UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`Microsoft Corporation,
`Petitioner
`
`v.
`
`
`
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2016-01576
`Patent 5,754,946
`
`____________
`
`
`
`PATENT OWNER MOBILE TELECOMMUNICATIONS
`TECHNOLOGIES, LLC’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`BACKGROUND ............................................................................................. 1 
`I.
`INTRODUCTION ........................................................................................... 2 
`II.
`III. PROPER CLAIM CONSTRUCTION ............................................................ 5 
`A.
`Rules Governing Claim Construction ................................................... 5 
`1.
`Phillips Standard Governs .......................................................... 5 
`i.
`Look to Claims Themselves and Then
`Specification ..................................................................... 5 
`ii.
`Can Read Specification Limitations into Claims ............. 6 
`iii. Can Rely on Extrinsic Evidence ....................................... 6 
`Background on the Technology and the ‘946 Patent ............................ 7 
`1.
`Person of Ordinary Skill in the Art ............................................. 7 
`2.
`Claim Limitations ....................................................................... 7 
`Construction of Independent Claim Terms ........................................... 7 
`1.
`“retransmission” or “retransmitting” of claims 1 and 7-8 .......... 7 
`2.
`“means for receiving a radio frequency message from the
`network” of claim 1..................................................................... 8 
`“means for transmitting, only upon actuation of the
`switch, a signal to the communications network
`requesting retransmission of said specified portion of said
`message” of claim 1 .................................................................... 8 
`“means for receiving said specified portion retransmitted
`from the communications network and for displaying the
`received specified portion on the display” of claim 1 ................ 9 
`“means for detecting errors in the received message” of
`claim 2 ....................................................................................... 10 
`“means for highlighting said errors when the message is
`displayed on said display” of claim 2 ....................................... 10 
`“means for transmitting radio frequency signals
`containing a message to the mobile unit” of claim 7 ................ 11 
`
`B.
`
`C.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`
`
`

`
`8.
`
`9.
`
`2.
`
`“means for receiving, from the mobile unit, radio
`frequency signals representing a portion of the message
`that the user desires retransmission” of claim 7 ....................... 11 
`“means for retransmitting radio frequency signals
`containing the portion of the message to the mobile unit”
`of claim 7 .................................................................................. 12 
`10. Limitations regarding a “portion of” a message of claims
`1 and 7-8 .................................................................................... 12 
`D.
`Akiyama ............................................................................................... 12 
`E. Gutman ................................................................................................ 13 
`F.
`Zabarsky .............................................................................................. 14 
`G. Kuznicki ............................................................................................... 14 
`IV. GROUND 1 – CLAIMS 1-2, 4, AND 7-9 ARE NOT OBVIOUS
`OVER AKIYAMA AND GUTMAN. .............................................................. 14 
`A.
`Akiyama and Gutman do not render claims 1 and 7-8 obvious. ......... 14 
`1.
`Neither Akiyama nor Gutman teaches or suggests the
`“user specified or indicated portion limitation” ........................ 16 
`Akiyama teaches away from a two-way RF paging
`system ........................................................................................ 22 
`Akiyama and Gutman do not render dependent claims 2, 4, and
`9 obvious. ............................................................................................ 34 
`V. GROUND 2 – CLAIMS 1-2 AND 7-9 ARE NOT OBVIOUS OVER
`ZABARSKY IN VIEW OF KUZNICKI. ......................................................... 35 
`A.
`Zabarsky and Kuznicki do not render claims 1 and 7-8 obvious,
`because Kuznicki does not teach or suggest the “user specified
`or indicated portion limitation.” .......................................................... 35 
`Zabarsky and Kuznicki do not render dependent claims 2 and 9
`obvious. ............................................................................................... 43 
`VI. CONCLUSION .............................................................................................. 43 
`
`B.
`
`
`
`
`
`B.
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES 
`Ex parte Frye, 94 USPQ 2d 1072 (BPAI 2010) ............................................... 14, 28
`Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986) ................ 5
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ....................................................... 14, 28
`In re Morris, 127 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997) ............................. 6
`In re Royka, 490 F.2d 981 (CCPA 1974) ......................................................... 14, 35
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ......................................... 14, 28
`Orthopedic Equipment Co. v. United States, 702 F.2d 1005 ................................... 34
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................5, 6
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298 (Fed. Cir. 1999) ........... 6
`Vitrionics Corp. v. Conceptronic, 90 F.3d 1576 (Fed. Cir. 1996) ............................. 5
`OTHER AUTHORITIES 
`35 United States Code § 103 ............................................................................ passim
`37 C.F.R. § 42.100 ..................................................................................................... 1
`37 C.F.R. § 42.107 ..................................................................................................... 2
`Manual of Patent Examining Procedure § 2111.01 ................................................... 6
`Manual of Patent Examining Procedure § 2558 ........................................................ 5
`
`iii
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`

