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
`
`
`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.: 19473-0348IP4
`
`
`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) ....................................... 1
`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, 10-13 and 19-21 are Obvious under § 103
`over Will in view of Shimura ................................................................. 12
`B. Ground 2: Claims 9 and 14 are Obvious under § 103 over Will
`in view of Shimura and Cannon ............................................................ 82
`VIII. CONCLUSION ............................................................................................ 88
`
`
`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 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. GOOGLE1007 27:56-67; 13:8-13; 21:10-12;
`
`GOOGLE1012, 1:34-35 (“the message data is coded as an alpha-numeric code”);
`
`5:34-57; 7:12-18; GOOGLE1013, 8:5-9.
`
`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.
`
`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)
`
`1
`
`
`
`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
`
`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
`
`19-21 of the ’506 patent based on different and non-redundant grounds and two
`
`2
`
`
`
`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 IPR19473-0348IP4@fr.com (referencing No.
`
`19473-0348IP4 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
`
`not barred or estopped from requesting IPR.
`
`3
`
`
`
`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 Peter Rysavy (GOOGLE1003) is also
`
`included in support of this Petition.
`
`Ground
`
`Ground 1
`
`Claims
`8, 10-13,
`
`Basis for Rejection
`Obvious under § 103 based upon U.S. 5,588,009
`
`19-21
`
`(“Will”) in view of EP 89108853 (“Shimura”)
`
`Ground 2 9, 14
`
`Obvious under § 103 based Will in view of 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
`
`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
`
`4
`
`
`
`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 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, GOOGLE1014-1019
`
`contain no description 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
`
`
`
`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 8-14 and 19-21 (IPR2017-00534). The primary references of these
`
`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 at 1:42-50;
`
`
`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 evidence of diligence/reduction to practice is lacking even
`
`more. GOOGLE1003 at ¶¶30-34.
`
`6
`
`
`
`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 8-14 and 19-21
`
`relies on the primary reference for such features. The two petitions also address
`
`distinct motivations for combining the references. There are numerous other dis-
`
`tinctions between the two petitions which will become readily apparent upon re-
`
`view of the unique analysis in the petitions.
`
`V.
`
`SUMMARY OF THE ’506 PATENT
`The ’506 patent describes “a method of communicating messages between
`
`subscribers of an electronic messaging network” in which “canned messages” are
`
`communicated “using unique, abbreviated message codes respectively assigned to
`
`the canned messages.” GOOGLE1001, 1:50-67. A “canned message code” for a
`
`message selected at the transmitting device is received at the receiving device and
`
`used to “retrieve[] the associated canned message[]” which is then displayed on the
`
`receiving device. Id., 6:25-41. Users can customize canned messages by adding
`
`“parameter(s), such as, for example, time, date, phone number, etc.” Id., 3:59-63.
`
`The ’506 further describes allowing a user of a receiving device to select a canned
`
`7
`
`
`
`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, 56-184. 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
`
`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
`
`8
`
`
`
`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
`
`(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
`
`
`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
`
`
`
`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
`
`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
`
`3 See footnote 2 re possible §112 defects.
`
`10
`
`
`
`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
`
`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-
`
`
`4 See footnote 2 re possible §112 defects
`
`5 See footnote 2 re possible §112 defects
`
`11
`
`
`
`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, 10-13 and 19-21 are Obvious under § 103 over Will
`in view of Shimura
`Will discloses a communication system for transmitting text messages be-
`
`tween user devices using canned message codes and, in combination with Shimura,
`
`discloses all elements of claims 8, 10-13 and 19-21. Briefly, Will discloses 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”); 9:24-26. The indi-
`
`vidual communications units and the central station store matching preprogrammed
`
`message lists and preprogrammed response lists as shown in FIG. 30:
`
`12
`
`
`
`
`
`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.
`
`Shimura discloses “a radio paging communication system” in which “mes-
`
`sage data is coded as an alphanumeric code” such that “standard expressions”
`
`stored in a “standard expression memory” of a user device are retrieved and dis-
`
`played using the received code. GOOGLE1012, 1:34-35; 5:34-57; 7:7-18. FIG. 6
`
`shows examples of standard expression codes:
`
`13
`
`
`
`
`
`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:
`
`14
`
`
`
`
`
`GOOGLE1012, FIG. 11; 6:13-29; 7:7-18; 11:22-55.
