IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Cameron et al.
`U.S. Pat. No.:
`
`5,754,946
`
`Issue Date:
` May 19, 1998
`App. Serial No.: 08/124,219
`Filing Date:
` Sept. 21, 1993
`Title:
` NATIONWIDE COMMUNICATION SYSTEM
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`
`
`Attorney Docket No.: 19473-0361IP1
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`
`
`DECLARATION OF MR. PETER RYSAVY
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`1
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`GOOGLE 1003
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`
`
`In re Patent of: Cameron et al.
`U.S. Pat. No.:
`
`5,754,946
`
`Issue Date:
` May 19, 1998
`App. Serial No.: 08/124,219
`Filing Date:
` Sept. 21, 1993
`Title:
` NATIONWIDE COMMUNICATION SYSTEM
`
`
`
`Attorney Docket No.: 19473-0361IP1
`
`
`
`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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`ASSIGNMENT ................................................................................................ 3
`I.
`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 ’946 PATENT ................................................... 14
`A. Subject Matter Overview............................................................................. 14
`B.
`Priority Date of the ’946 Patent ................................................................... 15
`C.
`File History of the ’946 Patent .................................................................... 16
`VII.
`INTERPRETATIONS OF THE ’946 PATENT CLAIMS AT ISSUE......... 20
`VIII. OVERVIEW OF CONCLUSIONS FORMED ............................................. 45
`IX. ANALYSIS OF AKIYAMA IN VIEW OF NELSON ................................. 46
`X. ADDITIONAL REMARKS ........................................................................121
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`2
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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. 5,754,946 (“the ’946 patent”) (Ex. 1001).
`
`2.
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`I have been asked to provide my independent analysis of the ’946
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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 ’946 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 ’946 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.
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`9.
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`Beginning in 1994, while continuing my work as a consultant, I also
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`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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`4
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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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`10. 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. My
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`past and current clients include more than ninety-five organizations.
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`11.
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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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`12. 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.
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`5
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`13.
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`In my over two decades of experience consulting on wireless
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`technologies, I have studied or worked on many different wireless technologies
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`and standards, e.g., for cellular networks and wireless local-area networks.
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`14. 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
`15.
`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.
`
`A. Anticipation
`16.
`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
`
`includes the claimed limitations, it anticipates.
`
`17.
`
`I have been informed that a claim is invalid under 35 U.S.C. § 102(a)
`
`if the claimed invention was known or used by others in the U.S., or was patented
`
`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
`6
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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
`
`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
`18.
`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
`
`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 21, 1993, as the date of the
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`alleged invention in my obviousness analyses, although in many cases the same
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`analysis would hold true even if the date of the alleged invention occurred earlier
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`7
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`than September 21, 1993 (especially given the earlier publication dates of the prior
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`art publications in Exs. 1004 and 1005 as described below).
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`19.
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`I have been informed that a claim can be obvious in light of a single
`
`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
`20.
`I have been informed by Petitioner’s counsel that the ’946 patent is
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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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`21.
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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 ’946 patent as the point in time for claim
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`interpretation purposes, which as I previously explained, was September 21, 1993.
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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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`22.
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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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`9
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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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`10
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`23. Based on my knowledge and experience in the field and my review of
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`the ’946 patent and file history, I believe that a person of ordinary skill in the art at
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`the time of the ’946 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 ’946 patent.
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`24. 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 ’946 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 21, 1993.
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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 late
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`1980s to early 1990s after the dates of the prior art references cited here (e.g., refer
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`to the earlier publication dates of Exs. 1004 and 1005).
`V. MATERIALS CONSIDERED
`25. 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 1993 priority date for the ’946 patent (described in detail in ¶¶ 23,
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`24, 31), and I taught, participated in organizations, and worked closely with many
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`such persons in the field during that time frame.
