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.: 19473-0348IP3
`
`
`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.: 19473-0348IP3
`
`
`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 ................................. 1
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 1
`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 ....................... 3
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................. 3
`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 ............... 12
`A. Ground 1: Claims 8-11 are Obvious under § 103 over LaPorta
`in view of Ise ............................................................................................ 12
`B. Ground 2: Claims 12-14, 19-21 are Obvious under § 103 over
`LaPorta in view of Ise and Will ............................................................. 43
`VIII. CONCLUSION ............................................................................................ 74
`
`
`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
`
`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
`
`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 8-14 and 19-21 of U.S. Patent 5,894,506 (“the ’506 patent”). The ’506 pa-
`
`tent describes a communications system for transmitting “canned messages” be-
`
`tween paging devices in message code form. GOOGLE1001, 1:50-67.
`
`The claimed system, however, was not new by September 1996. Indeed, as
`
`evidenced by the publications here, transmission message codes representing
`
`canned messages between communication devices 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 cor-
`
`responding to the desired message from the message table”); 10:26-29; 6:13-23;
`
`GOOGLE1007 27:56-58; 13:8-13; 21:10-12.
`
`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.
`
`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.
`
`1
`
`
`
`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
`
`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 8-14 and
`
`2
`
`
`
`19-21 of the ’506 patent based on different and non-redundant grounds and two
`
`IPR petitions challenging other claims (claims 1-7 and 15-18) 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 IPR19473-0348IP3@fr.com (referencing No.
`
`19473-0348IP3 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
`
`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
`
`3
`
`
`
`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 8-14 and 19-21 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
`
`Ground
`
`1
`
`8-11
`
`Basis for Rejection
`
`Obvious under § 103 based upon U.S. Pat. 5,970,122
`
`(“LaPorta”) in view of U.S. Pat. 5,257,307 (“Ise”)
`
`Ground
`
`12-14,
`
`Obvious under § 103 based upon LaPorta in view of Ise and
`
`2
`
`19-21
`
`U.S. Pat. 5,588,009 (“Will”)
`
`LaPorta and Will 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. Ise qualifies as prior art under 35 U.S.C. § 102(b) as a patent
`
`issued more than a year before the earliest possible priority date of the ’506 patent.
`
`None of these references were considered during prosecution.
`
`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
`
`4
`
`
`
`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 8, 19,
`
`and 21. GOOGLE1003 at ¶¶30-34. For example, the alleged conception docu-
`
`ments 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 identifi-
`
`er (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 doc-
`
`uments plainly lack any description/corroboration of using this “token message
`
`identifier” is “relay[ed]” to “the second terminal” or used to “retriev[e] the selected
`
`canned message from the third file” stored at the second terminal (required by
`
`claim elements [8.6]-[8.7]). GOOGLE1003 at ¶¶31-32; see also GOOGLE1015;
`
`GOOGLE1016; GOOGLE1017 at 4-5; 42-43. Additionally, although there is de-
`
`scription of receiving “a Multiple Choice Response (MCR) message” at a pager
`
`
`
`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, and Will to
`
`the system described by LaPorta.
`
`This petition is also not redundant with the concurrently filed petition chal-
`
`lenging claims 8-14 and 19-21 (IPR2017-00535). The primary references of these
`
`
`(GOOGLE1017 at 4), there is no disclosure of storing “response options and re-
`
`sponse codes respectively assigned thereto” (claim elements [19.1] and [21.1]) or
`
`any use of response codes (claims 19, 21) whatsoever. GOOGLE1003 at ¶34. 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 8-14 and 19-21, so it follows that requisite evi-
`
`dence of diligence/reduction to practice is lacking even more. GOOGLE1003 at
`
`¶¶30-34.
`
`6
`
`
`
`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 8-14 and 19-21 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
`
`the unique analyses included therein.
`
`V.
`
`SUMMARY OF THE ’506 PATENT
`The ’506 patent describes “a method of communicating messages between
`
`7
`
`
`
`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, ¶¶46, 54-163. Simply put, claims 8-14 and 19-21 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
`
`8
`
`
`
`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 for retrieving the file of canned messages and the file of canned
`
`multiple response options from the memory,” (claim 19). 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
`
`recited function of “retrieving the file of canned messages and the file of canned
`
`multiple response options from the memory” has a corresponding structure of
`
`“CPU 110, ROM 112 (including stored application program for controlling termi-
`
`nal operation), and system bus 130 (which interconnects system components such
`
`as CPU 110, ROM 112, and RAM 114), and equivalents.”2 GOOGLE1008, 80
`
`
`2 For purposes of the concurrent litigation, Petitioner raised (or will raise when
`
`permitted to do so) in the litigation why the constructions/scope asserted by the 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 related litigation between the parties here (GOOGLE1008).
`
`9
`
`
`
`(identifying components described at GOOGLE1001, 7:44-8:5; 3:44-54; 4:35-43).
`
`For the purposes of this proceeding, Petitioner adopts this construction.
