`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________________
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`
`
`Patent No. 8,213,970
`Issue Date: July 3, 2012
`Title: METHOD OF UTILIZING FORCED ALERTS FOR INTERACTIVE
`REMOTE COMMUNICATIONS
`
`
`
`_________________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-00821
`_________________________________________________________________________
`
`
`
`

`

`
`
`I.
`
`II.
`
`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION ........................................................................................... 1
`
`THE PETITION SHOULD BE DENIED BECAUSE
`PETITIONER HAS FAILED TO PROVIDE A SUFFICIENT
`STATEMENT OF HOW THE CLAIMS SHOULD BE
`CONSTRUED ................................................................................................. 4
`
`A.
`
`B.
`
`Petitioner’s proposed construction of the “forced message”
`and means-plus-function terms conflict with positions it has
`taken in the District Court case and Petitioner has failed to
`meet its burden under 37 C.F.R. § 42.104 ............................................ 4
`
`Petitioner improperly submits a conflicting construction for
`the “forced message alert,” “forced message alert software
`packet,” and “forced message alert software application
`program” terms and phrases of the Challenged Claims ......................18
`
`C.
`
`Petitioner’s conflicting positions violate 37 C.F.R. § 42.11,
`§ 11.18(b)(2) ........................................................................................19
`
`III.
`
`PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED .................................................................................23
`
`A.
`
`B.
`
`C.
`
`D.
`
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103 ....................................................................................................23
`
`Petitioner fails to show how the prior art discloses “PDA/cell
`phone” as recited in 6[p] and 6[a]-[h] .................................................26
`
`Petitioner fails to show where the prior art discloses
`“periodically resending”as recited in 6[f] ...........................................31
`
`Petitioner fails to show where the prior art discloses the
`“response”as recited in 6[g]-[i] ...........................................................33
`
`E.
`
`Claims 1-5 and 10-13 are not obvious for similar reasons .................38
`
`i
`
`

`

`
`
`
`
`IPR2018-00821
`IPR2018-00821
`U.S. Patent No. 8,213,970
`US. Patent No. 8,213,970
`
`IV. CONCLUSION ..............................................................................................40
`IV.
`CONCLUSION .............................................................................................. 40
`
`
`
`ii
`ii
`
`

