IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`In re Patent of: Pinter
`U.S. Pat. No.: 5,894,506
`Issue Date:
`Apr. 13, 1999
`Appl. Serial No.: 08/708,696
`Filing Date:
`Sep. 5, 1996
`Title:
`METHOD AND APPARATUS FOR GENERATING AND
`COMMUNICATING MESSAGES BETWEEN SUBSCRIBERS
`TO AN ELECTRONIC MESSAGING NETWORK
`
`Attorney Docket No.: 19473-0348IP1
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,894,506
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`
`
`
`
`In re Patent of: Pinter
`U.S. Pat. No.: 5,894,506
`Issue Date:
`Apr. 13, 1999
`Appl. Serial No.: 08/708,696
`Filing Date:
`Sep. 5, 1996
`Title:
`METHOD AND APPARATUS FOR GENERATING AND
`COMMUNICATING MESSAGES BETWEEN SUBSCRIBERS
`TO AN ELECTRONIC MESSAGING NETWORK
`
`Attorney Docket No.: 19473-0348IP1
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,894,506
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8 ................................. 2
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 2
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 2
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 3
`D. Service Information .................................................................................. 3
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................ 3
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................... 4
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 4
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............ 4
`SUMMARY OF THE ’506 PATENT .......................................................... 8
`V.
`VI. Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ................................ 8
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ’506 PATENT IS UNPATENTABLE ............... 13
`A. Ground 1: Claims 1-7, 15-17 are Obvious under § 103 over
`LaPorta in view of Ise and Tett ............................................................. 13
`B. Ground 2: Claim 18 is Obvious under § 103 over LaPorta in
`view of Ise, Tett, and Will ...................................................................... 59
`VIII. CONCLUSION ............................................................................................ 73
`
`
`
`
`
`i
`
`
`
`EXHIBITS
`
`GOOGLE1001 U.S. Pat. No. 5,894,506 to Pinter (“the ’506 patent”)
`
`GOOGLE1002
`
`Prosecution History of the ’506 patent (Serial No. 08/708,696)
`
`GOOGLE1003 Declaration of Peter Rysavy
`
`GOOGLE1004 U.S. Patent No. 5,970,122 to LaPorta et al. (“LaPorta”)
`
`GOOGLE1005 U.S. Patent No. 5,257,307 to Ise (“Ise”)
`
`GOOGLE1006 U.S. Patent No. 5,635,918 to Tett (“Tett”)
`
`GOOGLE1007 U.S. Patent No. 5,588,009 to Will (“Will”)
`
`GOOGLE1008
`
`Claim Construction Order in Mobile Telecommunications
`Technologies, LLC, v. Google, Inc., Case No. 2:16-cv-00002
`(E.D. Tex)
`
`GOOGLE1009
`
`Complaint in Mobile Telecommunications Technologies, LLC,
`v. Google, Inc., Case No. 2:15-cv-2123 (E.D. Tex)
`
`GOOGLE1010
`
`Corrected complaint in Mobile Telecommunications Technolo-
`gies, LLC, v. Google, Inc., Case No. 2:16-cv-00002 (E.D. Tex)
`
`GOOGLE1011 MTEL’s Opening Claim Construction Brief in Mobile Tele-
`communications Technologies, LLC, v. Google, Inc., Case No.
`2:16-cv-0002 (E.D. Tex)
`
`GOOGLE1012
`
`RESERVED
`
`GOOGLE1013
`
`RESERVED
`
`ii
`
`
`
`GOOGLE1014 April 2014 Deposition of Mr. Gregory Pinter in Mobile Tele-
`communications Technologies, LLC v. Sprint Nextel Corpora-
`tion, Civil Action No. 2:12-cv-832-JRG-RSP, U.S.D.C. for the
`Eastern District of Texas (IPR2014-01033 & 01034 Exhibit
`2000)
`
`GOOGLE1015
`
`Sheth Memo dated February 17, 1995 (IPR2014-01033 &
`01034 Exhibit 2001)
`
`GOOGLE1016 Huller Memo dated February 23, 1995 (IPR2014-01033 &
`01034 Exhibit 2002)
`
`GOOGLE1017
`
`1995 Functional Requirements dated March 13, 1995
`(IPR2014-01033 & 01034 Exhibit 2003)
`
`GOOGLE1018
`
`The WSJ article dated September 19, 1995 (IPR2014-01033 &
`01034 Exhibit 2004)
`
`GOOGLE1019 USA Today article dated September 19, 1995 (IPR2014-01033
`& 01034 Exhibit 2005)
`
`iii
`
`
`
`I.