`
`
`I.
`
`BACKGROUND
`
`On August 11, 2016, Petitioner Microsoft Corporation (“Microsoft” or
`
`“Petitioner”) filed a Petition for Inter Partes Review under 37 C.F.R. § 42.100,
`
`requesting inter partes review of claims 1-2, 4, and 7-9 of U.S. Patent No.
`
`5,754,946 (“the ’946 Patent”) on two grounds. Petitioner asserts that claims 1-2, 4,
`
`and 7-9 of the ’946 Patent are unpatentable over the following references under 35
`
`U.S.C. § 103:1
`
`Ground 1 - Claims 1-2, 4, and 7-9 as obvious over Japanese Unexamined
`
`Patent Application H2-213237 (“Akiyama”) in view of U.S. Patent No.
`
`4,940,963 (“Gutman”); and
`
`Ground 2 – Claims 1-2 and 7-9 as obvious over U.S. Patent No. 4,644,351
`
`(“Zabarsky”) in view of U.S. Patent No. 5,311,516 (“Kuznicki”).
`
`The ‘946 Patent, entitled “Nationwide Communication System,” was filed
`
`on September 21, 1993 and issued on May 19, 1998. The ‘946 Patent expired on
`
`May 19, 2015.
`
`The ‘946 Patent describes and claims methods and systems for
`
`communication between a system network and a mobile unit. The system network
`
`Grounds 3 and 4 involving three other references: U.S. Patent No. 5,448,759
`1
`(“Krebs”), U.S. Patent No. 5,396,537 (“Schwendeman”), and U.S. Patent
`No. 5,031,179 (“Yoshida”), are described in another petition, IPR2016-
`01581.
`
`1
`
`

`
`
`includes a plurality of base transmitters and base receivers included in the network.
`
`The base transmitters are divided into zonal assignments and broadcast in
`
`simulcast using multi-carrier modulation techniques. The system network controls
`
`the base transmitters to broadcast in simulcast during both systemwide and zonal
`
`time intervals. The system network dynamically alters zone boundaries to
`
`maximize information throughput. The system also uses a mobile unit which
`
`receives messages from the network and transmits messages to the network. The
`
`mobile unit includes a switch that allows a user to request the network to
`
`retransmit a portion of a received message that contains errors. Ex. 1001 at
`
`Abstract.
`
`II.
`
`INTRODUCTION
`
`The Patent Owner, Mobile Telecommunications Technologies, LLC,
`
`submits this Preliminary Response to the Petition for Inter Partes Review of
`
`claims 1-2, 4, and 7-9 of the ‘946 Patent. 37 C.F.R. § 42.107.
`
`The Patent Owner respectfully requests that the Board deny the Petition on
`
`every ground alleged by the Petitioner for, at least, the following reasons.
`
`First, with regard to Ground 1, Akiyama and Gutman, individually or in
`
`combination, do not teach or suggest, at least, “a switch actuatable to specify a
`
`portion of the displayed message for which a user desires retransmission,” as
`
`recited in claims 1 and 7, or “receiving an indication of a portion of the displayed
`
`
`
`2
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`

