Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: October 23, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018–00821
`Patent 8,213,970 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: October 23, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018–00821
`Patent 8,213,970 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2018–00821
`Patent 8,213,970 B2
`
`
`I. INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a request for inter partes review of
`claims 1–13 (the “challenged claims”) of U.S. Patent No. 8,213,970 B2
`(Ex. 1001, “the ’970 patent”). Paper 1 (“Pet.”). AGIS Software
`Development, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Petitioner filed a Reply to the Preliminary Response.
`Paper 8.
`Under 35 U.S.C. § 314, an inter partes review must not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`considering the evidence presented and the arguments made, we determine
`Petitioner has not demonstrated a reasonable likelihood that it would prevail
`in showing the unpatentability of at least one of the challenged claims.
`Accordingly, we do not institute an inter partes review.
`
`A. Related Proceedings
`Petitioner advises that the ’970 patent is asserted against Petitioner in
`AGIS Software Development LLC v. Apple Inc., No. 2:17-cv-00516-JRG
`(E.D. Tex.). Pet. 2. Petitioner also advises the ’970 patent is asserted
`against third parties in four other cases: AGIS Software Development LLC v.
`Huawei Device USA Inc. et al., No. 2:17-cv-00513 (E.D. Tex.); AGIS
`Software Development LLC v. LG Electronics, Inc., No. 2:17-cv-00515
`(E.D. Tex.); AGIS Software Development LLC v. ZTE Corporation et al.,
`No. 2:17-cv-00517 (E.D. Tex.); AGIS Software Development LLC v. HTC
`Corporation, No. 2:17-cv-00514 (E.D. Tex.). Id. Petitioner further advises
`that it is filing petitions for inter partes review challenging U.S. Patent Nos.
`
`2
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`9,408,055, 9,455,251, and 9,467,838, which are asserted in the above district
`court cases. Id.1
`Patent Owner acknowledges the same proceedings. Paper 5, 2–3.
`
`B. The ’970 Patent
`The ’970 patent generally discloses a specialized software application
`program on a personal computer (“PC”) or PDA/cell phone for creating and
`processing forced message alerts. Ex. 1001, Abstract. The specification of
`the ’970 patent (“Specification”) discloses it is desirable for a PDA/cell
`phone user to be able to simultaneously send Digital Smart Message Service
`(“SMS”) or TCP/IP messages to a large group of PCs or cell phones using
`cellular technology (such as GSM or CDMA) or WiFi. Id. at 1:51–57. The
`Specification further discloses that in some situations it is additionally
`desirable to know which PCs and PDA/cell phones received the message,
`which PCs and PDA/cell phones did not receive the message, and the
`response of each recipient of the message. Id. at 1:57–61. “As a result,
`what is needed is a method in which a sender of a text or voice message can
`force automatic acknowledgement upon receipt from a recipient’s cell phone
`or PC and a manual response from the recipient via the recipient’s cell
`phone or PC.” Id. at 1:65–67. In addressing these issues, the Specification
`discloses “[t]he heart of the invention lies in [a] forced message alert
`software application program provided in each PC or PDA/cell phone.” Id.
`at 4:47–49. The software provides the ability to
`
`
`
`1 The petitions for inter partes review are in cases IPR2018-00817,
`IPR2018-00818, and IPR2018-00819.
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`(a) allow an operator to create and transmit a forced
`message alert from a sender PDA/cell phone to one
`or more recipient PCs and PDA/cell phones within
`the communication network; (b) automatically
`transmit an acknowledgement of receipt to the
`sender PDA cell phone upon the receipt of the
`forced message alert; (c) periodically resend the
`message to the recipient PCs and PDA/cell phones
`that have not sent an acknowledgement; (d) provide
`an indication of which recipient PCs and PDA/cell
`phones have acknowledged the forced message
`alert; (e) provide a manual response list on the
`display of the recipient PC and PDA/cell phone's
`display that can only be cleared by manually
`transmitting a response; and (f) provide an
`indication on the sender PDA/ cell phone of the
`status and content the manual responses.
