UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`GOOGLE LLC,
`Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner
`_____________________
`
`Case IPR2018-01079
`Patent 8,213,970
`_____________________
`
`SUPPLEMENTAL DECLARATION OF DAVID H. WILLIAMS
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Google 1023
`IPR2018-01079
`U.S. Patent No. 8,213,970
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`GOOGLE LLC,
`Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner
`_____________________
`
`Case IPR2018-01079
`Patent 8,213,970
`_____________________
`
`SUPPLEMENTAL DECLARATION OF DAVID H. WILLIAMS
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Google 1023
`IPR2018-01079
`U.S. Patent No. 8,213,970
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2018-01079
`Patent 8,213,970
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`
`I.
`
`II.
`
`III. GROUND 1 ..................................................................................................... 2
`
`
` Kubala’s disclosure is not limited to clearing a received A.
`message from the display, but also encompasses clearing a
`response list from the display as required by claim limitations
`1.6 and 6.8. ............................................................................................ 3
`
`B.
`
`
`In addition to Kubala, Hammond also discloses the “displaying
`a listing” required by claim limitations 1.7, 1.9, and 6.5. ..................... 4
`
`1.
`
`2.
`
`During my deposition, I did not say that a Message
`Tracking Table is “not displayed.” ............................................. 4
`
`Portions of a Message Tracking Table can be stored and
`displayed on other devices. ......................................................... 5
`
`IV. GROUNDS 2 AND 3 ...................................................................................... 6
`
`
` A person of ordinary skill in the art would have been motivated A.
`to combine Hammond, Johnson, and Pepe. .......................................... 7
`
`B.
`
`
`C.
`
`
`Hammond and Johnson each disclose the claimed “forced
`message alert software packet” and the “forced message alert.” .......... 8
`
`Even with options to open electronic message objects, Johnson
`employs persistent reply attributes. ....................................................... 9
`
`
` Hammond, Johnson, and Pepe disclose the “displaying a D.
`listing” required by limitations 1.7, 1.9, and 6.5. ................................11
`
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`EXHIBIT LIST
`
`Case IPR2018-01079
`Patent 8,213,970
`
`
`Exhibit No. Description
`1001
`U.S. Patent No. 8,213,970 B2 to Beyer (“ʼ970 patent”)
`1002
`Prosecution History of U.S. Patent No. 8,213,970 (Application No.
`12/324,122) (“’970 Pros. Hist.”)
`Declaration of David H. Williams
`Curriculum Vitae of David H. Williams
`U.S. Patent Application Publication No. 2006/0218232 to Kubala
`et al. (“Kubala”)
`U.S. Patent No. 6,854,007 to Hammond (“Hammond”).
`U.S. Patent No. 5,325,310 to Johnson et al. (“Johnson”)
`U.S. Patent No. 5,742,905 to Pepe et al. (“Pepe”)
`U.S. Publication No. 2003/0128195 to Banerjee et al. (“Banerjee”)
`Simon Says “Here’s How!” Simon™ Mobile Communications
`Made Simple, Simon Users Manual, IBM Corp., 1994. (“Simon”)
`Prosecution History of U.S. Patent Application No. 10/711,490
`(“’490 application”)
`Prosecution History of U.S. Application No. 11/308,648 (“’648
`application”)
`Prosecution History of U.S. Application No. 11/612,830 (“’830
`application”)
`McKinsey & Company, The McKinsey Report : FDNY 9/11
`Response (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com,
`https://en.wikipedia.org/wiki/History_of_mobile_phones (last
`visited May 10, 2018) (“Hist. Mobile Phones”)
`Apple Newton, Wikipedia.com,
`https://en.wikipedia.org/wiki/Apple_Newton (last visited May 10,
`2018) (“Apple”)
`Email, Wikipedia.com, https://en.wikipedia.org/wiki/Email (last
`visited May 10, 2018) (“Email”)
`From touch displays to the Surface: A brief history of touchscreen
`technology, Arstechnica.com
`https://arstechnica.com/gadgets/2013/04/from-touch-displays-to-
`the-surface-a-brief-history-of-touchscreen-technology/ (last visited
`May 10, 2018) (“Arstechnica”)
`
`1003
`1004
`1005
`
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
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`Case IPR2018-01079
`Patent 8,213,970
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`1021
`
`1022
`
`1023
`
`Exhibit No. Description
`Palm VII,Wikipedia.com, https://en.wikipedia.org/wiki/Palm_VII
`1019
`(last visited May 10, 2018) (“Palm”)
`Declaration of Michael A. Berta in support of Motion for Pro Hac
`Vice Admission
`Transcript of the Deposition of Dr. Jaime G. Carbonell, June 7,
`2019
`Supplemental Declaration of David H. Williams in Support of
`Petitioner’s Reply
`Computer Dictionary, The Comprehensive Standard for Business,
`School, Library, and Home, Microsoft Press, Microsoft Corp.,
`1991.
