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.: 19473-0348IP4
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`
`
`DECLARATION OF MR. PETER RYSAVY
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`1
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`GOOGLE 1003
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`TABLE OF CONTENTS
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`I. ASSIGNMENT .................................................................................................... 3
`II. QUALIFICATIONS ......................................................................................... 3
`III. LEGAL PRINCIPLES ...................................................................................... 6
`A. Anticipation ................................................................................................... 6
`B. Obviousness ................................................................................................... 7
`C. Claim Construction ........................................................................................ 8
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 11
`V. MATERIALS CONSIDERED ....................................................................... 11
`VI. BACKGROUND OF THE ’506 PATENT .................................................... 13
`A. Subject Matter Overview............................................................................. 13
`B.
`File History of the ’506 Patent .................................................................... 15
`C. C. Invention Date of the ’506 Patent ........................................................... 16
`VII. BACKGROUND KNOWLEDGE ONE OF SKILL IN THE ART WOULD
`HAVE HAD PRIOR TO THE FILING OF THE ’506 PATENT ........................... 22
`VIII.
`INTERPRETATIONS OF THE ’506 PATENT CLAIMS AT ISSUE ...... 26
`IX. OVERVIEW OF CONCLUSIONS FORMED AND PRIOR ART
`REFERENCES ......................................................................................................... 32
`X. ANALYSIS OF WILL IN VIEW OF SHIMURA WITH RESPECT TO
`CLAIMS 8, 10-13, AND 19-21 (GROUND 1) ....................................................... 42
`XI. ANALYSIS OF WILL IN VIEW OF SHIMURA AND CANNON WITH
`RESPECT TO CLAIMS 9 AND 14 (GROUND 2) ..............................................160
`XII. ADDITIONAL REMARKS .........................................................................170
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`I, Peter Rysavy, of Hood River, Oregon, declare that:
`I.
`ASSIGNMENT
`1.
`I have been retained as a technical expert by counsel on behalf of
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`Google Inc. (“Google” or “Petitioner”). I understand that Google is requesting that
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`the Patent Trial and Board (“PTAB” or “Board”) institute inter partes review
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`(“IPR”) proceedings of U.S. Patent No. 5,894,506 (“the ’506 patent”) (Ex. 1001).
`
`2.
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`I have been asked to provide my independent analysis of the ’506
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`patent in light of the prior art publications cited below.
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`3.
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`I am not, and never have been, an employee of Google. I received no
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`compensation for this declaration beyond my normal hourly compensation based
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`on my time actually spent analyzing the ’506 patent, the prior art publications cited
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`below, and the issues related thereto, and I will not receive any added
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`compensation based on the outcome of any IPR or other proceeding involving
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`the ’506 patent.
`II. QUALIFICATIONS
`4.
`I have more than thirty-five years of technical experience working and
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`teaching in the field of wireless communication technologies and other disciplines
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`of electrical and computer engineering.
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`5.
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`In 1979, I graduated from Stanford University with both a Bachelor’s
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`of Science degree in electrical engineering (BSEE) and a Master’s of Science
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`degree in electrical engineering (MSEE).
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`6.
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`Following graduation from Stanford, I was employed at the Fluke
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`Corporation, where I gained extensive experience developing data-acquisition
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`products and touchscreen technologies.
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`7.
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`After seven years at Fluke Corporation, I moved to Traveling
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`Software, where, from 1988 to 1993, I held the position of Vice President of
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`Engineering and Technology. While at Traveling Software (later renamed
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`LapLink), I managed development of a range of products, including LapLink,
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`LapLink Wireless, and connectivity solutions for a wide variety of mobile
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`platforms. During this period, I was responsible for evaluating wireless
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`technologies for use with the LapLink file transfer and synchronization product
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`family. I also managed the development of a short-range wireless modem called
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`LapLink Wireless that replaced a serial-data cable connection between computers.
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`8.
