Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Partes Review of:
`U.S. Patent No. 8,213,970
`Issued: July 3, 2012
`Application No.: 12/324,122
`
`)
`)
`)
`)
`
`For: Method of Utilizing Forced Alerts for Interactive Remote
`Communications
`
`FILED VIA E2E
`
`DECLARATION OF DR. BENJAMIN BEDERSON IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,213,970
`
`Apple Inc.
`Exhibit 1002
`
`Page 001
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`

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`IV.
`
`V.
`
`I.
`II.
`III.
`
`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`TABLE OF CONTENTS
`INTRODUCTION AND QUALIFICATIONS ............................................... 4
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED .......... 11
`LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED
`IN THIS DECLARATION ............................................................................ 13
`THE ’970 PATENT ....................................................................................... 15
`A.
`Forced Message Alert .......................................................................... 16
`B.
`PDA/Cell Phone .................................................................................. 17
`C.
`Automatic Acknowledgement ............................................................. 18
`D. Manual Response and Response List .................................................. 18
`E.
`Prosecution History Of The ʼ970 Patent ............................................. 20
`F.
`Claims Of The ’970 Patent .................................................................. 23
`G.
`Effective Priority Date of The ’970 Patent ......................................... 23
`CLAIM CONSTRUCTION .......................................................................... 25
`Forced message alert ........................................................................... 26
`Forced message alert [application] software packet ........................... 27
`Forced message alert software application program ........................... 28
`Data transmission means ..................................................................... 30
`Means for attaching ............................................................................. 30
`Means for requiring a required manual response ................................ 31
`Means for receiving and displaying (Automatic)................................ 31
`Means for periodically resending ........................................................ 32
`Means for receiving and displaying (Manual) .................................... 32
`Means for transmitting the acknowledgment of receipt ...................... 33
`Means for controlling .......................................................................... 34
`Means for allowing .............................................................................. 34
`Means for clearing ............................................................................... 35
`VI. UNDERSTANDING OF LEGAL PRINCIPLES RELEVANT TO
`OBVIOUSNESS ............................................................................................ 36
`VII. THE PRIOR ART AND BACKGROUND EVIDENCE.............................. 38
`Prior Art Relied Upon For Obviousness Combinations...................... 38
`Casey (Ex. 1004) ....................................................................... 38
`
`i
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`Tanumihardja (Ex. 1005) .......................................................... 42
`Haynes (Ex. 1006)..................................................................... 46
`Background Evidence ......................................................................... 48
`MACINTOSH HUMAN INTERFACE GUIDELINES (1992)
`(Ex. 1009) .................................................................................. 48
`U.S. Patent No. 6,271,835 (“Hoeksma”) (Ex. 1012) ................ 49
`U.S. Patent Application Publication No. 2002/0135615
`(“Lang”) (Ex. 1013) .................................................................. 49
`U.S. Patent No. 6,459,440 (“Monnes”) (Ex. 1014) .................. 50
`U.S. Patent Application Publication No. 2003/0103072
`(“Ko”) (Ex. 1010) ..................................................................... 50
`U.S. Patent Application Publication No. 2003/0081011
`(“Sheldon”) (Ex. 1011) ............................................................. 51
`VIII. THE COMBINATION OF CASEY, TANUMIHARDJA, AND
`HAYNES RENDERS OBVIOUS CLAIMS 1-13 OF THE ’970
`PATENT ........................................................................................................ 52
`A.
`Overview Of The Combination And Motivation To Combine ........... 54
`B.