`
`
`message for which a user desires retransmission,” as recited in claim 8 (hereinafter
`
`collectively referred to as the “user specified or indicated portion limitation”).
`
`Further, Akiyama teaches away from a two-way radio frequency (RF) paging
`
`system as claimed in claims 1, 7, and 8. Dependent claims 2, 4, and 9 are not
`
`obvious over Akiyama and Gutman, because independent claims 1 and 8, from
`
`which they depend respectively, are not obvious over Akiyama and Gutman and
`
`because of the additional features they recite.
`
`Obviousness under 35 U.S.C. §103 requires that all claim limitations must
`
`be taught or suggested by the applied references. For Ground 1, the Petitioner
`
`relies on Akiyama for the user specified or indicated portion limitation. Its
`
`argument with regard to this limitation is just two sentences. These two sentences
`
`do not even mention the elements of the limitation. At least because Petitioner’s
`
`argument regarding Akiyama teaching or suggesting this limitation does not even
`
`include a discussion of the elements of the limitation, there is no reasonable
`
`likelihood that the Petitioner can prevail with regard to claims 1-2, 4, and 7-9 of
`
`the ‘946 Patent according to Ground 1.
`
`Second, with regard to Ground 2, Zabarsky and Kuznicki, individually or in
`
`combination, do not teach or suggest, at least, the user specified or indicated
`
`portion limitation as recited in claims 1 and 7-8. Dependent claims 2 and 9 are not
`
`obvious over Zabarsky and Kuznicki, because independent claims 1 and 8, from
`
`
`
`3
`
`

`
`
`which they depend respectively, are not obvious over Zabarsky and Kuznicki and
`
`because of the additional features they recite.
`
`Obviousness under 35 U.S.C. §103 requires that all claim limitations must
`
`be taught or suggested by the applied references. For Ground 2, the Petitioner
`
`relies on Kuznicki for the user specified or indicated portion limitation. However,
`
`again it has not provided any evidence that Kuznicki teaches or suggest the
`
`elements of the limitation. For example, it has not provided any evidence that
`
`Kuznicki teaches or suggest manually specifying or indicating a portion of a
`
`message to be retransmitted. In fact, Kuznicki cannot request anything, because it
`
`cannot transmit anything. Fig. 8 shows that the mobile device of Kuznicki does not
`
`include a transmitter. At least because Petitioner’s argument regarding Kuznicki
`
`teaching or suggesting this limitation does not even include a discussion of the
`
`elements of the limitation, there is no reasonable likelihood that the Petitioner can
`
`prevail with regard to claims 1-2 and 7-9 of the ‘946 Patent according to Ground 2.
`
`Therefore, there is no reasonable likelihood that the Petitioner can prevail
`
`with regard to claims 1-2, 4, and 7-9 of the ‘946 Patent on either ground.
`
`
`
`4
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`

`
`
`III. PROPER CLAIM CONSTRUCTION
`A. Rules Governing Claim Construction
`
`1.
`Phillips Standard Governs
`The ‘946 Patent expired on May 19, 2015, so the proper claim construction
`
`is that used in district court review. The broadest reasonable interpretation (BRI)
`
`standard does not apply. In regard to the proper claim construction used in district
`
`court review, MPEP 2258 provides that “[i]n a reexamination proceeding involving
`
`claims of an expired patent, claim construction pursuant to the principle set forth
`
`by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321,
`
`1329 (Fed. Cir. 2005) (words of a claim “are generally given their plain and
`
`ordinary meaning” as understood by a POSA at the time of the invention) should
`
`be applied since the expired claims are not subject to amendment. See Ex parte
`
`Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. & Inter. 1986).”
`
`i.
`Look to Claims Themselves and Then Specification
`The first step in construing claims under Phillips is to “look to the words of
`
`the claims themselves.” Vitrionics Corp. v. Conceptronic, 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996). Second, the specification must be considered when construing
`
`claim terms. Id. “[T]he specification is always highly relevant.” Id.
`
`
`
`5
`
`