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`In 1993, I founded a consulting firm, Rysavy & Associates, later
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`renamed to Rysavy Research LLC. I have worked as a consultant in the field of
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`wireless communications since that time, and am currently President of Rysavy
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`Research LLC. Beginning in 1994, while continuing my work as a consultant, I
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`also began teaching public courses on wireless technologies. For example, I taught
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`courses at Portland State University and the University of California in Los
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`Angeles. These courses included content about paging, cellular, mobile-data
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`networks, mobile-browser technologies, and mobile-application architectures.
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`9.
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`Past projects have included evaluation of wireless technology
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`capabilities, reports on the evolution of wireless technology, strategic
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`consultations, system design, articles, courses and webcasts, network performance
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`measurement, test reports, and involvement in multiple patent litigation cases.
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`This included analysis of the functionality of pagers in use during the mid-1990s,
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`such as units offered by Motorola and SkyTel. See
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`http://www.rysavy.com/Articles/1997_01_Two_Way_Paging.pdf. My past and
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`current clients include more than ninety-five organizations.
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`10.
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`I am an author or co-author of more than 160 articles, reports, and
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`papers, and I have taught more than 40 public courses and webcasts about topics in
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`wireless technology. I have also performed technical evaluations of many wireless
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`technologies including mobile browser technologies, wireless email systems,
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`municipal/mesh Wi-Fi networks, Wi-Fi hotspot networks, cellular-data services,
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`and social networking applications.
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`11. Since 2000, as part of my consulting practice, I have been the
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`executive director of the Portable Computer and Communications Association
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`(PCCA), which was formally incorporated in May of 1993. The PCCA currently
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`operates as the Wireless Technology Association. The PCCA’s mission has been
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`to promote the interoperability of wireless-data systems, and its initial work was to
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`develop interfaces between computer and wireless modems, as described, for
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`example, at http://www.wirelesstechnologyassociation.org. In my over two
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`decades of experience consulting on wireless technologies, I have studied or
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`worked on many different wireless technologies and standards, e.g., for cellular
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`networks and wireless local-area networks.
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`12. Further detail on my background and work experience, along with a
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`list of my publications and the cases in which I have given testimony in the past
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`four years, is contained in my curriculum vitae (“CV”), which I have attached as
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`Appendix A of this declaration.
`III. LEGAL PRINCIPLES
`13.
`In forming my analysis and conclusions expressed in this declaration,
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`I have applied the legal principles described in the following paragraphs, which
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`were provided to me by counsel for the Petitioner.
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`A. Anticipation
`14.
`I have been informed that a patent claim is invalid as anticipated
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`under 35 U.S.C. § 102 if each and every element of a claim, as properly construed,
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`is found either explicitly or inherently in a single prior art reference. Under the
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`principles of inherency, if the prior art necessarily functions in accordance with, or
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`includes the claimed limitations, it anticipates.
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`15.
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`I have been informed that a claim is invalid under 35 U.S.C. § 102(a)
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`if the claimed invention was known or used by others in the U.S., or was patented
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`or published anywhere, before the Applicant’s invention. I further have been
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`informed that a claim is invalid under 35 U.S.C. § 102(b) if the invention was
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`patented or published anywhere, or was in public use, on sale, or offered for sale in
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`this country, more than one year prior to the filing date of the patent application
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`(critical date). And a claim is invalid, as I have been informed, under 35 U.S.C. §
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`102(e), if an invention described by that claim was described in a U.S. patent
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`granted on an application for a patent by another that was filed in the U.S. before
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`the date of invention for such a claim.
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`B. Obviousness
`16.
`I have been informed that a patent claim is invalid as “obvious” under
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`35 U.S.C. § 103 in light of one or more prior art references if it would have been
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`obvious to a person of ordinary skill in the art at the time of the alleged invention
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`(“POSITA”), taking into account (1) the scope and content of the prior art, (2) the
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`differences between the prior art and the claims, (3) the level of ordinary skill in
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`the art, and (4) any so called “secondary considerations” of non-obviousness,
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`which include: (i) “long felt need” for the claimed invention, (ii) commercial
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`success attributable to the claimed invention, (iii) unexpected results of the claimed
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`invention, and (iv) “copying” of the claimed invention by others. For purposes of
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`my analysis here, I have applied a date of September 5, 1996 (the filing date of
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`the ’506 patent), as the date of the alleged invention in my obviousness analyses,
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`although in many cases the same analysis would hold true even if the date of the
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`alleged invention occurred earlier than September 5, 1996.