`

`
`
`Cases
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (P.T.A.B., June 26, 2015) ........................................................ 23
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 24
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009) .......................................................................... 25
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 23, 32
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 25
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 24
`
`Key Pharm. v. Hercon Labs. Corp.,
`161 F.3d 709 (Fed. Cir. 1998) ............................................................................ 21
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 23, 32
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
` Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) ............................................... 24
`
`N. Telecom Ltd. v. Samsung Elecs. Co.,
`215 F.3d 1281 (Fed. Cir. 2000) .......................................................................... 21
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 24
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 23
`
`iii
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Toyota Motor Corp. v. Blitzsafe Texas, LLC,
`IPR2016-00422 (P.T.A.B., July 6, 2016) ........................................................... 18
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 25
`
`Yniguez v. State of Ariz.,
`939 F.2d 727 (9th Cir. 1991) .............................................................................. 21
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 23
`
`35 U.S.C. § 112 .................................................................................................passim
`
`35 U.S.C. § 314(a) ..................................................................................................... 3
`
`Other Authorities
`
`37 C.F.R. § 11.18(b)(2) ............................................................................................ 19
`
`37 C.F.R. § 42.11 ................................................................................................. 2, 19
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
`
`37 C.F.R. § 42.104(b)(3) ...................................................................................passim
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 25
`
`Trial Practice Guide, 77 Fed. Reg. at 48,764 .......................................................... 22
`
`
`
`
`iv
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`LIST OF EXHIBITS
`
`
`Exhibit No.
`
`Document
`
`Appendix 1 to P.R. 4-3 Joint Claim Construction and Pre-
`Hearing Statement in AGIS Software Development LLC v.
`Huawei Device USA, Inc., et al. – Parties’ Proposed
`Constructions and Supporting Evidence, filed in AGIS Software
`Development LLC v. Huawei Device USA, Inc., et al., Case No.
`2:17-cv-000513-JRG-RSP (Dkt. 149-1)
`P.R. 4-3 Joint Claim Construction and Pre-Hearing Statement,
`filed in AGIS Software Development LLC v. Huawei Device
`USA, Inc., et al., Case No. 2:17-cv-000513-JRG-RSP (Dkt. 149)
`Appendix 1 to P.R. 4-3 - Updated Joint Claim Construction and
`Prehearing Statement in AGIS Software Development LLC v.
`Huawei Device USA, Inc., et al. – Parties’ Proposed
`Constructions and Supporting Evidence, filed in AGIS Software
`Development LLC v. Huawei Device USA, Inc., et al., Case No.
`2:17-cv-000513-JRG-RSP (Dkt. 162-1)
`P.R. 4-3 - Updated Joint Claim Construction and Prehearing
`Statement, filed in AGIS Software Development LLC v. Huawei
`Device USA, Inc., et al., Case No. 2:17-cv-000513-JRG-RSP
`(Dkt. 162)
`
`2001
`
`2002
`
`2003
`
`2004
`
`
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`On March 22, 2018, Apple Inc. (“Apple” or “Petitioner”) submitted a
`
`Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent No.
`
`8,213,970 (Ex. 1001, “the ’970 Patent”), challenging claims 1–13 (the “Challenged
`
`Claims”).
`
`The Petition challenges all of the claims with only a single ground––that the
`
`claims are obvious over three references: U.S. Patent Application Publication No.
`
`2005/0030977 by Casey (Ex. 1004), U.S. Patent No. 7,386,589 to Tanumihardja
`
`(Ex. 1005), and U.S. Patent No. 6,232,971 to Haynes (Ex. 1006). However, the
`
`Petition fails for at least three reasons: (1) the Petition fails to properly construe the
`
`claims; (2) the Petition fails to show how the references disclose each and every
`
`element set forth in the claims, particularly the “PDA/cell phone,” “periodically
`
`resending,” and “response” limitations; and (3) the Petition fails to show whether a
`
`person of ordinary skill in the art would have been motivated to combine the
`
`references.
`
`First, the Petition is deficient because Petitioner fails to meet its burden
`
`under 37 C.F.R. § 42.104(b)(3) to propose claim constructions that it believes are
`
`correct under applicable law. Petitioner proffered conflicting claim constructions
`
`in the co-pending District Court litigation including an identification of numerous
`
`claims that it believes are indefinite. Exhibits 2001 and 2003 at 1-13. Petitioner
`
`1
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`merely identified constructions advocated by Patent Owner in the District Court
`
`without taking the position that these constructions are correct. Indeed, in the
`
`litigation, Petitioner took the position that the constructions were not correct, and
`
`that certain of the relevant claim terms are indefinite. For similar reasons,
`
`Petitioner has failed to meet its burden to identify for the Board how the terms and
`
`phrases “forced message alert,” “forced message alert software packet,” and
`
`“forced message alert software application program” are to be construed in this