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`26. 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 ’946 patent (described in detail in ¶¶ 23, 24, 31); 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:
`
`Ex. 1001
`Ex. 1002
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`
`
`U.S. Pat. No. 5,754,946 to Cameron et al. (“the ’946 patent”)
`Prosecution History of the ’946 patent (Serial No. 08/124,219)
`English Translation of Japanese Unexamined Patent
`Application Publication No. H2-213237 (“Akiyama”)
`
`U.S. Patent No. 4,814,763 (“Nelson”)
`U.S. Patent No. 5,396,537 (“Schwendeman”)
`
`12
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`
`
`Ex. 1007
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1013
`
`Ex. 1015
`Ex. 1016
`Ex. 1019
`Ex. 1020
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`U.S. Patent No. 5,311,516 (“Kuznicki”)
`Selected Excerpt from The American Heritage Dictionary,
`Third Edition (1992)
`
`Selected Excerpt from The New IEEE Standard Dictionary
`of Electrical and Electronics Terms (1993)
`
`Joint Pretrial Order (Mobile Telecommunications
`Technologies, LLC, v. Samsung Electronics Co., Case No.
`2:15-cv-00183 (E.D. Tex. March 29, 2016))
`
`U.S. Patent No. 4,697,281 (“O’Sullivan”)
`U.S. Patent No. 5,153,582 (“Davis”)
`U.S. Patent No. 4,766,434 (“Matai”)
`U.S. Patent No. 5,666,552 (“Greyson”)
`Pager – Wikipedia, Retrieved from
`https://en.wikipedia.org/wiki/Pager, Dec. 19, 2016
`RAM Mobile Data – Wikipedia, Retrieved from
`https://en.wikipedia.org/wiki/RAM_Mobile_Data, Dec. 19,
`2016
`DataTAC – Wikipedia, Retrieved from
`https://en.wikipedia.org/wiki/DataTAC, Dec. 19, 2016
`DataTAC Definition from PC Magazine Encyclopedia,
`Retrieved from
`http://www.pcmag.com/encyclopedia/term/55441/datatac, Dec.
`19, 2016
`Claim Construction Memorandum And Order (Mobile
`Telecommunications Technologies, LLC v. Google Inc., Case
`No. 2:16-CV-2-JRG-RSP (E.D. Tex. Dec. 19, 2016)) Dckt.
`No. 128.
`
`
`
`27. Although this Declaration refers to selected portions of the cited
`
`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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`
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`13
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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 ’946 PATENT
`A.
`Subject Matter Overview
`28. The ’946 patent discloses a mobile unit and a communications
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`network having two-way wireless communication capabilities. Ex. 1001 at 1:12-
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`17. The mobile unit is configured to receive messages transmitted by the
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`communications network, to detect errors in received messages, and to display
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`received messages to a user. Id. at 5:8-28, 17:8-23. In some embodiments, the
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`mobile unit highlights portions of a displayed message that have been detected to
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`contain errors. Id. at 17:10-14.
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`29. The ’946 patent discusses a “request retransmission button” provided
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`on the mobile unit which, when selected, triggers the mobile unit to transmit a
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`signal to the communications network requesting retransmission of a portion of a
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`displayed message that contains errors. Id. at 15:39-41, 17:8-23. Figure 16
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`(copied and annotated below) shows a representative mobile unit that includes such
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`a “request retransmission button” (labeled 1622):
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`14
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`30. According to the ’946 specification, the request retransmission button
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`1622 affords a user of the mobile unit the ability to selectively request a portion of
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`a message to be retransmitted, which purportedly “increases system efficiency and
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`lowers user costs by allowing the user the flexibility to elect not to request
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`retransmission of messages which contain errors but can be understood
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`nonetheless.” Ex. 1001 at 17:24-27.
`B.
`Priority Date of the ’946 Patent
`31. Based on my review of the ’946 patent and file history, I understand
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`that the ’946 patent was filed on September 21, 1993, and claims priority to U.S.
