`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`
`Patent No. 8,213,970
`Filing Date: November 26, 2008
`Issue Date: July 3, 2012
`
`Inventor: Malcolm K. Beyer, Jr.
`Title: METHOD OF UTILIZING FORCED ALERTS FOR INTERACTIVE
`REMOTE COMMUNICATIONS
`
`
`
`__________________________________________________________________
`
`DECLARATION OF JAIME G. CARBONELL, Ph.D
`
`Case No. IPR2018-01079
`__________________________________________________________________
`
`
`
`
`IPR2018-01079 – Ex. 2005
`AGIS Software Development LLC, Patent Owner
`1
`
`
`
`
`
`I, Jaime G. Carbonell, Ph.D., hereby declare and state as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been asked by counsel for Patent Owner AGIS Software
`
`Development LLC (hereinafter “AGIS”), to review U.S. Patent No. 8,213,970 (the
`
`“’970 Patent”), to describe the level of ordinary skill in the relevant art of the ’970
`
`Patent, and to provide my technical review, analysis, insights, and opinions
`
`regarding the ’970 Patent in view of the prior art references cited by Petitioner
`
`Google LLC. I submit this declaration in support of Patent Owner’s response in
`
`this IPR proceeding. I have personal knowledge of the matters stated herein and
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`would be competent to testify to them if required.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`2.
`
`I received Bachelor of Science degrees in both Physics and
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`Mathematics in 1975 from the Massachusetts Institute of Technology. I received
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`M.S., M.Phil., and Ph.D. degrees in Computer Science from Yale University in
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`1976, 1977, and 1979, respectively.
`
`3.
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`I have held the position of Allen Newell Professor of Computer
`
`Science at Carnegie Mellon University from 1995 to the present. I have been
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`appointed University Professor (top 5% of tenured faculty) at Carnegie Mellow
`
`University in 2012. I currently also hold the title of Director of the Language
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`Technologies Institute at Carnegie Mellon University. I first joined Carnegie
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`
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`2
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`
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`Mellon as an Assistant Professor of Computer Science in 1979. In 1987, I was
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`appointed as a Professor of Computer Science at Carnegie Mellon.
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`4.
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`Since 1979 I have taught a wide variety of graduate and
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`undergraduate courses at Carnegie Mellon that fall within the general field of
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`Computer Science, including courses in software engineering, data mining, natural
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`language processing, electronic commerce, machine learning algorithms, system
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`design, and artificial intelligence. I have been involved in a number of different
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`professional organizations and activities, including memberships in the Association
`
`of Computing Machinery (“ACM”), the Association for the Advancement of
`
`Artificial Intelligence (“AAAI”), and the Cognitive Science Society. I have also
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`held leadership positions within professional organizations. From 1983 to 1985, I
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`served as Chair of the ACM’s Special Interest Group on Artificial Intelligence
`
`(“SIGART”). From 1988 to the present, I have been a Fellow of the AAAI. From
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`1990 to 1992, I served on the AAAI executive committee. I have also served on a
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`number of different government committees, including 1) the Scientific Advisory
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`Committee of the Oakridge National Laboratories, energy and computing division
`
`(1985-1987); 2) the Computer, Information Science & Engineering Advisory
`
`Committee of the National Science Foundation (2010 to 2014); 3) the Human
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`Genome Scientific Advisory Committee to the National Institute of Health, also
`
`known colloquially as the “Watson Committee” (from 1988 through 1992); and
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`
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`3
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`
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`4) the Scientific Advisory Committee of the Information Access Division of the
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`National Institute of Standards and Technology (from 1997 through 2001).
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`5.
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`I am an author or co-author on more than 390 technical papers
`
`published as invited contributions and/or in peer-reviewed journals or conferences.
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`These papers present the results of my research which is generally directed at
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`computer-implemented algorithms and methods that relate to machine learning,
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`including such applications as mapping protein sequences to three-dimensional
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`shapes, predicting protein folds, detecting financial fraud, and also related to
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`natural language processing including performing inter-lingual machine
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`translation, parsing natural language (a.k.a. “content analysis”) and text mining,
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`and to various forms of storage and communication of data. I have served as an
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`editor and peer-reviewer for a number of different technical journals in my field,
`
`including the Machine Learning Journal (from 1984 through 2000), the Machine
`
`Translation Journal (the 1980’s), and the Artificial Intelligence Journal (1984
`
`through 2008). I was also a co-Editor of the book series Lecture Notes in Artificial
`
`Intelligence which was published by Springer from 1996 through 2008.