`Claim 6 ................................................................................................ 63
`Preamble .................................................................................... 63
`Forced message alert software application program ................ 65
`Forced message alert ................................................................. 68
`Designating one or more recipients .......................................... 74
`Electronically transmitting the forced message alert ................ 76
`Automatic acknowledgements .................................................. 78
`Periodically resending ............................................................... 83
`Receiving and displaying responses ......................................... 84
`Manual response list ................................................................. 89
`Clearing the recipient’s display screen ..................................... 99
`Claim 7 – Predetermined communication network ........................... 101
`Claim 8 – Default list ........................................................................ 105
`Claim 9 – Custom response list ......................................................... 108
`Claim 1 .............................................................................................. 111
`Preamble .................................................................................. 111
`Predetermined network of participants ................................... 112
`Data transmission means ......................................................... 116
`Sender and recipient PDA/cell phone ..................................... 119
`Forced message alert software application program .............. 120
`Means for attaching ................................................................. 121
`
`C.
`D.
`E.
`F.
`
`ii
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`G.
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`Means for requiring a required manual response ................... 123
`Means for receiving and displaying a listing (automatic) ...... 125
`Means for periodically resending............................................ 126
`Means for receiving and displaying a listing (manual) .......... 128
`Claim 2 .............................................................................................. 132
`Means for transmitting ............................................................ 132
`Means for controlling .............................................................. 133
`Means for allowing ................................................................. 135
`Means for clearing .................................................................. 136
`Claim 3 – Data Transmission Protocol ............................................. 137
`Claim 4 – Default response list ......................................................... 138
`Claim 5 – Custom response list ......................................................... 139
`Claim 10 ............................................................................................ 139
`Preamble .................................................................................. 139
`Receiving a message ............................................................... 141
`Identifying said electronic message ........................................ 141
`Automatic acknowledgment ................................................... 143
`Selected Required Response ................................................... 144
`Displaying the response .......................................................... 145
`Providing a list ........................................................................ 145
`Claim 11 – Predetermined communication network ......................... 146
`L.
`Claim 12 – Default list ...................................................................... 146
`M.
`Claim 13 – Custom response list ....................................................... 146
`N.
`IX. CONCLUSION ............................................................................................ 147
`
`H.
`I.
`J.
`K.
`
`iii
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`I.
`
`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`INTRODUCTION AND QUALIFICATIONS
`I have been retained by Apple Inc. (“Petitioner”) to provide my
`
`
`opinion concerning the validity of U.S. Patent No. 8,213,970 (attached to the
`
`accompanying Petition as Ex. 1001 and henceforth referred to as the “’970 patent”)
`
`in support of this Petition for Inter Partes Review of U.S. Patent No. 8,213,970.
`
`
`
`I have not previously been retained by Petitioner. I am simultaneously
`
`engaged by Petitioner to provide declarations for IPRs challenging U.S. Patent
`
`Nos. 9,408,055, 9,445,251, and 9,467,838.
`
`
`
`I received a Bachelor of Science degree in Computer Science with a
`
`minor in Electrical Engineering from Rensselaer Polytechnic Institute (“RPI”) in
`
`1986. I received a Master of Science degree and a Ph.D. in Computer Science
`
`from New York University (“NYU”) in 1989 and 1992, respectively.
`
`
`
`Since 1998, I have been a Professor of Computer Science at the
`
`University of Maryland (“UMD”), where I have joint appointments at the Institute
`
`for Advanced Computer Studies and the College of Information Studies
`
`(Maryland’s “iSchool”). I am also Associate Provost of Learning Initiatives and
`
`Executive Director of the Teaching and Learning Transformation Center. I am a
`
`member and previous director of the Human-Computer Interaction Lab (“HCIL”),
`
`the oldest and one of the best known Human-Computer Interaction research groups
`
`in the country. I was also co-founder and Chief Scientist of Zumobi, Inc. from
`
`4
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`Apple Inc.