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`17.
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`I have been informed that a claim can be obvious in light of a single
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`prior art reference or multiple prior art references. To be obvious in light of a
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`single prior art reference or multiple prior art references, there must be a reason
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`that would have prompted a POSITA to modify the single prior art reference, or
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`combine two or more references, in a manner that provides the elements of the
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`claimed invention. This reason may come from a teaching, suggestion, or
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`motivation to combine, or may come from the reference(s) themselves, the
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`knowledge or “common sense” of a POSITA, or from the nature of the problem to
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`be solved, and this reason may be explicit or implicit from the prior art as a whole.
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`I have been informed that, under the law, the combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than
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`yield predictable results. I also understand it is improper to rely on hindsight in
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`making the obviousness determination.
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`C. Claim Construction
`18.
`I have been informed by Petitioner’s counsel that the ’506 patent has
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`expired, and therefore the claim terms are to be interpreted according to their
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`ordinary and customary meaning as understood by a POSITA at the time of the
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`invention. Importantly, under this standard applied here (which is sometimes
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`referred to as the Phillips standard), the POSITA is deemed to read the claim term
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`not only in the context of the particular claim in which the disputed term appears,
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`but in the context of the entire patent, including the specification. When claim
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`terms are in dispute, I understand that the intrinsic record of a patent, including the
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`claim language, the written description, and the file history, should first be
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`consulted to construe the disputed terms. I understand that extrinsic evidence may
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`be considered along with the intrinsic record to further help construe disputed
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`terms.
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`19.
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`I also understand that the words of the claims should be interpreted as
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`they would have been interpreted by a POSITA at the time the invention was made
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`(not today). Because I do not know at what date the invention as claimed was
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`made, I have used the filing date of the ’506 patent as the point in time for claim
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`interpretation purposes, which as I previously explained, was September 5, 1996.
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`However, the interpretations that I provide below would have also been correct if
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`the date of invention was anywhere within the early to mid-1990s.
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`20.
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`I understand that claim elements may be expressed as a means or step
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`for performing a specified function without recital of the structure for performing
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`such function. When a claim element is expressed in this manner, I understand
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`that the claim is construed to cover the corresponding structure, material, or acts
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`for performing the specified function described in the patent’s specification and
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`equivalents thereof. I understand that construing a claim element expressed as a
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`means or step for performing a specified function involves a two-step process.
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`First, the claimed function must be identified from the language of the claim.
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`Second, the decision maker must determine what structure, if any, disclosed in the
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`specification corresponds to the claimed function. For purposes of construing
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`means-plus-function elements in which the claimed function is performed by
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`software of a computing device, I have been informed that the corresponding
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`structure in the specification must include an algorithm for performing the
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`function, and that a simple recitation of “software” without providing some detail
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`about the means to accomplish the function is not enough. EON Corp. IP
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`Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621-22 (Fed. Cir. 2015);
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`Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008). I
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`understand that, if the specification fails to describe adequate corresponding
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`structure for the claimed function, then the claim is not amenable to construction
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`(and is therefore invalid as indefinite). See Finisar, 523 F.3d at 1340-41; see also
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351-54 (Fed. Cir. 2015); Space
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`Exploration Tech. Corp. v. Blue Origin LLC. See IPR2014-01378, Pap. No. 6 at
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`pp. 8-9 (PTAB March 3, 2015) (determining that “[b]ecause [the claim at issue]
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`lacks adequate structural support for some of the means-plus function limitations,
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`it is not amenable to construction”).
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`21. Based on my knowledge and experience in the field and my review of
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`the ’506 patent and file history, I believe that a person of ordinary skill in the art at
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`the time of the ’506 patent would have had a bachelor’s degree in electrical
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`engineering, or a related discipline, and at least two years of experience working
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`with wireless communication technologies, or an equivalent advanced education.