`
`6.
`
`I received a “recognition of service” award from the Association for
`
`Computing Machinery for my role as chair of the ACM’s special interest group in
`
`Artificial Intelligence (SIGART) between 1983 and 1985. In 1986, I received the
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`Sperry Fellowship for excellence in artificial intelligence research. In 1987, I
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`4
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`
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`received the Carnegie Mellon University Computer Science Department’s teaching
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`award.
`
`7.
`
`I have also worked as a technical consultant on Computer Science
`
`applications for a variety of industrial clients. This includes consulting on data
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`mining applications and hand-held safety/gas meters for Industrial Scientific
`
`Corporation to workplace safety; Carnegie Group Inc. (artificial intelligence and
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`natural language processing); Citicorp (financial data mining, natural language);
`
`Wisdom Technologies (financial optimization); Dynamix Technologies (large-
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`scale algorithms with applications to Homeland Security, telecommunication
`
`protocols, etc.), and Meaningful Machines in natural language processing and
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`machine translation. I have experience in many aspects of computing technology,
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`including communications programming and protocols, where I regularly teach
`
`two classes every year, in topics such as search engines, databases, in
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`telecommunications methods, in network-based systems, such as master-slave
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`control devices, whether for displaying or capturing information, and in
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`applications areas ranging from finance and advertisement models to display-based
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`communications and customer-contact methods and algorithms. My consulting
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`included power minimization and management in server farms (ORNL), on the
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`International Space Station computing/network design, and in the resource and
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`power management remote gas meters for workplace safety.
`
`
`
`5
`
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`
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`8.
`
`I am a named inventor on a number of issued U.S. Patents, including:
`
`U.S. Patent No. 5,677,835 (“Integrated authoring and translation system”); U.S.
`
`Patent No. 5,995,920 (“Computer-based method and system for monolingual
`
`document development”); U.S. Patent No. 6,139,201 (“Integrated authoring and
`
`translation system”); U.S. Patent No. 6,163,785 (“Integrated authoring and
`
`translation system”); and U.S. Patent No. 7,406,443 (“Method and system for
`
`multi-dimensional trading”).
`
`III. COMPENSATION
`
`9. My compensation for time worked on this proceeding is not
`
`dependent on any issues related to the ’970 Patent, the outcome of this proceeding,
`
`or the substance of my opinions. My compensation for time worked on this
`
`proceeding is at my customary rate of $550/hour. I have no financial interest in, or
`
`affiliation with, the Patent Owner or any of the real parties in interest.
`
`IV. MATERIALS CONSIDERED
`
`10.
`
`In providing my technical review, analysis, insights, and opinions, I
`
`considered the ’970 Patent and the prosecution history for the ’970 Patent. I also
`
`considered the materials that I refer to, that Patent Owner has filed in this case, and
`
`that I cite in this declaration.
`
`11.
`
`I also considered the Petition filed by the Petitioner in this proceeding
`
`and the relevant exhibits relied upon by Petitioner, including the expert declaration
`
`
`
`6
`
`
`
`
`
`submitted by David Hilliard Williams.
`
`12.
`
`I also considered my own experience and knowledge, as discussed
`
`above and described more fully in my CV, in the areas of computer science,
`
`network systems, and communications programming and protocols.
`
`V.
`
`LEGAL PRINCIPLES
`
`13. Counsel has informed me that a patent may not be obtained, even if
`
`the invention is not identically disclosed or described in a references that qualifies
`
`as prior art, if 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. Counsel has informed me that a proper
`
`determination of obviousness involves evaluating the claimed subject matter must
`
`under the following factors: the scope and content of the prior art; the difference or
`
`differences, if any, between the scope of the patent claim and the scope of the prior
`
`art; and the level of ordinary skill in the art at the time of the invention.