`Id., Abstract. The Specification explains that a forced message alert is
`comprised of a text or voice message and a forced message alert software
`packet. Id. at 2:11–13, 8:23–25.
`
`C. Challenged Claims
`Petitioner challenges claims 1–13 of the ’970 patent. Claims 1, 6, and
`11 are independent. Claim 6 is illustrative.
`6. A method of sending a forced message alert to
`one or more recipient PDA/cell phones within a
`predetermined communication network, wherein
`the receipt and response to said forced message alert
`by each intended recipient PDA/cell phone is
`tracked, said method comprising the steps of:
`[a] accessing a forced message alert software
`application program on a sender PDA/cell phone;
`[b] creating the forced message alert on said sender
`PDA/cell phone by attaching a voice or text
`message to a forced message alert application
`software packet to said voice or text message;
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`[c] designating one or more recipient PDA/cell
`phones in the communication network;
`[d] electronically transmitting the forced message
`alert to said recipient PDA/cell phones;
`[f] receiving automatic acknowledgements from the
`recipient PDA/cell phones
`that received
`the
`message and displaying a listing of which recipient
`PDA/cell phones have acknowledged receipt of the
`forced message alert and which recipient PDA/cell
`phones have not acknowledged receipt of the forced
`message alert;
`[g] periodically resending the forced message alert
`to the recipient PDA/cell phones that have not
`acknowledged receipt;
`[h] receiving responses to the forced message alert
`from the recipient PDA/cell phones and displaying
`the response from each recipient PDA/cell phone;
`and
`[i] providing a manual response list on the display
`of the recipient PDA/cell phone that can only be
`cleared by the recipient providing a required
`response from the list;
`[j] clearing the recipient’s display screen or causing
`the repeating voice alert to cease upon recipient
`selecting a response from the response list required
`that can only be cleared by manually selecting and
`transmitting a response to the manual response list.
`Ex. 1001, 10:7–41 (brackets and lettering added).
`D. Priority of the ’970 Patent
`The ’970 patent was filed November 26, 2008, and claims priority
`through a chain of continuation-in-part applications to an application filed
`on September 21, 2004 (“earliest filing date”). Ex. 1001, [22], [63].
`However, Petitioner asserts the earliest filing date to which the ’970 patent
`
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`may claim priority is the filing date of the ’970 patent, November 26, 2008
`(“the ’970 filing date”). Pet. 17. Petitioner argues that the claims of the
`’970 patent lack sufficient written description support in the immediate
`parent application to the ’970 patent. Id. Patent Owner does not address the
`priority date of the ’970 patent. See generally Prelim. Resp. 1–40.
`The parties do not dispute that each of the asserted references—
`Casey, Tanumihardja, and Haynes—qualify as prior art under both potential
`priority dates. Pet. 19, 22–23; see generally Prelim. Resp. 1–40. Thus, we
`need not, and do not, determine whether the ’970 patent is entitled to a
`priority date earlier than the ’970 filing date.
`
`E. Relevant References
`Petitioner relies upon the following references:
`(1) U.S. Patent Publication No. 2005/0030977, filed May 25, 2004
`and published Feb. 10, 2005 (“Casey”) (Ex. 1004);
`(2) U.S. Patent No. 7,386,589 B1, filed June 27, 2001 and issued June
`10, 2008 (“Tanumihardja”) (Ex. 1005); and
`(3) U.S. Patent No. 6,232,971 B1, issued May 15, 2001 (“Haynes”)
`(Ex. 1006).
`
`F. Asserted Ground of Unpatentability
`Petitioner contends that claims 1–13 of the ’970 patent are
`unpatentable under 35 U.S.C. § 103 over Casey, Tanumihardja, and Haynes.
`Pet. 4, 26–69. Petitioner relies on the declaration of Dr. Benjamin Bederson
`to support its contentions (“Bederson declaration”) (Ex. 1002).
