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`IPR2018-01079
`U.S. Patent No. 8,213,970
`
`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
`
`
`
`__________________________________________________________________
`
`PATENT OWNER’S RESPONSE
`
`Case No. IPR2018-01079
`__________________________________________________________________
`
`
`

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`IPR2018-01079
`U.S. Patent No. 8,213,970
`
`TABLE OF CONTENTS
`
`Page(s)
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`THE STATE OF THE ART PRIOR TO THE ’970 PATENT ....................... 1
`
`A.
`
`Summary of the Alleged Prior Art ....................................................... 2
`
`1.
`
`2.
`
`Kubala ......................................................................................... 2
`
`Hammond .................................................................................... 4
`
`III. THE LEVEL OF ORDINARY SKILL IN THE ART .................................... 7
`
`IV. THE RELEVANT LAW ................................................................................. 7
`
`A. Obviousness .......................................................................................... 7
`
`V.
`
`CLAIM CONSTRUCTION ............................................................................ 9
`
`A.
`
`The Relevant Law and Related Proceedings ........................................ 9
`
`B.
`
`C.
`
`“data transmission means. . .” ............................................................ 10
`
`“means for attaching” ......................................................................... 10
`
`D.
`
`“means for requiring. . .” .................................................................... 11
`
`E.
`
`F.
`
`G.
`
`“means for receiving and displaying a listing of which
`recipient PDA/cell phones have automatically
`acknowledged. . .” .............................................................................. 12
`
`“means for periodically resending. . .” ............................................... 13
`
`“means for receiving and displaying a listing of which
`recipient PDA/cell phones have transmitted a manual
`response. . .” ....................................................................................... 13
`
`VI. GROUND 1: PETITIONER HAS NOT PROVEN BY A
`PREPONDERANCE OF THE EVIDENCE THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS OVER KUBALA AND
`HAMMOND ..................................................................................................14
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`A. Kubala and Hammond Do Not Disclose a “forced message
`alert” ................................................................................................... 14
`
`B.
`
`C.
`
`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” ............................................................................................... 18
`
`Kubala and Hammond Do Not Disclose “displaying a listing”
`of Which Phones Have Automatically Acknowledged and
`Have Not Acknowledged the Forced Message Alert ......................... 22
`
`D. Kubala and Hammond Do Not Disclose “displaying a listing
`which recipient PDA/cell phones have transmitted a manual
`response to said forced message alert” ............................................... 27
`
`VII. GROUNDS 2-3: PETITIONER HAS NOT PROVEN BY A
`PREPONDERANCE OF THE EVIDENCE THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS OVER HAMMOND,
`JOHNSON, PEPE, AND BANERJEE ..........................................................28
`
`A. Hammond, Johnson, Pepe, and Banerjee Do Not Disclose a
`“forced message alert” ....................................................................... 28
`
`B.
`
`C.
`
`Hammond, Johnson, Pepe, and Banerjee Do 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” ........................................................... 31
`
`Hammond Does Not Disclose “displaying a listing” of Which
`Phones Have Automatically Acknowledged and Have Not
`Acknowledged the Forced Message Alert ......................................... 34
`
`D. Hammond Does Not Disclose “displaying a listing which
`recipient PDA/cell phones have transmitted a manual response
`to said forced message alert” .............................................................. 38
`
`VIII. CONCLUSION ..............................................................................................39
`
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`Cases
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`TABLE OF AUTHORITIES
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` Page(s)
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`Abiomed v. Maquest Cardiovascular,
`Case IPR2017-01204 (P.T.A.B., October 23, 2017) .......................................... 21
`
`Application of Arkley, 455 F.2d. 586, 587-88 (C.C.P.A. 1972) .............................. 20
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 9
`
`Cordis Corp. v. Boston Sci. Corp.,
`658 F.3d 1347 (Fed. Cir. 2011) .......................................................................... 27
`
`Cuozzo Speed Techs., LLC v Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 9
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 7
`
`Homeland Housewares, LLC v. Whirlpool Corp.,
`865 F.3d 1372 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 2602
`(2018) .................................................................................................................. 27
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 7
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
`Eli Lilly & Co.,
`849 F.3d 1049 (Fed. Cir. 2017) ............................................................................ 8
`
`NantKWest, Inc. v. Lee,
`686 Fed.Appx. 864 (Fed. Cir. 2017) ................................................................... 27
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 20
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`U.S. Patent No. 8,213,970
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`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .............................................................................. 8
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .......................................................................... 21
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) ............................................................................ 8
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 9
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`LIST OF EXHIBITS
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`
`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)
`
`Declaration of Jaime G. Carbonell, Ph.D.