`
`14. Counsel has informed me that it is improper to inject hindsight into an
`
`obviousness analysis. To avoid hindsight, I understand that content of the prior art
`
`is determined at the time the invention was made. While difficult, I understand
`
`that it is necessary to: forget the teachings about the claimed invention, cast the
`
`mind back to the time the invention was made, and occupy the mind of one skilled
`
`
`
`7
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`
`
`
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`in the art at the time the invention was made. I understand that it would be
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`impermissible hindsight to find obviousness by gleaning knowledge from the
`
`applicant’s disclosure to reconstruct the claimed invention.
`
`15.
`
`I understand that obviousness determinations often involve the
`
`consideration and combination of more than one item of prior art. I understand that
`
`it can be important to ascertain if prior art references, when presented in
`
`combination, are from the same field of endeavor and to ascertain whether there is
`
`any reason that would have prompted a person of ordinary skill in the relevant art
`
`to combine the elements in the way the claim does. I understand that a claim
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`generally cannot be rendered obvious by combining: art from across different
`
`fields, including outside the field of the claimed invention; art that itself teaches
`
`away from combination with other art that would otherwise provide its missing
`
`limitations; or art for which there is not at least a fully-articulable, non-conclusory,
`
`common sense reason to bridge the gap between its disclosure and the claim at
`
`issue.
`
`16.
`
`I understand that the question is not whether the differences
`
`themselves would have been obvious, but whether the claimed invention as a
`
`whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
`
`1530, 1537 (Fed. Cir. 1983). I understand that an obviousness analysis must
`
`sufficiently explain and support the conclusions that the prior art references
`
`
`
`8
`
`
`
`
`
`disclose all the elements recited in the Challenged Claims and a relevant skilled
`
`artisan not only could have made, but would have been motivated to combine all
`
`the prior art references in the way the patent claims and reasonably expected
`
`success. I understand that even if all the claim elements are found across a number
`
`of references, an obviousness determination must consider whether a person of
`
`ordinary skill in the art would have the motivation to combine those references.
`
`17. Counsel has also informed me that an obviousness determination must
`
`evaluate secondary considerations, also referred to as objective indicia or objective
`
`evidence of non-obviousness, which includes at least: the commercial success of
`
`the invention; the long felt but unresolved need to develop the invention; and any
`
`praise of the invention in the market. I understand that such objective evidence
`
`must be commensurate in scope with the claimed subject matter. That is, there
`
`must be a nexus or connection between the objective evidence and the claim itself.
`
`VI. LEVEL OF ORDINARY SKILL
`
`18.
`
`I understand that obviousness must be determined at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. I understand that this hypothetical person having ordinary
`
`skill in the art is considered to have the normal skills of a person in a certain
`
`technical field. I understand that factors that may be considered in determining the
`
`level of ordinary skill in the art include: (1) the education level of the inventor;
`
`
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`9
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`
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`
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`(2) the types of problems encountered in the art; (3) the prior art solutions to those
`
`problems; (4) rapidity with which innovations are made; (5) the sophistication of
`
`the technology; and (6) the education level of active workers in the field. In my
`
`opinion, one of ordinary skill in the art to which the ’970 Patent would pertain
`
`would have had at least a bachelor’s degree in computer science, computer
`
`engineering, or equivalent with one to two years of experience in the field of
`
`computer programming with a focus on building systems such as GPS-based
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`localization and network transmission. Extensive experience and technical training
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`might substitute for educational requirements, while advanced degrees might
`
`substitute for experience. I note that Mr. Williams calls for a POSITA with either
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`(1) a Bachelor of Science degree in Electrical Engineering or an equivalent field,
`
`with three to five years of academic or industry experience in the field of electronic
`
`communications; or (2) a Master of Science degree in Electrical Engineering or an
`
`equivalent field, with two to four years of academic or industry experience in the
`
`same field. I disagree with his characterization of a POSITA. In my opinion, Mr.
`
`Williams’s description pertains to a person of extraordinary skill in the art, and he
`
`unduly limits the field of skilled artisans.