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`II. DISCUSSION
`
`A. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co. of Kansas City, 383
`U.S. 1, 17 (1966). “The importance of resolving the level of ordinary skill
`in the art lies in the necessity of maintaining objectivity in the obviousness
`inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`1991).
`Petitioner argues that a person of ordinary skill in the art in the field of
`the ’970 patent would have a bachelor’s degree in computer science,
`electrical or computer engineering, or a related field, and at least two to three
`years’ experience in mobile development, including designing and
`implementing software applications for mobile communications systems.
`Pet. 5–6. Such a person of ordinary skill, Petitioner asserts, would have
`been capable of implementing mobile messaging systems and their user
`interfaces. Id. at 6. Petitioner asserts further that its description of the
`skilled artisan is approximate, and a higher level of education or skill may
`make up for less experience, and vice-versa. Id.
`Patent Owner does not provide any evidence or argument as to the
`level of ordinary skill in the art. See generally Prelim. Resp. 1–40.
`For purposes of this decision, and based on the record before us, we
`adopt Petitioner’s assessment of the level of ordinary skill in the art.
`
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`B. Claim Construction
`In an inter partes review claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent. 37 C.F.R. § 42.100(b).2 Consistent with that standard, we assign
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention, in the context
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need
`be construed, and only to the extent necessary to resolve the controversy.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner proposes constructions for the terms “forced message alert,”
`“forced message alert [application] software packet,” and “forced message
`alert software application program” (collectively, “forced message alert
`claim terms”). Pet. 7–9. Petitioner also identifies a number of terms as
`reciting means plus function under 35 U.S.C. § 112(6). Id. at 10–17. Patent
`Owner does not propose constructions for any claim terms. See generally
`Prelim. Resp. 1–40.
`We determine, for purposes of this Decision, that no claim terms
`require express construction.
`1. Sufficiency of Petitioner’s Proposed Claim Constructions
`Patent Owner contends the Petition should be denied on grounds that
`
`
`2 This standard applies to inter parties reviews filed before November 13,
`2018. 77 Fed. Reg. 48727 (Aug. 14, 2012) (codified at 37 C.F.R.
`§ 42.100(b)), as amended at 81 Fed. Reg. 18766 (Apr. 1, 2016); see also 83
`Fed. Reg. 51340 (Oct. 11, 2018) (changing the standard for interpreting
`claims in inter partes reviews filed on or after November 13, 2018).
`
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`the Petition fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3).
`Prelim. Resp. 4–22. Namely, Patent Owner argues Petitioner has failed to
`identify for the Board how each claim term is to be construed because
`Petitioner’s claim construction positions in this proceeding are inconsistent
`with those taken by Petitioner in district court. Id. at 4–5, 17–22. Patent
`Owner asserts “[i]t is Petitioner’s burden to propose claim constructions that
`it believes are correct under applicable law, as required by the Board in its
`interpretation of 37 C.F.R. § 42.104(b)(3).” Id. at 22 (citing Trial Practice
`Guide, 77 Fed. Reg. at 48,764 (“[W]here a party believes that a specific term
`has meaning other than its plain meaning, the party should provide a
`statement identifying a proposed construction of the particular term and
`where the disclosure supports that meaning.”)). Patent Owner further
`contends that Petitioner’s claim construction positions violate 37 C.F.R. §§
`42.11, 11.18(b)(2) on grounds that Petitioner “has knowingly advanced
`conflicting positions before the District Court and in this proceeding.” Id. at
`19.
`
`Petitioner asserts that several claim terms written in means plus
`function format should be construed under 35 U.S.C. § 112(6). Pet. 10–17.
`For each such term, Petitioner identifies a function and cites to portions of
`the Specification Petitioner asserts provide disclosure of corresponding
`structure. Id. Patent Owner asserts this contradicts Petitioner’s position in
`district court, where Petitioner argued these claim terms are indefinite
`because the Specification fails to disclose corresponding structures for the
`recited functions. Prelim. Resp. 4–22 (citing Ex. 2001–2004).