`
`INTRODUCTION
`Google Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) of
`
`claims 1-7 and 15-18 of U.S. Patent 5,894,506 (“the ’506 patent”). The ’506 pa-
`
`tent describes a communications system in which a person selects a “canned mes-
`
`sage” at a first user device followed by transmission of a message code for the se-
`
`lected message being transmitted to a receiving device, which then displays the
`
`message associated with the message code. GOOGLE1001, 1:50-67.
`
`The claimed system, however, was not new by September 1996. Indeed, as
`
`evidenced by the publications here, transmission of canned messages between pag-
`
`ers and other communication devices through use of canned message codes was
`
`predictable and routine in similar prior art systems. GOOGLE1004, 1:62-2:4
`
`(“Each such message is coded in a predetermined manner and includes, among
`
`other things, a message number that uniquely identifies a message”);
`
`GOOGLE1005, 9:62-66 (“message code corresponding to the desired message
`
`from the message table”); 10:26-29; 6:13-23 (“converting the message code . . . to
`
`a predetermined message information); GOOGLE1007 27:56-58 (“preprogrammed
`
`original messages”); 13:8-13; 21:10-12 (“the text is obtained by using a code.”).
`
`LaPorta, Ise, and the other references cited herein were not considered dur-
`
`ing prosecution and disclose all of the elements of the claimed system. Petitioner
`
`therefore requests IPR of the challenged claims.
`
`1
`
`
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Google Inc. is the Petitioner and the real party-in-interest. No other party
`
`had access to the Petition, and no other party had any control over, or contributed
`
`to any funding of, the preparation or filing of the present Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Patent Owner filed a first complaint on December 31, 2015 in the Eastern
`
`District of Texas alleging that Petitioner infringes the ’506 patent.
`
`GOOGLE1009. Patent Owner’s first complaint included errors, and a second
`
`complaint (allegedly correcting the errors) was filed on January 4, 2016.
`
`GOOGLE1010. Patent Owner never served the first complaint, and served only
`
`the second complaint on Google Inc. on January 5, 2016.
`
`Near the same time, Patent Owner also filed a complaint in the Eastern Dis-
`
`trict of Texas alleging infringement of the ’506 patent by Microsoft (Case No.
`
`2:15-cv-2122), Time Warner (Case No. 2:16-cv-0007); Bright House Networks
`
`(Case No. 2:16-cv-0008); Charter Communications (Case No. 2:16-cv-0009); Cox
`
`Communications (Case No. 2:16-cv-00010); Aruba Networks (Case No. 2:16-cv-
`
`00012); Brocade Communications Systems (Case No. 2:16-cv-00013); and Juniper
`
`Networks (Case No. 2:16-cv-00014). Further, Patent Owner previously filed com-
`
`plaints alleging infringement of the ’506 patent by other parties, such as Apple,
`
`Amazon, Samsung, and LG in the Eastern District of Texas alleging infringement
`
`2
`
`
`
`of multiple patents including inter alia the ’506 patent (e.g., Case Nos. 2:13-CV-
`
`258-JRG-RSP; 2:13-CV-883-JRG-RSP; 2:13-CV-259-JRG-RSP; and 2:13-CV-
`
`947-JRG-RSP).