`
`For the reasons articulated below, a POSITA would have been prompted to
`
`modify Will in view of Shimura’s suggestions to achieve several known benefits.
`
`[8.P] A method of communicating messages between subscribers to an
`electronic messaging network, comprising the steps of:
`Will in view of Shimura discloses the preamble. GOOGLE1003, ¶¶56-57,
`
`47-51. For example, Will discloses a system for sending “brief messages” between
`
`“miniature communications unit[s]” using message codes. GOOGLE1007, 3:60-
`
`4:3; 27:57-67; 13:8-13; 21:15-24 (describing that the communication is between
`
`two communications units).
`
`Similarly, as described below, Shimura discloses “a radio paging communi-
`
`cation system” for transmitting messages in coded form to a user’s pager.
`
`GOOGLE1013, 1:34-35; 5:34-57; 7:7-18; 6:13-34; infra, Analysis of Element
`
`15
`
`
`
`[8.6] (describing the predictable combination). Shimura also describes users as
`
`“subscriber[s].” Id., 3:28-31; 8:23-26.
`
` [8.1] 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 discloses this element. GOOGLE1003, ¶58. 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 indicated by the
`
`code 0-127 and retrieved from the Preprogrammed Message List.”); 27:56-67 (De-
`
`scribing “preprogrammed original messages” as “canned messages”).
`
`Each preprogrammed message in the preprogrammed message list has a cor-
`
`responding code:
`
`
`
`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)”).
`
`[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;
`
`16
`
`
`
`Will in view of Shimura discloses this element. GOOGLE1003, ¶¶59-60.
`
`For example, Will discloses that a “Preprogrammed Message List . . . [is] con-
`
`tained 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
`
`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,
`
`¶59. FIG. 33 shows preprogrammed messages from the preprogrammed message
`
`list displayed at the communications unit:
`
`17
`
`
`
`
`
`GOOGLE1007, FIG. 33; 26:13-22; 27:56-28:2.
`
`Shimura also discloses that each pager stores a file of canned messages and
`
`message codes. GOOGLE1003, ¶¶60, 51. Shimura’s “paging receiver includes a
`
`standard expression memory.” GOOGLE1012, 6:30-34. The standard expression
`
`memory stores messages and corresponding “standard expression abbreviation
`
`numbers.” GOOGLE1012, 7:9-18; see also 8:5-13; FIG. 6.
`
`[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;
`Will in view of Shimura discloses this element. GOOGLE1003, ¶¶61-63.
`
`For example, Will discloses that each communications unit stores a “Prepro-
`
`grammed Message List” and that “the preprogrammed messages in the Prepro-
`
`grammed 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 mes-
`
`18
`
`
`
`sage list as being stored in memory of the communications unit). Will also dis-
`
`closes that the receiving device can be “another communications unit.” Id., 21:15-
`
`24; see also 10:58-61 (describing multiple communications units identified using
`
`“10-bit identification field[s]”). Being as each communications unit in Will’s sys-
`
`tem stores a Preprogrammed Message List with corresponding message codes, a
`
`POSITA would have understood that in at least some embodiments, Will discloses
`
`that the receiving device stores a Preprogrammed Message List with corresponding
`
`message codes. GOOGLE1003, ¶62.
`
`Shimura further expressly discloses that the receiving pager stores a file of
`
`canned messages and message codes. GOOGLE1003, ¶63. Shimura’s “paging re-
`
`ceiver includes a standard expression memory.” GOOGLE1012, 6:30-34. The
`
`standard expression memory at the paging receiver stores “standard expressions”
`
`(i.e., canned messages) and corresponding “standard expression abbreviation num-
`
`bers.” GOOGLE1012, 7:9-18. FIG. 6 shows the standard expression table con-
`
`taining abbreviation numbers and corresponding canned text:
`
`
`
`19
`
`
`
`
`
`GOOGLE1012, FIG. 6; 8:5-13.
