesting inter partes review of claims 1, 3, 5, 7, 8, 12, and 18–20 of U.S.
`Patent No. 6,449,359 B1 (“the ’359 patent,” Ex. 1001). Paper 2. Yozmot 33
`Ltd. (“Yozmot” or “Patent Owner”) did not file a Preliminary Response.
`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:
`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.
`
`For the reasons set forth below, we conclude that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Apple will prevail in challenging claims 1, 3, 5, 7, 8, 12, and 18–20 as
`unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we
`institute an inter partes review as to claims 1, 3, 5, 7, 8, 12, and 18–20 of the
`’359 patent.
`
`A. Related Matters
`The parties indicate that the ’359 patent previously was involved in
`HTC Corporation. v. Luzzatto, 1:09-cv-00118, which was filed in the U.S.
`District Court for the District of Columbia. Pet. 1; Paper 4, 1.
`
`B. The ’359 Patent
`The ’359 patent generally relates to providing customized call
`messages in place of, or in addition to, a standard telephone ring. Ex. 1001,
`
`
`
`2
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`1:6–15. In particular, a user can create a customized message to be played
`when a call from a particular number is received. Id. at 4:26–40. A
`“boosted loudspeaker” is provided to play the customized message,
`following which the system switches from the boosted loudspeaker to the
`regular ring tone. Id. at 3:32–4:25.
`
`C. Illustrative Claims
`Claims 1 and 18 are independent claims. Claims 3, 5, 7, 8, and 12
`
`depend directly or indirectly from independent claim 1, and claims 19 and
`20 depend directly from claim 18. Claims 1 and 18 are reproduced below:
`
`A method for improving the calling procedure of a
`1.
`
`cellular telephone connected to a telephone exchange having a
`memory cell assigned to said cellular telephone, said cellular
`telephone having an earphone loudspeaker, a ring loudspeaker
`and means for performing a standard hook-up procedure,
`whereby said cellular telephone is placed in communication
`with calling telephones through said telephone exchange, said
`method comprising:
`creating at least one customized message for said cellular
`telephone by registering said customized message in memory
`means;
`providing a boosted
`telephone;
`activating said boosted loudspeaker and deactivating said
`earphone loudspeaker and said ring loudspeaker when said
`cellular telephone is switched on but is not in communication
`with another telephone;
`activating said boosted loudspeaker and retrieving said at
`least one customized message when said cellular telephone
`receives an incoming call, and sounding said retrieved at least
`one customized message through said boosted loudspeaker;
`performing said standard hook-up procedure while
`deactivating said boosted
`loudspeaker
`if said boosted
`loudspeaker is not already deactivated, and activating said
`earphone loudspeaker; and
`
`in said cellular
`
`loudspeaker
`
`
`
`3
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`placing said incoming call in communication with said
`cellular telephone through said telephone exchange.
`
`improved calling
`telephone with
`18. A cellular
`
`procedures, provided with a ring loudspeaker and an earphone
`loudspeaker and located in an environment, comprising:
`a boosted loudspeaker, sufficiently powered so as to
`produce sounds that can be heard in said environment of said
`cellular telephone;
`switch means for connecting a source of power
`successively to said boosted loudspeaker, said ring loudspeaker
`and said earphone loudspeaker;
`means for controlling operation of said switch means;
`memory means;
`means for registering at least one customized message in
`said memory means;
`means for accessing said memory means when a call
`signal is sent or received, in order to retrieve said at least one
`customized message; and
`means for sounding said at least one customized message
`through said boosted loudspeaker.
`
`Ex. 1001, 14:24–52, 16:50–17:2.
`
`
`US 5,303,288
`
`Apr. 12, 1994
`
`US 5,481,594
`
`Jan. 2, 1996
`
`Ex. 1008
`
`Ex. 1005
`
`Ex. 1006
`
`D. Prior Art Relied Upon
`Apple relies upon the following prior art references:
`Pawlish et al.
`
`US 5,276,916
`Jan. 4, 1994
`(hereinafter “Pawlish”)
`
`
`Duffy et al.
`(hereinafter “Duffy”)
`
`
`Shen et al.