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`Serial No. 08/973,918, which was filed November 12, 1992, and is now issued as
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`U.S. Patent No. 5,590,403 (the ’403 patent). I have reviewed the ’403 patent and
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`compared its disclosure to that of the ’946 patent. Based on my review of the ’403
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`patent, I was unable to identify any teachings/text/drawings that would support
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`various elements of claims 1, 2, 4, and 6-9 of the ’946 patent. For example,
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`the ’946 patent discusses a “retransmission button 1622” that may bear on element
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`[1.3] of the ’946 patent, which recites “a switch actuatable to specify a portion of
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`the displayed message for which a user desires retransmission from the
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`communications network.” However, the ’403 patent includes no discussion of a
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`“request retransmission button” or a “switch actuatable to specify a portion of the
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`displayed message for which a user desires retransmission from the
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`communications network.” Rather, this and related teachings appear to have been
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`first added to the disclosure when the ’946 patent was filed in September 1993.
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`32. Additionally, I understand that the Patent Owner, in related
`
`proceedings involving the ’946 patent, has acknowledged that claims of the ’946
`
`patent are not entitled to the earlier filing date of the ’403 patent. Ex. 1013 at 2.
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`For at least these reasons, for purposes of my analysis herein, I have considered the
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`priority date of the ’946 patent to be September 21, 1993, and not the earlier date
`
`of the ’403 patent of November 12, 1992.
`C.
`File History of the ’946 Patent
`33. As part of my preparation of this declaration, I reviewed select
`
`portions of the file history of the ’946 patent (Ex. 1002), including the Office
`
`Actions mailed during prosecution, the Applicant’s responses to the Office
`
`Actions, and the Notice of Allowance that followed thereafter. I understand that
`
`
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`16
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`the application that led to the ’946 patent was filed on September 21, 1993, and is a
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`continuation-in-part application that claims priority to U.S. Serial No. 08/973,918,
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`which was filed on November 12, 1992. The ’946 patent eventually issued on May
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`19, 1998. See Ex. 1001 at Cover Page.
`
`34. Specifically, in a first Office action (May 1994), the Examiner
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`rejected all nine of the original claims as obvious over Tsurumi (Japanese Patent
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`Publication JPS6482715A) in view of O’Sullivan (Ex. 1015), including
`
`independent claims 1 and 6 (issued claims 1 and 7, respectively). Ex. 1002 at pp.
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`213-20 (first action), 137-38 (original claims). Independent claim 8 that issued in
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`the ’946 patent was not originally presented or examined. In response (November
`
`1994), the applicants argued that the combination of Tsurumi and O’Sullivan did
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`not disclose “a means for transmitting a signal to the communication network
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`requesting retransmission of at least portions of a message.” Ex. 1002 at p. 224.
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`35.
`
`In a second Office action (January 1995), the Examiner rejected
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`independent claims 1 and 6, and most of the dependent claims, as obvious over
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`Tsurumi in view of Spragins (“Telecommunications Protocols and Design” by
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`Spragins et al., Feb. 1991). Ex. 1002 at p. 232. In response (May 1995), the
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`applicants made no claim amendments and argued that Tsurumi and Spragins did
`
`not disclose a “switch means for allowing a user to request retransmission of at
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`least portions of said message from the communications network” (claim 1) or
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`17
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`
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`“means for receiving radio frequency signals from the mobile unit indicating that
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`the user desires the network to retransmit a portion of the message to the mobile
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`units” (claim 6). Id. at p. 238. According to the applicants, Spragin disclosed
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`automatic retransmission requests, in contrast to the claimed subject matter that
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`“does not automatically transmit acknowledgement signals and negative
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`acknowledgment signals.” Id. at pp. 237-38.
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`36.