`
`
`
`ii.
`Can Read Specification Limitations into Claims
`Claim construction under Phillips varies from the BRI standard in at least
`
`two important ways. Claim construction under Phillips may read limitations in the
`
`specification into the claims. For example, “[t]he presumption that a term is given
`
`its plain and ordinary meaning may be rebutted by the applicant by clearly setting
`
`forth a different definition of the term in the specification. In re Morris, 127 F.3d
`
`1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the USPTO looks to the
`
`ordinary use of the claim terms taking into account definitions or other
`
`“enlightenment” contained in the written description). MPEP 2111.01.
`
`iii. Can Rely on Extrinsic Evidence
`Under Phillips, “it is entirely appropriate, perhaps even preferable, for a
`
`court to consult trustworthy extrinsic evidence to ensure that the claim construction
`
`it is tending to from the patent file is not inconsistent with clearly expressed,
`
`plainly apposite, and widely held understandings from the pertinent technical
`
`field.” Pitney Bowes, Inc. v. HP Co., 182 F.3d 1298, 1309 (Fed. Cir. 1999).
`
`In summary, under Phillips the first step in construing claims is to look to
`
`the words of the claims themselves. The second step is to consider the
`
`specification. Additionally, there is no prohibition on reading limitations in the
`
`specification into the claims, and to consult trustworthy extrinsic evidence.
`
`
`
`6
`
`

`
`
`
`B.
`
`Background on the Technology and the ‘946 Patent
`1.
`Person of Ordinary Skill in the Art
`A person having ordinary skill in the art at the time of the invention
`
`(PHOSITA) of the ’946 Patent would possess a bachelor’s degree in electrical
`
`engineering or its equivalent and about four years working in the field of wireless
`
`telecommunications networks and would possess knowledge regarding wireless
`
`transmission protocols as used in telecommunications, or equivalent education and
`
`work experience.
`
`2.
`Claim Limitations
`Independent claims 1 and 7 recite: a two-way wireless data communication
`
`system including a switch actuatable to specify a portion of the displayed message
`
`for which a user desires retransmission. Independent claim 8 recites: a two-way
`
`wireless data communication method including receiving an indication of a portion
`
`of the displayed message for which a user desires retransmission.
`
`C. Construction of Independent Claim Terms
`1.
`
`“retransmission” or “retransmitting” of claims 1 and
`7-8
`
`Challenged claims 1 and 7-8 recite a “retransmission.” The Petitioner
`
`asserts that, because of issue preclusion, the interpretation of “retransmission” to
`
`the mobile unit should not be limited to a second transmission from the network to
`
`
`
`7
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`

`
`
`the mobile unit, but must also include a single transmission to the mobile unit if the
`
`information transmitted is relayed at least once within the network.
`
`The Patent Owner submits that the term “retransmission” should be
`
`construed to have its plain and ordinary meaning. This plain and ordinary meaning
`
`is the transmission of something again, or for a second time.
`
`2.
`
`“means for receiving a radio frequency message from
`the network” of claim 1
`Challenged claim 1 recites “means for receiving a radio frequency message
`
`from the network.” The Petitioner asserts that the corresponding function is
`
`“receiving a radio frequency message from the network” and the linked structure
`
`includes an antenna (1502 or 1702) and a receiver (1506 or 1706).
`
`The Patent Owner submits that the phrase “means for receiving a radio
`
`frequency message from the network” should be construed to have its plain and
`
`ordinary meaning.
`
`3.
`
`“means for transmitting, only upon actuation of the
`switch, a signal to the communications network
`requesting retransmission of said specified portion of
`said message” of claim 1
`Challenged claim 1 recites “means for transmitting, only upon actuation of
`
`the switch, a signal to the communications network requesting retransmission of
`
`said specified portion of said message.” The Petitioner asserts that the
`
`corresponding function is “transmitting, only upon actuation of the switch, a signal
`
`
`
`8
`
`

`
`
`to the communications network requesting retransmission of said specified portion
`
`of said message” and the linked structure includes an antenna (1502), a transmitter
`
`(1520), transmit logic (1518), and a switch (1622).
`
`The Patent Owner submits that the phrase “means for transmitting, only
`
`upon actuation of the switch, a signal to the communications network requesting
`
`retransmission of said specified portion of said message” should be construed to
`
`have its plain and ordinary meaning.
`
`4.
`
`“means for receiving said specified portion
`retransmitted from the communications network and
`for displaying the received specified portion on the
`display” of claim 1
`Challenged claim 1 recites “means for receiving said specified portion
`
`retransmitted from the communications network and for displaying the received
`
`specified portion on the display.” The Petitioner asserts that the corresponding
`
`function
`
`is “receiving
`
`said
`
`specified portion
`
`retransmitted
`
`from
`
`the
`
`communications network and displaying the received specified portion on the
`
`display” and the linked structure includes an antenna (1502) and a receiver (1506)
`
`for receiving a message portion, and further includes a display logic and a display
`
`for displaying the received portion.
`
`The Patent Owner submits that the phrase “means for receiving said
`
`specified portion retransmitted from the communications network and for
`
`
`
`9
`
`