`
`Curriculum Vitae of Jaime G. Carbonell, Ph.D.
`
`Transcript of March 21, 2019 Deposition of David Hilliard
`Williams
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
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`2004
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`2005
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`2006
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`2007
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`
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`v
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`

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`I.
`
`INTRODUCTION
`
`Patent Owner AGIS Software Development LLC (“AGIS” or “Patent
`
`Owner”) submits this response to the Petition (Paper 2, “Petition” or “Pet.”) filed
`
`by Google LLC (“Google” or “Petitioner”) requesting inter partes review (“IPR”)
`
`of claims 1 and 3-9 of U.S. Patent No. 8,213,970 (Ex. 1001, “the ’970 Patent”).
`
`After Patent Owner’s Preliminary Response (Paper 6), Petitioner filed a Reply to
`
`the Preliminary Response (Paper 8), and the Board ordered that an inter partes
`
`review be instituted as to claims 1 and 3-9 (the “Challenged Claims”) and all
`
`grounds raised in the Petition (Paper 9). Patent Owner respectfully submits that
`
`the arguments presented herein and the additional evidence submitted herewith,
`
`such as the testimony from Patent Owner’s expert witness, Dr. Jaime G. Carbonell,
`
`(Ex. 2005, Declaration of Jaime G. Carbonell, Ph.D., “Carbonell Decl.”) and the
`
`cross-examination testimony of Petitioner’s expert witness, Mr. David Williams
`
`(Ex. 2007, Transcript of March 21, 2019 Deposition of David Hilliard Williams,
`
`“Williams Dep.”) demonstrate that the Challenged Claims are not unpatentable in
`
`view of the grounds authorized for trial. Accordingly, Patent Owner respectfully
`
`requests that the Board affirm the validity of the Challenged Claims.
`
`II. THE STATE OF THE ART PRIOR TO THE ’970 PATENT
`
`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
`
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`U.S. Patent No. 8,213,970
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`message alert in order to automate acknowledgement and force a response to a
`
`message directed to the second device and a need to track the same. 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 device that
`
`displays tracking information for acknowledgement data; and (2) a user interface
`
`on the recipient’s device that forces the recipient to choose a required response in
`
`order to clear the display of the recipient’s device. Id.; Ex. 2005, ¶ 21.
`
`As explained 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 manually open and review
`
`the message, as opposed to sending an alert with a message that is forced. Thus
`
`none of the prior art teaches a forced message alert as claimed, let alone the
`
`specific steps related to implementing a forced message alert. Ex. 2005, ¶ 22.
`
`A.
`
`Summary of the Alleged Prior Art
`
`1. Kubala
`
`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.
`
`Kubala’s e-mail message is opened by the recipient, who is not forced to do so.
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`2
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`U.S. Patent No. 8,213,970
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`Ex. 1005, ¶ 0047; see also Ex. 2007, Williams Dep., at 60:16-21 (“There’s three
`
`steps. The first is, recipient selects control to open email message. . .”).
`
`
`
`Ex. 1005, Figure 7. Kubala’s e-mail application is enhanced with a data field (such
`
`as a flag in an e-mail’s header or text in the body of the e-mail). Ex. 1005, ¶ 0040.
`
`When the recipient opens the e-mail message containing the data field and attempts
`
`to close the e-mail message, Petitioner alleges that Kubala discloses that the
`
`following warning window 1112 is displayed to the recipient. Ex. 2005, ¶ 23.
