U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC CO.
`Petitioner,
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`v.
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`GROUPCHATTER, LLC,
`Patent Owner
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`Patent No. 8,199,740
`Issued: June 12, 2012
`Filed: June 6, 2011
`Inventors: James M. Dabbs, III et al.
`Titled: Method and apparatus for efficient and deterministic group alerting
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`Inter Partes Review No. IPR_________
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,199,740
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`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37 C.F.R. §
`I.
`42.22(A)) ......................................................................................................................................... 1
`II. MANDATORY NOTICES ................................................................................................... 1
`A.
`Real Parties-in-Interest .................................................................................................. 1
`B.
`Related Matters .............................................................................................................. 2
`C.
`Lead and back-up counsel ............................................................................................. 3
`D.
`Service Information........................................................................................................ 4
`III. CERTIFICATION OF GROUNDS FOR STANDING .................................................. 4
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED................................... 4
`V. OVERVIEW .......................................................................................................................... 5
`A.
`The ’740 Patent ............................................................................................................... 5
`(i)
`Summary of Alleged Invention of the ’740 Patent................................................... 5
`(ii) Effective Filing Date Of The Challenged Claims ..................................................... 7
`B.
`The Primary Prior Art References ............................................................................... 8
`(i) Gutman ........................................................................................................................ 8
`(ii) LaPorta ...................................................................................................................... 10
`(iii) Brabec ........................................................................................................................ 11
`VI. RELEVANT INFORMATION CONCERNING THE ’740 PATENT ....................... 12
`A.
`Person of Ordinary Skill in the Art ............................................................................ 12
`B.
`Construction of Terms Used in the Claims ................................................................ 12
`(i)
`“mobile device” means “a wireless device that can be in motion during normal
`use, such as a pager, cell phone, or wireless personal data assistants (PDA), or portable
`computer running WiFi” .................................................................................................... 13
`(ii)
`“responder device” means a “mobile device capable of responding” in this
`proceeding ............................................................................................................................ 14
`(iii) “recipient” means “a user who receives a message via a mobile device” ............ 16
`(iv) “alerting” means “notifying” in this proceeding ................................................... 16
`(v) Means-plus-function limitations .............................................................................. 17
`VII. SPECIFIC GROUNDS FOR PETITION ...................................................................... 19
`A. Gutman Anticipates Claims 1-5, 10-16, 20, and 21 ................................................... 19
`(i) Claim 1 ....................................................................................................................... 19
`(ii) Claim 11 ..................................................................................................................... 40
`(iii) Claims 2 and 12 ......................................................................................................... 47
`(iv) Claims 3 and 13 ......................................................................................................... 49
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`(v) Claims 4 and 14 ......................................................................................................... 50
`(vi) Claims 5 and 15 ......................................................................................................... 51
`(vii)
`Claims 10, 20, and 21 ............................................................................................ 51
`(viii) Claim 16 ................................................................................................................. 53
`B. Gutman In View Of The Knowledge Of A Person Of Ordinary Skill In The Art
`Renders Obvious Claims 1-5, 10-16, 20, and 21 ................................................................... 54
`C. Gutman In View Of LaPorta Renders Obvious Claims 1-5, 10-16, 20, and 21 ...... 56
`(i) A Person of Ordinary Skill Would Have Considered LaPorta in Conjunction
`With Gutman ....................................................................................................................... 57
`(i) Claims 1-5 and 11-16 ................................................................................................ 60
`(ii) Claims 10, 20, and 21 ................................................................................................ 60
