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.: 19473-0348IP2
`
`
`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.: 19473-0348IP2
`
`
`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 .......................................................... 7
`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, 15-18 are Obvious under § 103 over
`Will in view of Shimura and Cannon ................................................... 13
`VIII. CONCLUSION ............................................................................................ 81
`
`
`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
`
`RESERVED
`
`GOOGLE1005
`
`RESERVED
`
`GOOGLE1006
`
`RESERVED
`
`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
`
`EP Patent Application No. 89108853 to Shimura et al. (“Shi-
`mura”)
`
`ii
`
`
`
`GOOGLE1013 U.S. Patent No. 5,850,594 to Cannon et al. (“Cannon”)
`
`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. GOOGLE1007 27:56-67
`
`(“preprogrammed original messages”); 13:8-13; 21:10-12 (“the text is obtained by
`
`using a code.”); GOOGLE1012, 1:34-35 (“the message data is coded as an alpha-
`
`numeric code”); 5:34-57 (“message codeword corresponding to the caller’s mes-
`
`sage data”); 7:12-18 (“a standard expression character code corresponding to the
`
`two four-bit data . . . is read out from a standard expression memory”);
`
`GOOGLE1013, 8:5-9 (“canned message list maintained locally by the controller”).
`
`Will, Shimura, and Cannon were not considered during prosecution and dis-
`
`close 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 ’804 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 IPR19473-0348IP2@fr.com (referencing No.
`
`19473-0348IP2 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 Peter Rysavy (GOOGLE1003) is also
`
`included in support of this Petition.
`
`Ground
`
`Claims
`
`Basis for Rejection
`Obvious under § 103 based upon U.S. 5,588,009
`
`Ground 1 1-7, 15-18
`
`(“Will”) in view of EP 89108853 (“Shimura”) and
`
`U.S. 5,850,594 (Cannon)
`
`Will and Cannon qualify as prior art under at least 35 U.S.C. § 102(e) as pa-
`
`tents for which the applications were filed before the earliest possible priority date
`
`of the ’506 patent. Shimura qualifies as prior art under 35 U.S.C. § 102(b) as hav-
`
`ing published more than a year before the earliest possible priority date of the ’506
`
`patent. None of these references were considered during prosecution.
`
`Will and Cannon 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
`
`4
`
`
`
`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 Shimura reference relied on
`
`
`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
`
`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
`
`
`
`5
`
`
`
`herein was not cited in either of the previous petitions filed by Apple. The Peti-
`
`tioner here relies on Shimura’s disclosures relating to elements of each of the inde-
`
`pendent claims and certain dependent claims. The current petition also relies on
`
`testimony evidence 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 rea-
`
`sons that a POSITA would have been motivated to apply the suggestions of Shi-
`
`mura and Cannon to the system described by Will.
`
`This petition is also not redundant with the concurrently filed petition chal-
`
`lenging claims 1-7 and 15-18 (IPR2017-00532). The primary references of these
`
`
`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
`
`
`
`two petitions (Will and U.S. Patent No. 5,970,122 to LaPorta et al. (“LaPorta”))
`
`describe different communications systems having different features and address
`
`the claims in different ways. For example, LaPorta discloses a communication
`
`system covering a wide area while Will is directed toward a communications sys-
`
`tem for a smaller area, such as an office environment (GOOGLE1007, 1:42-50;
`
`4:23-31). Further, the combination of references in the two petitions use the pri-
`
`mary and secondary references to address the claim elements in different ways.
`
`For example, this petition relies on the secondary Cannon reference for disclosures
`
`related to updating messaging tables and the secondary Shimura for disclosures re-
`
`lating to adding non-response option parameters to canned messages conveyed in
`
`message code form while the other petition directed toward claims 1-7 and 15-18
`
`relies on the primary reference for such features. The two petitions also address
`
`distinct motivations for combining the cited references as would have been recog-
`
`nized by a POSITA. Numerous other distinctions between the two petitions and
`
`the application of the different prior art reference combinations to the challenged
`
`claims will become readily apparent upon review of the petitions and 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
`
`7
`
`
`
`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, 57-161. 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-
`
`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
`
`8
`
`
`
`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
`
`“NOC 12 uses the canned message/response option codes . . . to retrieve from the
`
`appropriate file(s) the text of the associated canned message.” GOOGLE1001,
`
`
`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-
`
`struction applied in the concurrent litigation between the parties here
`
`(GOOGLE1008).
`
`9
`
`
`
`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
`
`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
`
`
`3 See, supra, footnote 2.
`
`10
`
`
`
`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-
`
`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
`
`
`4 See, supra, footnote 2.
`
`11
`
`
`
`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
`
`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
`
`
`5 See, supra, footnote 2.
`
`6 See, supra, footnote 2.
`
`12
`
`
`
`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, 15-18 are Obvious under § 103 over Will in view
`of Shimura and Cannon
`Will discloses a communication system for transmitting text messages be-
`
`tween user devices using canned message codes and, in combination with Shimura
`
`and Cannon, discloses all elements of claims 1-7 and 15-18. Briefly, Will disclos-
`
`es a “communications system” for sending “brief messages” in message code form.
