IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.: 19473-0361IP2
`
`
`
`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
`
`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 UNITED STATES PATENT NO. 5,754,946
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`
`
`
`Attorney Docket No.: 19473-0361IP2
`
`
`
`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
`
`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 UNITED STATES PATENT NO. 5,754,946
`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) ....................... 2
`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 .................. 3
`C.
`Statement of Non-Redundancy .................................................................... 4
`V.
`SUMMARY OF THE ’946 PATENT .......................................................... 6
`A.
`Brief Description ............................................................................................ 6
`B.
`Priority Date of the ’946 Patent .................................................................... 6
`C.
`Summary of the Original Prosecution ......................................................... 7
`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 ’946 PATENT IS UNPATENTABLE
`UNDER § 103 ............................................................................................... 18
`A. GROUND 1: Claims 1, 2, 4, And 7-9 Are Obvious Under § 103
`Over Schwendeman In View Of Kuznicki ................................................ 19
`B. GROUND 2: Claims 2 And 9 Are Obvious Under § 103 Over
`Schwendeman In View Of Kuznicki and Akiyama .................................. 60
`
`i
`
`
`
`C. GROUND 3: Claims 4 And 6 Are Obvious Under § 103 Over
`Schwendeman In View Of Kuznicki And Gutman .................................. 65
`VIII. CONCLUSION ............................................................................................ 70
`
`
`ii
`
`
`
`EXHIBITS
`
`GOOGLE1001 U.S. Pat. No. 5,754,946 to Cameron et al. (“the ’946 patent”)
`GOOGLE1002 Prosecution History of the ’946 patent (Serial No. 08/124,219)
`GOOGLE1003 Declaration of Peter Rysavy
`GOOGLE1004 English Translation of Japanese Unexamined Patent Application
`Publication No. H2-213237 (“Akiyama”)
`
`GOOGLE1005 U.S. Patent No. 4,814,763 (“Nelson”)
`GOOGLE1006 U.S. Patent No. 5,396,537 (“Schwendeman”)
`GOOGLE1007 U.S. Patent No. 5,311,516 (“Kuznicki”)
`GOOGLE1008 U.S. Patent No. 4,940,963 (“Gutman”)
`GOOGLE1009 Selected Excerpt from The American Heritage Dictionary, Third
`Edition (1992)
`
`GOOGLE1010 Selected Excerpt from The New IEEE Standard Dictionary
`of Electrical and Electronics Terms (1993)
`
`GOOGLE1011 Complaint (Mobile Telecommunications Technologies, LLC v.
`Google Inc., Case No. 2:15-cv-2123 (E.D. Tex. Dec. 31, 2015))
`
`GOOGLE1012 Complaint (Mobile Telecommunications Technologies, LLC v.
`Google Inc., Case No. 2:16-cv-0002 (E.D. Tex. Jan. 4, 2016))
`
`GOOGLE1013 Selected Excerpt from Joint Pretrial Order (Mobile Telecommu-
`nications Technologies, LLC, v. Samsung Electronics Co., Case
`No. 2:15-cv-00183 (E.D. Tex. March 29, 2016))
`
`[RESERVED]
`GOOGLE1014
`GOOGLE1015 U.S. Patent No. 4,697,281 (“O’Sullivan”)
`GOOGLE1016 U.S. Patent No. 5,153,582 (“Davis”)
`GOOGLE1017
`[RESERVED]
`GOOGLE1018
`[RESERVED]
`
`iii
`
`
`
`GOOGLE1019 U.S. Patent No. 4,766,434 (“Matai”)
`GOOGLE1020 U.S. Patent No. 5,666,552 (“Greyson”)
`GOOGLE1021
`[RESERVED]
`GOOGLE1022
`[RESERVED]
`GOOGLE1023
`[RESERVED]
`GOOGLE1024
`[RESERVED]
`GOOGLE1025
`[RESERVED]
`GOOGLE1026 U.S. Patent No. 4,875,038 (“Siwiak”)
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`Google Inc. (“Petitioner”) petitions for Inter Partes Review (“IPR”) under
`
`35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1, 2, 4, and 6-9 of U.S. Patent
`
`5,754,946 (“the ’946 patent”). The ’946 patent describes a mobile unit that dis-
`
`plays messages received from the network and includes a switch that can be select-
`
`ed by a user to request retransmission of a portion of the displayed message (e.g., a
`
`portion of the message that contains errors). GOOGLE1001, Abstract; 4:60-5:45,
`
`17:8-41, FIG. 16. These techniques, however, were not new by the time the ’946
`
`patent was filed in September 1993. For example, the teachings of Schwendeman
`
`in view of Kuznicki show that these claimed techniques were known well before
`
`September 1993, but none of these references were considered during prosecution.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R § 42.8
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Google Inc. is the Petitioner and the real party-in-interest. No other party
`
`had access to the Petition, and no other party had any control over, or contributed
`
`to any funding of, the preparation or filing of the present Petition.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Patent Owner filed a first complaint on December 31, 2015 in the Eastern
`
`District of Texas alleging that Petitioner infringes the ’946 patent. GOOGLE1011.