`
`Petitioner is filing concurrently an IPR petition challenging claims 1-7 and
`
`15-18 of the ’506 patent based on different and non-redundant grounds and two
`
`IPR petitions challenging other claims (claims 8-14 and 19-21) of the ’506 patent.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Michael T. Hawkins, Reg. No. 57,867
`
`Patrick J. Bisenius, Reg. No. 63,893
`
`3200 RBC Plaza, 60 South Sixth Street
`
`Tel: 612-776-2048
`
`Minneapolis, MN 55402
`
`Nicholas Stephens, Reg. No. 74,320
`
`Tel: 612-337-2569 / Fax 612-288-9696
`
`Tel: 612-776-2018
`
`D. Service Information
`Please address all correspondence to the address above. Petitioner consents
`
`to electronic service by email at IPR19473-0348IP1@fr.com (referencing No.
`
`19473-0348IP1 and cc’ing PTABInbound@fr.com, hawkins@fr.com,
`
`bisenius@fr.com, and nstephens@fr.com).
`
`III. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Petitioner authorizes the Office to charge Deposit Account No. 06-1050 for
`
`3
`
`
`
`the petition fee set in 37 C.F.R. § 42.15(a) and for any other required fees.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’506 patent is available for IPR and Petitioner is
`
`not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of claims 1-7 and 15-18 of the ’506 patent on the
`
`grounds listed below. A declaration from Mr. Peter Rysavy (GOOGLE1003) is
`
`also included in support of this Petition.
`
`Ground Claims
`
`Basis for Rejection
`
`Ground
`
`1-7,
`
`1
`
`15-17
`
`Ground
`
`2
`
`18
`
`Obvious under § 103 based upon U.S. Pat. 5,970,122
`
`(“LaPorta”) in view of U.S. Pat. 5,257,307 (“Ise”) and U.S.
`
`Pat. 5,635,918 (“Tett”)
`
`Obvious under § 103 based upon LaPorta in view of Ise,
`
`Tett, and U.S. Pat. 5,588,009 (“Will”)
`
`LaPorta, Tett, and Will qualify as prior art under at least 35 U.S.C. § 102(e)
`
`as patents for which the applications were filed before the earliest possible priority
`
`date of the ’506 patent. Ise qualifies as prior art under 35 U.S.C. § 102(b) as a pa-
`
`tent issued more than a year before the earliest possible priority date of the ’506
`
`patent. None of these references were considered during prosecution.
`
`4
`
`
`
`LaPorta and Will were cited in unrelated IPR petitions against the ’506 pa-
`
`tent (See IPR2014-01033 (institution denied), IPR2014-01034(instituted on one but
`
`not all challenged claims)), but those earlier petitions (1) challenged a different
`
`grouping of claims than the claims challenged here; (2) were based on different
`
`combinations of references than those presented here; (3) were based on different
`
`claim constructions and a different claim construction standard; and (4) were filed
`
`by an unrelated petitioner (Apple Inc.) that subsequently agreed with Patent Owner
`
`to terminate the IPR proceedings.1 For example, the Ise reference relied on herein
`
`
`1 Patent Owner asserted in these earlier (and now terminated) IPRs that certain
`
`claims of the ’506 patent were entitled to an earlier invention date. The evidence
`
`here, however, shows that the “alleged conception documents” (GOOGLE1014-
`
`1019) do not confirm the inventor possessed all elements in each of claims 1 and
`
`15. GOOGLE1003 at ¶¶31-34. For example, the alleged conception documents
`
`provide general statements that a “[s]ubscriber can send any of these special
`
`canned message [sic] to NOC” and that “[t]o save airtime a token message
`
`identifier (special character and a number) is broadcast,” (GOOGLE1015 at 1;
`
`GOOGLE1017 at 42). Not only do these general statements merely list features
`
`already known in the prior art (described below), but these alleged conception
`
`documents plainly lack any description/corroboration of using this “token message
`
`
`
`5
`
`
`
`was not cited in either of the previous petitions filed by Apple. The Petitioner here
`
`relies on Ise’s disclosures relating to elements of each of the independent claims
`
`and certain dependent claims. The current petition also relies on testimony evi-
`
`dence from Mr. Rysavy that was not present in the previous petitions in which Mr.