`D. Gutman In View Of Brabec Renders Obvious Claims 1-5, 10-16, 20, and 21 ........ 62
`(i) A Person of Ordinary Skill Would Have Considered Brabec in Conjunction
`With Gutman ....................................................................................................................... 62
`(ii) Claims 1-5 and 11-16 ................................................................................................ 63
`(iii) Claims 10, 20, and 21 ................................................................................................ 64
`VIII. CONCLUSION ............................................................................................................. 65
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
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`EXHIBIT LIST
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
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`1014
`1015
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`1016
`1017
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`1018
`
`Description
`U.S. Patent No. 7,969,959 to Dabbs, III et al. (“the ’959 Patent”
`U.S. Patent No. 8,199,740 to Dabbs, III et al. (“the ’740 Patent”)
`U.S. Patent No. 9,014,659 to Dabbs, III et al. (“the ’659 Patent”)
`U.S. Patent No. 8,588,207 to Dabbs, III et al. (“the ’207 Patent”)
`U.S. Patent No. 5,748,100 to Gutman et al. (“Gutman”)
`U.S. Patent No. 5,918,158 to LaPorta et al. (“LaPorta”)
`U.S. Patent No. 7,409,428 to Brabec et al. (“Brabec”)
`U.S. Patent No. 5,644,568 to Ayerst et al. (“Ayerst”)
`Declaration of Bruce Deer
`Curriculum Vitae of Bruce Deer
`Patent Owner’s November 11, 2015 Complaint against Petitioner
`November 23, 2015 Service of Summons and Complaint
`Patent Owner’s August 12, 2016 First Amended Complaint
`against Petitioner
`U.S. Provisional App. No. 60/636,094 (“the ’094 Application”)
`Patent Owner’s July 20, 2016 Infringement Contentions against
`Petitioner in the GE Litigation
`Motorola Wireless Application Development Document
`ReFLEX Wireless Data Technology by USA Mobility
`(“ReFLEX Paper”)
`Patent Owner’s L.P.R. 6.2 Preliminary Claim Constructions in
`the GE Litigation
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`C.F.R. § 42.22(A))
`
`General Electric Co. (“Petitioner”) petitions for the institution of inter partes
`
`I.
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`
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`review of claims 1-5, 10-16, 20, and 21 (the “Challenged Claims”) of U.S. Patent
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`No. 8,199,740 to James M. Dabbs, III et al (“the ’740 Patent,” attached as Ex.
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`1002). USPTO records indicate that the ’740 Patent is assigned to GroupChatter,
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`LLC (“Patent Owner” or “P.O.”), which is currently asserting the ’740 Patent
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`against Petitioner in a concurrent litigation. See Ex. 1013.
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`II. MANDATORY NOTICES
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`A. Real Parties-in-Interest
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`In addition to General Electric Co., Patent Owner also asserted the ’740
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`Patent against GE Energy Management Services, LLC and GE Grid Solutions,
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`LLC.
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`Petitioner identifies General Electric Co. (Petitioner), General Electric
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`International, Inc., Alstom SA, New Alstom Holdings BV, Grid Alliance US
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`Holdings, Inc., Grid Solutions (U.S.) LLC (“Grid Solutions,” which is a joint
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`venture between GE and Alstom SA), and Grid Solutions’ subsidiaries GE Energy
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`Management Services, LLC, GE Grid Solutions, LLC, and Alstom Grid LLC as
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`the real parties-in-interest.
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`Pursuant to vendor agreements, Petitioner has sent indemnification requests
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`to the following entities: On-Ramp Wireless, Inc., Silver Spring Networks, Inc.,
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`-1-
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`Badger Meter, Inc., National Information Solutions Cooperative, Inc., Consert Inc.,
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`Ecologic Analytics, LLC, Trilliant Networks, Inc., and Aclara Technologies LLC.
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`Petitioner is informed that Consert Inc. and Ecologic Analytics, LLC are controlled
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`by Landis+Gyr. None of these entities has agreed to indemnify Petitioner, nor has
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`any of these entities funded or exercised any control over this IPR proceeding.
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`B. Related Matters
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`Patent Owner sued Petitioner in the U.S. District Court for the Eastern
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`District of Texas, alleging infringement of the ’740 Patent (Ex. 1002). See Ex.
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`1011. Patent Owner also alleged infringement of U.S. Patent Nos. 7,969,959 to
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`Dabbs, III et al. (“the ’959 Patent”) (Ex. 1001), 9,014,659 to Dabbs, III et al. (“the
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`’659 Patent”) (Ex. 1003), and 8,588,207 to Dabbs, III et al. (“the ’207 Patent”) (Ex.