`
`Patent Owner’s first complaint included errors, and a second complaint (allegedly
`
`correcting the errors) was filed on January 4, 2016. GOOGLE1012. Patent Owner
`
`1
`
`
`
`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 ’946 patent by Microsoft (Case No.
`
`2:15-cv-2122). Microsoft subsequently filed with the PTAB a pair of petitions for
`
`inter partes review of the ’946 patent (IPR2016-01576 & IPR2016-01581).
`
`Patent Owner previously filed complaints alleging infringement of patents,
`
`including the ’946 patent, by other parties, including Samsung (Case Nos. 2:15-cv-
`
`00183 and 2:13-cv-00259), Apple (Case Nos. 2:14-cv-01057 and 2:13-cv-00258),
`
`AT&T (Case No. 2:14-cv-00897), ZTE (Case No. 2:13-cv-00946), LG Electronics
`
`(Case No. 2:13-cv-00947), HTC (Case No. 2:13-cv-00948), Amazon (Case No.
`
`2:13-cv-00883), and Blackberry (Case No. 3:12-cv-01652). Patent Owner brought
`
`the case against Blackberry in the Northern District of Texas, while all other cases
`
`were brought in the Eastern District of Texas.
`
`Petitioner also submitted—on this same day—an additional IPR petition
`
`against the ’946 patent based on different, non-redundant grounds. See infra Sec-
`
`tion IV.C.
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel:
`
`
`
`2
`
`
`
`LEAD COUNSEL
`Michael T. Hawkins, Reg. No. 57,867
`
`BACK-UP COUNSEL
`Nicholas Stephens, Reg. No. 74,320
`
`3200 RBC Plaza, 60 South Sixth Street
`
`Tel: 612-776-2018
`
`Minneapolis, MN 55402
`
`Patrick J. Bisenius, Reg. No. 63,893
`
`Tel: 612-337-2569 / Fax 612-288-9696
`
`Tel: 612-776-2048
`
`D.
`Service Information
`Please address all correspondence and service to the address listed above.
`
`Petitioner consents to electronic service by email, IPR19473-0361IP2@fr.com
`
`(referencing No. 19473-0361IP2 and cc’ing hawkins@fr.com, nstephens@fr.com,
`
`and bisenius@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 ’946 patent is available for IPR and that Petition-
`
`er is not barred or estopped from requesting IPR.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`Petitioner requests IPR of claims 1, 2, 4, and 6-9 on the grounds listed in the
`
`table below and supported by the declaration of Peter Rysavy (GOOGLE1003).
`
`None of the art cited in these grounds were considered during original examination
`
`3
`
`
`
`of the ’946 patent.