`(hereinafter “Shen”)
`
`Sremac
`
`
`
`
`
`
`
`
`
`
`US 6,002,761
`
`
`
`
`Ex. 1007
`Dec. 14, 1999
`(filed July 19, 1994)
`
`
`
`4
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`Applicants’ Admitted Prior Art (AAPA)—Ex. 1001, 1:18–3:28,
`
`otherwise known as the “Background of the Invention” section of the ’359
`patent.
`
`
`E. Asserted Grounds of Unpatentability
`Apple challenges claims 1, 3, 5, 7, 8, 12, and 18–20 of the ’359 patent
`based on the asserted grounds of unpatentability set forth in the table below.
`References
`Basis
`Claim(s) Challenged
`Shen, Duffy, and
`§ 103(a)
`1, 3, 18, and 19
`AAPA
`Shen, Duffy, AAPA,
`and Sremac
`Shen, Duffy, AAPA,
`and Pawlish
`
`
`§ 103(a)
`
`§ 103(a)
`
`5, 7, 8, and 12
`
`20
`
`II. CLAIM CONSTRUCTION
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); In re Cuozzo Speed
`Techs., LLC, 2015 WL 4097949, at *5–7 (Fed. Cir. July 8, 2015), reh’g en
`banc denied, 2015 WL 4100060 (Fed. Cir. July 8, 2015). In determining the
`broadest reasonable construction, we presume that claim terms carry their
`ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). This presumption may be rebutted when a
`patentee, acting as a lexicographer, sets forth an alternate definition of a
`term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Apple proposes constructions for several terms of the ’359 patent,
`which we address below. See Pet. 8–16.
`
`
`
`5
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`A. “Means for Performing a Standard Hook-Up Procedure” (claim 1)
`Apple proposes to construe “means for performing a standard hook-up
`procedure” as a means-plus-function limitation under 35 U.S.C. § 112,
`paragraph 6. Pet. 8–9. Because this phrase is found only in the preamble of
`claim 1 and is not recited in any of the method steps of claim 1, we decline
`to construe the phrase at this time. See Aspex Eyewear, Inc. v. Marchon
`Eyewear, Inc., 672 F.3d 1335, 1347–48 (Fed. Cir. 2012) (ruling that a
`preamble did not act as claim limitation because the claim’s body recited a
`structurally complete invention without the preamble language); see also
`TomTom, Inc. v. Adolph, No. 2014-1699, 2015 WL 3814937, at *5–6 (Fed.
`Cir. June 19, 2015) (ruling that even if some parts of preamble provide
`necessary structure for a claim, this does not necessarily convert the entire
`preamble into a limitation).
`B. “Memory Means” (claims 1, 3, 18)
`Citing the ’359 patent’s disclosure that “memory means” can be in
`locations such as the telephone exchange or coupled to the telephone, Apple
`proposes to construe “memory means” as “memory coupled to either the
`telephone exchange or the telephone.” Pet. 9–10 (citing, inter alia, Ex.
`1001, 7:8–14). Although we agree that memory can be in various locations,
`according to the ’359 patent, we are not persuaded that the broadest
`reasonable interpretation of “memory means” includes the location of the
`memory. Rather, for purposes of this Decision, we construe the term
`“memory means” to mean simply “memory,” which may include, among
`other things, memory coupled to the telephone or memory coupled to the
`telephone exchange.
`
`
`
`6
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`C. Means-Plus-Function Limitations of Claim 18
`Apple proposes constructions for several phrases in claim 18. Pet.
`10–16. Patent Owner did not file a Preliminary Response with alternative
`constructions.
`
`As an initial matter, these phrases in claim 18 are means-plus-function
`limitations because they each use the term “means for,” the term “means
`for” is modified by functional language, and the term “means for” is not
`modified by sufficient structure recited in the claim to perform the recited
`functions. Consequently, these means-plus-function limitations require
`construction under 35 U.S.C. § 112, paragraph 6.1 We have reviewed
`Apple’s proposed constructions for these means-plus-function limitations,
`and we find that they are consistent with the specification of the ’359 patent.
`Therefore, for purposes of this Decision, we adopt Apple’s proposed
`constructions for these means-plus-function limitations, which are provided
`in the table below.
`
`
`
`
`
`1 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C.
`§ 112(f). Because the ’359 patent has a filing date before September 16,
`2012 (the effective date of AIA § 4(c)), we will refer to the pre-AIA version
`of § 112.