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`1004). Id. Petitioner and the other GE defendants (GE Energy Management
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`Services, LLC and GE Grid Solutions, LLC) were served with the complaint on
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`November 23, 2015. Ex. 1012. That case, styled as GroupChatter LLC v. General
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`Electric Company et al, E.D. Tex., No. 6:15-cv-00975-RWS, was transferred to the
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`U.S. District Court for the Northern District of Georgia, where it is currently
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`pending as N.D. Ga., No. 1:16cv00486-WSD. See Ex. 1013.
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`The ’740 Patent also is presently the subject of a series of patent
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`infringement lawsuits brought by Patent Owner, each of which may affect, or be
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`affected by, a decision in this proceeding:
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`1.
`GroupChatter, LLC v. Rakuten, Inc. et al, N.D. Ga., No. 1:16-cv-
`03567-WSD
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`2.
`GroupChatter, LLC v. Line Corporation et al, N.D. Ga., No. 1:16-cv-
`03701-WSD
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`3.
`GroupChatter, LLC v. Aclara Technologies LLC et al, N.D. Ga., No.
`1:16-cv-04231-WSD
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`
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`The ’740 is a continuation of the ’959 Patent. The ’659 Patent is a
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`continuation of the ’207 Patent, which is a continuation of the ’740 Patent. As
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`such, the ’740 Patent, ’959 Patent, ’207 Patent, and ’659 Patent are in the same
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`patent family and each claim priority to the same priority application. Petitioner
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`has filed concurrently herewith three other Petitions for Inter Partes Review of the
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`’959 Patent, ’207 Patent, and ’659 Patent, respectively.1
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`C. Lead and back-up counsel
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`Back-Up Counsel
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`Designation of Lead Counsel
`(37 C.F.R. § 42.8(b)(3))
`Marc S. Kaufman (Reg. #35,212)
`mskaufman@reedsmith.com
`REED SMITH, LLP
`1301 K Street, NW
`East Tower – Suite 1000
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`1 This Petition is supported by the declaration of Bruce Deer (Ex. 1009). All
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`David Pollock (Reg. #48,977)
`dpollock@reedsmith.com
`Jonathan I. Detrixhe (Reg. #68,556)
`jdetrixhe@reedsmith.com
`REED SMITH, LLP
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`exhibits submitted herewith, including Deer’s declaration (Ex. 1009), are identical
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`to the exhibits Petitioner submits in connection with Petitioner’s other three
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`petitions. Petitioner believes having a common exhibit list serves the convenience
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`of the Board.
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`Washington, DC 20005
`Tel: 202.414.9249 Fax: 202.414.9299
`
`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415-543-8700 Fax: 415 391 8269
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`D.
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`Service Information
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`Please direct all correspondence to lead and back-up counsel at the above
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`addresses.
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`III.
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`CERTIFICATION OF GROUNDS FOR STANDING
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`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
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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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`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
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`
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`The Challenged Claims are unpatentable as being anticipated under 35
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`U.S.C. § 102(b) and/or for being obvious under 35 U.S.C. § 103. Specifically:
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`A. GROUND 1: Claims 1-5, 10-16, 20, and 21 are anticipated
`under § 102(b) by U.S. Patent No. 5,748,100 to Gutman et al.
`(“Gutman”) (Ex. 1005)
`B. GROUND 2: Claims 1-5, 10-16, 20, and 21 are obvious
`under § 103(a) over Gutman in view of the knowledge of a
`person of ordinary skill in the art
`C. GROUND 3: Claims 1-5, 10-16, 20, and 21 are obvious
`under § 103(a) over Gutman in view of U.S. Patent No.
`5,918,158 to LaPorta et al. (“LaPorta”) (Ex. 1006)
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`D. GROUND 4: Claims 1-5, 10-16, 20, and 21 are obvious under §
`103(a) over Gutman in view of U.S. Patent No. 7,409,428 to Brabec
`et al. (“Brabec”) (Ex. 1007)
`V. OVERVIEW
`
`A. The ’740 Patent
`
`(i)
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`Summary of Alleged Invention of the ’740 Patent
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`
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`The ’740 Patent generally relates to a group paging protocol that provides
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`acknowledgment data. Ex. 1002 at Abstract; Ex. 1009 ¶ 40. For example, the ’740
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`Patent is directed to “wireless group alerting in a system having a database, switch,
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`wireless network, and a plurality of intelligent mobile receivers, and preferably
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`employing a modified two-way paging based on ReFLEXTM protocol
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`information service (IS) messages and a novel ALOHA command for multicast
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`acknowledgement from mobile receivers.” Ex. 1002 at Abstract (emphasis
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`added).