`
`Ground Claims
`
`1
`
`2
`
`3
`
`1, 2, 4, 7-9
`
`2, 9
`
`4, 6
`
`Basis for Rejection
`Obvious under § 103 based upon Schwendeman
`
`(GOOGLE1006) in view of Kuznicki (GOOGLE1007)
`
`Obvious under § 103 based upon Schwendeman in view of
`
`Kuznicki and Akiyama (GOOGLE1004)
`
`Obvious under § 103 based upon Schwendeman in view of
`
`Kuznicki and Gutman (GOOGLE1008)
`
`Both Schwendeman and Kuznicki qualify as §102(e) prior art, having U.S.
`
`patent filing dates before the filing date of the ’946 patent.
`
`C.
`Statement of Non-Redundancy
`Petitioner, on the same day, is filing another IPR petition (see IPR2017-
`
`00536) against claims 1, 2, 4, and 6-9 of the ’946 patent. The asserted grounds of
`
`unpatentability set forth in each of the petitions are not redundant, and the Board
`
`should institute IPR on all the grounds set forth in the petitions. For example, the
`
`primary reference (GOOGLE1006, Schwendeman) applied in this petition disclos-
`
`es a two-way wireless network, but relies on the secondary reference (GOOGLE
`
`1007, Kuznicki) for the well-known suggestion of, e.g., transmitting portions of a
`
`message between a network and a mobile unit. See, infra, Section VII.
`
`In contrast, the primary reference (GOOGLE1004, Akiyama) applied in the
`
`4
`
`
`
`concurrently filed petition (see IPR2017-00536) discloses most elements of inde-
`
`pendent claims 1, 7, and 8 (including that messages can be fragmented and trans-
`
`mitted in separate portions to a mobile unit) but relies on the secondary reference
`
`(GOOGLE1004, Nelson) for the ordinary and predictable suggestion of imple-
`
`menting a two-way wireless system in which a mobile unit (e.g., a pager) both re-
`
`ceives radio frequency signals from a network and transmits radio frequency sig-
`
`nals to the network. Also, unlike the publications cited in the present petition here
`
`(which are § 102(e) prior art), both Akiyama and Nelson qualify as § 102(b) prior
`
`art, having publication dates more than one year before the filing date of the ’946
`
`patent. Thus, the primary references in each of these concurrently filed petitions
`
`distinctly address a different set of elements of the independent claims, and the ob-
`
`vious-ness combinations show ordinary systems from different ranges of time in
`
`the prior art that are worthy of consideration on the merits.
`
`Finally, Petitioner notes that Schwendeman and Kuznicki were among other
`
`publications cited in unrelated IPR petitions against the ’946 patent (see IPR2016-
`
`01576, IPR2016-01581), 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; (4) were filed by an unrelated petitioner (Microsoft Corp.) that
`
`is believed to have settled with Patent Owner (refer to GOOGLE1025 at 7).
`
`5
`
`
`
`V.
`
`SUMMARY OF THE ’946 PATENT
`A. Brief Description
`The ’946 patent discloses a mobile unit and a communications network hav-
`
`ing two-way wireless communication capabilities. GOOGLE1001, 1:12-17. The
`
`mobile unit is configured to receive messages transmitted by the communications
`
`network, to detect errors in received messages, and to display received messages to
`
`a user. Id. at 5:8-28, 17:8-23. In some embodiments, the mobile unit highlights
`
`portions of a displayed message that have been detected to contain errors. Id. at
`
`17:10-14. The ’946 patent describes a “request retransmission button” that is con-
`
`figured, when selected, to trigger transmission of a signal, from the mobile unit to
`
`the communications network, which requests the communications network to re-
`
`transmit a portion of the displayed message for which errors have been detected.
`
`Id. at 15:39-41, 17:8-23; FIG. 16 (element 1622).
`
`B.