`
`
`
`7
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`Term
`switch means for connecting a
`source of power successively to
`said boosted loudspeaker, said ring
`loudspeaker and said earphone
`loudspeaker
`
`means for controlling operation of
`said switch means
`
`means for registering at least one
`customized message in said
`memory means
`
`means for accessing said memory
`means when a call signal is sent or
`received
`
`means for sounding said at least
`one customized message through
`said boosted loudspeaker
`
`
`
`Construction
`Function: connecting a source of
`power successively to the boosted
`loudspeaker, the ring loudspeaker and
`the earphone loudspeaker
`
`Structure: A transistor or equivalents.
`See, e.g., Ex. 1001, 3:47–51.
`Function: controlling operation of
`said switch means
`
`Structure: A controller. See, e.g., Ex.
`1001, 3:11–16, 6:27–31, 6:42–45,
`13:51–55.
`Function: registering at least one
`customized message in said memory
`means
`
`Structure: A controller. See, e.g., Ex.
`1001, 3:11–16, 6:46–52.
`Function: accessing said memory
`means when a call signal is sent or
`received
`
`Structure: A controller. See, e.g., Ex.
`1001, 3:11–16, 6:46–52.
`Function: sounding said at least one
`customized message through said
`boosted loudspeaker
`
`Structure: A controller. See, e.g., Ex.
`1001, 3:11–16, 6:46–52.
`
`D. Remaining Claim Terms or Phrases
`All remaining claim terms or phrases recited in claims 1, 3, 5, 7, 8, 12,
`and 18–20 need not be construed explicitly at this time.
`
`
`
`
`
`8
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`III. ANALYSIS
`A. 35 U.S.C. § 103(a) Ground of Unpatentability Based on the
`Combination of Shen, Duffy, and AAPA
`
`Apple contends that claims 1, 3, 18, and 19 are unpatentable under
`35 U.S.C. § 103(a) over the combination of Shen, Duffy, and AAPA.
`Pet. 16–48. In particular, Apple explains how the cited prior art references
`allegedly teach the claimed subject matter and relies upon the Declaration of
`Dr. Joshua W. Phinney (Ex. 1003) to support its positions. Pet. 25–48. On
`this record, we are persuaded by Apple’s explanation and supporting
`evidence.
`We begin our analysis with a general discussion of Shen, Duffy, and
`AAPA, and then turn to the positions taken by Apple with respect to the
`claimed subject matter recited in independent claim 1.
`1. Shen (Ex. 1006)
`Shen generally relates to a caller identification unit connected
`between a telephone and a telephone exchange. Ex. 1006, Abst. Figure 1 of
`Shen is reproduced below:
`
`
`
`9
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`
`Figure 1 of Shen is a block diagram of caller identification unit 1
`connected between telephone 5 and telephone exchange 7. Ex. 1006, 3:61–
`64. Shen teaches a monitoring mode in which the caller identification unit
`recognizes a calling number and plays a corresponding customized message
`through a speaker. Ex. 1006, Abst.
`In particular, Shen teaches that a user can record a customized audio
`message, which is then stored in memory. Ex. 1006, 5:47–52. The audio
`message is stored such that it corresponds to a caller’s telephone number.
`Id. at 6:18–29. When a call is received from a telephone number that
`corresponds to a saved audio message, the message is played on speaker 15.
`Id. at 2:54–57, 7:31–48.
`
`2. Duffy (Ex. 1005)
`Duffy generally relates to a cellular telephone for automotive use.
`Ex. 1005, Abst. Figure 1 of Duffy is reproduced below:
`
`
`
`10
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`
`Figure 1 of Duffy is a block diagram of a cellular telephone. Ex. 1005,
`2:35–37. The cellular telephone includes amplified loudspeaker 16, a ringer,
`and an earpiece speaker in handset 17. Ex. 1005, 2:63–65, 3:15–27.
`3. AAPA
`The background of the ’359 patent explains that a telephone exchange
`having a memory cell assigned to a telephone was known in the art at the
`time of filing the application for the ’359 patent. In particular, the ’359
`patent states: “It must further be recalled that modern telephone exchanges
`have a number of what may be called ‘memory cells’, one for each
`subscriber, wherein messages may be registered from a caller when the
`receiver is not available for communication, or communication is not
`requested.” Ex. 1001, 3:17–21.