`Exhibit 1002
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`Page 005
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`2006 to 2014, a Seattle-based startup that is a publisher of content applications and
`
`advertising platforms for smartphones. I am also co-founder and co-director of the
`
`International Children’s Digital Library (“ICDL”), a web site launched in 2002 that
`
`provides the world’s largest collection of freely available online children’s books
`
`from around the world with an interface aimed to make it easy for children and
`
`adults to search and read children’s books online. I am also co-founder and Chief
`
`Technology Officer of Hazel Analytics, a data analytics company whose product
`
`sends alerts in warranted circumstances. In addition, I have for more than 15 years
`
`consulted for numerous companies in the area of user interfaces, including
`
`Microsoft, the Palo Alto Research Center, Sony, Lockheed Martin, and NASA
`
`Goddard Space Flight Center.
`
`
`
`For more than 30 years, I have studied, designed, and worked in the
`
`field of computer science and human-computer interaction. My experience
`
`includes 30 years of teaching and research, with research interests in human-
`
`computer interaction and the software and technology underlying today’s
`
`interactive computing systems. This includes the design and implementation of
`
`user interfaces on mobile devices, including smart phones and PDAs such as my
`
`work on DateLens, LaunchTile, and StoryKit described below.
`
`
`
`At UMD, my research is in the area of Human-Computer Interaction
`
`(“HCI”), a field that relates to the development and understanding of computing
`
`5
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`Apple Inc.
`Exhibit 1002
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`Page 006
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`systems to serve users’ needs. Researchers in this field are focused on making
`
`universally usable, useful, efficient, and appealing systems to support people in
`
`their wide range of activities. My approach is to balance the development of
`
`innovative technology that serves people’s practical needs. Example systems
`
`following this approach that I have built include PhotoMesa (software for end
`
`users to browse personal photos), DateLens (2002 software for end users to use
`
`their mobile devices to efficiently access their calendar information), LaunchTile
`
`(2005 “home screen” software for mobile devices to allow users to navigate apps
`
`in a zoomable environment), SpaceTree (2001 software for end users to efficiently
`
`browse very large hierarchies), ICDL (as described above), and StoryKit (a 2009
`
`iPhone app for children to create stories).
`
`
`
`LaunchTile led to my creation of Zumobi in 2006, where I was
`
`responsible for investigating new software platforms and developing new user
`
`interface designs that provide efficient and engaging interfaces to permit end users
`
`to access a wide range of content on mobile platforms (including the iPhone and
`
`Android-based devices). For example, I designed and implemented software
`
`called “Ziibii,” a “river” of news for iPhone, software called “ZoomCanvas,” a
`
`zoomable user interface for several iPhone apps, and iPhone apps including “Inside
`
`Xbox” for Microsoft and Snow Report for REI. At the International Children’s
`
`Digital Library (ICDL), I have since 2002 been the technical director responsible
`
`6
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`Exhibit 1002
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`for the design and implementation of the web site, www.childrenslibrary.org
`
`(originally at www.icdlbooks.org). In particular, I have been closely involved in
`
`designing the user interface as well as the software architecture for the web site
`
`since its inception in 2002.
`
`
`
`Beginning in the mid-1990s, I have been responsible for the design
`
`and implementation of numerous other web sites in addition to the ICDL. For
`
`example, I designed and built my own professional web site when I was an
`
`Assistant Professor of Computer Science at the University of New Mexico in 1995
`
`and have continued to design, write the code for, and update both that site (which I
`
`moved
`
`to
`
`the University
`
`of Maryland
`
`in
`
`1998,
`
`currently
`
`at
`
`http://www.cs.umd.edu/~bederson/) as well as numerous project web sites, such as
`
`Pad++, http://www.cs.umd.edu/hcil/pad++/.
`
` I received the Janet Fabri
`
`Memorial Award for Outstanding Doctoral Dissertation for my Ph.D. work in
`
`robotics and computer vision. I have combined my hardware and software skills
`
`throughout my career in Human-Computer Interaction research, building various
`
`interactive electrical and mechanical systems that couple with software to provide
`
`an innovative user experience.