`Priority Date of the ’946 Patent
`The ’946 patent was filed September 21, 1993, as a continuation-in-part of
`
`U.S. Serial No. 08/973,918, which was filed on November 12, 1992. Despite the
`
`priority claim to an earlier application, none of the challenged claims 1, 2, 4, or 6-9
`
`are entitled to the earlier filing date because they are all directed to new matter that
`
`was first disclosed in the application filed September 21, 1993. GOOGLE1003,
`
`¶31. Unlike the continuation-in-part parent case, the ’946 patent added new mat-
`
`ter/text/drawings related to the “request retransmission button” on the mobile unit.
`
`6
`
`
`
`Id. at 15:39-41, 17:8-23; FIG. 16. Indeed, Patent Owner previously stipulated in
`
`litigation that the claims of the ’946 patent are entitled only to the later filing date
`
`of September 21, 1993—not the November 1992 filing date of the parent applica-
`
`tion. GOOGLE1013, 2.
`
`C.
`Summary of the Original Prosecution
`The ’946 patent issued with three independent claims (claims 1, 7, and 8).
`
`GOOGLE1001, 31:63-32:60. The claims were allowed in January 1998 following
`
`several rounds of rejections and responses. GOOGLE1002, 304 (Notice of Allow-
`
`ance). Much of the prosecution focused on claim element [1.3], or earlier versions
`
`thereof. The original version of element [1.3] recited “switch means for allowing a
`
`user to request retransmission of at least portions of said message from the com-
`
`munications network.” GOOGLE1002, 137. The applicants amended this element
`
`several times before arriving at the allowed version, which recites “a switch actua-
`
`table to specify a portion of the displayed message for which a user desires re-
`
`transmission from the communications network.” GOOGLE1002, 274-75. The
`
`file history shows that the applicants replaced the original language that referred to
`
`“at least portions” of a message with “a portion” of a message in order to limit the
`
`claim’s coverage to retransmissions of less than an entirety of the message.
`
`GOOGLE1002, 250-56 (emphasis added). Additionally, the amended language
`
`required that a message is displayed to the user before requesting retransmission of
`
`7
`
`
`
`a portion of the message. GOOGLE1002, 253.
`
`Nothing in the prosecution history indicates that the Examiner ever consid-
`
`ered the teachings of Schwendeman in view of Kuznicki during the original exam-
`
`ination.
`
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. §§ 42.104(b)(3)
`The ’946 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. § 42.100(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 (refer to GOOGLE1025) construing the
`
`claims under the Phillips standard.
`
`“means for receiving a radio frequency message from the network”
`
`(claim 1) – This claim element is interpreted under 35 U.S.C. §112, ¶6. The speci-
`
`fication discusses that “the mobile transceiver 1500 … includes a receiver section
`
`for receiving signals from the base transmitters of the system.” GOOGLE1001,
`
`14:47-49; see also id. at 14:52-65, FIGs. 15 (1506), 17 (1706); GOOGLE1003,
`
`¶44. Figures 15 and 17 depict receivers 1506 and 1706, respectively:
`
`8
`
`
`
`
`
`In the concurrent litigation between the parties here, the Eastern District of
`
`Texas has interpreted this element under the Phillips standard so that the recited
`
`function of “receiving a radio frequency message from the network” has a corre-
`
`sponding structure of “antenna 1502, transmit/receive switch 1504, and receiver
`
`1506; and equivalents thereof.” GOOGLE1025, 62-63, 65; GOOGLE1003, ¶44;
`
`see also GOOGLE1001, 14:52-65 (discussing the antenna, transmit/receive switch
`
`and receiver), FIG. 15. For the purpose of this IPR, Petitioner adopts this construc-
`
`tion.