`
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`As to the forced message alert claim terms, Patent Owner asserts that
`in this proceeding Petitioner proposes “a different construction for each of
`these terms as compared to Petitioner’s position in the District Court
`Litigation.” Id. at 18–19. For example, Patent Owner asserts Petitioner
`proposed in district court that the terms “forced message alert” and “forced
`message alert software packet” should receive their plain and ordinary
`meaning, but here Petitioner proposes specific claim constructions for these
`terms. Id.
`Contrary to Patent Owner’s arguments, the applicable provisions of 37
`C.F.R. §§ 42.104(b)(3), 42.11, and 11.18(b)(2) do not require Petitioner to
`express its subjective belief regarding the correctness of its proposed claim
`constructions. See Western Digital Corp. v. Spex Techs, Inc.,
`IPR2018–00084, Paper 14 at 10–12 (April 25, 2018) (rejecting the same
`argument made here, and distinguishing Toyota Motor Corp. v. Blitzsafe
`Texas LLC, Paper 12, IPR2016–00422 (July 6, 2016)).
`Moreover, the standards used for claim construction and the burdens
`of proof are different in district court than they are in AIA proceedings, such
`that different constructions may be appropriate depending on the context. In
`district court proceedings, claims in issued patents are construed using the
`framework set forth in Phillips v. AWH Corp., which emphasizes
`considering the plain meaning of the claim terms themselves in light of the
`intrinsic record. In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir.
`2016) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir.
`2005) (en banc)). In AIA proceedings, the Board currently uses the broadest
`reasonable construction consistent with the specification, otherwise known
`as “BRI.” See Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131 (2016)
`
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`(affirming the use of broadest reasonable construction standard in AIA
`proceedings despite the possibility of inconsistent results in district court
`litigation).
`In addition, Fed. R. Civ. P. 8(d)(3) allows a party to take different,
`alternative, or even inconsistent positions. See Bancorp Services v. Sun Life
`Assur. Co. of Canada, 687 F.3d 1266, 1280 (Fed. Cir. 2012) (citing Fed. R.
`Civ. P. 8(d)(3), and holding the party was entitled to take inconsistent
`positions); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed.
`Cir. 2010) (claims are indefinite, and in the alternative, anticipated); Nippon
`Suisan Kaisha Ltd. v. Pronova Biopharma Norge, AS, PGR2017–0033,
`Paper 7 (Jan. 17, 2018) (instituting review of alternative positions of
`indefiniteness and anticipation/obviousness).
`Here, Petitioner proposes constructions for the forced message alert
`claim terms. Pet. 7–9. Petitioner also proposes certain claim terms should
`be construed under 35 U.S.C. § 112(6), and for each such term Petitioner
`identifies a function and cites to portions of the Specification that Petitioner
`asserts provide disclosure of corresponding structure. Pet. 10–17.
`For the reasons stated above, we decline to deny the Petition for
`failure to comply with 37 C.F.R. §§ 104(b)(3), 42.11, and 11.18(b)(2) on the
`grounds requested by Patent Owner.
`
`C. Casey (Ex. 1004)
`Casey generally discloses systems and methods for distributing urgent
`public information. Ex. 1004, Abstract. According to Casey, urgent public
`information, such as an Amber Alert, severe weather notification, or
`Homeland Security Advisory notification, is often of a critical nature. Thus,
`“it would be beneficial to have some reliable means to make reasonably sure
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`that the information reaches its intended audience.” Id. ¶¶ 12, 18. Existing
`alert distribution systems, according to Casey, rely generally on blanket
`distribution, such as broadcast media (e.g., television or radio), which both is
`overbroad because everyone monitoring the media is subject to the message
`and under inclusive because it excludes interested people who are not
`monitoring the media. Id. ¶ 13. Casey discloses that there is a need,
`therefore, for distribution systems and devices that allow for more selective
`distribution of urgent public information. Id. ¶ 14.
`Figure 1A of Casey is illustrative.