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`Ex. 1005, Figure 11C. In the above warning window 1112, the user is presented
`
`with an error message that informs the recipient that the recipient should respond
`
`to the e-mail message before closing the e-mail message. Ex. 1005, ¶ 0057. The
`
`warning window 1112 includes a CANCEL button 1116 which allows the recipient
`
`to continue to close the e-mail message without responding to the message. Id. In
`
`other words, the response from the response list 1120 is optional, and therefore
`
`Kubala does not require any response in the embodiment identified by the
`
`Petitioner. Ex. 2005, ¶ 24.
`
`2. Hammond
`
`Hammond discloses an e-mail application system utilizing data structures
`
`stored on a server to implement a “Message Tracking Table.” Ex. 1006, 3:41-42;
`
`see also Ex. 2007, Williams Dep., 82:22-84:7.
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`4
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`IPR2018-01079
`U.S. Patent No. 8,213,970
`US. Patent No. 8,213,970
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`5
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`
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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
`
`Message Tracking Table Processor) that is located on the server and is executed in
`
`memory on the server. Ex. 1006, Figure 1 and 4:43-47. Hammond does not
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`disclose any type of displaying, let alone a display on devices other than a server.
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`Ex. 2007, Williams Dep., 84:2-7. Hammond does not force a message to the
`
`display. Hammond’s e-mail messages are voluntarily opened by the recipient. Ex.
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`2005, ¶ 25.
`
`III. THE LEVEL OF ORDINARY SKILL IN THE ART
`
`A person having ordinary skill in the art at the time of the invention of the
`
`’970 Patent would have possessed 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 localization and network transmission. Extensive experience and technical
`
`training might substitute for educational requirements, while advanced degrees
`
`might substitute for experience. Ex. 2005, ¶¶18-20.
`
`IV. THE RELEVANT LAW
`
`A. Obviousness
`
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including: (1) the scope and content of the prior art, (2) any
`
`differences between the claimed subject matter and the prior art, (3) the level of
`
`skill in the art, and (4) where in evidence, so-called secondary considerations.
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 406 (2007). The question is not whether the differences
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`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).
`
`In arriving at an obviousness determination, the Board must sufficiently
`
`explain and support the conclusions that the prior art references 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. Pers.
`
`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). That is, 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. Intelligent Bio-Sys., Inc. v.
`
`Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los Angeles
`
`Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d
`
`1049, 1067 (Fed. Cir. 2017) (vacating and remanding an obviousness
`
`determination, in part, because the Board did not make factual finding as to
`
`whether there was an apparent reason to combine all three prior art references to
`
`achieve the claimed invention and whether a person of skill in the art would have
`
`had a reasonable expectation of success from such a combination.) This
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`U.S. Patent No. 8,213,970
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`combinability determination, as supported by an articulated motivation to combine,
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`requires a plausible rationale as to why those prior art references would have
`
`worked together. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed.
`
`Cir. 2013).
`
`V. CLAIM CONSTRUCTION
`
`A. The Relevant Law and Related Proceedings
`
`Patent Owner agrees that the claim terms should be given their “broadest
`
`reasonable construction” consistent with the specification. Cuozzo Speed Techs.,
`
`LLC v Lee, 136 S. Ct. 2131, 2142 (2016). “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.”
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`
`In the District Court proceedings between AGIS and the real parties in
`
`interest1, the District Court entered a claim construction order adopting the
`
`constructions presented in Exhibit 3001. AGIS Software Development LLC v.
`
`Huawei Device USA Inc., et al., No. 2:17-cv-513, Dkt. 93. AGIS respectfully
`
`requests that, for the purposes of consistency across proceedings and to the extent
`
`
`1 Google identified itself as a real party in the District Court case and shared
`
`the same counsel, Arnold & Porter, with LG Electronics, Inc.
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`U.S. Patent No. 8,213,970
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`any terms require construction, the Board should exercise its discretion to adopt the
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`same constructions set forth in the District Court proceedings. Ex. 2005, ¶ 27.
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`B.
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`“data transmission means. . .”
`
`AGIS respectfully submits that, for the purposes of consistency across
`
`proceedings and to the extent any terms require construction, the Board should
`
`exercise its discretion to enter a construction consistent with the District Court
`
`construction, i.e., 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 claimed function is “facilitating the transmission of
`
`electronic files between said PDA/cell phones in different locations,” and the
`
`corresponding structure is “communications network server; and equivalents
`
`thereof.” Ex. 3001 at 10; Ex. 2005, ¶ 28.