`
`
`displaying the received specified portion on the display” should be construed to
`
`have its plain and ordinary meaning.
`
`5.
`
`“means for detecting errors in the received message”
`of claim 2
`Challenged claim 2 recites “means for detecting errors in the received
`
`message.” The Petitioner asserts that the corresponding function is “detecting
`
`errors in the received message” and the closest possible structure includes a
`
`receiver capable of decoding error correcting codes contained in the message.
`
`The Patent Owner submits that the phrase “means for detecting errors in the
`
`received message” should be construed to have its plain and ordinary meaning.
`
`6.
`
`“means for highlighting said errors when the message
`is displayed on said display” of claim 2
`Challenged claim 2 recites “means for highlighting said errors when the
`
`message is displayed on said display.”
`
` The Petitioner asserts that the
`
`corresponding function is “highlighting said errors when the message is displayed
`
`on said display” and the linked structure includes a display capable of highlighting
`
`errors in the message by underlining errors, placing errors in brackets, or printing
`
`errors in reserve video.
`
`The Patent Owner submits that the phrase “means for highlighting said
`
`errors when the message is displayed on said display” should be construed to have
`
`its plain and ordinary meaning.
`
`
`
`10
`
`

`
`
`
`7.
`
`“means for transmitting radio frequency signals
`containing a message to the mobile unit” of claim 7
`Challenged claim 7 recites “means for transmitting radio frequency signals
`
`containing a message to the mobile unit.” The Petitioner asserts that the
`
`corresponding function is “transmitting radio frequency signals containing a
`
`message to the mobile unit” and the linked structure includes a base transmitter
`
`connected to an antenna.
`
`The Patent Owner submits that the phrase “means for transmitting radio
`
`frequency signals containing a message to the mobile unit” should be construed to
`
`have its plain and ordinary meaning.
`
`8.
`
`“means for receiving, from the mobile unit, radio
`frequency signals representing a portion of the
`message that the user desires retransmission” of claim
`7
`Challenged claim 7 recites “means for receiving, from the mobile unit, radio
`
`frequency signals representing a portion of the message that the user desires
`
`retransmission.” The Petitioner asserts that the corresponding function is
`
`“receiving, from the mobile unit, radio frequency signals representing a portion of
`
`the message that the user desires retransmission” and the linked structure includes
`
`a base transmitter connected to an antenna.
`
`The Patent Owner submits that the phrase “means for receiving, from the
`
`mobile unit, radio frequency signals representing a portion of the message that the
`
`
`
`11
`
`

`
`
`user desires retransmission” should be construed to have its plain and ordinary
`
`meaning.
`
`9.
`
`“means for retransmitting radio frequency signals
`containing the portion of the message to the mobile
`unit” of claim 7
`Challenged claim 7 recites “means for retransmitting radio frequency signals
`
`containing the portion of the message to the mobile unit.” The Petitioner asserts
`
`that the corresponding function is “retransmitting radio frequency signals
`
`containing the portion of the message to the mobile unit” and the linked structure
`
`includes a base transmitter connected to an antenna.
`
`The Patent Owner submits that the phrase “means for retransmitting radio
`
`frequency signals containing the portion of the message to the mobile unit” should
`
`be construed to have its plain and ordinary meaning.
`
`10. Limitations regarding a “portion of” a message of
`claims 1 and 7-8
`Challenged claims 1 and 7-8 each recite a “portion of” a message. The
`
`Petitioner asserts that the term is limited to “only a portion.”
`
`The Patent Owner submits that the term a “portion of” a message should be
`
`construed to have its plain and ordinary meaning.
`
`D. Akiyama
`
`Akiyama is directed to a one-way mobile wireless data communication
`
`
`
`12
`
`