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`
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`ReFlex is a two-way paging communication protocol developed by Motorola
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`in the late 1990s. Ex. 1016; Ex. 1009 ¶ 41. “Two-way” paging means that
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`the protocol allows a pager to receive and send messages, either in response to a
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`message it receives or to originate messages. Id. In contrast, a “one-way” paging
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`protocol permits a pager only to receive messages. Id. In the ReFlex protocol,
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`each pager is assigned a unique individual address that identifies it, which allows a
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`pager to receive a message sent directly to it. Id. Each pager may also be a
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`member of one or more group addresses, which allows the pager to receive
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`messages sent to one of its group addresses. Id. The ReFlex protocol includes a
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`“multicast” message that is a single message broadcasted to all members of the
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`group using a single group address. Id. For example, a pager receiving the
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`multicast message checks its address memory to see whether one of its addresses
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`matches the group address of the multicast message, and, if so, decodes the
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`message. Id.
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`For standard two-way messaging to a pager’s unique individual address, the
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`ReFlex protocol includes an “acknowledgement” feature. Id. ¶ 42. The
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`acknowledgment feature confirms to the paging system that the pager received the
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`message. Id. There are many reasons why a pager may fail to receive a message,
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`including the pager being located in a building with interference or the pager
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`simply being powered off. Id. A pager sending an acknowledgement, also
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`referred to as an acknowledge-back response, or ack-back, is a helpful feature that
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`lets the paging system know that it does not need to retransmit the message. Id.
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`The original ReFlex protocol did not include the acknowledgement feature
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`in connection with a multicast group message. Ex. 1009 ¶ 43. For example, the
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`’740 Patent asserts that “ReFLEX does not support any response or
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`acknowledgement from the recipient group.” Ex. 1002 at 16:32-33. The ’740
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`Patent regards as its invention a modified version of the ReFlex protocol that
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`simply adds acknowledgement to multicast message. The ’740 Patent adds such an
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`acknowledgment, which it regards as “novel,” explaining that it “employ[s] a
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`modified two-way paging based on ReFLEXTM protocol information service
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`(IS) messages and a novel ALOHA command for multicast acknowledgement
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`from mobile receivers.” Ex. 1002 at Abstract (emphasis added). See also id. at
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`5:52-56 (“The present invention, however, adds message acknowledgement,
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`message read notification, and multiple-choice response capability to IS messages,
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`creating an infrastructure for reliable multicast messaging within the ReFLEXTM
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`protocol.”). The ’740 Patent, recognizing the reliability of paging communications
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`over other forms of communication, envisions a use case in which a group message
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`is sent to first responders to a public safety emergency, and acknowledgement data
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`is used to track which of the first responders received the message. Id. at 1:13-
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`2:59. However, as shown below, at the time of the ’740 Patent, it was well known
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`to incorporate acknowledgment responses into multicast group pages based on the
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`ReFlex protocol. Ex. 1009 ¶ 43.
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`(ii) Effective Filing Date Of The Challenged Claims
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`
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`The ’740 Patent claims the benefit of priority to U.S. Provisional App. No.
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`60/636,094 (“the ’094 Application”) (Ex. 1014). Accordingly, the December 16,
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`2004 filing date of the ’094 Application is the earliest filing date to which the
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`Challenged Claims could be entitled, provided that the Challenged Claims are
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`disclosed in the ’094 Application in the manner required by 35 U.S.C. § 112, ¶ 1.
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`See, e.g., SAP America, Inc. v. Pi-Net Int’l, Inc., IPR No. 2014-00414, Paper No.
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`11 at 11-14 (P.T.A.B. August 18, 2014) (relying on § 112 case law is proper in an
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`inter partes review to establish effective filing date).