`
`“a switch actuatable” (claim 1) – This phrase means a switch that requires
`
`user activation. GOOGLE1003, ¶¶45-46. This construction is supported by the
`
`claim language itself, the specification and file history, and confirmed by interpre-
`
`tation made by a U.S. district court in concurrent litigation between the parties here
`
`(GOOGLE1025, p. 49-50, 52). Notably, every embodiment of the ’946 patent de-
`
`9
`
`
`
`scribes the switch (e.g., request retransmission button 1622) as requiring user acti-
`
`vation. GOOGLE1001, 16:40-42, 17:8-11; 17:24-27. The applicant’s statements
`
`during prosecution further support this construction, as the applicant explained the
`
`benefit of a “switch means” claim element, which was later amended to recite the
`
`claimed “switch.” GOOGLE1002, pp. 252-253 (“user may elect”) (emphasis add-
`
`ed); see also id. at p. 277. Moreover, in the concurrent litigation between the par-
`
`ties here, and applying the same Phillips standard that is applicable this proceed-
`
`ing, the district court also interpreted this element to mean “a switch that requires
`
`user activation.” GOOGLE1025, p. 49-50, 52.
`
`Additionally, the ’946 specification teaches that, when the user activates the
`
`button 1622, the “specified portion” of the message is then automatically selected
`
`by the mobile unit. GOOGLE1003, ¶¶46, 86. For instance, “[w]hen the mobile
`
`unit receives a message containing errors, it displays the message on display 1606
`
`with the erroneous portions highlighted (e.g., underlined, placed in brackets, or
`
`printed in reverse video),” and if after reading the message and determining that
`
`the displayed message is not acceptable, “the user can cause the system to retrans-
`
`mit the message, or the erroneous portions, by pressing request retransmission but-
`
`ton 1622.” GOOGLE1001, 17:10-18. Indeed, the ’946 specification discloses no
`
`examples of the user providing input to the mobile unit to manually select a partic-
`
`ular portion of the displayed message for which to request retransmission.
`
`10
`
`
`
`“means for transmitting, only upon actuation of the switch, a signal to
`
`the communications network requesting retransmission of said specified por-
`
`tion of said message” (claim 1) – This claim element is interpreted under 35
`
`U.S.C. §112, ¶6. The specification discusses an example of a transmitter of a mo-
`
`bile unit that that transmits signals to a communications network as “transmitter
`
`1520.” GOOGLE1001, 15:36-45, FIGs. 15, 16; see also 17:18-23. In the concur-
`
`rent litigation between the parties here, the district court has interpreted this ele-
`
`ment under the Phillips standard so that the recited function of “transmitting, only
`
`upon actuation of the switch, a signal to the communications network requesting
`
`retransmission of said specified portion of said message” has a corresponding
`
`structure of “input switches 1516, transmit logic 1518, transmitter 1520, trans-
`
`mit/receive switch 1504, and antenna 1502; and equivalents thereof.”
`
`GOOGLE1025, 51-52; GOOGLE1003, ¶¶47-48; see also GOOGLE1001, 14:52-
`
`55, 15:36-45, FIG. 15. For the purpose of this IPR, Petitioner adopts this construc-
`
`tion.
`
`“means for receiving said specified portion retransmitted from the
`
`communications network and for displaying the received specified portion on
`
`the display” (claim 1) – This claim element is interpreted under 35 U.S.C. §112,
`
`¶6. First regarding the “receiving” function, the specification discusses that the
`
`mobile unit includes “a receiver section for receiving signals from the base trans-
`
`11
`
`
`
`mitters of the system.” GOOGLE1001, 14:47-65, 17:21-23, FIGs. 15 (1506), 17
`
`(1706); see also GOOGLE1003, ¶¶49-50, 52.
`
`
`
`Second regarding the “displaying” function, the specification discusses that
`
`“[a] display 1514, preferably an LCD display, is also connected to the display and
`
`storage logic 1508 to display messages and various other information to the user.”