`
`In a third Office action (August 1995), the Examiner maintained the
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`previous rejections over Tsurumi in view of Spragins, emphasizing that the
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`combination of teachings from these references rendered the claims obvious. Id. at
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`pp. 242-47. In response (January 1996), the applicants amended claim 1 to recite
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`that the “switch means” allowed a user to “selectively request retransmission” of
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`only “a portion” of a message. Id. at p. 251. Regarding the amendments, the
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`applicants explained that “[a]fter viewing the received message displayed on the
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`display, a user can elect whether to request a portion of the message to be
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`retransmitted.” Id. at p. 252.
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`37.
`
`In a fourth Office action (May 1996), the Examiner made new
`
`rejections of independent claims 1 and 6, and most of the dependent claims, as
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`obvious over Davis (Ex. 1016) in view of Spragins. The Examiner stated that
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`“Davis teaches a switching means for allowing a user to acknowledge the received
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`message by depressing … push button switches A-D.” Id. at p. 269. In response to
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`18
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`this fourth action (November 1996), the applicants then amended element [1.3] to
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`recite “a switch actuatable to specify a portion of the displayed message for which
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`a user desires retransmission from the communications network,” and also
`
`amended element [1.4] to recite that the retransmission signal is transmitted to the
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`communications network “only upon actuation of the switch.” Ex. 1002 at pp. 274-
`
`75. The applicants argued in the response that none of the cited references
`
`disclosed element [1.3]. The applicants also added new claims 10 and 11 (issued
`
`claims 8 and 9, respectively).
`
`38.
`
`In a fifth Office action (February 1997), the Examiner rejected only
`
`independent claim 6; all other claims were indicated to be allowable. The
`
`applicants subsequently amended claim 6 to include, in the preamble, language
`
`pertaining to the mobile unit. Ex. 1002 at pp. 295-96. The Examiner allowed the
`
`application thereafter. Id. at p. 304.
`
`39. Following this response to the fifth Office action, the Examiner
`
`allowed the application on October 28, 1997, and provided the following reasons
`
`for allowance (Ex. 1002 at p. 303):
`
`
`
`19
`
`
`
`
`
`40. As explained in greater detail below, I do not agree that claims 1, 2, 4,
`
`and 6-9 are patentable over the prior art. The Akiyama reference (Ex. 1004), for
`
`example, provides a straightforward teaching or suggestion of a “a switch
`
`actuatable to specify a portion of the displayed message for which a user desires
`
`retransmission from the communications network,” but Akiyama was never cited
`
`in an Office Action during the initial examination. My detailed analysis of how
`
`these references disclose all the elements of claims 1, 2, 4, and 6-9 is set forth
`
`below in Section VIII.
`VII. INTERPRETATIONS OF THE ’946 PATENT CLAIMS AT ISSUE
`41. For the purpose of my analysis herein, I have been asked to adopt
`
`interpretations of the following phrases from the claims of the ’946 patent. I
`
`understand that the ’946 patent has been the subject of multiple federal district
`
`court proceedings in which claims or terms/phrases of the ’946 patent have been
`
`
`
`20
`
`
`
`construed by the court or stipulated by the parties, including a concurrent
`
`proceeding between the Petitioner and Patent Owner before the U.S. District Court
`
`for the Eastern District of Texas (Case No. 2:16-cv-2-JRG-RSP), and proceedings
`
`involving the Patent Owner and other parties, e.g., Samsung (Case No. 2:13-cv-
`
`00259), Apple (Case No. 2:13-cv-00258), LG Electronics (Case No. 2:13-cv-
`
`00947), Amazon (Case No. 2:13-cv-00883), and Blackberry (Case No. 3:12-cv-
`
`01652). I have considered the Claim Construction Orders issued by the district
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`courts in each of these cases.
`
`42. For the purpose of my analysis herein, I have adopted the
`
`constructions from the Claim Construction Memorandum and Order in Mobile
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`Telecommunications Technologies, LLC v. Google Inc., Case No. 2:16-CV-2-JRG-
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`RSP (E.D. Tex. Dec. 19, 2016) (Ex. 1025), where appropriate, for the terms
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`discussed below.