`
`“means for selecting one of the canned messages and at least one of the
`
`multiple response options appropriate for the selected canned message for
`
`communication to a designated other message terminal,” (claim 19). 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 “selecting one of the canned messages and at least one of the multiple
`
`response options appropriate for the selected canned message for communication
`
`to a designated other message terminal” has a corresponding structure of “terminal
`
`keypad 126; or a mouse; or a cursor, and equivalents.”3 GOOGLE1008, 81 (identi-
`
`fying components described at GOOGLE1001, 7:44-66; 3:54-56). For the purpos-
`
`es of this proceeding, Petitioner adopts this construction.
`
`“means for adding parameters to the selected canned message for
`
`inclusion with the assigned message code transmitted over the
`
`communications link,” (claim 20). This is a §112, ¶6 claim element. In the con-
`
`current litigation between the parties here, the Court has interpreted this element
`
`under the Phillips standard so that the recited function of “adding parameters to the
`
`selected canned message for inclusion with the assigned message code transmitted
`
`3 See footnote 2 re possible §112 defects.
`
`10
`
`
`
`over the communications link” has a corresponding structure of “terminal keypad
`
`126 and terminal 10; and equivalents.” GOOGLE1008, 81 (identifying
`
`components described at GOOGLE1001, 7:60-66; 3:63-4:3). For the purposes of
`
`this proceeding, Petitioner adopts this construction.
`
`“means for retrieving the file of canned messages and message codes
`
`from the memory,” (claim 21). This is a §112, ¶6 claim element. 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 “retrieving the file of canned messages and message codes from the memory”
`
`has a corresponding structure of “CPU 110, ROM 112 (including stored applica-
`
`tion program for controlling terminal operation), and system bus 130 (which inter-
`
`connects system components such as CPU 110, ROM 112, and RAM 114), and
`
`equivalents.”4 GOOGLE1008, 80 (identifying components described at
`
`GOOGLE1001, 7:44-8:5; 3:44-54). For the purposes of this proceeding, Petitioner
`
`adopts this construction.
`
`“means for selecting one of the canned messages for communication to a
`
`designated other message terminal and for selecting multiple response options
`
`appropriate for the selected canned message,” (claim 21). This is a §112, ¶6
`
`claim element. In the concurrent litigation between the parties here, the Court has
`
`4 See footnote 2 re possible §112 defects
`
`11
`
`
`
`interpreted this element under the Phillips standard so that the recited function of
`
`“selecting one of the canned messages for communication to a designated other
`
`message terminal and for selecting multiple response options appropriate for the
`
`selected canned message” has a corresponding structure of “terminal keypad 126;
`
`or a mouse; or a cursor, and equivalents.”5 GOOGLE1008, 81 (identifying compo-
`
`nents described at GOOGLE1001, 7:44-66; 3:54-56). For the purposes of this pro-
`
`ceeding, Petitioner adopts this construction.
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’506 PATENT IS UNPATENTABLE
`As detailed below, each of claims 8-14 and 19-21 of the ’506 patent is ren-
`
`dered obvious by one or more combinations of references.
`
`A. Ground 1: Claims 8-11 are Obvious under § 103 over LaPorta in view
`of Ise
`LaPorta discloses a communication system for transmitting text messages
`
`between user devices using canned message codes and, in combination with Ise,
`
`discloses all elements of claims 8-11. Briefly, LaPorta discloses “a two-way wire-
`
`less 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; 14:10-15. FIG. 3 depicts
`
`
`5 See footnote 2 re possible §112 defects
`
`12
`
`
`
`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-
`
`13
`
`
`
`sage code and displays the message. Id., 9:62-66; 10:9-31; 6:13-23.
`
`For the reasons articulated below, the predictable and ordinary combination
`
`of LaPorta with Ise discloses every element of claims 8-11.
`
`[8.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 discloses
`
`the preamble. GOOGLE1003, ¶¶54-56. 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 telephone 22, 2) a com-
`
`puter as E-Mail 27, [or] another second messaging device, such as a pager 44” as
`
`shown in FIG. 1:
`
`14
`
`
`
`
`
`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
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`transmitting text messages between pagers of subscribers. GOOGLE1005, 4:35-44;
`
`10:1-38; 2:28-33; infra, Analysis of Element [8.6] (describing the predictable
`
`combination).
`
` [8.1] maintaining, at a network operation center, a first file of canned
`messages and message codes respectively assigned to the canned messag-
`
`15
`
`
`
`es;
`LaPorta in view of Ise discloses this element. GOOGLE1003, ¶57. For ex-
`
`ample, 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 plural-
`
`ity 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 re-
`
`spective data tables in message expansion.” Id., 5:34-47. FIG. 1 shows that the us-
`
`er agent is located on the server side of the system:
`
`16
`
`
`
`
`
`GOOGLE1004, FIG. 1.
`
`[8.2] maintaining at a first terminal of a first subscriber, a second file of
`canned messages and message codes corresponding to the first file;
`LaPorta in view of Ise discloses this element. GOOGLE1003, ¶¶58-59. For
`
`example, LaPorta discloses storing “message tables [at] the messaging devices”
`
`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
`
`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
`
`17
`
`
`
`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
`
`[8.6] (describing the predictable combination).