`
`C.
`
`“means for attaching”
`
`AGIS respectfully submits that, for the purposes of consistency across
`
`proceedings and to the extent any terms require construction, the Board should
`
`exercise its discretion to enter a construction consistent with the District Court
`
`construction, i.e., that “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, said forced message
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`alert software packet containing a list of possible required responses and requiring
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`IPR2018-01079
`U.S. Patent No. 8,213,970
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`the 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” is a means-plus-
`
`function term, the claimed function is “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, said forced
`
`message alert software packet containing a list of possible required responses and
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`requiring the forced message alert software on said recipient PDA/cell phone to
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`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,” and 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 7:8–8:36; and equivalents thereof.”
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`Ex. 3001 at 17-18 and 20; Ex. 2005, ¶ 29.
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`D.
`
`“means for requiring. . .”
`
`AGIS respectfully submits that, for the purposes of consistency across
`
`proceedings and to the extent any terms require construction, the Board should
`
`exercise its discretion to enter a construction consistent with the District Court
`
`construction, i.e., that “means for requiring a required manual response from the
`
`response list by the recipient in order to clear recipient’s response list from
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`IPR2018-01079
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`recipient’s cell phone display” is a means-plus-function term, the claimed function
`
`is “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,” and the
`
`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.”
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`Ex. 3001 at 22; Ex. 2005, ¶ 30.
`
`E.
`
`“means for receiving and displaying a listing of which
`recipient PDA/cell phones have automatically
`acknowledged. . .”
`
`AGIS respectfully submits that, for the purposes of consistency across
`
`proceedings and to the extent any terms require construction, the Board should
`
`exercise its discretion to enter a construction consistent with the District Court
`
`construction, i.e., 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
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`automatically acknowledged the forced message alert and which recipient
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`PDA/cell phones have not automatically acknowledged the forced message alert,”
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`and the corresponding structure is “PDA/cell phone hardware including touch
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`screen 16, and wireless transmitter or cellular modem; and equivalents thereof.”
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`Ex. 3001 at 24; Ex. 2005, ¶ 31.
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`F.
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`“means for periodically resending. . .”
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`AGIS respectfully submits that, for the purposes of consistency across
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`proceedings and to the extent any terms require construction, the Board should
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`exercise its discretion to enter a construction consistent with the District Court
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`construction, i.e., that “means for periodically resending said forced message alert
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`to said recipient PDA/cell phones that have not automatically acknowledged the
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`forced message alert” is a means-plus-function term, the claimed function is
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`“periodically resending said forced message alert to said recipient PDA/cell
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`phones that have not automatically acknowledged the forced message alert,” and
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`the corresponding structure is “a PC or PDA/cell phone configured to implement
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`the algorithm disclosed in the ’970 Patent at 7:64–8:8; and equivalents thereof.”
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`Ex. 3001 at 27-28; Ex. 2005, ¶ 32.
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`G.
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`“means for receiving and displaying a listing of which
`recipient PDA/cell phones have transmitted a manual
`response. . .”
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`AGIS respectfully submits that, for the purposes of consistency across
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`proceedings and to the extent any terms require construction, the Board should
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`exercise its discretion to enter a construction consistent with the District Court
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`construction, i.e., that “means for receiving and displaying a listing of which
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`recipient PDA/cell phones have transmitted a manual response to said forced
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`message alert and details the response from each recipient PDA/cell phone that
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`responded” is a means-plus-function term, the claimed function is “receiving and
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`displaying a listing of which recipient PDA/cell phones have transmitted a manual
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`response to said forced message alert and details the response from each recipient
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`PDA/cell phone that responded,” and the corresponding structure is “PDA/cell
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`phone hardware including touch screen 16, and wireless transmitter or cellular
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`modem; and equivalents thereof.” Ex. 3001 at 27-28; Ex. 2005, ¶ 33.