`
`
`system such as a display-type beeper, wherein data is retransmitted when received
`
`data is incorrect. Ex. 1003 at p. 1, right col., ll. 6-9.
`
`E. Gutman
`
`Gutman is directed to a paging system comprising a centrally located
`
`terminal and a plurality of remote pager units, wherein both automatic and manual
`
`acknowledge back signaling is provided. An acknowledge back signal by a caller
`
`pager within a set interval indicates the message was duly received and understood.
`
`Failure to respond within the set interval used causes the pager unit to send back a
`
`negative response, which is likewise so indicated to the initiating caller. Ex. 1013
`
`at Abstract.
`
`Since the Petitioner acknowledges, in Paper 1 at 37, 41, 44-45, that Akiyama
`
`discloses
`
`transmitting a request using a
`
`telephone
`
`line and acoustic or
`
`electromagnetic signals, instead of radio frequency signals, the Petitioner relies, in
`
`Paper 1 at 37, 41, 45, on Gutman for transmitting a request using radio frequency
`
`signals in a two-way paging system.
`
`In other words, Gutman is not relied on in the Petition as disclosing “a
`
`switch actuatable to specify a portion of the displayed message for which a user
`
`desires retransmission,” as recited in claims 1 and 7 and “receiving an indication of
`
`a portion of the displayed message for which a user desires retransmission,” as
`
`recited in claim 8 of the ‘946 Patent.
`
`
`
`13
`
`

`
`
`
`F.
`
`Zabarsky
`
`Zabarsky is directed to a communication system for carrying messages via a
`
`radio channel between one central site of a plurality of central sites and a plurality
`
`of two-way remote data units. Ex. 1005 at Abstract.
`
`G. Kuznicki
`
`Kuznicki is directed to a paging system using message fragmentation to
`
`redistribute traffic. Ex. 1006 at Abstract.
`
`IV. GROUND 1 – CLAIMS 1-2, 4, AND 7-9 ARE NOT OBVIOUS OVER
`AKIYAMA AND GUTMAN.
`
`A. Akiyama and Gutman do not render claims 1 and 7-8 obvious.
`
`Pursuant to the requirements for establishing a prima facie case of
`
`obviousness under 35 U.S.C. §103, all the claim limitations must be taught or
`
`suggested by the applied references. In re Royka, 490 F.2d 981 (CCPA 1974).
`
`“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.” Ex parte Frye, 94
`
`USPQ 2d 1072, 1076 (BPAI 2010) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`
`2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007).
`
`
`
`14
`
`