`
`19. However, my opinions herein would not change even if the definition
`
`of a person having ordinary skill in the art were to be found to be at a reasonable
`
`intermediate point between my proposed level of skills and the level of skill
`
`
`
`10
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`
`
`
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`proposed by Mr. Williams.
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`20.
`
`I understand that I should perform my analyses from the viewpoint of
`
`a person having ordinary skill in the art, and I have done so.
`
`VII. THE STATE OF THE ART PRIOR TO THE ’970 PATENT
`
`21. At the time of its filing, the ’970 patent addressed the need for a
`
`remote user of a first device to effectively take control of a second device by
`
`sending a forced message alert in order to automate acknowledgement and force a
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`response to a message directed to the second device and a need to track the same.
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`See, e.g., Ex. 1001, 8:16-57. The ’970 patent met this need, in part, by describing
`
`a forced message alert system which includes (1) a user interface on the sender’s
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`device that displaying tracking information for acknowledgement data; and (2) a
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`user interface on the recipient’s device that forces the recipient to choose a
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`required response in order to clear the display of the recipient’s device. Id.
`
`22. As I describe in further detail below, the state of the prior art was
`
`limited to (1) ordinary e-mail applications including conventional read receipts and
`
`priority flags; and (2) data structures for storing receipts on a server. The prior art
`
`e-mail applications were also limited to providing users with the option to
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`manually open and review the message, as opposed to sending an alert with a
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`message that is forced. Thus, it is my opinion that none of the prior art teaches a
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`forced message alert, and the specific steps related to implementing a forced
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`
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`11
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`
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`message alert.
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`VIII. SUMMARY OF THE ALLEGED PRIOR ART
`
`A. Kubala
`
`23. Kubala discloses an e-mail application permitting a sender to send an
`
`e-mail message and a recipient to receive the e-mail message. Ex. 1005, ¶ 0009.
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`Kubala’s e-mail message is opened by the recipient, who is not forced to do so.
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`Ex. 1005, ¶ 0047; see also Ex. 2007, Williams Dep., at 60:16-21 (“There’s three
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`steps. The first is, recipient selects control to open email message…”).
`
`
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`Ex. 1005 at Figure 7. Kubala’s e-mail application is enhanced with a data field
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`(such as a flag in an e-mail’s header or text in the body of the e-mail). Ex. 1005 at
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`0040. When the recipient opens the e-mail message containing the data field and
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`attempts to close the e-mail message, Petitioner alleges that Kubala discloses that
`
`
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`12
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`
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`the following warning window 1112 is displayed to the recipient.
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`
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`Ex. 1005 at Figure 11C.
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`24.
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`In the above warning window 1112, the user is presented with an error
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`message that informs the recipient that the recipient should respond to the e-mail
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`message before closing the e-mail message. Ex. 1005 at 0057. The warning
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`window 1112 includes a CANCEL button 1116 which allows the recipient to
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`continue to close the e-mail message without responding to the message. Id. In
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`other words, the response from the response list 1120 is optional, and therefore
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`Kubala does not require any response in the embodiment identified by Petitioner.
`
`B. Hammond
`
`25. Hammond discloses an e-mail application system utilizing data
`
`structures stored on a server to implement a “Message Tracking Table.” Ex. 1006
`
`at 3:41-42; Ex. 2007 at 82:22-84-7.
`
`
`
`13
`
`
`
`server computer system
`
`we 10
`input/output devices
`120
`eee
`
`storage device ~ 126 Message
`
`TrackingTable 227
`i /
`_
`
`network
`
`_sonnection - 22
`
`computer
`readable
`media drive
`
`7/73
`
`i]
`|
`
`|
`
`display fad
`
`
`
`CPU
`
`f 710
`
`memory
`
`Message Review
`Server
`
`MessageSender
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`|
`
`|
`
`Message Receipt
`Tracker
`
`
`|
`
`Message Tracking,
`Table Processor
`
`¢ 130
`
`132
`
`134
`
`136
`
`13F
`
`
`
`
` recipient computersystems Pu ISI
`
`
`network
`
`
`¢ 156
`
`156
`input/output
`devices J
`storage
`136
`device
`
`stored
`
`
`
`
`messayes
`y 199
`
`
`
`
`| |
`meme
`152
`
`message
`reviewer Tag
`
`Pd
`
`ii)
`
`160
`
`170I180
`
`J
`
`
`
`
`
`Fig. 1
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`Ex. 1006,Fig. 1.