`
` My work has been published extensively in more than 140 technical
`
`publications, and I have given about 100 invited talks, including 9 keynote
`
`lectures. I have won a number of awards including the Brian Shackel Award for
`
`7
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`“outstanding contribution with international impact in the field of HCI” in 2007,
`
`and the Social Impact Award in 2010 from Association for Computing
`
`Machinery’s (“ACM”) Special Interest Group on Computer Human Interaction
`
`(“SIGCHI”). ACM is the primary international professional community of
`
`computer scientists, and SIGCHI is the primary international professional HCI
`
`community. I have been honored by both professional organizations. I am an
`
`“ACM Distinguished Scientist,” which “recognizes those ACM members with at
`
`least 15 years of professional experience and 5 years of continuous Professional
`
`Membership who have achieved significant accomplishments or have made a
`
`significant impact on the computing field.” I am a member of the “CHI
`
`Academy,” which is described as follows: “The CHI Academy is an honorary
`
`group of individuals who have made substantial contributions to the field of
`
`human-computer interaction. These are the principal leaders of the field, whose
`
`efforts have shaped the disciplines and/or industry, and led the research and/or
`
`innovation in human-computer interaction.” The criteria for election to the CHI
`
`Academy are: (1) cumulative contributions to the field; (2) impact on the field
`
`through development of new research directions and/or innovations; and (3)
`
`influence on the work of others.
`
`
`
`I have appeared on radio shows numerous times to discuss issues
`
`relating to user interface design and people’s use and frustration with common
`
`8
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`Exhibit 1002
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`Page 009
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`technologies, web sites, and mobile devices. My work has been discussed and I
`
`have been quoted by mainstream media around the world over 120 times, including
`
`by the NEW YORK TIMES, the WALL STREET JOURNAL, the WASHINGTON POST,
`
`NEWSWEEK, the SEATTLE POST-INTELLIGENCER, the INDEPENDENT, LE MONDE,
`
`NPR’s All Things Considered, NEW SCIENTIST MAGAZINE, and MIT’s
`
`TECHNOLOGY REVIEW.
`
`
`
`I have designed, programmed, and publicly deployed dozens of user-
`
`facing software products that have cumulatively had millions of users. My work is
`
`cited in several patents, including U.S. Patent Nos. 6,307,562, 6,608,549,
`
`7,576,756, and 7,834,849.
`
`
`
`I am the co-inventor of 10 U.S. patents and 15 U.S. patent
`
`applications. The patents are generally directed to user interfaces/experience with
`
`some directed to mobile devices, including U.S. Patent No. 9,778,810 (2017),
`
`entitled Techniques to modify content and view content on mobile devices.
`
` My curriculum vitae, which includes a more detailed summary of
`
`my background, experience, and publications, is attached to the accompanying
`
`Petition as Ex. 1003.
`
`
`
`I am being compensated at my standard consulting rate of $600 per
`
`hour for my services. My compensation does not depend on the outcome of this
`
`review proceeding or of any pending litigation.
`
`9
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
` As I have already touched on above, I was heavily involved in the
`
`research and development of mobile device applications during the time period that
`
`encompassed (before and after) the Sep. 21, 2004, claimed priority date of the ’970
`
`patent. For example, I envisioned, designed and built DateLens starting in 2002 to
`
`create a richer and more usable calendar for the Microsoft PocketPC platform as
`
`well as desktops. One of its innovations was its design that enabled it to scale
`
`between small (mobile) and large (desktop) computers. I started DateLens as a
`
`research project and eventually sold it commercially. DateLens displayed calendar
`
`data that came straight from the Microsoft PocketOutlook database and allowed
`
`modification and viewing of appointments. The research website from that time
`
`period
`
`that
`
`describes
`
`DateLens
`
`is
`
`still
`
`available
`
`at
`
`http://www.cs.umd.edu/hcil/datelens/ which shows screenshots and a picture of me
`
`demonstrating DateLens to Bill Gates. The commercial website from that time
`
`period is also available at http://www.windsorinterfaces.com/datelens.shtml which
`
`shows a number of news articles reviewing DateLens at that time.