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`My analysis and conclusions as expressed herein are thus based on the perspective
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`of a person of ordinary skill in the art having this level of knowledge and skill at
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`the time of the ’506 patent.
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`22. Because I do not know at what date the alleged invention as claimed
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`was made, I have used the filing date of the ’506 patent as the point in time from
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`which my opinions from the perspective of one of ordinary skill in the art are
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`based. Again, as previously explained, that date was September 5, 1996.
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`However, my analysis of the prior art and the conclusion herein would also apply
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`even if the date of the alleged invention as claimed was anywhere within the early
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`to mid-1990s after the dates of the prior art references cited here.
`V. MATERIALS CONSIDERED
`23. My analyses set forth in this declaration are informed by my
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`experience in the field of wireless communications and associated technologies.
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`Based on my above-described experience in the field of wireless communications,
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`I believe that I am considered to be an expert in the field. Also, based on my
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`experiences, I understand and know of the capabilities of persons of ordinary skill
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`in this field during the early to mid-1990s and specifically during the time before
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`the September 1996 priority date for the ’506 patent (described in ¶¶ 21-22, 35-39),
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`and I taught, participated in organizations, and worked closely with many such
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`persons in the field during that time frame.
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`24. As part of my independent analysis for this Declaration, I have
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`considered the following: the background knowledge/technologies that were
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`commonly known to persons of ordinary skill in this field during the time before
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`the priority date for the ’506 patent (described below in ¶¶ 35-39); my own
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`knowledge and experiences gained from my work experience in the fields of
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`wireless communications and electrical engineering generally; my experience in
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`teaching and advising others in those subjects; and my experience in working with
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`others involved in those fields. In addition, I have analyzed the following
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`publications and materials:
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` U.S. Pat. No. 5,894,506 to Pinter (“the ’506 patent”) (Ex. 1001)
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` Select Portions of the Prosecution History of the ’506 patent (Serial No.
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`08/708,696) (Ex. 1002)
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` U.S. Patent No. 5,588,009 to Will (“Will”) (Ex. 1007)
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` EP Patent Application No. 89108853 to Shimura et al. (“Shimura”) (Ex.
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`1012)
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` U.S. Patent No. 5,850,594 to Cannon et al. (“Cannon”) (Ex. 1013)
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` Claim Construction Order in Mobile Telecommunications Technologies,
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`LLC, v. Google, Inc., Case No. 2:16-cv-00002 (E.D. Tex) (Ex. 1008)
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` MTEL’s Opening Claim Construction Brief in Mobile
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`Telecommunications Technologies, LLC, v. Google, Inc., Case No. 2:16-
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`cv-0002 (E.D. Tex) (Ex. 1011)
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` MTEL’s alleged evidence of earlier conception presented in IPR2014-
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`01033 and IPR2014-01034 (Exs. 1014-1019; “alleged conception
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`documents”)
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`25. Although this Declaration refers to selected portions of the cited
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`references for the sake of brevity, it should be understood that these are examples,
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`and that one of ordinary skill in the art would have viewed the references cited
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`herein in their entirety and in combination with other references cited herein or
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`cited within the references themselves. The references used in this Declaration,
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`therefore, should be viewed as being incorporated herein in their entireties.
`VI. BACKGROUND OF THE ’506 PATENT
`A.
`Subject Matter Overview
`26. The ’506 patent is directed to “exchange of electronic messages
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`among subscribers to an electronic messaging network,” such as a network for a
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`paging system. Ex. 1001 at 1:7-10. The ’506 discloses communication of text
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`messages between user devices (such as pagers) in which a user selects from a file
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`of “canned messages” that represent “common phrases” stored at the user’s device
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`which causes the user’s device to transmit a “message code” representative of the
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`canned message to a “network operations center” which routes the selected
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`message to a “receiving party terminal” for display to a recipient user. Id. at 1:38-
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`67. The ’506 patent discloses that the network operations center (“NOC”)
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`contains a file of canned messages that corresponds to the file of canned messages
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`stored at the user device that sent the message code. Id. at 5:64-6:6.