`Ex. 1006, Fig. 1.
`
`
`
`
`
`14
`14
`
`
`
`
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`Ex. 1006, Figure 2. Hammond’s server system also includes a Message Review
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`Server system (comprising a Message Sender, Message Receipt Tracker, and
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`Message Tracking Table Processor) that is located on the server and is executed in
`
`
`
`
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`15
`
`
`
`
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`memory on the server. Ex. 1006, Figure 1 and 4:43-47. Hammond does not
`
`disclose any type of displaying, let alone a display on devices other than a server.
`
`Ex. 2007 at 84:2-7. Hammond’s e-mail messages are voluntarily opened by the
`
`recipient.
`
`IX. CLAIM CONSTRUCTION
`
`A. The Relevant Law and Related Proceedings
`
`26.
`
`I understand that the claim terms in an unexpired patent should be
`
`given their “broadest reasonable construction” consistent with the specification and
`
`that under the broadest reasonable interpretation, words of the claim must be given
`
`their plain meaning, unless such meaning is inconsistent with the specification and
`
`prosecution history.
`
`27.
`
`I understand that the district court entered a claim construction order
`
`on the same terms at issue in this proceeding, and I have reviewed those district
`
`court constructions as presented in Exhibit 3001. For the purposes of this
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`proceeding, I agree with the district court’s constructions of the following terms. I
`
`reserve the right to supplement my opinions for any additional constructions
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`proposed by Petitioner or considered by the Board.
`
`B.
`
`28.
`
`“data transmission means…”
`
`I agree with the district court’s reasoning and determination that “a
`
`data transmission means that facilitates the transmission of electronic files between
`
`said PDA/cell phones in different locations” is a means-plus-function term, the
`
`
`
`16
`
`
`
`
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`claimed function is “facilitating the transmission of electronic files between said
`
`PDA/cell phones in different locations,” and the corresponding structure is
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`“communications network server; and equivalents thereof.” Ex. 3001 at 10.
`
`C.
`
`“means for attaching”
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`29.
`
`I agree with the district court’s reasoning and determination that
`
`“means for attaching a forced message alert software packet to a voice or text
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`message 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
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`containing a list of possible required responses and requiring the forced message
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`alert software on said recipient PDA/cell phone to transmit an automatic
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`acknowledgment to the sender PDA/cell phone as soon as said forced message
`
`alert is received by the recipient PDA/cell phone” is a means-plus-function term,
`
`the claimed function is “attaching a forced message alert software packet to a voice
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`or text message creating a forced message alert that is transmitted by said sender
`
`PDA/cell phone to the recipient PDA/cell phone, said forced message alert
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`software packet containing a list of possible required responses and requiring the
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`forced message alert software on said recipient PDA/cell phone to transmit an
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`automatic acknowledgment to the sender PDA/cell phone as soon as said forced
`
`message alert is received by the recipient PDA/cell phone,” and the corresponding
`
`structure is “a PC or PDA/cell phone configured to implement the algorithm
`
`
`
`17
`
`
`
`
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`disclosed in the ’970 Patent at 7:8–8:36; and equivalents thereof.” Ex. 3001 at 17-
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`18 and 20.
`
`D.
`
`“means for requiring…”
`
`30.
`
`I agree with the district court’s reasoning and determination that
`
`“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” is a means-plus-function term, the claimed function is “requiring a
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`required manual response from the response list by the recipient in order to clear
`
`recipient’s response
`
`list from recipient’s cell phone display,” and
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`the
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`corresponding structure is “a PC or PDA/cell phone configured to implement the
`
`algorithm disclosed in the ’970 Patent at 8:37–57; and equivalents thereof.” Ex.
`
`3001 at 22.
`
`E.
`
`“means for receiving and displaying a listing of which
`recipient PDA/cell phones have automatically
`acknowledged…”
`
`31.