`
`
`
`I have been asked my technical opinions regarding the understanding
`
`of a person of ordinary skill in the art (discussed below) as it relates to the ’970
`
`patent and other reference documents.
`
`
`
`I have also been asked to provide my technical opinions on concepts
`
`discussed in the ’970 patent and other reference documents, as well as my
`
`10
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`technical opinions on how these concepts relate to several claim limitations of the
`
`’970 patent in the context of the specification.
`
`
`
`In reaching the opinions stated herein, I have considered the ’970
`
`patent, its prosecution history, and the references below, and have also drawn as
`
`appropriate upon my own education, training, research, knowledge, and personal
`
`and professional experience.
`
`II.
`
`SUMMARY OF MATERIALS REVIEWED AND CONSIDERED
` All of the opinions contained in this Declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. In forming
`
`the opinions expressed in this Declaration, while drawing on my experience in the
`
`field of mobile interface design, including alerting devices, I reviewed the
`
`following documents:
`
`Ex. No. Description
`
`1001 U.S. Patent No. 8,213,970 (the “’970 patent”)
`
`1003 Curriculum Vitae of Dr. Benjamin Bederson
`
`1004 U.S. Patent Application Publication No. 2005/0030977 (“Casey”)
`
`1005 U.S. Patent No. 7,386,589 (“Tanumihardja”)
`
`1006 U.S. Patent No. 6,232,971 (“Haynes”)
`
`1007
`
`File History for U.S. Patent No. 8,213,970 (“FH”)
`
`1008 Exhibit A to Plaintiff’s Preliminary Infringement Contentions,
`submitted in AGIS Software Development LLC v. Apple Inc., No.
`2:17-cv-00516-JRG (E.D. Tex.) (“ʼ970 PICs”)
`
`11
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`
`Ex. No. Description
`
`1009 APPLE COMPUTER, INC., MACINTOSH HUMAN INTERFACE GUIDELINES
`(1992) (“HIG”)
`1010 U.S. Patent Application Publication No. 2003/0103072 (“Ko”)
`
`1011 U.S. Patent Application Publication No. 2003/0081011 (“Sheldon”)
`
`1012 U.S. Patent No. 6,271,835 (“Hoeksma”)
`
`1013 U.S. Patent Application Publication No. 2002/0135615 (“Lang”)
`
`1014 U.S. Patent No. 6,549,440 (“Monnes”)
`
`1015 Benjamin B. Bederson, Fisheye Menus, PROCEEDINGS OF ACM
`SYMPOSIUM ON USER INTERFACE SOFTWARE AND TECHNOLOGY 217
`(2000)
`1016 Donald A. Norman, THE PSYCHOLOGY OF EVERYDAY THINGS,
`Chapter 1, THE PSYCHOPATHOLOGY OF EVERYDAY THINGS, 1-33
`(1998)
`Jakob Nielsen, USABILITY ENGINEERING, 129-148 (1993)
`
`1017
`
`1018 Ben Shneiderman, DESIGNING THE USER INTERFACE, STRATEGIES
`FOR EFFECTIVE HUMAN-COMPUTER INTERACTION (3rd ed. 1998)
`
`1019 Derek Ball & Dayton Foster, HOW TO DO EVERYTHING WITH YOUR
`TREO 600, 25-30 (2004)
`
`1020 Redline comparison between the specifications of U.S. Application
`No. 11/612,830 and U.S. Patent No. 8,213,970 (“830-122
`Comparison”)
`
`
`
` My opinions are additionally guided by my appreciation of how a
`
`person of ordinary skill in the art would have understood the claims of the ’970
`
`patent at the time of the alleged invention, which I have been asked to assume is
`
`Sep. 21, 2004.
`
`12
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`III. LEVEL OF SKILL IN THE ART AND PERSPECTIVE APPLIED IN
`THIS DECLARATION
`I understand that certain issues relating to validity must be judged
`
`
`from the perspective of a person of ordinary skill in the relevant art, as I discuss
`
`below.