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`27. Message codes transmitted by the user device to the NOC can be used
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`by the NOC to retrieve the text of a canned message from the message code file
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`stored at the NOC such that the NOC then transmits the message in text form to the
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`receiving device. Ex. 1001 at 6:7-24. In some cases, if the receiving device is
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`capable of receiving messages in message code form, the NOC transmits a
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`message code indicative of the canned message to the receiving device rather than
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`the full text of the message. Id. The receiving device then retrieves the text of the
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`canned message from one or more files stored at the receiving device and displays
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`the message to the user of the receiving device. Id. at 6:25-41. The system of
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`the ’506 patent also allows users to customize canned messages by including
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`“desired parameter(s), such as, for example, time, date, phone number, etc.” or
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`“response options” along with the canned message for transmission to the NOC
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`and ultimately another user device. Ex. 1001 at 3:59-4:55. The ’506 patent
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`indicates that messages can include any combination of message codes, numeric
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`parameters, response options, response codes, and text. Id. at 4:33-55; 6:7-24.
`B.
`File History of the ’506 Patent
`28. As part of my preparation of this declaration, I reviewed select
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`portions of the file history of the ’506 patent (Ex. 1002). I understand that the
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`application that led to the ’506 patent was filed on September 5, 1996, and that this
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`date is also the earliest effective filing date of the patent. The ’506 patent
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`eventually issued on April 13, 1999. See Ex. 1001 at Cover Page. The USPTO
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`mailed an office action on February 26, 1998. See Ex. 1002 at pp. 75-82. In that
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`Office Action, the Examiner rejected each of claims 1-7 and 15-21 as either
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`anticipated by U.S. Patent No. 5,327,486 to Wolff et al. (“Wolff”), as obvious over
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`Wolff in view of U.S. Patent No. 5,381,466 to Shibayama et al. (“Shibayama”), or
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`as being dependent upon a rejected base claim. Id. I note that none of the
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`references that I have listed above and which I analyze below with respect to the
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`claims of the ’506 patent were cited by the Examiner during prosecution. In
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`response to the rejections raised in the February 26, 1998 Office Action, the
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`Applicant amended claims 1, 15, 16, and 19 and added in new independent claim
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`22 (issued claim 21). Ex. 1002 at pp. 84-90. Following this response to the Office
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`Action, the Examiner issued a Notice of Allowance on September 29, 1998 that
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`included an Examiner’s Amendment to correct a typographical error in claim 19,
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`but provided no reasons for allowance. Id. at pp. 102-105.
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`29. As explained in detail below, I do not agree that claims 8-14 and 19-
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`21 are patentable over the prior art. The Will reference (Ex. 1007), for example,
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`does in fact provide a straightforward teaching of a messaging communications
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`system that allows for transmission of a message code representative of a canned
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`message (also referred to as a “preprogrammed message” by Will) from a pager to
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`a network operations center (Will’s central communications station) for ultimate
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`transmission to a receiving device that also allows for addition of embedded
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`response options for transmission along with messages Ex. 1007 at 4:3-10; 21:15-
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`24; FIGs. 32-33; 26:13-29; 11:63-65; 12:47-13:13; 17:58-63; 13:66-14:28.
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`Furthermore, when Will is taken in view of the Shimura and Cannon references,
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`the obvious and predictable combination provides for a system that includes every
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`element of claims 8-14 and 19-21 including receiving a message at a
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`communications network in message code form and transmission message from
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`the communications network to a receiving device in message code form. See, e.g.,
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`Ex. 1012 at 8:5-13; 5:52-6:29; 11:11-55; Ex. 1013 at 8:50-61.
`C. C.
`Invention Date of the ’506 Patent
`30.