`4. Apple’s Contentions
`Apple presents a detailed claim mapping and supporting evidence that
`explain how Shen allegedly teaches performing the steps recited in the
`method of claim 1 in a system having a conventional telephone. Pet. 25–38.
`
`
`
`11
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`Apple contends that Shen and Duffy collectively, in view of the knowledge
`of one of ordinary skill in the art, teach performing the method of claim 1
`using a cellular telephone. Id. Apple also presents a number of articulated
`reasons with rational underpinnings to combine Shen and Duffy. Id. at 21–
`25. Apple’s analysis, claim mapping, and supporting evidence have not
`been addressed by Yozmot at this stage of the proceeding.
`First, regardless of whether or not the preamble of claim 1 is entitled
`to patentable weight, Apple explains how the combination of Shen, Duffy,
`and AAPA teaches the telephone configuration of the preamble. Pet. 25–31.
`For example, Shen teaches telephone 23 connected to telephone exchange 7.
`Ex. 1006, Fig. 1. As explained above, the background of the ’359 patent
`explains that a telephone exchange having a memory cell assigned to a
`telephone was old and well known in the art. Ex. 1001, 3:17–21.
`Furthermore, Apple explains that Shen teaches a telephone having an
`earphone loudspeaker and a ring loudspeaker. Pet. 28–29 (citing Ex. 1006,
`8:6–9, Fig. 1; Ex. 1003, 37–39). For example, Shen teaches that telephone 5
`has a handset, which has an earphone loudspeaker, and that telephone 5
`rings when a call is received. Ex. 1006, Fig. 1, 8:6–9. Apple also explains
`that Duffy teaches a cellular telephone having an earphone speaker (“an
`earpiece”) and a transducer to provide “incoming call ringer signals.” Pet.
`28–29 (citing Ex. 1005, 3:15–18, 3:22–27; Ex. 1003, 38–40). Finally, Apple
`explains that the combination of Duffy and Shen teaches a cellular telephone
`having “means for performing a standard hook-up procedure,” consistent
`with the ’359 patent, whereby the telephone is placed in communication
`with a calling telephone through a telephone exchange. Pet. 29–31 (citing
`Ex. 1001, 2:59–62; Ex. 1006, 2:57–59, 3:23–25, 4:6–13; Ex. 1005, 4:55–63;
`
`
`
`12
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`Ex. 1003, 41–44). For example, Shen teaches “connect[ing] a telephone to
`the line when the user causes the telephone to go off hook.” Ex. 1006, 3:24–
`25.
`
`Next, Apple takes the position that Shen teaches “creating at least one
`customized message for said cellular telephone by registering said
`customized message in memory means,” as recited in independent claim 1.
`Pet. 31–32 (citing Ex. 1006, 6:2–14, 6:22–29; Ex. 1003, 45). Shen teaches
`that a user can enter the number of a calling party and record a message for
`that number using a microphone. Ex. 1006, 6:2–14. “The calling party
`number is added to the table of concordance 13 and assigned a message
`number,” and, if an audio message is recorded, the recorded message is
`“stored in block of storage 11.” Ex. 1006, 6:22–26.
`Apple then contends that Shen and Duffy each teach “providing a
`boosted loudspeaker,” as recited in independent claim 1. Pet. 32–33 (citing
`Ex. 1006, 4:14–19, 7:40–44; Ex. 1005, Fig. 1 (speaker 16); Ex. 1003, 47).
`Shen teaches that a message corresponding to a calling party “is played
`aloud on speaker 15.” Ex. 1006, 7:42–44. Duffy teaches providing a
`cellular telephone with speaker 16 that is separate from the handset speaker
`and the ringer and that is driven by an amplifier. Ex. 1005, Fig. 1, 3:19–21.
`Next, Apple contends that Shen teaches the following steps of
`independent claim 1: “activating said boosted loudspeaker and deactivating
`said earphone loudspeaker and said ring loudspeaker when said cellular
`telephone is switched on but is not in communication with another
`telephone”; and “activating said boosted loudspeaker and retrieving said at
`least one customized message when said cellular telephone receives an
`incoming call, and sounding said retrieved at least one customized message
`
`
`
`13
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`through said boosted loudspeaker.” Pet. 33–36 (citing Ex. 1006, 3:21–30,
`6:22–29, 7:31–54; Ex. 1003, 49–51).