`
`proceeding because Petitioner advances different constructions for each of these
`
`terms as compared to Petitioner’s position in the District Court Litigation. Despite
`
`certifying that the Petition’s “legal contentions [in the Petition] are warranted by
`
`existing law” and that its “factual contentions have evidentiary support” (37 C.F.R.
`
`§ 42.11, § 11.18(b)(2)), Petitioner has knowingly advanced conflicting positions
`
`before the District Court and, therefore, the Petition should be denied in its
`
`entirety. Second, the Petition fails to meet its burden to show how each and every
`
`claim element is met in the prior art. Regarding the “PDA/cell phone” limitations,
`
`the Petitioner inconsistently applies the “PDA/cell phone” term and attempts to
`
`map this limitation to multiple conflicting embodiments of Casey without any
`
`motivation to combine the embodiments. Petitioner does not proffer any specific
`
`claim constructions and submits no basis for expanding the scope of the phone
`
`term to include “any device” described in the Casey reference. Regarding the
`
`2
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`“periodically resending” limitation, the Petition fails to identify a single section of
`
`Casey which discloses or suggests periodically resending an alert to the recipient
`
`phones. Petitioner merely submits a piecemeal list of Casey citations to
`
`demonstrate a one-time second transmission (to a second device that is not the
`
`recipient phone) without any further retransmission. Tanumihardja also falls short
`
`as it does not require acknowledgement from each recipient, allowing
`
`acknowledgement by another phone that is not the recipient. Regarding the
`
`“response” limitations, Petitioner also fails to show how the various embodiments
`
`of Casey disclose that (1) a response is responsive to a sender’s alert, (2) a
`
`response is displayable on the sender’s phone; (3) a response is included in the list
`
`which is displayed on the recipient’s phone’s display; (4) a response is required by
`
`the user; (5) and a response must be provided, selected, and transmitted in order to
`
`clear the recipient phone’s display of the response list. Because Tanumihardja
`
`only discloses optional managed messages as responses, Petitioner’s proposed
`
`combination lacks a required response necessary to operate the phone and to clear
`
`the display in the manner recited in the claims.
`
`Due to at least these deficiencies, the Petition does not establish “a
`
`reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`of the claims challenged in the Petition.” 35 U.S.C. § 314(a). While Patent Owner
`
`explicitly reserves the right to present additional arguments, the deficiencies of the
`
`3
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Petition noted herein are sufficient for the Board to find that Petitioner has not met
`
`its burden to demonstrate a reasonable likelihood that it would prevail in showing
`
`unpatentability of any of the Challenged Claims.
`
`II. THE PETITION SHOULD BE DENIED BECAUSE
`PETITIONER HAS FAILED TO PROVIDE A SUFFICIENT
`STATEMENT OF HOW THE CLAIMS SHOULD BE
`CONSTRUED
`
`A.
`
`Petitioner’s proposed construction of the “forced message”
`and means-plus-function terms conflict with positions it has
`taken in the District Court case and Petitioner has failed to
`meet its burden under 37 C.F.R. § 42.104
`
`Petitioner has failed to meet its burden under 37 C.F.R. § 42.104(b)(3) to
`
`identify for the Board how each claim term is to be construed. The regulations
`
`provide that a petition for inter partes review must identify:
`
`[h]ow the challenged claim is to be construed. Where the claim
`
`to be construed contains a means-plus-function or step-plus-
`
`function limitation as permitted under 35 U.S.C. 112(f), the
`
`construction of the claim must identify the specific portions of
`
`the specification that describe the structure, material, or acts
`
`corresponding to each claimed function;
`
`37 C.F.R. § 42.104(b)(3).
`
`In this proceeding, Petitioner “adopts and proposes as a broadest reasonable
`
`the functions and structures as they were identified by AGIS in its non-confidential
`
`4
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`infringement contentions.” Paper 1 at 10. Meanwhile, in the co-pending District
`
`Court Litigation, Petitioner has repeatedly maintained contradictory positions. See,
`
`AGIS Software Development, LLC v. Huawei Device USA, Inc., et al., Dkt. Nos.
`
`149 and 162, Case No. 17-CV-00513-JRG-RSP (E.D. Tex., June 15, 2018) (the
`
`“District Court Litigation”) (Exhibits 2001-2004). Petitioner contends in the
`
`District Court Litigation that the very same limitations--which Petitioner expressly
`
`“adopts and proposes” in this proceeding—are instead indefinite. The table below
`
`summarizes Petitioner’s positions in the District Court Litigation:
`
`Claim Term (Asserted Claim)
`
`1. “a data transmission means that
`facilitates the transmission of
`electronic files between said
`PDA/cell phones in different
`locations”
`
`(’970 Claim 1)
`
`
`Defendants’ District Court Position and
`Supporting Evidence
`Governed by 35 U.S.C. § 112(6).
`
`Function: facilitating the transmission of
`electronic files between said PDA/cell
`phones in different locations.
`
`Indefinite under 35 U.S.C. § 112(b).
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm.
`The disclosures set forth at ’970 Patent at
`1:39-43; 2:36-43; 4:1-36; Figs. 2, 3A, 3B,
`and 4. ’970 File History, Application
`12/324,122, Claims, 2008-11-26 do not
`provide an algorithm that corresponds to
`the claimed function.
`
`Intrinsic Support
`
`5
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`2. “means for attaching a forced