`
`Rysavy explains the understanding that a POSITA would have had based on the
`
`teachings of the cited references as well as detailed analysis of reasons that a
`
`POSITA would have been motivated to apply the suggestions of Ise, Tett, and Will
`
`
`identifier” to retrieve a canned message “from the first file using the [received]
`
`message code” (required by claim elements [1.5] and [15.3]) or of “determining
`
`whether the second terminal can receive the canned message in text form or
`
`message code form” and then communicating the message “in either message code
`
`form or text code form in response to the determination” (required by claim
`
`elements [1.6]-[1.7] and [15.4]-[15.5]). GOOGLE1003 at ¶32; see also
`
`GOOGLE1015; GOOGLE1016; GOOGLE1017 at 4-5; 42-43. The evidence also
`
`shows that the inventor testified that “at the launch, I don’t believe we had full text
`
`messaging, replies and sending, from the pager.” GOOGLE1014 at 32:11-14. The
`
`alleged conception documents also fail to show conception of numerous other
`
`features of claims 1-7 and 15-18, so it follows that requisite evidence of
`
`diligence/reduction to practice is lacking even more. GOOGLE1003 at ¶¶31-34.
`
`6
`
`
`
`to the system described by LaPorta.
`
`This petition is also not redundant with the concurrently filed petition chal-
`
`lenging claims 1-7 and 15-18 (IPR2017-00533). The primary references of these
`
`two petitions (LaPorta and Will) describe different communications systems hav-
`
`ing different features and address the claims in different ways. For example,
`
`LaPorta discloses a communication system covering a wide area (see
`
`GOOGLE1004 at FIG. 4) while Will is directed toward a communications system
`
`for a smaller area, such as an office environment (GOOGLE1007 at 1:42-50; 4:23-
`
`31). Further, the combination of references in the two petitions use the primary
`
`and secondary references to address the claim elements in different ways. For ex-
`
`ample, this petition relies on the LaPorta reference to address claim elements di-
`
`rected toward updating message tables and adding parameters to canned messages
`
`while the other petition directed toward claims 1-7 and 15-18 relies on U.S.
`
`5,850,594 to Cannon for disclosures related to updating messaging tables and EP
`
`89108853 to Shimura for disclosures relating to adding non-response option pa-
`
`rameters to canned messages conveyed in message code form. The two petitions
`
`also address distinct motivations for combining the cited references as would have
`
`been recognized by a POSITA. Numerous other distinctions between the two peti-
`
`tions and the application of the different prior art reference combinations to the
`
`challenged claims will become readily apparent upon review of the petitions and
`
`7
`
`
`
`the unique analyses included therein.
`
`V.
`
`SUMMARY OF THE ’506 PATENT
`The ’506 patent describes “a method of communicating messages between
`
`subscribers of an electronic messaging network” in which “canned messages” are
`
`communicated “using unique, abbreviated message codes respectively assigned to
`
`the canned messages.” GOOGLE1001, 1:50-67. A “canned message code” for a
`
`message selected at the transmitting device is received at the receiving device and
`
`used to “retrieve[] the associated canned message[]” which is then displayed on the
`
`receiving device. Id., 6:25-41. Users can customize canned messages by adding
`
`“parameter(s), such as, for example, time, date, phone number, etc.” Id., 3:59-63.
`
`The ’506 further describes allowing a user of a receiving device to select a canned
`
`response associated with a “canned response code” to reply to a received canned
`
`message. Id., 6:58-7:23.
`
`However, none of these features were new or innovative during the relevant
`
`time frame leading up to September 1996, as evidenced by the references cited be-
`
`low. GOOGLE1003, ¶¶47, 56-148. Simply put, claims 1-7 and 15-18 describe a
`
`then-predictable combination of hardware/software to perform actions already
`
`practiced by others in the mid-1990s.
`
`VI. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`The ’506 patent is expired. The standard for claim construction of an ex-
`
`8
`
`
`
`pired patent is a “district court-type claim construction,” often referred to as the
`
`Phillips standard. See 37 C.F.R. § 41.100(b). For purposes of this IPR, Petitioner
`
`provides the following specific constructions for terms where the plain meaning
`
`may not be entirely clear. The constructions proposed herein are consistent with a
`
`recent district court order from the Eastern District of Texas in concurrent litiga-
`
`tion between Petitioner and Patent Owner (GOOGLE1008) construing the claims
`
`under the Phillips standard.