`I have been informed that, in earlier IPR proceedings against the ’506
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`patent (IPR2014-01033 and IPR2014-01034), the Patent Owner alleged some
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`claims of the ’506 patent were entitled to an invention date that is earlier than the
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`filing date of the ’506 patent, and submitted several documents in support of this
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`allegation. I have reviewed these documents (“alleged conception documents,”
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`cited here as exhibits 1014-1019) submitted by the Patent Owner in the earlier
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`IPR2014-01033 and IPR2014-01034 cases, and I understand what a POSITA
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`would have recognized from these documents in 1995. Based on my knowledge
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`and experience in this field and my review of these alleged conception documents,
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`it is plain to see that a POSITA would have recognized that these alleged
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`conception documents fail to show that the inventor had possession of all elements
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`in each of claims 8-14 and 19-21.
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`31.
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`In particular, Exhibits 1014-1019 imply that other people employed
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`by the Patent Owner (in some cases, persons other than the listed inventor of
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`the ’506 patent, Gregory J. Pinter, (see Ex. 1015 at 1; Ex. 1016 at 1)) had
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`contemplated the traditional practice of storing “canned messages” at a first
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`messaging device and the ability to respond to a “multiple choice response
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`message,” (Ex. 1015 at 1-2; Ex. 1017 at 4-5), but these alleged conception
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`documents plainly fail to show that the inventor was in possession of at least
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`several specific elements expressly recited in independent claims 8, 19, and 21
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`prior to the filing date of the ’506 patent. Regarding independent claim 8, a
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`POSITA would have recognized that Exhibits 1014-1019 do not include any
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`description of the conception (and certainly not a reduction to practice) of at least
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`claim elements [8.4] and [8.6]-[8.8]:
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`[8.4] selecting an appropriate canned message from the second file
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`for transmission to the second terminal;
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`[8.6] relaying the message code assigned to the selected canned
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`message from the network operation center to the second terminal;
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`[8.7] retrieving the selected canned message from the third file using
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`the assigned message code received from the network operation
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`center; and
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`[8.8] displaying the selected canned message retrieved from the third
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`file.
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`For example, Ex. 1015 recites that a “[s]ubscriber can send any of these special
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`canned message [sic] to NOC” but goes on to indicate that the “canned message is
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`addressed to the NOC,” not “for transmission to the second terminal” as required
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`by claim element [8.4]. Ex. 1015 at 1. Further, although Ex. 1017 states “[t]o save
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`airtime a token message identifier (special character and a number) is broadcast
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`instead of the entire text,” (Ex. 1017 at 42), there is no description of “relaying the
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`message code assigned to the selected canned message” that was received from a
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`first terminal “from the network operation center to the second terminal” as
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`required by claim element [8.6]. There is also no disclosure of using the “token
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`18
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`message identifier” (Ex. 1017 at 42) to “retriev[e] the selected canned message
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`from the third file” stored at the receiving device “using the assigned message code
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`received from the network operation center” or of “displaying the selected canned
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`message retrieved from the third file” as required by claim elements [8.7]-[8.8].
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`32. The testimony of Mr. Pinter (Ex. 1014) and the newspaper articles
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`(Exs. 1018-1019) also do not show conception (and certainly not a reduction to
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`practice) of at least claim elements [8.4] and [8.6]-[8.8]. In his testimony, Mr.
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`Pinter indicated that, at best, the high level concept of “canned messages” was
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`conceived at a date earlier than the filing of the ’506 patent. Ex. 1014 at 31:3-
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`32:14. Similarly, the newspaper articles previously cited by the Patent Owner only
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`indicate a generically high level concept of originating a message at a beeper
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`device using “ready-made replies” stored at the device (which as explained below,
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`was a traditional practice known to others in this field), but the newspaper articles
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`never show the inventor’s possession of the use of message codes for transmitting
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`messages—and certainly not the specifically recited features related to “message
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`codes” in claim elements [8.4] and [8.6]-[8.8]. Ex. 1018 at 2; Ex. 1019 at 1.