`
` The invention of the ’970 patent relates to a system and method for
`
`forced message alerts. Specifically, the ’970 patent describes a system of personal
`
`digital assistants, PCs, and/or cell phones that can send and receive message alerts.
`
`Each message alert is designed to be responded to with a manual and automatic
`
`response or acknowledgement, and exerts control over the receiving device until a
`
`response is sent.
`
`
`
`In determining the level of ordinary skill, I have been asked to
`
`consider, for example, the types of problems encountered in the field, prior
`
`solutions to those problems, the rapidity with which innovations are made, the
`
`sophistication of the technology, and the educational level of active workers in the
`
`field. Taking those factors into consideration, a person of ordinary skill in the art
`
`at the time of the claimed priority date of the ’970 patent would have had a
`
`bachelor’s degree in a suitable field (e.g., computer science, or electrical or
`
`computer engineering), and two to three years of relevant work experience. It
`
`would have taken 2-3 years of work on software applications for wireless devices
`
`for a person to become familiar with the problems encountered in the field and the
`
`13
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`prior and current solutions to those problems. Through education and relevant
`
`work experience, the person of ordinary skill would have an understanding and
`
`familiarity with the communication and user interface standards prevalent in
`
`software applications for wireless communication devices.
`
`
`
`I believe that I would have qualified as a person of at least ordinary
`
`skill in the art as of the claimed Sept. 21, 2004 priority date of the ’970 patent, and
`
`I believe that I have a sufficient level of knowledge, experience, and education to
`
`provide an expert opinion in the field of the ’970 patent.
`
` While my own level of skill level exceeded that of the ordinary level
`
`of skill in the art as of September 2004, as I had earned my Ph.D. in computer
`
`science and had been working on the research and development of DateLens for 3
`
`years by that date, I am well-acquainted with the actual performance and
`
`capabilities of a person of ordinary skill in the art as defined above. This is
`
`because during the relevant timeframe, while I had been adapting my long-
`
`standing research efforts on zoomable user interfaces to small-screen mobile
`
`devices, I was teaching and working with graduate students, and professional
`
`programmers, so I was quite familiar with the skills that people with a range of
`
`experience had.
`
` My opinions in this Declaration are based on the perspective of a
`
`person of ordinary skill in the art as of September 2004 or somewhat before
`
`14
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`(approximately 2003-2004). This is true even if the testimony is stated in the
`
`present tense. Each of the statements below reflects my opinion based on my
`
`review of the prior art, the disclosures of the ’970 patent, the file history of the
`
`’970 patent, and the challenged claims.
`
`IV. THE ’970 PATENT
` The ’970 patent is entitled “Method of Utilizing Forced Alerts for
`
`Interactive Remote Communications.” The specification of the ’970 patent
`
`describes a wireless messaging system in which “forced message alerts” are
`
`delivered to selected recipients on a “PDA/cell phone.” The recipient device sends
`
`an automatic acknowledgement of receipt, and prompts the user to send a manual
`
`response. If an automatic acknowledgement is not received, the sending device
`
`periodically resends the alert. The sending device can view a list of which devices
`
`have or have not automatically acknowledged or manually responded, as well as
`
`any manual responses. ’970 patent at Abstract, 7:42-8:53.
`
`
`
`In the sections below, I describe the major components of the wireless
`
`messaging system disclosed in the ’970 patent, as well as how these components
`
`communicate with one another to provide information. Following those
`
`descriptions, I discuss the prosecution history of the ’970 patent and provide an
`
`overview of its claims.
`
`15
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`Apple Inc.
`Exhibit 1002
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`Page 016
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`Forced Message Alert
` The specification of the ’970 patent primarily focuses on the sending
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`A.
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`and receiving of “forced message alerts,” alternatively known as “forced alerts.”