`
`I agree with the district court’s reasoning and determination that
`
`“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”
`
`is a means-plus-function term, the claimed function is “receiving and displaying a
`
`listing of which recipient PDA/cell phones have automatically acknowledged the
`
`
`
`18
`
`
`
`
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`forced message alert and which recipient PDA/cell phones have not automatically
`
`acknowledged the forced message alert,” and the corresponding structure is
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`“PDA/cell phone hardware including touch screen 16, and wireless transmitter or
`
`cellular modem; and equivalents thereof.” Ex. 3001 at 24.
`
`F.
`
`32.
`
`“means for periodically resending …”
`
`I agree with the district court’s reasoning and determination that
`
`“means for periodically resending said forced message alert to said recipient
`
`PDA/cell phones that have not automatically acknowledged the forced message
`
`alert” is a means-plus-function term, the claimed function is “periodically
`
`resending said forced message alert to said recipient PDA/cell phones that have
`
`not automatically acknowledged the forced message alert,” and the corresponding
`
`structure is “a PC or PDA/cell phone configured to implement the algorithm
`
`disclosed in the ’970 Patent at 7:64–8:8; and equivalents thereof.” Ex. 3001 at 27-
`
`28.
`
`G.
`
`“means for receiving and displaying a listing of which
`recipient PDA/cell phones have transmitted a manual
`response …”
`
`33.
`
`I agree with the district court’s reasoning and determination that
`
`“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” is a means-plus-
`
`
`
`19
`
`
`
`
`
`function term, the claimed function is “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,” and the corresponding structure is “PDA/cell phone hardware
`
`including touch screen 16, and wireless transmitter or cellular modem; and
`
`equivalents thereof.” Ex. 3001 at 27-28.
`
`X. GROUND 1: THE CHALLENGED CLAIMS ARE NOT
`OBVIOUS OVER KUBALA AND HAMMOND
`
`A. Kubala and Hammond Do Not Disclose a “forced message
`alert”
`
`34.
`
`It is my opinion that neither Kubala nor Hammond nor their
`
`combination discloses the claimed “forced message alert.” Claim 1 requires a
`
`“means for attaching a forced message alert software packet to a voice or text
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`message creating a forced message alert that is transmitted by said sender PDA/cell
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`phone to the recipient PDA/cell phone,” and claim 6 similarly requires “creating
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`the forced message alert on said sender PDA/cell phone by attaching a voice or
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`text message to a forced message alert application software packet to said voice or
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`text message.”
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`35. Petitioner submits that Kubala alone discloses these limitations
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`despite failing to show how the conventional e-mail messages are forced. Kubala
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`does not disclose that its conventional e-mail messages are forced to the display
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`20
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`
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`without any action on the part of the recipient. Petitioner identifies an “e-mail
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`message 214” that “may be a text message,” but Petitioner does not explain
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`whether the e-mail message corresponds to the claimed forced message alert or the
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`claimed text message. Pet. at 28-29. In each embodiment of Kubala, as depicted
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`below, a recipient manually selects and opens the e-mail message. Ex. 1005 at
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`0047; Ex. 2007, Williams Deposition at 60:16-21 (“There’s three steps. The first
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`is, recipient selects control to open the email message…”). Since the selection is
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`the user’s choice it cannot be a “forced message alert.”
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`Ex. 1005 at Figue 7.
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`36.
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`It is my opinion that review and acknowledgement of the e-mail
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`message is optional rather than forced, as required by the claims. The ’970 patent
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`expressly describes that the nature of the receipt and presentation of the text
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`21
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`message within the forced message alert is automatic. Ex. 1001, 7:20-24; (“When
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`the forced text or voice alert is received, the user operator is presented with the
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`requested response list.”); 8:25-39 (“Immediately following the detection of the
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`forced message alert, the forced message alert software application program on the
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`recipient PC or PDA/cell phone prepares and electronically transmits an automatic
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`acknowledgement of receipt to the sender . . . [and] effectively takes control of the
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`recipient PC or PDA/cell phone.”). The’970 patent further describes that upon
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`receipt and automatic acknowledgment of a forced message alert with a text
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`message, “the forced message alert software application program causes the text
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`message and the response list to be shown on the display of the recipient until
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`selection of a manual response from the response list. Ex. 1001, 8:37-44. The ’970
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`patent claims provide no option to ignore the forced alert. Because the user
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`manually (and optionally) opens Kubala’s e-mail message, it is not forced as
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`required by the claims. . In other words, the message disclosed by Kubala can
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`merely be disregarded, and thus cannot satisfy the “forced” element of the claims.