`
`“means responsive to the received message code for retrieving from the
`
`memory the canned message assigned thereto” (claims 15, 18). This is a §112,
`
`¶6 claim element. In the concurrent litigation between the parties here, the Eastern
`
`District of Texas has interpreted this element under the Phillips standard so that the
`
`function of “retrieving from the memory the canned message assigned to the re-
`
`ceived message code” has a corresponding structure of “NOC 12 and memory 142;
`
`and equivalents thereof.”2 GOOGLE1008, 88-90. The specification discloses
`
`
`2 For purposes of the concurrent litigation, Petitioner raised (or will raise when
`
`permitted to do so) in the litigation why the constructions/scope advanced by Pa-
`
`tent Owner raise possible defects under §112. See, e.g., EON Corp. IP Holdings
`
`LLC v. AT & T Mobility LLC, 785 F.3d 616, 621-22 (Fed. Cir. 2015). For purposes
`
`of this IPR proceeding, the prior art discloses these elements even under the con-
`
`
`
`9
`
`
`
`“NOC 12 uses the canned message/response option codes . . . to retrieve from the
`
`appropriate file(s) the text of the associated canned message.” GOOGLE1001,
`
`6:17-21; 7:7-12; GOOGLE1003, ¶42. For the purposes of this proceeding, Peti-
`
`tioner adopts the District Court construction.
`
`“means for determining whether a receiving terminal in the network
`
`can receive the canned message in text form or message code form” (claims
`
`15-16). This is a §112, ¶6 claim element. In the concurrent litigation between the
`
`parties here, the Court has interpreted this element under the Phillips standard so
`
`that the recited function of “determining whether a receiving terminal in the
`
`network can receive the canned message in text form or message code form” has a
`
`corresponding structure of “NOC 12 and memory, configured to perform the algo-
`
`rithm disclosed in the ’506 Patent at 5:49-56 and 6:7-12; and equivalents thereof.”3
`
`GOOGLE1008, 90-92. The specification discloses “NOC 12 determines whether
`
`the designated receiving party terminal can accept the canned message in code
`
`form, . . . or whether the canned message must be transmitted in full text.”
`
`GOOGLE1001, 6:7-12; see also 5:49-56 (the identities of the calling and receiving
`
`
`struction applied in the concurrent litigation between the parties here
`
`(GOOGLE1008).
`
`3 See, supra, footnote 2.
`
`10
`
`
`
`terminals . . . are determined”); GOOGLE1003, ¶43. For the purposes of this pro-
`
`ceeding, Petitioner adopts the District Court construction.
`
`“means for updating the canned message file stored in the memory and
`
`a corresponding canned message file stored in a memory in at least the calling
`
`terminal” (claim 17). This is a §112, ¶6 claim element. In the concurrent litiga-
`
`tion between the parties here, the Court has interpreted this element under the
`
`Phillips standard so that the recited function of “updating the canned message file
`
`stored in the memory and a corresponding canned message file stored in a memory
`
`in at least the calling terminal” has a corresponding structure of “NOC 12, NOC
`
`memory, and terminal memories, configured to perform the algorithm disclosed in
`
`the ’506 Patent at Fig. 6 and 7:25-37; and equivalents thereof.”4 GOOGLE1008,
`
`92-94. The specification discloses that the NOC “is capable of updating the
`
`canned message” file and “transmit[ting] the updated canned files to all of the ter-
`
`minals.” GOOGLE1001, 7:25-37; GOOGLE1003, ¶44. For the purposes of this
`
`proceeding, Petitioner adopts the District Court construction.
`
`“means for retrieving from the memory those canned multiple response
`
`options assigned to response codes received from the calling terminal by the
`
`receiver,” (claim 18). This is a §112, ¶6 claim element. In the concurrent litiga-
`
`
`4 See, supra, footnote 2.