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`In its infringement contentions against Petitioner in the GE Litigation, Patent
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`Owner contended that the Challenged Claims “are entitled to a date of invention
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`between June and August 2004.” Ex. 1015 at 9. Accordingly, provided that Patent
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`Owner could meet its burden of proof to establish such a date of invention, the
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`Challenged Claims cannot be entitled to a date of invention any earlier than June
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`2004.
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`B.
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`The Primary Prior Art References
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`(i) Gutman
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`
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`Gutman issued on May 5, 1998. Ex. 1005 at 1. Accordingly, Gutman is prior
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`art at least under 35 U.S.C. § 102(b) (pre-AIA) because Gutman pre-dates by more
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`than one year the effective filing date of the Challenged Claims, which can claim
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`priority no earlier than December 16, 2004, as explained in V.A.ii.
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`Like the ’740 Patent, Gutman is directed to modified two-way paging based
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`on the ReFlex protocol with multicast acknowledgement for group messaging. For
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`example, Gutman recognizes that “the ReFlexTM protocol of Motorola, Inc., of
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`Schaumburg, Ill. allows selective call systems to handle two-way communication,
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`e.g., acknowledge-back (ack-back) messaging, with portable transceivers, such as
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`with the Motorola TangoTM personal messaging unit (PMU), or pager.” Ex. 1005
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`at 1:18-22. Gutman explains that “[a] confirmation wireless message, e.g., an ack-
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`back response message, sent from the portable unit back to the central system in
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`response to having received a wireless message therefrom provides an affirmative
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`confirmation back to the central system that the wireless message was reliably
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`delivered and received by the portable unit,” which “can significantly enhance the
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`reliability of communication in a selective call system.” Id. at 1:31-41. In addition,
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`Gutman, in its Background, appreciates that it was well known to use
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`acknowledge-back responses in connection with a multicast group page. Id. at
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`2:40-34 (“the central system may transmit a multi-recipient ack-back wireless
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`message (a group page) destined for a large group of recipient portable units.”)
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`
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`Gutman also is directed to the same general problem that the ’740 Patent
`
`attempted to solve—increasing the reliability of communications and confirming
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`receipt of messages when communicating to a group. For example, Gutman
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`appreciates that if a group is large, and each pager in the group immediately
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`transmits its acknowledge-back response, “[t]he large number of ack-back
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`response messages that the selective call system would have to handle over a
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`relatively short amount of time could severely reduce, if not totally bottleneck, the
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`wireless messaging throughput of the selective call system.” Id. at 2:51-55.
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`Gutman provides a technical solution to this problem that permits reliable and
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`confirmed delivery of a group page to its members. Id. at 2:62-67; Ex. 1009 ¶¶ 73-
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`74.
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`
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`(ii) LaPorta
`LaPorta issued on June 29, 1999. Ex. 1006 at 1. Accordingly, LaPorta is
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`prior art at least under 35 U.S.C. § 102(b) (pre-AIA) because LaPorta pre-dates by
`
`more than one year the effective filing date of the Challenged Claims, which can
`
`claim priority no earlier than December 16, 2004, as explained in V.A.ii.
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`
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`Like the ’740 Patent, LaPorta is directed to a two-way paging protocol
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`with multicast acknowledgement for group messaging. Ex. 1009 ¶ 76. For
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`example, LaPorta “improves on traditional paging” and “relates to a two-way
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`wireless messaging system and method using a messaging network and two-way
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`wireless messaging device that originates, receives and replies to messages having
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`dynamically customizable message components to and from the messaging
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`network.” Ex. 1006 at 1:10-15, 1:47. LaPorta explains that it supports multicast
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`group messages. Id. at 2:35-36 (“The two-way messaging system of the present
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`invention also can support multicasting.”); id. at 2:37-40 (“The address alias
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`contained in a coded message can correspond to a single address, a group address
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`or any combination of the two.”) In addition, LaPorta supports acknowledgments
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`and replies with multicast group messages. Id. at 2:43-44 (“In another aspect of
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`the present invention, the system can track and answer queries about
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`transactions.”); id. at 2:50-52 (“When combined with multicast, a transaction can
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`specify the desired semantics of the reply.”)