`
`GOOGLE1001, 15:8-11; see also id. at 14:66-15:3, FIGs. 15, 16. Notably, howev-
`
`er, the specification lacks any express disclosure of this function being performed
`
`by the mobile unit (e.g., displaying the “received specified portion” that was re-
`
`transmitted to the mobile unit). GOOGLE1003, ¶¶49, 51-52. In the concurrent
`
`litigation between the parties here, the district court has interpreted this element
`
`under the Phillips standard so that the recited functions of “receiving said specified
`
`portion retransmitted from the communications network and for displaying the re-
`
`ceived specified portion on the display” have a corresponding structure of “antenna
`
`12
`
`
`
`1502, transmit/receive switch 1504, receiver 1506, display and storage logic sec-
`
`tion 1508 or 1708, and display 1514; and equivalents thereof.”1 GOOGLE1025,
`
`52; GOOGLE1003, ¶52; see also GOOGLE1001, 14:52-65 (discussing antenna,
`
`transmit/receive switch, receiver), 15:6-11 (discussing display and storage logic
`
`and display device), FIGS. 15, 17. For the purpose of this IPR, Petitioner adopts
`
`this construction.
`
`“means for detecting errors in the received message” (claim 2) – This
`
`claim element is interpreted under 35 U.S.C. §112, ¶6. The specification discloses,
`
`for example, that at least some messages transmitted from the communications
`
`network may include an “appropriate error correcting code” that can be decoded by
`
`the mobile unit. GOOGLE1001, 15:24-30. In the concurrent litigation between
`
`the parties here, the district court has interpreted this element under the Phillips
`
`standard so that the recited function of “detecting errors in the received message”
`
`1 For purposes of the concurrent litigation, Petitioner raised (or will raise when
`
`permitted to do so) in the litigation why the constructions/scope advanced by Pa-
`
`tent Owner raise possible defects under §112. See, e.g., EON Corp. IP Holdings
`
`LLC v. AT & T Mobility LLC, 785 F.3d 616, 621-22 (Fed. Cir. 2015). For purposes
`
`of this IPR proceeding, the prior art discloses these elements even under the con-
`
`struction applied in the concurrent litigation between the parties here
`
`(GOOGLE1025, 52).
`
`13
`
`
`
`has a corresponding structure of “display and storage logic section 1508, error cor-
`
`recting code; and equivalents thereof.” GOOGLE1025, 53-55; GOOGLE1003,
`
`¶¶53-54; see also GOOGLE1001, 15:24-27, 26:4-6 (discussing error correcting
`
`codes). For the purpose of this IPR, Petitioner adopts this construction.
`
`“said display including means for highlighting said errors when the
`
`message is displayed on said display” (claim 2) – This claim element is interpret-
`
`ed under 35 U.S.C. §112, ¶6. The ’946 specification states that “[w]hen the mobile
`
`unit receives a message containing errors, it displays the message on display 1606
`
`with the erroneous portions highlighted (e.g., underlined, placed in brackets, or
`
`printed in reverse video.” GOOGLE1001, 17:10-14; see also id. at 15:8-11, 14:66-
`
`15:3, FIGs. 15, 16. In the concurrent litigation between the parties here, the district
`
`court has interpreted this element under the Phillips standard so that the recited
`
`function of “highlighting said errors when the message is displayed on said dis-
`
`play” has a corresponding structure of “display and storage logic 1508 (pro-
`
`grammed to display a message with erroneous portions underlined, placed in
`
`brackets, or printed in reverse video), and display 1514 (or 1606); and equivalents
`
`thereof.” GOOGLE1025, 63, 65; GOOGLE1003, ¶55. For the purpose of this
`
`IPR, Petitioner adopts this construction.
`
`“means for transmitting a signal to a sender of the message indicating
`
`that the user has read the message” (claim 6) – This claim element is interpreted
`
`14
`
`
`
`under 35 U.S.C. §112, ¶6. The function that this element recites is “transmitting a
`
`signal to a sender of the message indicating that the user has read the message.”
`
`With respect to this function, the specification of the ’946 patent (col. 17:28-33)
`
`discusses that the communications network (rather than the mobile unit) “trans-
`
`mit[s] a message back to the sender informing the sender that the message has been
`
`read, as well as for other purposes.” GOOGLE1001, 17:31-34. The specification
`
`does not clearly link the recited function to any particular structure of the commu-
`
`nications network. GOOGLE1003, ¶¶56-57. For purposes of this IPR, Petitioner
`
`adopts the interpretation that this claim element refers to a combination of software
`
`and/or hardware in a communications network that is capable of transmitting a sig-
`
`nal to a sender of the message indicating that the user has read the message, or
`
`equivalents thereof. See generally GOOGLE1001, 6:64-9:41 (describing “major
`
`elements of a preferred communication system”); FIG. 6; see also GOOGLE1003,
`
`¶¶56-57.