`
`43. To the extent that differences may exist between any of the
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`constructions that I have adopted for the purposes of analysis herein (as outlined in
`
`the following paragraphs) and constructions adopted in various other proceedings
`
`involving the ’946 patent, it should be understood that such differences in the
`
`claim constructions would not necessarily affect my analysis or conclusions
`
`regarding why the prior art cited here discloses all elements of claims 1, 2, 4, and
`
`6-9 (especially in light of the technical similarities between the preferred
`
`
`
`21
`
`
`
`embodiment of the ’946 patent and the prior art publications in Exs. 1004 and 1005
`
`and in Exs. 1006 and 1007).
`
`44. Claim 1 recites the phrase “means for receiving a radio frequency
`
`message from the network.” This phrase is a means-plus-function claim element
`
`that specifies the function of “receiving a radio frequency message from the
`
`network” without reciting the underlying acts or structure that are used to perform
`
`this function. Under the claim construction standard referred to in paragraphs 20-
`
`22, supra, I understand that this phrase must therefore be construed to cover only
`
`the corresponding acts or structure that are disclosed in the ’946 patent
`
`specification for performing the claimed function of “receiving a radio frequency
`
`message from the network,” and equivalents thereof. Based on my review of
`
`the ’946 patent and its file history, I understand that the ’946 patent specification
`
`discusses, for example, that “the mobile transceiver 1500 … includes a receiver
`
`section for receiving signals from the base transmitters of the system.” Ex. 1001 at
`
`14:47-49; see also id. at 14:52-65, FIGs. 15 (1506), 17 (1706). I understand that,
`
`in concurrent litigation concerning the ’946 patent between the Petitioner and the
`
`Patent Owner before the U.S. District Court for the Eastern District of Texas, the
`
`Court considered this claim element and determined that the corresponding
`
`structure disclosed in the ’946 specification for the recited function is “antenna
`
`1502, transmit/receive switch 1504, and receiver 1506; and equivalents thereof.”
`
`
`
`22
`
`
`
`Ex. 1025 at pp. 62-63, 65. For purposes of my analysis herein, I adopt the Court’s
`
`construction that the corresponding structure for the mean-plus-function element is
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`“antenna 1502, transmit/receive switch 1504, and receiver 1506; and equivalents
`
`thereof.” The ’946 patent describes these structures as follows:
`
`
`
`Ex. 1001 at 14:52-65; see also id. at FIG. 15. Based on my knowledge and
`
`experience in the field and my review of the ’946 patent, I am confident a POSITA
`
`would have recognized that these structures (e.g., antenna 1502, transmit/receive
`
`switch 1504, and receiver 1506) were ubiquitous in wireless RF equipment (e.g.,
`
`pagers, cellular phones) by September 1993 when the ’946 patent was filed.
`
`Because the ’946 patent does not provide further detail concerning the underlying
`
`structure or functionality of antenna 1502 or transmit/receive switch 1504, and
`
`because the structures/functions described with respect to the receiver 1506 are
`
`merely conventional aspects of a receiver 1506 capable of receiving RF signals
`
`that were ubiquitously implemented before 1993, a POSITA would have
`23
`
`
`
`
`
`understood that certain other components capable of “receiving a radio frequency
`
`message from the network” would have also served as suitable equivalents of
`
`antenna 1502, transmit/receive switch 1504, and receiver 1506.
`
`45. Claim 1 recites the phrase “a switch actuatable.” Based on my review
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`of the ’946 patent and its file history, and applying the claim construction standard
`
`referred to in paragraphs 20-22, supra, a POSITA would have understood that this
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`phrase means “a switch that requires user activation.” The file history, for
`
`example, shows that during original examination of the ’946 patent, the Applicant
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`explained that the “user may elect” a portion of a message using a “switch means”
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`element that had been recited in an earlier iteration of the claim language. Ex.
`
`1002 at pp. 252-53. I also note that the ’
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