`
`[8.3] maintaining, at a second terminal of a second subscriber, a third file
`of canned messages and message codes corresponding to the first file;
`LaPorta in view of Ise discloses this element. GOOGLE1003, ¶¶60-63. For
`
`example, LaPorta discloses storing “message tables [at] the messaging devices”
`
`that include both messages and corresponding “message number[s].”
`
`GOOGLE1004, 5:62-6:3; 2:1-4; 5:33-41; 19:29-35. LaPorta further discloses that
`
`“the selected destination could be a second two-way messaging device.” Id., 4:56-
`
`63. A POSITA would have understood that each pager described in LaPorta (such
`
`as pagers 58 and 50a in FIG. 3) included its own table of canned messages and cor-
`
`responding message codes:
`
`18
`
`
`
`
`
`GOOGLE1004, FIG. 3; 5:16-33; GOOGLE1003, ¶60. To the extent that LaPorta
`
`does not expressly disclose that the message tables stored at the pagers 50a, 58 are
`
`identical, Ise shows that this feature was conventional and its predictable benefits
`
`were recognized in the prior art. GOOGLE1003, ¶63. Ise teaches that “a table in-
`
`cluding a plurality of paired messages . . . and a message code corresponding to it”
`
`is stored on an “IC card 35” of a user device such as an “electronic pocketbook”
`
`and that the “electronic pocketbook PT carried by the callee can also be provided
`
`detachably with a memory card MC in which is stored a message table identical to
`
`that of the electronic pocketbook M carried about by the caller.” GOOGLE1005,
`
`4:39-55; infra, Analysis of Element [8.6] (describing the predictable combination).
`
`Ise discloses that the message tables stored at each device must be identical and are
`
`19
`
`
`
`created by making the message table at one device “and then copying this convert-
`
`ing table in the [memory of the] other.” GOOGLE1005, 7:37-45; 9:30-336:59-68.
`
`A POSITA applying Ise’s suggestions to LaPorta’s two-way messaging system
`
`(for the multiple reasons articulated above in the analysis claim element [8.6], su-
`
`pra) would have recognized that the message table at the receiving device would
`
`need to be identical to both the message table stored at the sending device (as ex-
`
`pressly disclosed by Ise) and the message table stored at the user agent (as express-
`
`ly disclosed by LaPorta) to ensure accuracy of messages transmitted from the send-
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`ing device to the receiving device in message code form. GOOGLE1003, ¶¶63.
`
`[8.4] selecting an appropriate canned message from the second file for
`transmission to the second terminal;
`LaPorta in view of Ise discloses this element. GOOGLE1003, ¶¶64-65. 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 mes-
`
`sage 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-
`
`20
`
`
`
`cially in light of LaPorta’s teaching relating to: 1) transmitting message numbers
`
`retrieved from the message table stored on the pager (GOOGLE1004 at 5:42-47;
`
`4:46-56); 2) allowing a user to “choose” from “a list of items” or “dynamic com-
`
`ponents” that can be used to customize a message (13:26-36); and 3) allowing us-
`
`ers to select from multiple responses (5:57-61). GOOGLE1003, ¶64. 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 also discloses allowing a user of a pager to select a “message
`
`code corresponding to the desired message from the message table” that is “stored
`
`in the IC card” of the pager for transmission to another user device in message
`
`code form. GOOGLE1005, 9:62-68; see also 1:42-56 (“The caller selects a de-
`
`sired standard sentence”); 10:39-44 (“selected message code . . . displayed on the
`
`display”); GOOGLE1003, ¶65. A POSITA would have been prompted to modify
`
`the system of LaPorta to incorporate Ise’s suggestion for selecting a canned mes-
`
`sage for the reasons articulated below. See, infra, Analysis of Element [8.6] (de-
`
`scribing the predictable combination).
`
`
`
`Both LaPorta and Ise discloses that the selected canned message is “for
`
`transmission to a second terminal of a designated second subscriber.”
`
`21
`
`
`
`GOOGLE1003, ¶¶48-49, 55, 64-65, 68. For example, LaPorta discloses “[a] pre-
`
`determined message is forwarded to a desired destination . . . the selected destina-
`
`tion 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 mes-
`
`sage to another user.”).
`
`[8.5] sending the message code assigned to the selected canned message to
`the network operation center;
`LaPorta in view of Ise discloses this element. GOOGLE1003, ¶¶66-67. For
`
`example, LaPorta discloses the “wireless messaging device can originate new mes-
`
`sages” each message including “a message number that uniquely identifies a mes-
`
`sage 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 messaging device 11 [is]
`
`received in a user agent 12 of a two-way messaging network.” Id., 4:7-12; see also
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`4:46-56; 14:3-21 (“The message is coded by indicating a message number.”);
`
`19:44-48. FIG. 3 shows message code “8” sent from pager 50a to the correspond-
`
`ing user agent 54:
`
`22
`
`
`
`
`
`GOOGLE1004, FIG. 3; 5:16-47.
`
`Similarly, while Ise discloses a first embodiment in which a user punches a
`
`message code into
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