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`Hammond’s e-mail message, while not asserted in Ground 1, also requires the user
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`to manually and optionally open the message.
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`37.
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` Clearly, Petitioner disregards the “forced” nature of the claims and
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`merely presents evidence regarding the alleged “response list,” which is a separate
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`claim limitation. While the forced message can contain the response list, a
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`22
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`response list does not necessarily include the forced message. The specification of
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`the ’970 patent further teaches that it is clear the response list does not even need
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`to be sent along with a forced message. Ex. 1001, 7:56-58 (“The response list
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`from which the message receiver must select can either be included in the forced
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`alert message or be preloaded in each phone.”) Thus because a response list alone
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`does not give rise the a “forced message” and because Petitioner disregards the
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`“forced” limitation of the claims, Petitioner’s and Mr. Williams’s arguments must
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`fail and claims 1 and 6 are not obvious in view of Ground 1.
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`B. Kubala Does Not Disclose “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”
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`38.
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`It is my opinion that Kubala does not disclose a single embodiment in
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`which selection of a response from the response list is required in order to clear the
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`response list from recipient’s cell phone display. Claim 1 expressly recites
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`“requiring a required manual response from the response list by the recipient in
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`order to clear recipient’s response list from recipient’s cell phone display.” Claim
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`6 similarly recites “providing a manual response list on the display of the recipient
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`PDA/cell phone that can only be cleared by the recipient providing a required
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`response from the list.” (emphasis added)
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`39. Petitioner submits that Kubala alone discloses this entire claim
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`limitation. Pet. at 30-32. Mr. Williams and Petitioner do not allege inherency or
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`23
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`obviousness or allege that the knowledge of a person of ordinary skill in the art is
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`required to meet this limitation. Rather, Mr. Williams and Petitioner elect a single
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`embodiment that corresponds to Figure 11C. Pet. at 27 and 31. Petitioner submits
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`that the menu 1120 of Figure 11C contains the claimed response list. Pet. at 29.
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`However, as Petitioner later acknowledges (Pet. at 31), a response from menu 1120
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`is not required “in order to clear recipient’s response list from recipient’s cell
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`phone display.” Selection is not required because Kubala expressly discloses that a
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`user may exit or clear the window containing the menu 1120 (i.e., the claimed
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`response list) by selecting the cancel button 1116, as depicted below in the asserted
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`Figure 11C, without manually choosing a response from menu 1120. Pet. at 31,
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`Ex. 1003 at Figure 11C and ¶ 0057 (“…. ‘CANCEL’ button 1116 allows the user
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`to continue to close the e-mail message without creating a reply message.”). Ex.
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`1005
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`at
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`0057.
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`40.
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`It is also clear that a user may exit or clear the window containing
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`24
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`menu 1120 by selecting the widely known “X” button (“close window”) at the top
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`right of the window without choosing a response from the menu 1120. Ex. 1005 at
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`0057. Moreover, the text of the “Email application warning” explains that the
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`message “should not be closed” further confirming that the response is not required
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`“in order to clear recipient’s response list from recipient’s cell phone display.” Ex.
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`1005 at 0057, Figure 11C. A person of ordinary skill in the art would not read this
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`this disclosure in the context of the whole reference and understand the statement
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`to mean that selection from the menu 1120 is mandatory or required. As shown
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`above, the text of the asserted “Email application warning” in Figure 11C further
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`instructs the recipient to “select ‘CANCEL’ to close without sending a reply.”
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`Accordingly, the embodiment elected by Petitioner, Kubala’s Figure 11C, cannot
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`meet the requirement of a selection from the response list presented in menu 1120
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`in order to clear the response list from the display.
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`41. Mr. Williams and Petitioner acknowledge this missing element. They
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`allege generally that other embodiments disclose preventing the recipient from
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`closing a review of the received e-mail message,
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