`
`
`
`Claim 1 is directed to a mobile unit, in a two-way wireless data
`
`communication system, for transmitting and receiving radio frequency signals to
`
`and from a communications network. Claim 7 is directed to a communications
`
`network, in a two-way wireless data communication system, for transmitting radio
`
`frequency signals to a mobile unit and for receiving radio frequency signals from
`
`the mobile unit. Claim 8 is directed to a method, in a two-way wireless data
`
`communication system, for receiving and transmitting messages at a mobile unit.
`
`Claims 1 and 7 both recite “a switch actuatable to specify a portion of the
`
`displayed message for which a user desires retransmission,” and claim 8 recites
`
`“receiving an indication of a portion of the displayed message for which a user
`
`desires retransmission.” As described above, this limitation of each of claims 1
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`and 7-8 is referred to as the “user specified or indicated portion limitation.”
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`The Patent Owner submits that Akiyama and Gutman, individually or in
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`combination, do not teach or suggest, at least, the “user specified or indicated
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`portion limitation” of claims 1 and 7-8. Because all the claim limitations must be
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`taught or suggested by the applied references for establishing a prima facie case of
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`obviousness under 35 U.S.C. §103, Akiyama in view of Gutman cannot render
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`these claims obvious. Further, the Patent Owner submits that Akiyama cannot be
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`combined with Gutman, because Akiyama explicitly
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`teaches away from
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`transmitting responses or retransmission requests over a two-way RF paging
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`system.
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`1.
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`Neither Akiyama nor Gutman teaches or suggests the
`“user specified or indicated portion limitation”
`The Petitioner’s argument regarding the “user specified or indicated portion
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`limitation” is quite brief. The Petitioner asserts that Akiyama and Gutman disclose
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`this limitation. Paper 1 at 42, 49, and 55. Then, without mentioning Gutman, the
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`Petitioner simply states that “Akiyama discloses the use of keys to manually
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`request retransmission from the network of only the frames in a display message
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`that have errors. Id. at 42-43 and 55. The Petitioner finds support for this
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`statement on page 3 and in Fig. 3 of the translation of Akiyama and in paragraph
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`103 of the declaration of Mr. Gayton (Ex. 1002), the Petitioner’s expert. Fig. 3 of
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`the translation of Akiyama and paragraph 103 of the declaration of Mr. Gayton are
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`shown below.
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`Fig. 3 of the translation of Akiyama
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`The Patent Owner submits that Fig. 3 of the translation of Akiyama, shown
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`above, does not teach or suggest specifying or providing an indication of a portion
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`of the displayed message that a user desires for retransmission, as recited in the
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`user specified or indicated portion limitation of claims 1 and 7-8 of the ‘946 Patent.
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`Paragraph 103 of the declaration of Mr. Gayton
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`The Patent Owner submits that paragraph 103 of the declaration of Mr.
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`Gayton also does not teach or suggest specifying or providing an indication of a
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`portion of the displayed message that a user desires for retransmission, as recited in
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`the user specified or indicated portion limitation of claims 1 and 7-8 of the ‘946
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`Patent. This paragraph 103 is simply a reiteration of the Petitioner’s assertion.
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`The Patent Owner notes that the Petitioner’s entire argument regarding the
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`user specified or indicated portion limitation is just two sentences, does not even
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`suggest specifying or indicating a portion of message, and does not even mention
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`anything about a user specifying or indicating the portion. The Patent Owner
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`submits that with such a defective argument there is surely no reasonable
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`likelihood the Petitioner can prevail with regard to Akiyama and Gutman.
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`The Patent Owner further submits that page 3 of the translation of Akiyama
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`also does not teach or suggest the user specified or indicated portion limitation of
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`claims 1 and 7-8 of the ‘946 Patent. Page 3 of the translation of Akiyama discloses
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`finding message frames with errors using error correction detection code, storing
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`message frames with errors in memory, and, via a wired telephone network,
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`transmitting the frame numbers of the message frames with errors, if a user desires
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`to receive correct data. Most simply, Akiyama does not teach or suggest specifying
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`or indicating a portion of a displayed message that the user desires to have
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`retransmitted. At best, Akiyama discloses automatically detecting portions of a
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`received message and allowing a user to request, via a different network, that those
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`automatically detected portions be retransmitted.
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`More specifically and in reference to Fig. 3, shown above, Akiyama
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`discloses that control section 302 corrects any errors using the error correction
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`detection code. Ex. 1003 at page 3, col. 1, ¶ 1. If there are errors, a symbol is
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`attached to an error frame indicating that there is an error, and this is similarly
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`stored in memory 303. Id. at page 3, col. 1, ¶ 2. Once all the frames in one data
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`number or message have been received, control section 302 emits a ring tone as
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`needed, and displays the data to display section 304. Id.
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`As a result, the Patent Owner submits that Akiyama discloses that control
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`section 302 automatically indicates errors in the frames.
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`Akiyama recites that “[i]f there are any frames that contain errors in the
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`display data, the fact that there is an error is also displayed. For the error display,
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`several methods are conceivable, including displaying everything including the
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`incorrect data, and causing the frames with incorrect data to blink, indicating
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`through writing or the like that there are incorrect frames without displaying the
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`data, and so on.” Id.
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`Note that Akiyama, therefore, explicitly discloses that error frames may be
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`indicated without displaying the data. The Patent Owner submits that this shows
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`that Akiyama is not directed to specifying or indicating the portion of the displayed
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`message that a user desires to be retransmitted.
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`Akiyama recites that when a “mobile terminal owner sees these displays and
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`if he or she desires to receive correct data, he or she goes to a nearby telephone “to
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`contact a telephone network and transmit the frame numbers of frames with errors
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`through the telephone network. Ex. 1003 at page 3, col. 1, ¶ 2.
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`The Patent Owner submits that this passage shows that in Akiyama a use