`
` “means for transmitting radio frequency signals containing a message
`
`to the mobile unit” (claim 7) – This claim element is interpreted under 35 U.S.C.
`
`§112, ¶6. The ’946 specification discloses that the communications network in-
`
`cludes one or more base transmitters for transmitting radio frequency signals con-
`
`taining a message to a mobile unit, e.g., base transmitter 612, base transmitter 614,
`
`base transmitter 1300, or base transmitter 1400. See GOOGLE1001, 7:13-22,
`
`15
`
`
`
`8:54-63, 13:60-14:42, FIGs. 6, 13, and 14 (describing base transmitters for trans-
`
`mitting radio frequency signals containing messages to mobile units);
`
`GOOGLE1003, ¶58. In the concurrent litigation between the parties here, the dis-
`
`trict court has interpreted this element under the Phillips standard so that the recit-
`
`ed function of “transmitting radio frequency signals containing a message to the
`
`mobile unit” has a corresponding structure of “base transmitter 612, base transmit-
`
`ter 614, base transmitter 1300, or base transmitter 1400; and equivalents thereof.”
`
`GOOGLE1025, 63-65; GOOGLE1003, ¶58. For the purpose of this IPR, Petition-
`
`er adopts this construction.
`
`“means for receiving, from the mobile unit, radio frequency signals rep-
`
`resenting a portion of the message that the user desires retransmission” (claim
`
`7) – This claim element is interpreted under 35 U.S.C. §112, ¶6. The function that
`
`this element recites is “receiving, from the mobile unit, radio frequency signals
`
`representing a portion of the message that the user desires retransmission.”
`
`GOOGLE1003, ¶59. The ’946 specification discloses that the communications
`
`network includes one or more base receivers that receive RF signals from the mo-
`
`bile unit, e.g., base receiver 628, base receiver 630, base receiver 632, base receiv-
`
`er 634, analog base receiver (FIG. 18(A)), digital base receiver (FIG. 18(B)), base
`
`receiver (FIG. 19). See GOOGLE1001, 7:30-46, 9:14-17, 14:49-51, 17:18-21,
`
`18:15-19:38, FIGs. 6, 18(a), and 18(b) (describing base receivers for receiving ra-
`
`16
`
`
`
`dio frequency signals from mobile units), 19; GOOGLE1003, ¶59. In the concur-
`
`rent litigation between the parties here, the district court has interpreted this ele-
`
`ment under the Phillips standard so that the recited function of “receiving, from the
`
`mobile unit, radio frequency signals representing a portion of the message that the
`
`user desires retransmission” has a corresponding structure of “base receiver 628,
`
`base receiver 630, base receiver 632, base receiver 634, ‘analog base receiver’
`
`(Fig. 18(A)), or ‘digital base receiver’ (Fig. 18(B) & Fig. 19); and equivalents
`
`thereof.” GOOGLE1025, 64, 66; GOOGLE1003, ¶59. For the purpose of this
`
`IPR, Petitioner adopts this construction.
`
`“means for retransmitting radio frequency signals containing the por-
`
`tion of the message to the mobile unit” (claim 7) – This claim element is inter-
`
`preted under 35 U.S.C. §112, ¶6. The ’946 specification discloses that the com-
`
`munications network includes one or more base transmitters that transmit RF sig-
`
`nals containing messages to the mobile unit, e.g., base transmitter 612, base trans-
`
`mitter 1300, or base transmitter 1400. See GOOGLE1001, 7:13-22, 8:54-63,
`
`13:60-14:42, FIGs. 6, 13, and 14 (describing base transmitters for retransmitting
`
`radio frequency signals containing messages to mobile units); GOOGLE1003, ¶60.