`
`
`Ex. 1004, Fig. 1A. This figure illustrates an exemplary system 100 that can
`be used to distribute urgent public information. Id. ¶ 47. Figure 1A depicts
`alert source 114, alert receiver 112, alert distribution device 108, storage
`medium 110, communication network 104, and alert gateways 116a–c. Id.
`Fig. 1A. Alert source 114 is in communication with alert receiver 112, and
`“can be any device and/or entity that transmits or otherwise provides urgent
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`public information.” Id. ¶ 52. Alert source 114 can be affiliated with a
`federal, state, or local government authority or public entity, or can be
`privately owned and operated on a commercial basis. Id. In some
`embodiments, alert source 114 can be associated with a subscription service.
`Id. Alert distribution device 108 can be in communication with a variety of
`devices, and is shown in Figure 1A to be in communication with alert
`source 114 via alert receiver 112 and with alert gateways 116a–c by way of
`network 104. Id. ¶ 53, Fig. 1A. Alert distribution device 108 can receive
`urgent public information from alert source 114, and can distribute this
`information to alert gateways 116a–c. Id. ¶¶ 51, 53. In some embodiments,
`alert distribution device 108 can be configured to select the alert
`gateways 116 to which urgent public information will be sent based on the
`nature of the information and/or certain characteristics and/or preferences of
`the alert gateways 116. Id. ¶ 54–56.
`Figure 1B also is illustrative.
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`Ex. 1004, Fig. 1B. Figure 1B depicts additional devices not shown in
`Figure 1A. Id. ¶ 61. Figure 1B shows a single alert gateway 116, but omits
`the alert source and alert distribution device shown in Figure 1A. Id. ¶ 62,
`Fig. 1B. Figure 1B shows alert gateway 116 in communication with alert
`notification device 136 and with subscriber equipment 132a–f. Id.; id.
`¶¶ 62–63. Alert notification device 136 is a dedicated piece of hardware
`configured to receive alert information from alert gateway 116 and to take a
`particular action to notify a subscriber that an alert has been received. Id.
`¶ 63. “Merely by way of example,” alert notification device 136 can include
`a visual signal, such as a light emitting diode (“LED”), or an audible signal
`like a siren or alert tone generator. Id. “Thus, when the alert gateway 116
`transmits alert information to the alert notification device 136, the alert
`notification device 136 can display a visual signal and/or display the audible
`signal to notify the subscriber that an alert has been received.” Id.
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`In certain embodiments, alerts may be prioritized and/or categorized
`based on information included in the alert, i.e., alert information. Ex. 1004
`¶ 65. In such embodiments, alert notification device 136 can be configured
`to vary alert notifications in relation to the nature of the alert. Id. For
`example, for low priority alerts device 136 may display a visual signal such
`as a flashing LED, but for high priority alerts device 136 may periodically
`repeat an audible alert or more intense visual alert. Id.
`In certain embodiments, a subscriber may confirm receipt of an alert.
`Id. ¶ 67. In such embodiments, alert notification device 136 includes a
`subscriber feedback device that allows a subscriber to interact with
`device 136. Id. The subscriber feedback device “can be as simple as a
`single button the subscriber can push to indicate that the subscriber has
`received the alert; alternatively, the subscriber feedback device can facilitate
`relatively more complex feedback” in which “the subscriber can request
`more information about the alert, indicate that he is interested (or not
`interested in) furture related alerts, and the like.” Id.
`Figure 1C (not reproduced) illustrates the relationship between alert
`gateway 116 and subscriber equipment 148, 152, 156, 160, 164, 168, 172,
`176, 180, 184, 186, 188 located within a subscriber premises 124 and
`wireless subscriber equipment 192. Id. ¶ 68, Fig. 1C. The subscriber
`equipment may be one of a variety of devices, including television 148, IP
`device 152, alert notification device 156, IP set-top box 160, television 164,
`analog POTS telephone 168, session-initiation protocol (“SIP”)
`telephone 172, video telephone 176, Internet access device (“IAD”) 180,
`analog telephone 184, voice over Internet (“VOIP”) protocol standard
`telephone 186, computer 188, and wireless device 192 such as a cellular
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`phone. Id. ¶¶ 69–72, 75–76.