`Shen teaches activating the boosted loudspeaker while the ring and
`earphone loudspeakers are not active:
`A relay can be used to suppress the ringing signal to the phone
`after a call is received and before the call is answered. The
`relay connects a telephone to the line when the user causes the
`telephone to go off hook. The unit deciphers the telephone
`number of a calling party, searches the table of concordance to
`determine the location of corresponding audio messages, and
`plays back the corresponding audio messages from the storage
`through the audio output while the unit is suppressing the
`ringing signal to the telephone.
`Ex. 1006, 3:21–30. Shen teaches that the customized message, if found, is
`played through the boosted loudspeaker (speaker 15): “If a match is found,
`then the message number is noted and the corresponding message is played
`aloud on speaker 15.” Ex. 1006, 7:42–44.
`Finally, Apple contends Shen teaches the following steps of
`independent claim 1: “performing said standard hook-up procedure while
`deactivating said boosted loudspeaker if said boosted loudspeaker is not
`already deactivated, and activating said earphone loudspeaker”; and “placing
`said incoming call in communication with said cellular telephone through
`said telephone exchange.” Pet. 36–38 (citing Ex. 1006, 3:23–25, 4:6–13,
`8:5–9; Ex. 1003, 51–54). For example, Shen teaches the boosted
`loudspeaker is deactivated once the message is played: “After a message is
`read, the telephone 5 may resume tinging [sic] as normal.” Ex. 1006, 8:6–7.
`Shen then teaches that the standard hook-up procedure is performed by
`causing the telephone to go off hook, which, in turn, causes the call to be
`connected through the telephone exchange. Ex. 1006, 3:23–25 (“The relay
`
`
`
`14
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`connects a telephone to the line when the user causes the telephone to go off
`hook.”); Ex. 1006, 4:6–8 (“Referring to FIG. 1, audio caller identification
`unit 1 is connected between a line input, shown as an exchange 7, and a
`user’s telephone 5.”).
`Based on the record before us, Apple has demonstrated a reasonable
`likelihood of prevailing on its assertion that independent claim 1 would have
`been unpatentable over the combination of Shen, Duffy, and AAPA. In
`addition, the claim mapping and supporting evidence presented by Apple
`that explain how the cited prior art references allegedly teach the claimed
`subject matter recited in independent claim 18, and dependent claims 3 and
`19, have not been addressed by Yozmot at this stage of the proceeding. See
`Pet. 38–49. Based on our review of Apple’s explanations and supporting
`evidence, we are persuaded that Apple has demonstrated a reasonable
`likelihood of prevailing on its assertion that independent claim 18, and
`dependent claims 3 and 19, would have been unpatentable over the
`combination of Shen, Duffy, and AAPA.
`B. 35 U.S.C. § 103(a) Ground of Unpatentability Based on the
`Combination of Shen, Duffy, AAPA, and Sremac
`
`Apple contends that claims 5, 7, 8, and 12 are unpatentable under
`35 U.S.C. § 103(a) over the combination of Shen, Duffy, AAPA, and
`Sremac. Pet. 49–56. In particular, Apple explains how the cited prior art
`references allegedly teach the claimed subject matter and relies upon the
`Declaration of Dr. Phinney to support its positions. Id. On this record, we
`are persuaded by Apple’s explanation and supporting evidence, which have
`not been addressed by Yozmot at this stage in the proceeding.
`
`
`
`15
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`Claim 5 depends from claim 1 and recites that: “said at least one
`customized message is selected from the group consisting of” four options,
`including “a customized call message formulated by a user of said cellular
`telephone that identifies said user.” Ex. 1001, 14:65–15:2. Apple contends
`Shen teaches such a customized call message because it discloses that a user
`can record a message, and the recorded message identifies the user because
`it is the user’s voice. Pet. 51–52 (citing Ex. 1006, 6:2–14; Ex. 1003, 72).
`Shen discloses: “If the user elects to record a message then the user speaks
`the message into a microphone 26 or through the handset 23 following a
`prompt.” Ex. 1006, 6:7–9. Shen further discloses that the customized
`message is then played if a call from the number corresponding to the
`message is received. Id. at 7:40–44.