`
`In the concurrent litigation between the parties here, the district court has interpret-
`
`ed this element under the Phillips standard so that the recited function of “retrans-
`
`mitting radio frequency signals containing the portion of the message to the mobile
`
`17
`
`
`
`unit” has a corresponding structure of “base transmitter 612, base transmitter 614,
`
`base transmitter 1300, or base transmitter 1400; and equivalents thereof.”
`
`GOOGLE1025, 64, 66; GOOGLE1003, ¶60. For the purpose of this IPR, Petition-
`
`er adopts this construction.
`
`“highlighting said errors in the message on the mobile unit” (claim 9) –
`
`This phrase is construed to mean applying visual modification to errors in a mes-
`
`sage displayed on a mobile unit so as to draw attention to the errors.
`
`GOOGLE1003, ¶61. This meaning comports with the plain meaning of the term
`
`“highlighting” and is consistent with the specification and file history of the ’946
`
`patent. The specification does not provide an express definition for “highlighting,”
`
`but suggests a broad range of examples of highlighting errors in a message: “high-
`
`lighted (e.g., underlined, placed in brackets, or printed in reverse video).”
`
`GOOGLE1001, 17:10-14. Moreover, dictionary definitions of “highlighting” con-
`
`firm the plain meaning of this term in 1993. See GOOGLE1010, p. 598 (“[a] tech-
`
`nique in which a display element is emphasized through visual modification such
`
`as blinking, brightening, or intensity modulation” or “[t]o draw attention to a dis-
`
`play element by visual modification”); GOOGLE1009, p. 853 (“[t]o make promi-
`
`nent; emphasize”).
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’946 PATENT IS UNPATENTABLE UNDER § 103
`
`18
`
`
`
`As detailed below, each of claims 1, 2, 4, and 6-9 of the ’946 patent is ren-
`
`dered obvious by one or more combinations of references. GOOGLE1003, ¶62.
`
`A. GROUND 1: Claims 1, 2, 4, And 7-9 Are Obvious Under § 103
`Over Schwendeman In View Of Kuznicki
`The combined teachings of Schwendeman (GOOGLE1006) and Kuznicki
`
`(GOOGLE1007) provide all elements of claims 1, 2, 4, and 7-9 and render these
`
`claims obvious. GOOGLE1003, ¶¶62-68.
`
`Schwendeman describes techniques for “delivering messages to one or more
`
`remote units from a central communication system utilizing a paging transmitter
`
`system.” GOOGLE1006, 1:12-15. In particular, Schwendeman discloses a remote
`
`unit 130 (e.g., a mobile unit) that detects when it has not successfully received one
`
`or more items in a sequence of items that have been transmitted by the network.
`
`GOOGLE1006, 8:8-34. In the event the remote unit 130 detects that it has not
`
`successfully received one or more items, such as a missed item that was never re-
`
`ceived or an erroneous item that was received with errors, the remote unit 130 in-
`
`vokes a “reconciliation” procedure with the network to trigger retransmission of
`
`the unsuccessfully received items to the remote unit 130. GOOGLE1006, 1:65-
`
`2:8, 10:21-30, 12:41-13:62, FIG. 10. Schwendeman discusses how the remote
`
`unite 130 can invoke reconciliation “in a response to a manual entry, e.g., in re-
`
`sponse to user input, at the remote unit 130 such as by buttons, or switches 141.”
`
`GOOGLE1006, 14:52-58, 20:20-23.
`
`19
`
`
`
`Figure 5 of Schwendeman (copied and annotated below) illustrates an ex-
`
`ample reconciliation between the central memory 118 of a communications net-
`
`work and the memory 140 of a remote unit 130. GOOGLE1006, FIG. 5, 9:59-
`
`10:40. As this figure shows, the memory 118 of the communications network
`
`stores records of each item in a sequence of items that t
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