`
`D. Tanumihardja (Ex. 1005)
`Tanumihardja generally discloses a method and system that allows a
`wireless device user to disseminate information to and collect information
`from a group of wireless device users. Ex. 1005, 2:16–19. Tanumihardja
`discloses that a wireless device user, e.g., cell phone user, may wish to send
`messages to or exchange information with a group of wireless device users.
`Id. at 1:36–43. According to Tanumihardja, this type of communication is
`typically done manually. Id. at 1:43–46. A first wireless device user must
`generally contact each member of the group, and must manually aggregate
`responses from the other wireless device users within the group. Id. at 1:46–
`52. Tanumihardja observes that there are several disadvantages to a manual
`approach. Id. at 1:53–54. Contacting group members individually can be
`tedious and time consuming. Id. at 1:54–57. To the extent a group member
`is not available, repeated attempts may be required to contact an unavailable
`member. Id. at 1:58–60. Manually aggregating responses from group
`members can be tedious and time consuming. Id. at 1:61–63. Time is
`wasted in contacting group members who are not interested in receiving or
`responding to received information. Id. at 1:63–67. To address the alleged
`disadvantages of manual methods, Tanumihardja discloses a Managed
`Messaging Platform (“MMP”) engine to manage sending and collecting
`information.
`In one embodiment, sender 100 uses wireless device 102 to
`communicate with MMP engine 104. Id. at 4:48–50. Sender 100, via
`communication with MMP engine 104, creates a message intended for a
`group of desired recipients 106. Id. at 4:48–58. MMP engine 104 sends
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`message notifications to each wireless device 108 associated with each
`desired recipient forming the group of desired recipients. Id. at 4:54–58.
`One or more of the group of desired recipients 106 view and/or respond to
`the message via communication with MMP engine 104, where viewing
`and/or responding is achieved via each desired recipient’s use of his/her
`respective wireless device 108. Id. at 4:60–65. Sender 104, via
`communication with MMP engine 104, uses his/her wireless device 102 to
`check the message status and responses, where the status and responses may
`have been aggregated by MMP engine 104. Id. at 4:65–5:2.
`
`E. Haynes (Ex. 1006)
`Haynes generally relates to a graphical user interface (“GUI”) for a
`data processing system. Ex. 1006, 1:6–8. Haynes states that the disclosed
`GUI is an improvement over existing GUI’s, and includes a parent window
`and child windows having variable levels of modality. Id. at 1:8–11.
`
`F. Principles of Law on Obviousness
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” In Graham v. John Deere Co. of Kansas City, 383
`U.S. 1 (1966), the Court set out a framework for applying the statutory
`language of § 103. Under § 103, the scope and content of the prior art are to
`be determined, differences between the prior art and the claims at issue are
`to be ascertained, and the level of ordinary skill in the pertinent art resolved.
`
`
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`17
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`IPR2018–00821
`Patent 8,213,970 B2
`
`
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination
`of prior art elements would have been obvious is determined by whether the
`improvement is more than the predictable use of prior art elements according
`to their established functions. KSR Int’l Co., 550 U.S. at 417. Reaching this
`conclusion, however, requires more than a mere showing that the prior art
`includes separate references covering each separate limitation in a claim
`under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
`1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing
`that a person of ordinary skill at the time of the invention would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention. Id.
`
`G. Patentability Analysis
`Petitioner contends claims 1–13 of the ’970 patent are unpatentable
`under 35 U.S.C. §103 as obvious over Casey, Tanumihardja, and Haynes.
`Pet. 4. Claims 1, 6, and 11 are independent.