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`(iii) Brabec
`Brabec was filed on April 22, 2004 and issued on August 5, 2008. Ex. 1007
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`
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`at 1. Accordingly, Brabec is prior art at least under 35 U.S.C. § 102(e) (pre-AIA)
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`because Brabec’s April 22, 2004 filing date pre dates the earliest invention date
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`P.O. has claimed for the ’740 Patent—June 2004, as explained in V.A.ii, and
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`Brabec issued as a U.S. patent.
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`
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`Like the ’740 Patent, Brabec is directed to providing acknowledged group-
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`messaging with improved reliability. Ex. 1009 ¶ 78; Ex. 1007 at Abstract; see also
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`id. at 2:65-67 (“overall strategy to place vital information quickly and reliably to
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`many recipients.”). Like the ’740 Patent, Brabec may provide such
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`communications using paging systems. Id. at 3:14-15 (“Embodiments may also
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`include message delivery using pager systems.”). Brabec is specifically directed to
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`using such systems to increase the reliability of communications when
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`communicating with first responders to a public safety event. Id. at 1:31-41 (“In
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`responding to emergency situations, the need for particular information relating to
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`the emergency is sorely acute . . . . (e.g., ‘first responders’ such as police, fire and
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`rescue, emergency medical personnel).”); id. at 1:42-46 (“Fast and reliable
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`dissemination of emergency information to emergency response personnel is
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`necessary . . . .”)
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`VI. RELEVANT INFORMATION CONCERNING THE ’740 PATENT
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`A.
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`Person of Ordinary Skill in the Art
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`A person of ordinary skill in the art for the ’740 Patent is someone with a
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`significant working knowledge of paging communication protocols, including the
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`Motorola ReFlex protocol. Ex. 1009 ¶ 46. For example, the ’740 Patent assumes
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`familiarity with the ReFlex protocol. Ex. 1002 at 4:12-19 (“the present invention .
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`. . employs a modified two-way paging protocol based on group messaging
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`capability of the Motorola ReFLEXTM protocol”); id. at 4:41-45 (“system …
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`utilizes a modified version of a protocol called ReFLEXTM ); id. at 4:50-54
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`(“communicate with two-way pagers on a … ReFLEXTM network.”); id. at 5:22-25
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`(“The present invention … creat[es] an infrastructure for reliable multicast
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`messaging within the ReFLEXTM protocol.”) Such a person would have had an
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`M.S. degree in electrical engineering with experience in paging communication
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`protocols or a B.S. degree in electrical engineering with significant (3-5 years)
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`work experience in in paging communication protocols. Ex. 1009 ¶ 46.
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`B. Construction of Terms Used in the Claims
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`In this proceeding, claims must be given their broadest reasonable
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`construction in light of the specification. 37 CFR § 42.100(b). The broadest
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`reasonable construction should be determined, in part, by taking into account the
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`subject matter Patent Owner contends infringes the claims and the constructions
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`Patent Owner has advanced in litigation. Also, if Patent Owner contends terms in
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`the claims should be read to have a special meaning, those contentions should be
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`disregarded unless Patent Owner also amends the claims compliant with 35 U.S.C.
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`§ 112 to make them expressly correspond to those contentions. See 77 Fed. Reg.
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`48764 at II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed.
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`Cir. 2012). In the proposed constructions below, Petitioner identifies subject
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`matter which falls within the scope of the claims, read in their broadest reasonable
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`construction, which Petitioner submits is sufficient for the purposes of this
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`proceeding.
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`(i)
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`“mobile device” means “a wireless device that can be in
`motion during normal use, such as a pager, cell phone, or
`wireless personal data assistants (PDA), or portable
`computer running WiFi”
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`The method of Claim 1 is directed to wirelessly transmitting data to and
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`from a “mobile device” and storing data therein. Ex. 1002 at cl. 1. For example,
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`claim 1 recites a “method of alerting a group of recipients over a wireless network .
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`. . each recipient comprising at least one mobile device capable of transmitting and
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`receiving data,” “providing the mobile device . . . data,” “data being stored in the
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`mobile device,” “each of the mobile devices being configured to receive [a]
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`broadcast group message,” and “a response sent by the mobile device.” Id.