`
`GOOGLE1007, 3:60-65; 27:56-58; 13:8-13 (“the message as indicated by the code
`
`0-127 and retrieved from the Preprogrammed Message List”); 9:24-30. The indi-
`
`vidual communications units and the central station store matching preprogrammed
`
`message lists and preprogrammed response lists as shown in FIG. 30:
`
`13
`
`
`
`
`
`GOOGLE1007, FIG. 30; 12:60-13:13. The user can select a preprogrammed mes-
`
`sage from the message list stored at the communications unit for transmission to
`
`other communication units. Id., 27:56-67.
`
`Similarly, Shimura discloses “a radio paging communication system” in
`
`which “message data is coded as an alphanumeric code” such that “standard ex-
`
`pressions” stored in a “standard expression memory” of a user device are retrieved
`
`and displayed using the received code. GOOGLE1012, 1:34-35; 5:34-57; 7:7-18.
`
`FIG. 6 shows examples of standard expression codes:
`
`14
`
`
`
`
`
`GOOGLE1012, FIG. 6. Shimura’s system uses a “shift code” of “FF” to indicate
`
`that the information that follows is a standard expression number and also allows
`
`for a standard expression to be customized by the user with added parameters such
`
`as a time or currency amount, as shown in FIG. 11:
`
`15
`
`
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`GOOGLE1012, FIG. 11; 6:13-29; 7:7-18; 11:22-55. Cannon describes a similar
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`two-way communication system for exchanging messages between portable termi-
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`nals, and Cannon suggests the prior art practice of determining whether the second
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`terminal can receive the canned message in a text form or message code form.
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`GOOGLE1013, 8:20-61; Abstract, 1:14-23; GOOGLE1003, ¶¶53-54.
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`For the reasons articulated below, a POSITA would have been prompted to
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`modify Will in view of Shimura’s and Cannon’s suggestions to achieve several
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`known benefits, and the resulting combination discloses every element of claims 1-
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`7 and 15-18.
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`[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, Will in view of Shimura and Can-
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`non discloses the preamble. GOOGLE1003, ¶¶57-59. For example, Will discloses
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`16
`
`
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`a system for sending “brief messages” between “miniature communications
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`unit[s]” using message codes. GOOGLE1007, 3:60-4:3; 27:57-67; 13:8-13; 21:15-
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`24 (describing that the communication is between two communications units).
`
`Similarly, as described below, Shimura discloses “a radio paging communi-
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`cation system” for transmitting messages in coded form to a user’s pager.
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`GOOGLE1013, 1:34-35; 5:34-57; 7:7-18; 6:13-34; infra, Analysis of Element
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`[1.7] (describing the predictable combination). Shimura also describes users as
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`“subscriber[s].” Id., 3:28-31; 8:23-26.
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`[1.1] maintaining, at a network operation center, a first file of canned
`messages and message codes respectively assigned to the canned messag-
`es;
`Will in view of Shimura and Cannon discloses this element. GOOGLE1003,
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`¶60. For example, Will discloses that a “Preprogrammed Message List . . . [is]
`
`contained in data structures in both the Central Station and Communications Unit”
`
`and that “the preprogrammed messages in the Preprogrammed Message List [are]
`
`indicated by the code 0-127.” GOOGLE1007, 12:54-13:13 (“the message as indi-
`
`cated by the code 0-127 and retrieved from the Preprogrammed Message List.”);
`
`27:56-67 (Describing “preprogrammed original messages” as “canned messages”).
`
`Each preprogrammed message in the preprogrammed message list has a cor-
`
`responding code:
`
`17
`
`
`
`
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`GOOGLE1007, FIG. 30; 7:1-2; 25:45-53 (“Preprogrammed Message List (consist-
`
`ing, for each entry, of a 7-bit code 423 and the text of the message 424)”).
`
`[1.2] maintaining at a first terminal of a first subscriber a second file of
`canned messages corresponding to the first file;
`Will in view of Shimura and Cannon discloses this element. GOOGLE1003,
`
`¶¶61-62. For example, Will discloses that a “Preprogrammed Message List . . .
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`[is] contained in data structures in both the Central Station and Communications
`
`Unit” and that “the preprogrammed messages in the Preprogrammed Message List
`
`[are] indicated by the code 0-127.” GOOGLE1007, 12:54-13:13; 27:56-67; 7:1-2;
`
`25:45-53; 36:35-50 (describing the preprogrammed message list as being stored in
`
`memory of the communications unit). Will describes a single “preprogrammed
`
`message list” that is stored at both the central station and communications unit and
`
`that the central station defines the list and communicates it to the communications
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`units which indicates that the preprogrammed message lists stored at each location
`
`correspond to each other. GOOGLE1007, 12:54-13:13; 14:13-28; GOOGLE1003,
`
`¶61, 48. FIG. 33 shows preprogrammed messages from the preprogrammed mes-
`
`sage list displayed at the communications unit:
`
`18
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`
`
`
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`GOOGLE1007, FIG. 33; 26:13-22; 27:56-28:2.