`
`A POSITA applying Shimura’s suggestions to Will’s two-way messaging
`
`system (for the multiple reasons articulated in the analysis of claim element [8.6],
`
`infra) 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 and the
`
`message table stored at the server to ensure accuracy of messages transmitted from
`
`the sending 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;
`Will in view of Shimura discloses this element. GOOGLE1003, ¶64. For
`
`example, Will discloses “preprogrammed original messages that can be selected by
`
`20
`
`
`
`the user” and that “when the selection is made (again with the key) the message
`
`will be sent.” GOOGLE1007, 27:56-64. As shown in FIGs. 32 and 33, the user
`
`uses a thumbwheel to scroll through preprogrammed messages and “[i]f the cursor
`
`points to a preprogrammed message [when key 48 is pressed] that message is
`
`sent”:
`
`
`
`21
`
`
`
`
`
`GOOGLE1007, FIGs. 32-33; 26:13-29. Will also discloses that the receiving de-
`
`vice can be “another communications unit.” Id., 21:15-24. Shimura also discloses
`
`that the receiving device is a subscriber’s pager. GOOGLE1012, 6:14-34; 3:28-31;
`
`8:23-26; infra, Analysis of Element [8.6] (describing the predictable combination).
`
`[8.5] sending the message code assigned to the selected canned message to
`the network operation center;
`Will in view of Shimura discloses this element. GOOGLE1003, ¶¶65-67, 47.
`
`For example, Will discloses that upon selection of a preprogrammed message at
`
`the communications unit “the message will be sent.” GOOGLE1007 27:56-64.
`
`Will discloses that “[c]ommunication from each unit to the central communications
`
`station is carried out by a combination of infrared light and wire or optical fiber.”
`
`Id., 4:11-17; see also 8:21-27 (describing transmitting messages from a user device
`
`“to the central communication station 3”); 7:60-65; 9:27-35; FIG. 1. Will discloses
`
`22
`
`
`
`the transmission of coded messages to the central station from the communications
`
`unit. Id., Abstract. Will further discloses that what he calls the “original mes-
`
`sage[s]” sent to the central station are coded or “canned” messages represented by
`
`a “code 0-127.” GOOGLE1007, 12:47-13:13; see also 25:45-51 (describing that
`
`each preprogrammed message consists of “a 7-bit code”); 42:1-3 (describing
`
`transmitting the “message as a numerical index . . . rather than the text itself”).
`
`
`
`Shimura also discloses that messages are transmitted in message code form,
`
`as shown by the “message code word” in FIG. 2D:
`
`GOOGLE1012, FIG. 2D; 5:34-35; 8:5-13. Shimura shows the standard expression
`
`codes included in the transmitted messages:
`
`
`
`23
`
`
`
`
`
`GOOGLE1012, FIG. 11; 11:11-55; GOOGLE1003, ¶¶66-67; infra, Analysis of El-
`
`ement [8.6] (describing the predictable combination).
`
`[8.6] relaying the message code assigned to the selected canned message
`from the network operation center to the second terminal;
`Will in view of Shimura discloses this element. GOOGLE1003, ¶¶68-73.
`
`For example, Will discloses transmitting messages from a communications unit in
`
`message code form and that the receiving device can be “another communications
`
`unit.” GOOGLE1007, 21:15-24; 12:47-13:13; 25:45-51; 42:1-3. While Will does
`
`not expressly disclose that messages can be transmitted to receiving terminals in
`
`message code form, such functionality was well-known in prior art systems.
`
`GOOGLE1003, ¶¶68-73. Shimura discloses that when a message is received in
`
`message code form at a communications base station, the base station transmits the
`
`received message code (“abbreviation No.”) to the receiving device.
`
`24
`
`
`
`GOOGLE1012, 8:5-13; see also 5:52-59 (describing that “a message codeword
`
`corresponding to the caller’s message data” is transmitted to a “paging receiver.”).
`
`FIG. 11 of Shimura shows the standard expression codes included in the messages
`
`transmitted to the receiving unit:
`
`
`
`GOOGLE1012, FIG. 11; 11:11-55; GOOGLE1003, ¶69.
`
`Multiple reasons would have prompted a POSITA to implement the well-
`
`known practice of transmitting a message code from a first user device to a com-
`
`munications network and then from the communications network to a receiving
`
`device—as suggested by Shimura—in the two-way wireless messaging system dis-
`
`closed by Will. First, a POSITA would have been prompted to incorporate Shi-
`
`mura’s suggestion regarding transmitting a message to a pager in message code
`
`form (by relaying the received message code to the receiving device) into Will’s
`
`25
`
`
`
`messaging system so that the amount of data transmitted to the receiving device is
`
`reduced, thereby preserving network resources. GOOGLE1003, ¶¶70, 54, 37-39.
`
`Shimura’s suggestions for transmitting a message code entered at a
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