`
`a. Claims 1–5
`1[e]. “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 cell phone”
`
`
`Petitioner argues that the term “means for attaching a forced message
`alert software packet,” as recited in claim 1, should be construed under 35
`U.S.C. § 112(6). Pet. 10–11. Petitioner identifies as the function “attaching
`a forced message alert software packet to a voice or text message creating a
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`forced message alert that is transmitted by said sender PDA/cell phone to the
`recipient cell phone.” Id. at 11. Petitioner asserts that the corresponding
`structure is “the ‘[a]lgorithm set forth in Figs. 2, 3A, 3B, 7:8–63.’” Id.
`(citing Ex. 1008, A-10). In its claim construction discussion, Petitioner
`identifies as the algorithm the steps of: 1) creating a text message or
`recording a voice message, 2) selecting a default response list or creating a
`new response list, and 3) sending the voice/text message and response list in
`a forced message alert. Id. (citing Ex. 10023 ¶¶ 202–203). Patent Owner
`does not propose a construction for this term. The district court issued an
`order construing this term in AGIS Software Development LLC v. Huawei
`Device USA Inc. et al., No. 2:17-cv-00513 (E.D. Tex.) on October 10, 2018.
`Ex. 3001, 11–18. We have considered the district court’s construction, but it
`does not impact our Decision.
`Regarding how the prior art teaches or suggests limitation 1[e],
`Petitioner states only the following:
`The claim element covers “[a]lgorithm set forth in
`Fig. 2, 3A, 3B, 7:8–63,” which describes typing a
`text message or recording a voice message,
`optionally including a response list, and sending the
`voice/text message and optional response list in a
`forced message alert. See Claim construction
`above.
`
`
`
`3 The Petition cites to “Bederson Dec.,” Pet. 11, which Petitioner identifies
`as Exhibit 1002 in the Exhibit List, id. at vi. Throughout the Petition, for a
`number of exhibits, Petitioner similarly cites to exhibit descriptions rather
`than to exhibit numbers. However, in this Decision we cite to exhibit
`numbers.
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`This element is taught or suggested by Casey and
`Tanumihardja for the same reasons described above
`for element 6[b], [c], and [d]. Bederson Dec.
`¶¶ 202–203.
`Pet. 62. Petitioner’s argument is insufficient for several reasons.
`
`i. Algorithm asserted to be a corresponding structure
`Petitioner inconsistently describes the algorithm that it asserts to be
`the structure corresponding to the asserted function. In its claim
`construction analysis, Petitioner identifies as part of the algorithm the steps
`of 2) selecting a default response list or creating a new response list, and 3)
`sending the voice/text message and response list in a forced message alert.
`Id. at 11. However, in its unpatentability analysis, Petitioner asserts the
`algorithm includes the steps of 2) optionally including a response list, and 3)
`sending the voice/text message and optional response list. Id. at 62. The
`Petition, therefore, is ambiguous as to whether the response list is optional.
`Thus, the Petition does not set forth adequately how this claim limitation is
`to be construed, as required by our rules. See 37 C.F.R. § 42.104(b)(3)
`(requiring that the petition set forth “[h]ow the challenged claim is to be
`construed”).
`
`ii. Requirement to plead with particularity
`The Petition does not specify with particularity how the relied upon
`art teaches or suggests limitation 1[e]. Petitioner asserts, without providing
`any explanation, that this limitation “is taught or suggested by Casey and
`Tanumihardja for the same reasons described above for element 6[b], [c],
`and [d].” Pet. 62. But limitations 6[b], [c], and [d] are not commensurate in
`scope with limitation 1[e] or the algorithms identified by Petitioner.
`Ex. 1001, 10:14–21 (limitations 6[b], [c], and [d]). For example, as we
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`discussed above, Petitioner asserts the algorithm includes the steps of 2)
`selecting or creating a [/an optional] response list, and 3) sending a [/an
`optional] response list in a forced message alert. Pet. 11, 62. However,
`none of limitations 6[b], [c], and [d] relate to, or mention, a response list.
`Petitioner, therefore, places the burden on the Board to sift through the
`Petition’s discussion of limitations 6[b], [c], and [d] in order to ascertain
`Petitioner’s
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