`Based on the record before us, Apple has demonstrated a reasonable
`likelihood of prevailing on its assertion that dependent claim 5 would have
`been unpatentable over the combination of Shen, Duffy, AAPA, and
`Sremac. In addition, the claim mapping and supporting evidence presented
`by Apple that explain how the cited prior art references allegedly teach the
`claimed subject matter recited in dependent claims 7, 8, and 12 have not
`been addressed by Yozmot at this stage of the proceeding. See Pet. 54–56.
`Based on our review of Apple’s explanations and supporting evidence, we
`are persuaded that Apple has demonstrated a reasonable likelihood of
`prevailing on its assertion that dependent claims 5, 7, 8, and 12 would have
`been unpatentable over the combination of Shen, Duffy, AAPA, and
`Sremac.
`
`
`
`16
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`C. 35 U.S.C. § 103(a) Ground of Unpatentability Based on the
`Combination of Shen, Duffy, AAPA, and Pawlish
`
`Apple contends that claim 20 is unpatentable under 35 U.S.C.
`§ 103(a) over the combination of Shen, Duffy, AAPA, and Pawlish.
`Pet. 56–60. In particular, Apple explains how the cited prior art references
`allegedly teach the claimed subject matter and relies upon the Declaration of
`Dr. Phinney to support its positions. Id. On this record, we are persuaded
`by Apple’s explanation and supporting evidence, which have not been
`addressed by Yozmot at this stage in the proceeding.
`Claim 20 depends from independent claim 18 and recites that “said
`boosted loudspeaker comprises an additional circuit driving said earphone
`loudspeaker with greater power.” Ex. 1001, 18:1–3. Apple contends that
`Pawlish teaches a boosted loudspeaker comprising an additional circuit
`driving the earphone loudspeaker with greater power. Pet. 59–60. Pawlish
`teaches a communication device, such as a two-way radio, that includes a
`microphone, an earphone speaker, and an amplifier for driving the speaker.
`Ex. 1008, Abst., 2:28–56. Pawlish further teaches:
`when the radio 10 is in the closed or speaker-microphone
`configuration of FIG. 2, it is quite likely that the speaker port
`22 would be some distance from the user’s ear. Consequently,
`the gain of audio amplifier 32 would be set to a relatively
`higher value in order to provide increased audio output from the
`speaker 33.
`Ex. 1008, 3:33–39. Based on these cited disclosures in Pawlish, we are
`persuaded that Apple has presented sufficient evidence to support a finding
`that Pawlish teaches the claimed subject matter of claim 20.
`Based on the record before us, Apple has demonstrated a reasonable
`likelihood of prevailing on its assertion that dependent claim 20 would have
`
`
`
`17
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`been unpatentable over the combination of Shen, Duffy, AAPA, and
`Pawlish.
`
`
`IV. CONCLUSION
`For the foregoing reasons, we conclude that the information presented
`in the Petition establishes that there is a reasonable likelihood that Apple
`would prevail in showing that claims 1, 3, 5, 7, 8, 12, and 18–20 of the ’359
`patent are unpatentable under 35 U.S.C. § 103(a). However, we have not
`made a final determination with respect to the patentability of these claims.
`
`
`
`18
`
`
`
`
`
`
`
`Case IPR2015-00761
`U.S. Patent No. 6,449,359 B1
`
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1, 3, 5, 7, 8, 12, and 18–20 of the
`’359 patent on the following grounds:
`A. Claims 1, 3, 18, and 19 as unpatentable under U.S.C. § 103(a) over
`the combination of Shen, Duffy, and AAPA;
`B. Claims 5, 7, 8, and 12 as unpatentable under U.S.C. § 103(a) over
`the combination of Shen, Duffy, AAPA, and Sremac; and
`C. Claim 20 as unpatentable under U.S.C. § 103(a) over the
`combination of Shen, Duffy, AAPA, and Pawlish.
`FURTHERED ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`will commence on the entry date of this decision.
`
`
`
`
`PETITIONER:
`Andrew S. Ehmke
`Scott T. Jarratt
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`scott.jarratt.ipr@haynesboone.com
`
`PATENT OWNER:
`Andrew T. Zidel
`Gregory S. Gewirtz
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`azidel.ipr@ldlkm.com
`ggewirtz.ipr@ldlkm.com
`
`
`
`19
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