`
`Shimura also discloses that each pager stores a file of canned messages and
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`message codes. GOOGLE1003, ¶62. Shimura’s “paging receiver includes a
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`standard expression memory.” GOOGLE1012, 6:30-34. The standard expression
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`memory stores messages and corresponding “standard expression abbreviation
`
`numbers.” GOOGLE1012, 7:9-18; see also 8:5-13; FIG. 6.
`
`[1.3] selecting an appropriate canned message from the second file for
`transmission to a second terminal of a designated second subscriber;
`Will in view of Shimura and Cannon discloses this element. GOOGLE1003,
`
`¶63. For example, Will discloses “preprogrammed original messages that can be
`
`selected by the user” and that “when the selection is made (again with the key) the
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`message will be sent.” GOOGLE1007, 27:56-64. As shown in FIGs. 32 and 33,
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`the user uses a thumbwheel to scroll through preprogrammed messages and “[i]f
`
`19
`
`
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`the cursor points to a preprogrammed message [when key 48 is pressed] that mes-
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`sage is sent”:
`
`
`
`GOOGLE1007, FIGs. 32-33; 26:13-29. Will also discloses that the receiving de-
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`
`
`20
`
`
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`vice can be “another communications unit.” Id., 21:15-24. Shimura also discloses
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`that the receiving device is a subscriber’s pager. GOOGLE1012, 6:14-34; 3:28-31;
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`8:23-26; infra, Analysis of Element [1.7] (describing the predictable combination).
`
`[1.4] sending the message code assigned to the selected canned message to
`the network operation center;
`Will in view of Shimura and Cannon discloses this element. GOOGLE1003,
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`¶¶64-66, 48. For example, Will discloses that upon selection of a preprogrammed
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`message at the communications unit “the message will be sent.” GOOGLE1007
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`27:56-64. Will discloses that “[c]ommunication from each unit to the central com-
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`munications station is carried out by a combination of infrared light and wire or
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`optical fiber.” Id., 4:11-17; see also 8:21-27 (describing transmitting messages
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`from a user device “to the central communication station 3”); 7:60-65; 9:27-35;
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`FIG. 1. Will discloses the transmission of coded messages to the central station
`
`from a communications unit. Id., Abstract. Will further discloses that what he
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`calls the “original message[s]” sent to the central station are coded or “canned”
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`messages represented by a “code 0-127.” GOOGLE1007, 12:47-13:13; see also
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`25:45-51 (describing that each preprogrammed message consists of “a 7-bit
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`code”); 42:1-3 (describing transmitting the “message as a numerical index . . . ra-
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`ther than the text itself”).
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`
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`Shimura also discloses that messages are transmitted in message code form,
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`as shown by the “message code word” in FIG. 2D:
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`21
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`
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`GOOGLE1012, FIG. 2D; 5:34-35; 8:5-13. Shimura shows the standard expression
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`codes included in the transmitted messages:
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`
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`
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`GOOGLE1012, FIG. 11; 11:11-55; GOOGLE1003, ¶¶65-66, 52; infra, Analysis of
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`Element [1.7] (describing the predictable combination).
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`[1.5] retrieving the selected canned message from the first file using the
`message code received from the first terminal;
`Will in view of Shimura and Cannon discloses this element. GOOGLE1003,
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`¶67. For example, Will discloses that the “Preprogrammed Message List . . . [is]
`
`contained in data structures in both the Central Station and Communications Unit”
`
`22
`
`
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`and, as shown in FIG. 20, the “communications software for the central station”
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`determines that “[i]f the message or response is in compressed form, it is expand-
`
`ed.”:
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`GOOGLE1007, FIG. 20; 12:62-65; 20:6-8; 21:7-14 (“the text is obtained by using
`
`
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`23
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`
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`a code to look up the expanded form” of the canned message “in an appropriate ta-
`
`ble.”).
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`[1.6] determining whether the second terminal can receive the canned
`message in a text form or message code form; and
`Will in view of Shimura and Cannon discloses this element. GOOGLE1003,
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`¶¶68-73. For example, Cannon describes a two-way communication system for
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`exchanging messages between portable messaging units (PMUs) that performs
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`precisely such a determination. GOOGLE1013, Abstract, 1:14-23; GOOGLE1003,
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`¶¶69-73, 53-54. Cannon teaches that “relatively short aliases” can be used to
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`communicate “frequently transmitted information” from the PMUs to a system
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`controller, such that “frequently used messages can be represented by message ali-
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`ases.” Id., 2:19-32. Cannon’s system controller determines if a received message
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`“is in the form of a message alias” and if so “the message associated with the
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`canned message alias is recovered” from a store of canned messages at the system
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`controller. Id., 8:20-38. Cannon’s system then determines if the receiving device
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`can receive a message in message code form (i.e., because the message and corre-
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`sponding message code are present in a canned message list specific to the receiv-
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`ing device), and if the receiving device can receive the message in message code
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`form, “the message alias representative of the message is recovered” and transmit-
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`ted to t
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