`message alert software packet to a
`voice or text message creating a
`forced message alert that is
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of
`the invention, the level of ordinary skill in
`the relevant art, and the meaning of this
`claim element to a person of ordinary skill
`in the art at the time of the alleged
`invention, including (1) whether a person
`of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6).
`
`Function: attaching a forced message alert
`software packet to a voice or text message
`
`6
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Claim Term (Asserted Claim)
`
`transmitted by said sender PDA/cell
`phone to the recipient PDA/cell
`phone, said forced message alert
`software packet containing a list of
`possible required responses”/ “means
`for attaching a forced message alert
`software packet to a voice or text
`message creating a forced message
`alert that is transmitted by said
`sender PDA/cell phone to the
`recipient PDA/cell phone”
`
`(’970 Claim 1)
`
`Defendants’ District Court Position and
`Supporting Evidence
`creating a forced message alert that is
`transmitted by said sender PDA/cell phone
`to the recipient PDA/cell phone, said
`forced message alert software packet
`containing a list of possible required
`responses.
`
`Indefinite under 35 U.S.C. § 112(b).
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm.
`The disclosures set forth at ’970 Patent at
`Fig 2, 3A, 3B, 7:8-63. ’970 File History,
`Application 12/324,122, Claims, 2008-11-
`26 do not provide an algorithm that
`corresponds to the claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of
`the invention, the level of ordinary skill in
`the relevant art, and the meaning of this
`claim element to a person of ordinary skill
`in the art at the time of the alleged
`invention, including (1) whether a person
`of ordinary skill in the art would
`understand the claim term to have a
`
`7
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`3. “[means for. . .] requiring the
`forced message alert software on said
`recipient PDA/cell phone to transmit
`an automatic acknowledgment to the
`sender PDA/cell phone as soon as
`said forced message alert is received
`by the recipient PDA/cell phone”
`
`(’970 Claim 1)
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6).
`
`Function: requiring the forced message
`alert software on said recipient PDA/cell
`phone to transmit an automatic
`acknowledgment to the sender PDA/cell
`phone as soon as said forced message alert
`is received by the recipient PDA/cell
`phone.
`
`Indefinite under 35 U.S.C. § 112(b).
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm.
`The disclosures set forth at 970 Patent, Fig.
`4; 2:7-35; 8:16-62. ’970 File History,
`Application 12/324,122, Claims, 2008-11-
`
`8
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`26 do not provide an algorithm that
`corresponds to the claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of
`the invention, the level of ordinary skill in
`the relevant art, and the meaning of this
`claim element to a person of ordinary skill
`in the art at the time of the alleged
`invention, including (1) whether a person
`of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`
`9
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Claim Term (Asserted Claim)
`
`4. “means for requiring a required
`manual response from the response
`list by the recipient in order to clear
`recipient's response list from
`recipient's cell phone display”
`
`(’970 Claim 1)
`
`Defendants’ District Court Position and
`Supporting Evidence
`Governed by 35 U.S.C. § 112(6).
`
`Function: requiring a required manual
`response from the response list by the
`recipient in order to clear recipient's
`response list from recipient's cell phone
`display.
`
`Indefinite under 35 U.S.C. § 112(b).
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm.
`The disclosures set forth at ’970 Patent at
`Figure 4 and 8:16-57;11:1-21. ’970 File
`History, Application 12/324,122, Claims,
`2008-11-26 do not provide an algorithm
`that corresponds to the claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of
`the invention, the level of ordinary skill in
`the relevant art, and the meaning of this
`claim element to a person of ordinary skill
`in the art at the time of the alleged
`invention, including (1) whether a person
`of ordinary skill in the art would
`
`10
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`5. “means for receiving and
`displaying a listing of which
`recipient PDA/cell phones have
`automatically acknowledged the
`forced message alert and which
`recipient PDA/cell phones have not
`automatically acknowledged the
`forced message alert”
`
`(’970 Claim 1)
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6).
`
`Function: receiving and displaying a listing
`of which recipient PDA/cell phones have
`automatically acknowledged the forced
`message alert and which recipient PDA/cell
`phones have not automatically
`acknowledged the forced message alert.
`
`Indefinite under 35 U.S.C. § 112(b).
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm.
`The disclosures set forth at ’970 Patent at
`Figures 2, 3A, 3B, 6:38-7:4; 7:17-8:15 do
`not provide an algorithm that corresponds
`
`11
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Claim Term (Asserted Claim)
`
`Defendants’ District Court Position and
`Supporting Evidence
`to the claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of
`the invention, the level of ordinary skill in
`the relevant art, and the meaning of this
`claim element to a person of ordinary skill
`in the art at the time of the alleged
`invention, including (1) whether a person
`of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`6. “means for periodically resending Governed by 35 U.S.C. § 112(6).
`
`12
`
`