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`’970 patent at Title, Abstract. Forced message alerts are distinct from regular
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`messages in that they comprise “a text or voice message file and a forced alert
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`software packet.” ’970 patent at 2:12-14; 8:22-25. When received, forced
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`messages “compel an automatic acknowledgement of receipt from each recipient’s
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`PC or PDA/cell phone and require a manual response from the recipient via the
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`recipient’s cell phone before the message can be cleared.” ’970 patent at 2:49-55.
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`Claim 10 of the ’970 patent describes this receiving and compelling as the forced
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`message alert “trigger[ing] the activation of the forced message alert software
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`application program.” ’970 patent at Claim 10. The ’970 patent has the ability to
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`send and receive non-forced messages, as the system “permit[s] the transmission of
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`forced text or voice messages, other messages, photographs, video” and more.
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`’970 patent at 2:26-42 (emphasis added). However, while the ’970 does not
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`exclude the possibility of non-forced or other prioritized alerts, it does not disclose
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`how any such messages would work with its system: the ’970 patent only
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`acknowledges “forced message alerts” and “other” messages. See also ’970 patent
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`at 2:27-43; 4:1-6.
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`16
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`Apple Inc.
`Exhibit 1002
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`Page 017
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`
`B.
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`PDA/Cell Phone
` The specification of the ’970 patent describes a communications
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`network in which participants use “personal computers (“PC”) and handheld cell
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`phones having integrated personal digital assistant functionality (“PDA/cell
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`phone”).” PDA/cell phones are described as “function[ing] just like any other cell
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`phone,” and PCs as used in the ’970 patent are “like any other contemporary PC,
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`except that it has the forced message alert software application installed on it.”
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`’970 patent at 3:30-31; 3:41-43. Furthermore, the term “PDA/cell phone” includes
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`“Conventional PDA/cellular phones [that] are currently on sale and sold as a unit
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`that can be used for cellular telephone calls and sending cellular SMS and TCP/IP
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`or other messages using the PDA’s display 16 and CPU.” ’970 patent at 4:33-36.
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` Although the claims of the ’970 patent recite the term “PDA/cell
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`phone,” one of ordinary skill in the art would understand the ’970 patent to
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`disclose that all of the functions of the system can be performed on a PC as well.
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`The ’970 patent specification uses the phrase “PC or PDA/cell phone” in nearly
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`every instance in which a PDA/cell phone is mentioned, and does not disclose any
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`function of the alleged invention which could be performed solely on a PDA/cell
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`phone, or solely on a PC. Furthermore, the claims as originally filed in the ’970
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`patent included the phrase “PC or PDA/cell phone” before being removed in
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`prosecution. See FH at 23-24 (Ex. 1007).
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`17
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`Apple Inc.
`Exhibit 1002
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`Page 018
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`Declaration of Dr. Benjamin Bederson In Support of
`Petition for Inter Partes Review of USP No. 8,213,970
`C. Automatic Acknowledgement
` The specification of the ’970 patent teaches that devices receiving a
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`forced message “automatically transmit an acknowledgement of receipt from said
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`recipient PCs and PDA/cell phones to the sender PCs or PDA/cell phones upon
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`receipt of the forced message alert by the recipient PCs and PDA/cell phones.”
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`’970 patent at 2:16-20. Automatic acknowledgements confirm “receipt” of the
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`message by the receiving device, and are contrasted with a “manual response” by
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`the receiving user. ’970 patent at 3:25-28. The ’970 patent further discloses that in
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`order to operate in the described manner, “obviously the PDA/cell phone power
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`switch has to be on.” ’970 patent at 3:32-33. If the PDA/cell phone is not powered
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`on, it is “not part of the participating network and cannot send or receive and
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`forced message alerts.” ’970 patent at 3:33-36. Because a device is not part of the
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`participating network and does not receive forced message alerts when not
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`powered on, devices
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`that are not powered on do not send