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`33. Further, in addition to their dependency from independent claim 8,
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`numerous features recited in dependent claims 9-14 are also not contemplated by
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`the alleged conception documents in Exhibits 1014-1019. For example, a POSITA
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`would have recognized the fact that the alleged conception documents do not
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`19
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`
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`include any description of transmitting a parameter or multiple response options
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`along with a message in message code form (e.g., as recited in dependent claims
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`10-13 (as well as claims 19-21, discussed below)). Exhibit 1017 tersely mentions
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`“the capability for a subscriber to respond to a Multiple Choice Response (MCR)
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`message with an MCR response and with a canned response” (Ex. 1017 at 4) but it
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`never shows that the “Multiple Choice Response (MCR) message” is
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`communicated in message code form or that either of the “MCR response” or the
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`“canned response” are communicated along with a message code. There is also no
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`disclosure of communicating “canned multiple response options” using “response
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`codes” in Exhibits 1014-1019. Numerous other features of claims 8-14 are also
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`lacking any mention in Exhibits 1014-1019. Therefore, based on my knowledge
`
`and experience and my review of Exhibits 1014-1019, it is plain to see that a
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`POSITA would have recognized that these documents do not show conception
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`(and most certainly not a reduction to practice) for the entirety of the subject matter
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`of claims 8-14.
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`34. Regarding claims 19-21, Exhibits 1014-1019 do not include any
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`description of at least claim elements [19.1]-[19.2], [19.5], [20], [21.1], and [21.5]:
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`[19.1] a memory storing a file of canned messages and message
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`codes respectively assigned thereto and a file of canned multiple
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`response options and response codes respectively assigned thereto;
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`20
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`[19.2] means for retrieving the file of canned messages and the file of
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`canned multiple response options from the memory;
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`[19.5] a transmitter for transmitting the message code assigned to the
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`selected canned message and the response code assigned to the at
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`least one multiple response option over a communications link of the
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`network.
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`
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`[20] The message terminal defined in claim 19, further including
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`means for adding parameters to the selected canned message for
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`inclusion with the assigned message code transmitted over the
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`communications link.
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`[21.1] a memory storing a file of canned messages, and message
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`codes respectively assigned thereto and a file of canned multiple
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`response options and response codes respectively assigned thereto;
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`[21.5] a message compiler for compiling the assigned message code
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`and the response codes assigned to the selected multiple response
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`options into a message for transmission by the transmitter;
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`
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`For example, Exhibit 1017 discloses “the capability for a subscriber to respond to a
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`Multiple Choice Response (MCR) message with an MCR response and with a
`21
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`canned response” (Ex. 1017 at 4) but does not disclose that the user’s message
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`terminal stores “a file of canned multiple response options and response codes
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`respectively assigned thereto” as required by claim elements [19.1] and [21.1].
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`Exhibits 1014-1019 also do not provide support for “a message compiler for
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`compiling the assigned message code and the response codes assigned to the
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`selected multiple response options into a message for transmission by the
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`transmitter” (claim element [21.5]) as there is no description of the use of response
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`codes in any of Exhibits 1014-1019. Similarly, Exhibits 1014-1019 do not include
`
`a description of “retrieving . . . the file of canned multiple response options from
`
`the memory” as required by claim element [19.2]. There is also no disclosure of
`
`transmitting a parameter along with an “assigned message code” as required by
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`claim [20]. As with claims 8-14, supra, the testimony of Mr. Pinter (Ex. 1014) and
`
`the newspaper articles (Exs. 1018-1019) also do not show conception (and
`
`certainly not a reduction to practice) of claims 19-21. Numerous other features of
`
`claims 19-21 are also lacking any mention in Exhibits 1014-1019. Therefore,
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`based on my knowledge and experience and my review of Exhibits 1014-1019, it is
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`plain to see that a POSITA would have recognized that these documents do not
`
`show conception (and most certainly not a reduction to practice) for the entirety of
`
`the subject matter of claims 19-21.
`VII. BACKGROUND KNOWLEDGE ONE OF SKILL IN THE ART
`WOULD HAVE HAD PRIOR TO THE FILING OF THE ’506 PATENT
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`22
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`35. A POSITA would have known paging networks to have been in
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`existence for many decades prior to the filing of the ’506 patent, with the first
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`commercial network for paging becoming available in