`
`11
`
`
`
`tion between the parties here, the Court has interpreted this element under the
`
`Phillips standard so that the recited function of “retrieving from the memory those
`
`canned multiple response options assigned to response codes received from the
`
`calling terminal by the receiver” has a corresponding structure of “NOC 12 and
`
`memory, configured to perform the algorithm disclosed in the ’506 Patent at 6:17-
`
`24; and equivalents thereof.”5 GOOGLE1008, 94-96. The specification discloses
`
`that “NOC 12 uses the canned message/response option codes received from the
`
`calling party terminal 10 to retrieve from the appropriate file(s) the text of the . . .
`
`multiple response options, if any, from memory.” GOOGLE1001, 6:17-24;
`
`GOOGLE1003, ¶45. For the purposes of this proceeding, Petitioner adopts the
`
`District Court construction.
`
`“means for routing a selected canned multiple response option received
`
`from the receiving terminal to the calling terminal in either text or response
`
`code form,” (claim 18). This is a §112, ¶6 claim element. In the concurrent litiga-
`
`tion between the parties here, the Court has interpreted this element under the
`
`Phillips standard so that the recited function of “routing a selected canned multiple
`
`response option received from the receiving terminal to the calling terminal in
`
`either text or response code form” has a corresponding structure of “NOC 12 and
`
`
`5 See, supra, footnote 2.
`
`12
`
`
`
`canned multiple response option file, configured to perform the algorithm dis-
`
`closed in the ’506 Patent at 6:58-7:12; and equivalents thereof.”6 GOOGLE1008,
`
`97-99. The specification discloses that the NOC performs the function of “relaying
`
`a selected response option from the receiving terminal to the calling terminal” in-
`
`cluding determining if the response is in text or code form. GOOGLE1001, 6:58-
`
`7:12; GOOGLE1003, ¶46. For the purposes of this proceeding, Petitioner adopts
`
`the District Court construction.
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’506 PATENT IS UNPATENTABLE
`As detailed below, each of claims 1-7 and 15-18 of the ’506 patent is ren-
`
`dered obvious by one or more combinations of references.
`
`A. Ground 1: Claims 1-7, 15-17 are Obvious under § 103 over LaPorta in
`view of Ise and Tett
`LaPorta discloses a communication system for transmitting text messages
`
`between user devices using canned message codes and, in combination with Ise
`
`and Tett, discloses all elements of claims 1-7 and 15-17. Briefly, LaPorta discloses
`
`“a two-way wireless messaging system” which much like the system of the ’506
`
`patent, facilitates text communication between pagers by allowing users to select
`
`canned messages and then transmitting those messages using “message code[s]”
`
`associated with the messages. GOOGLE1004, 4:6-27; 4:59-63; 13:18-31; 14:10-
`
`6 See, supra, footnote 2.
`
`13
`
`
`
`15. FIG. 3 depicts components of LaPorta’s system:
`
`
`
`GOOGLE1004, FIG. 3. As shown above, canned messages can also be customized
`
`to include “embedded response[s]” which the receiving user can select from to re-
`
`spond to the original message. Id., 5:53-61.
`
`Similarly, Ise discloses “a radio pager system” in which each pager “stores a
`
`table including a plurality of paired messages predetermined by the caller and the
`
`callee and a message code corresponding to it.” GOOGLE1005, 4:35-44. A user
`
`of a transmitting pager “selects a message code corresponding to the desired mes-
`
`sage from the message table” which is then transmitted to a receiving pager which
`
`extracts the “predetermined message” from its own message table using the mes-
`
`14
`
`
`
`sage code and displays the message. Id., 9:62-66; 10:9-31; 6:13-23.
`
`Tett discloses a messaging system that “translates” messages into a con-
`
`densed form for transmission to a receiving device to “allow more information to
`
`be communicated to the user of the wireless receiver device with less characters.”