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`VI. GROUND 1: PETITIONER HAS NOT PROVEN BY A
`PREPONDERANCE OF THE EVIDENCE THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS OVER KUBALA
`AND HAMMOND
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`A. Kubala and Hammond Do Not Disclose a “forced message
`alert”
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`Kubala and Hammond fail to disclose the claimed “forced message alert.”
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`Ex. 2005, ¶ 34. Claim 1 requires a “means for attaching a forced message alert
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`software packet to a voice or text message creating a forced message alert that is
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`transmitted by said sender PDA/cell phone to the recipient PDA/cell phone,” and
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`claim 6 similarly requires “creating the forced message alert on said sender
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`PDA/cell phone by attaching a voice or text message to a forced message alert
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`application software packet to said voice or text message.”
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`Petitioner submits that Kubala alone discloses these limitations despite
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`failing to show how the conventional e-mail messages are forced. That is, Kubala
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`does not disclose that its conventional e-mail messages are forced to the display
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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, ¶
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`0047; Ex. 2007, Williams Dep., at 60:16-21 (“There’s three steps. The first is,
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`recipient selects control to open email message. . .”). As shown in Figure 7 of
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`Kubala below, the selection is the user’s voluntary choice, it cannot be a “forced
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`message alert.” Ex. 2005, ¶ 35.
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`Accordingly, review and acknowledgement of the e-mail message is
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`optional rather than forced, as required by the claims. Ex. 2005, ¶ 36. The ’970
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`patent expressly describes that the nature of the receipt and presentation of the text
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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
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`’970 patent does not permit recipients to ignore the forced message alert. Because
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`the user manually (and optionally) opens Kubala’s e-mail message, it is not forced
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`as 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. Ex. 2005, ¶ 36.
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`Petitioner disregards the “forced” nature of the claims and merely presents
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`evidence regarding the alleged “response list” which is a separate claim limitation.
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`While the forced message can contain the response list, a response list does not
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`necessarily include the forced message. Ex. 2005, ¶ 37. The specification of the
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`’970 patent further teaches that it is clear the response list does not even need to be
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`sent along with a forced message. Ex. 1001, 7:56-58 (“The response list from
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`which the message receiver must select can either be included in the forced alert
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`message or be preloaded in each phone.”) Accordingly, because a response list
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`alone does not give rise to the a “forced message” and because Petitioner
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`disregards the “forced” limitation of the claims, Petitioner’s arguments must fail
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`and claims 1 and 6 are not obvious in view of Ground 1. Ex. 2005, ¶ 37.
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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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`Kubala does not disclose a single embodiment in which selection of a
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`response from the response list is required in order to clear the response list from
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`recipient’s cell phone display. Ex. 2005, ¶ 38. 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.”
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`Petitioner submits that Kubala alone discloses this entire claim limitation.
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`Pet. at 30-32. The Petition does not allege inherency or obviousness to disclose
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`this limitation. The Petition does not allege that the knowledge of a person of
`
`ordinary skill in the art is required to meet this limitation. Rather, Petitioner elects
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`a single embodiment that corresponds to Figure 11C. Pet. at 27 and 31. Petitioner
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`submits that the menu 1120 of Figure 11C contains the claimed response list. Pet.
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`at 29. However, as Petitioner later acknowledges (Pet. at 31), a response from
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`menu 1120 is not required “in order to clear recipient’s response list from
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`recipient’s cell phone display.” Ex. 2005, ¶ 39. Selection is not required because
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`Kubala expressly discloses that a user may exit or clear the window containing the
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`menu 1120 (i.e., the claimed response list) by selecting the cancel button 1116, as
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`depicted below in the asserted Figure 11C, without manually choosing a response
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`from menu 1120. Pet. at 31, Ex. 1003 at Figure 11C and ¶ 0057 (“. . . ..‘CANCEL’
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`button 1116 allows the user to continue to close the e-mail message without
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`creating a reply message.”). Ex. 1005, ¶ 0057; Ex. 2005, ¶ 39.
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`
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`Additionally, a user may exit or clear the window containing menu 1120 by
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`selecting the widely known “X” button at the top right of the window without
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`choosing a response from the menu 1120. Ex. 1005, ¶ 0057; Ex.