`

`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Claim Term (Asserted Claim)
`
`said forced message alert to said
`recipient PDA/cell phones that have
`not automatically acknowledged the
`forced message alert”
`
`(’970 Claim 1)
`
`Defendants’ District Court Position and
`Supporting Evidence
`
`Function: periodically resending said
`forced message alert to said recipient
`PDA/cell phones that have not
`automatically acknowledged the forced
`message alert.
`
`Indefinite under 35 U.S.C. § 112(b).
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm.
`The disclosures set forth at ’970 Patent at
`Figures 2, 3A, 3B, 6:38-7:4; 7:17-8:15 do
`not provide an algorithm that corresponds
`to the claimed function.
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of
`the invention, the level of ordinary skill in
`the relevant art, and the meaning of this
`claim element to a person of ordinary skill
`in the art at the time of the alleged
`invention, including (1) whether a person
`of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`
`13
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`7. “means for receiving and
`displaying a listing of which
`recipient PDA/cell phones have
`transmitted a manual response to said
`forced message alert and details the
`response from each recipient
`PDA/cell phone that responded”
`
`(’970 Claim 1)
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`Governed by 35 U.S.C. § 112(6).
`
`Function: receiving and displaying a listing
`of which recipient PDA/cell phones have
`automatically acknowledged the forced
`message alert and which recipient PDA/cell
`phones have not automatically
`acknowledged the forced message alert.
`
`Indefinite under 35 U.S.C. § 112(b).
`
`Structure: No sufficient corresponding
`structure disclosed. To the extent any
`structure is disclosed, it is a general
`purpose PDA or cell phone for
`implementing an undisclosed algorithm.
`The disclosures set forth at ’970 Patent at
`Figures 3A, 3B, 6:38-7:4; 7:17-8:15 do not
`provide an algorithm that corresponds to
`the claimed function.
`
`
`14
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`Intrinsic Support
`
`See, e.g., ’970 Patent at 3:22-31, 3:41-43,
`4:33-36, 4:47-49.
`
`Extrinsic Support
`
`Defendants intend to rely on a sworn
`declaration of Chris Bartone to explain the
`technology, state of the art at the time of
`the invention, the level of ordinary skill in
`the relevant art, and the meaning of this
`claim element to a person of ordinary skill
`in the art at the time of the alleged
`invention, including (1) whether a person
`of ordinary skill in the art would
`understand the claim term to have a
`sufficiently definite meaning as the name
`for structure and (2) whether a person of
`ordinary skill in the art would understand
`the specification to disclose sufficient
`structure corresponding to the claimed
`function.
`
`Defendants may also rely on Dr. Bartone to
`respond to Plaintiff’s claim construction
`positions and any testimony of Plaintiff’s
`expert and witnesses.
`
`Defendants also reserve the right to rely on
`positions and evidence relied upon by
`Plaintiff and its experts in the related IPR
`proceedings.
`
`
`15
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`18. “a forced message alert software
`application program”
`
`(’970 Claims 1, 6)
`
`19. “manual response”
`
`(’970 Claims 1, 6)
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`“application software that allows an
`operator to create and transmit forced
`message alerts, automatically transmit an
`acknowledgement of receiving them,
`periodically resend them when no
`acknowledgement is received, indicate on a
`display which recipient devices have
`acknowledged the forced message alert,
`provide a manual response list on the
`display of the recipient device, and provide
`an indication of the status and content of
`the manual response selected by the
`recipient devices”
`
`Intrinsic Support
`See, e.g., ’970 Patent at Abstract, Figs. 3A-
`3B and 4, 2:7-35, 3:22-28, 4:47-59, 7:43-
`8:57;
`
`’970 File History 9/9/11 Amendment and
`Response to Office Action;
`
`’970 File History 12/17/10 Amendment
`and Response to Office Action.
`
`“user-selectable reply that is sent back to
`the sender PDA/cell phone”
`
`Intrinsic Support
`
`See, e.g., ’970 Patent at Fig. 3B, 4, 2:26-35,
`3:9-17, 7:17-31, 7:56-58, 8:9-15, 8:39-57;
`
`’970 File History 9/9/11 Amendment and
`Response to Office Action;
`
`’970 File History 12/17/10 Amendment
`
`16
`
`

`

`
`
`Claim Term (Asserted Claim)
`
`20. “the repeating voice alert”
`
`
`(’970 Claim 6)
`
`
`
`
`IPR2018-00821
`U.S. Patent No. 8,213,970
`
`Defendants’ District Court Position and
`Supporting Evidence
`and Response to Office Action.
`
`Indefinite
`
`
`Patent Owner further notes that Apple also took the position that each of the
`
`limitations of Claim 2 is invalid for failure to disclosure sufficient corresponding
`
`structure. This position was reflected in a prior version of the claim construction
`
`chart in the District Court Litigation (Exhibit 2001 at 15-20); however, Patent
`
`Owner has withdrawn its allegations of infringement of Claim 2 as part of the
`
`parties’ efforts to narrow the disputes. Nonetheless, Apple’s positions with regard
`
`to Claim 2 similarly conflicted with its positions here.
`
`Petitioner’s inconsistent positions are particularly egregious given the
`
`specific means-plus-function identifications required by 37 C.F.R. § 42.104(b)(3).