`
`GOOGLE1006, 2:14-17; 1:45-62; 2:25-27 (disclosing that part of a message is
`
`“transmitted in coded form”). Tett further discloses that “[u]pon receipt of the new
`
`message,” the “server 12 next determines” if the intended recipient device “desires
`
`the message translation process” (i.e., the server determines if the receiving device
`
`is currently configured to receive the message in condensed form).
`
`GOOGLE1006, 4:28-31; 4:44-46; GOOGLE1003, ¶77.
`
`For the reasons articulated below, the predictable and ordinary combination
`
`of LaPorta with Ise and Tett discloses every element of claims 1-7 and 15-17.
`
`[1.P] A method of communicating messages between subscribers to an
`electronic messaging network, comprising the steps of:
`To the extent the preamble is a limitation, LaPorta in view of Ise and Tett
`
`discloses the preamble. GOOGLE1003, ¶¶48-51, 56-58. For example, LaPorta
`
`discloses “a two-way wireless messaging system” in which a “two-way messaging
`
`device” such as “a dedicated two-way pager” transmits “an originating message
`
`code” to a server of a “two-way messaging network” that includes a “user agent.”
`
`GOOGLE1004, 4:7-26; Abstract. The message can be transmitted to “1) a tele-
`
`phone 22, 2) a computer as E-Mail 27, [or] another second messaging device, such
`
`15
`
`
`
`as a pager 44” as shown in FIG. 1:
`
`
`
`GOOGLE1004, 4:59-66; FIG. 1; see also 6:4-23 (describing users as “subscrib-
`
`er[s]”). Similarly, as described below, Ise discloses “a radio pager system” for
`
`transmitting text messages between pagers of subscribers. GOOGLE1005, 4:35-44;
`
`10:1-38; 2:28-33; infra, Analysis of Element [1.6] (describing the predictable
`
`combination).
`
`16
`
`
`
`[1.1] maintaining, at a network operation center, a first file of canned
`messages and message codes respectively assigned to the canned messag-
`es;
`LaPorta in view of Ise and Tett discloses this element. GOOGLE1003, ¶59.
`
`For example, LaPorta discloses that “the user agent” which resides on the server
`
`side of the system (the “network operation center”) stores “a plurality of stored
`
`messages” and corresponding message numbers. GOOGLE1004, 2:60-67; 6:59-
`
`60; 2:1-4 (“a message number that uniquely identifies a message [is] stored both
`
`locally at the device and at the user agent.”); 5:62-67 (the “user agent . . . typically
`
`maintains, among other things, an identical copy of the address and message tables
`
`as the messaging devices.”); 2:5-12 (“a user agent . . . stores among other things, a
`
`plurality of messages” which are expanded using received message codes.); 19:29-
`
`35; FIGs. 1-3. The “message number[s]” are “used by the user agents as indices to
`
`respective data tables in message expansion.” Id., 5:34-47. FIG. 1 shows that the
`
`user agent is located on the server side of the system:
`
`17
`
`
`
`
`
`GOOGLE1004, FIG. 1
`
`[1.2] maintaining at a first terminal of a first subscriber a second file of
`canned messages corresponding to the first file;
`LaPorta in view of Ise and Tett discloses this element. GOOGLE1003, ¶¶60-
`
`61. For example, LaPorta discloses storing “message tables [at] the messaging de-
`
`vices” that are “an identical copy” of the message table stored at the user agent.
`
`GOOGLE1004, 5:62-6:3 (“message information stored in the messaging device
`
`18
`
`
`
`and respective user agent should always be consistent with each other”); 1:62-2:4
`
`(“a message number that uniquely identifies a message [is] stored both locally at
`
`the device and at the user agent.”); 5:33-41 (user agents mirror the state and con-
`
`text . . . message tables . . . of their messaging devices); 19:29-35. Similarly, Ise
`
`discloses “a table including a plurality of paired messages . . . and a message code
`
`corresponding to it” that can be stored on an “IC card 35” of a pager.
`
`GOOGLE1005, 4:39-43; 8:41-61; 9:30-33; 6:59-68; infra, Analysis of Element
`
`[1.6] (describing the predictable combination).