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`Under its plain and ordinary meaning, a “mobile device” is intended to be
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`mobile during use. Ex. 1009 ¶ 53. In addition, the ’740 specification refers to
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`devices that perform the functions of the claimed mobile devices as “subscriber
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`devices” or “Receivers” and indicates that they may be devices “such as pagers,
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`cell phones, or wireless personal data assistants (PDAs), or portable computer
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`running WiFi.” Ex. 1002 at 5:57-65. In addition, the specification interchangeably
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`uses the terms “mobile device 16” and “pager 16.” Id. at 12:23, 15:59-60.
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`Therefore, applying the broadest reasonable interpretation, “mobile device” at least
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`encompasses pagers, and also encompasses cell phones, wireless personal data
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`assistants (PDAs), or portable computer running WiFi, or other wireless
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`communications devices that are intended to be mobile during use. Accordingly,
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`applying the broadest reasonable interpretation, “mobile device” means “a wireless
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`device that can be in motion during normal use, such as a pager, cell phone, or
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`wireless personal data assistants (PDA), or portable computer running WiFi.” Ex.
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`1009 ¶ 53.
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`(ii)
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`“responder device” means a “mobile device capable of
`responding” in this proceeding
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`The system of Claim 11 includes a “responder device” that transmits,
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`receives, and stores information. Ex. 1002 at cl. 11. For example, claim 11 recites
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`“stor[ing] a device-specific identifying address for each of a plurality of responder
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`devices,” “each of the responder devices being configured to receive [a] broadcast
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`group message,” and “a response sent by the responder device.” Id.
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`In the GE Litigation, applying the Phillips standard, GE has proposed that
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`“responder device” means “mobile device used by a first responder.” In particular,
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`the ’740 Patent uses the term “responder” throughout the specification in the
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`context of a mobile device used by a first responder of an emergency or other
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`public safety event. For example, the ’740 specification discloses that “[t]he ability
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`to alert and mobilize first responders is central to the readiness of any public
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`safety agency.” Ex. 1002 at 1:11-14 (emphasis added).
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`However, in the general context of paging systems that employ the ReFlex
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`protocol, “responder device” could more broadly mean a mobile device capable of
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`responding. Ex. 1009 ¶ 56. The claimed functions of the “responder device” of
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`claim 11 are the same as those of the “mobile device” of claim 1, and the ’740
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`specification refers to devices that perform those functions as “subscriber devices”
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`or “Receivers.” The ’740 specification further indicates that these devices may be
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`“pagers, cell phones, or wireless personal data assistants (PDAs), or portable
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`computer running WiFi.” Ex. 1002 at 5:65-6:4. In addition, the specification
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`interchangeably uses the terms “mobile device 16” and “pager 16.” Id. at 12:45-46,
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`16:15-17. Therefore, applying the broadest reasonable interpretation, “responder
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`device” encompasses at least pagers, and also encompasses cell phones, wireless
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`U.S. PATENT 8,199,740
`Petition for Inter Partes Review
`personal data assistants (PDAs), or portable computer running WiFi, or other
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`mobile communications devices capable of responding. Accordingly, applying the
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`broadest reasonable interpretation, “responder device” means a “mobile device
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`capable of responding” in this proceeding.
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`(iii) “recipient” means “a user who receives a message via a
`mobile device”
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`Claim 1 is directed to a “method of alerting a group of recipients over a
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`wireless network.” Ex. 1002 at cl. 1. The term recipient includes at least the
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`mobile device. Id. at cl. 1 (“each recipient comprising a mobile device capable
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`of transmitting and receiving data”) (emphasis added); see also Ex. 1009 ¶ 57. The
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`term recipient also includes the human user of the mobile device who receives a
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`message. For example, dependent claim 7 recites “an alphanumeric text reply
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`entered by the recipient via the mobile device.” Ex. 1002 at cl. 7 (emphasis
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`added). A person of ordinary skill understands that this claim requires that the
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`recipient be a human user to enter an alphanumeric text reply. Ex. 1009 ¶ 57.
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`Accordingly, applying the broadest reasonable interpretation, “recipient” means “a
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`user who receives a message via a mobile device.”
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`(iv)