`
`[1.3] selecting an appropriate canned message from the second file for
`transmission to a second terminal of a designated second subscriber;
`LaPorta in view of Ise and Tett discloses this element. GOOGLE1003, ¶¶62-
`
`63. For example, LaPorta discloses an example in which “Thomas can originate
`
`through his pager 50a a message to his lunch group” and that the message can be
`
`“a pre-canned message” which is transmitted from Thomas’s pager not as text but
`
`as a “coded message” that includes “a message number that uniquely identifies a
`
`message stored both locally at the device and at the user agent.” GOOGLE1004,
`
`5:16-26; 5:55-58; 1:62-2:12. To the extent that LaPorta does not expressly disclose
`
`a user selecting a canned message from the message table stored at the pager, a
`
`POSITA would have understood that LaPorta plainly suggests the pagers enabled a
`
`user to select canned messages from the message table stored on the pager, espe-
`
`cially in light of LaPorta’s teaching relating to: 1) transmitting message numbers
`
`19
`
`
`
`retrieved from the message table stored on the pager (cols. 5:42-47, 4:46-56); 2)
`
`allowing a user to “choose” from “a list of items” or “dynamic components” that
`
`can be used to customize a message (13:26-36); and 3) allowing users to select
`
`from multiple responses (5:57-61). GOOGLE1003, ¶62. A POSITA reading
`
`LaPorta would have understood that a user would have selected from lists of
`
`canned messages similar to the “lists of responses” and “dynamic components”
`
`that could be selected by the user to cause the pager to transmit a message number
`
`associated with the canned message. Id.
`
`Further, Ise expressly discloses allowing a user of a pager to select a canned
`
`message for transmission to another user device in message code form:
`
`The display 36 displays the message table stored in the IC card 35.
`The operator operates the keyboard 39 and selects a message code
`corresponding to the desired message from the message table dis-
`played on the display 36.
`
`GOOGLE1005, 9:62-68 (emphasis added); see also 1:42-56 (“The caller selects a
`
`desired standard sentence”); 10:39-44 (“selected message code . . . displayed on
`
`the display”); GOOGLE1003, ¶63. A POSITA would have been prompted to
`
`modify the system of LaPorta to incorporate Ise’s suggestion for selecting a canned
`
`message for the reasons articulated below. See, infra, Analysis of Element [1.6]
`
`(describing the predictable combination).
`
`20
`
`
`
`
`
`Both LaPorta and Ise discloses that the selected canned message is “for
`
`transmission to a second terminal of a designated second subscriber.”
`
`GOOGLE1003, ¶¶49-50, 62-63, 122. For example, LaPorta discloses “[a] prede-
`
`termined message is forwarded to a desired destination . . . the selected destination
`
`could be a second two-way messaging device.” GOOGLE1004, 4:47-58; see also
`
`GOOGLE1005, 9:53-68 (“the user of the pager terminal . . . transmits a message to
`
`another user.”).
`
`[1.4] sending the message code assigned to the selected canned message to
`the network operation center;
`LaPorta in view of Ise and Tett discloses this element. GOOGLE1003, ¶¶64-
`
`65. For example, LaPorta discloses the “wireless messaging device can originate
`
`new messages” each message including “a message number that uniquely identi-
`
`fies a message stored both locally at the device and at the user agent.”
`
`GOOGLE1004, 1:62-2:3. Further the “user agent” located at the server side of the
`
`network “receives [the] coded message from its associated subscriber.” Id., 2:5-12.
`
`Or, stated more concisely, “an originating message code from a two-way messag-
`
`ing device 11 [is] received in a user agent 12 of a two-way messaging network.”
`
`Id., 4:7-12; see also 4:46-56; 14:3-21 (“The message is coded by indicating a mes-
`
`sage number.”); 19:44-48. FIG. 3 shows message code “8” sent from pager 50a to
`
`the corresponding user agent 54:
`
`21
`
`
`
`
`
`GOOGLE1004, FIG. 3; 5:16-47.
`
`Similarly, while Ise discloses a first embodiment in which a user punches a
`
`message code into a telephone (see, e.g., GOOGLE1005 at
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