`Declaration of Dr. Jaime G. Carbonell in Support of Plaintiff's
`Opening Claim Construction Brief, AGIS Software Development,
`LLC v. Huawei Device USA Inc., et al., No. 2:17-cv-00513-JRG
`(E.D. Tex.), filed July 25, 2018.
`
`1024
`
`1025
`
`
`
`SUPPLEMENTAL EXHIBITS SERVED (NOT FILED)
`
`Exhibit No. Description
`1020
`Supplemental Declaration of David H. Williams
`
`- iii -
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`Case IPR2018-01079
`Patent 8,213,970
`
`I.
`
`INTRODUCTION
`
`I, David H. Williams, declare as follows:
`
`1.
`
`I am the same David H. Williams who submitted a declaration in
`
`support of the Petitioner on May 15, 2018 in this inter partes review proceeding,
`
`IPR2018-01079. I am more than 21 years of age and I make this declaration based
`
`on my personal knowledge, experience, and belief. If called upon, I can testify
`
`competently to the facts stated in this declaration. My initial declaration was
`
`marked as Exhibit 1003.
`
`2.
`
`Since I submitted my initial declaration (Ex. 1003), the Board has
`
`issued an Institution Decision, Dr. Carbonell has submitted a declaration (Ex.
`
`2005), and Dr. Carbonell has been deposed (Ex. 1022). I submit this supplemental
`
`declaration to address issues raised by the Institution Decision, Dr. Carbonell’s
`
`declaration, and his deposition.
`
`II. CLAIM CONSTRUCTION
`I understand that the Board instructed the parties to “provide their
`3.
`
`proposed construction for the term ‘packet.’” (Inst. Dec., 30.) I also understand that
`
`Google’s proposed construction for the term “packet” is a unit of information. I
`
`agree with this construction because it is consistent with this term’s use in the
`
`claims and specification of the ’970 patent. And although the Microsoft Computer
`
`Dictionary defines a packet as “a unit of information transmitted as a whole from
`
`- 1 -
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`
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`one device to another on a network” (Ex. 1024, 3 (emphasis added)), nothing in the
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`Case IPR2018-01079
`Patent 8,213,970
`
`’970 patent requires the claimed packet to be transmitted as a whole. Thus, in my
`
`opinion, the proper construction for “packet” in the context of the ’970 patent is a
`
`unit of information.
`
`4. Given this construction for the term “packet,” it is my opinion that the
`
`claimed “forced message alert software packet” is met by Kubala’s mandatory
`
`response flag 216 (Pet., 60 (citing Kubala, FIG. 2, ¶¶0032, 0036-0041, 0054-
`
`0061)), Hammond’s message delivery information (id., ¶179 (citing Hammond,
`
`3:1-4:28)), and Johnson’s persistent reply attribute (id. (citing Johnson, 4:4-32)).
`
`Kubala’s mandatory response flag 216, Hammond’s message delivery information,
`
`and Johnson’s persistent reply attribute are each a unit of information and each is
`
`attached to an electronic message in order to indicate that the electronic message is
`
`forced, as recited in the claims.
`
`III. GROUND 1
`In my initial declaration, I set forth my opinion that Kubala in view of
`5.
`
`Hammond discloses each and every limitation recited in claims 1 and 3-9. (Ex.
`
`1003, ¶¶70-90.) In response to my initial declaration, Dr. Carbonell offered two
`
`opinions that I respond to here. First, he opined that Kubala’s disclosure
`
`“pertain[s] to clearing the received message from the display, not clearing the
`
`claimed response list from the display.” (Carbonell Decl., ¶41.) Second, he implied
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`- 2 -
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`that in my deposition I confirmed “that the Message Tracking Table is merely
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`Case IPR2018-01079
`Patent 8,213,970
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`stored and not displayed.” (Id., ¶43.) I disagree with both of these opinions and
`
`provide my responses below.
`
`
`
`
` Kubala’s disclosure is not limited to clearing a received message A.
`from the display, but also encompasses clearing a response list
`from the display as required by claim limitations 1.6 and 6.8.
`
`6. Dr. Carbonell opined that Kubala’s disclosure “pertain[s] to clearing
`
`the received message from the display, not clearing the claimed response list from
`
`the display.” (Carbonell Decl., ¶41.) I disagree.
`
`7. Displaying and clearing a list or an email were well-known in the art
`
`before the filing of the ʼ970 patent. For example, in my initial declaration (Ex.
`
`1003, ¶144), I note that the ability to display a list on a PDA/cell phone is one of
`
`the earliest features of PDAs, such as the “list view” using a “list manager” on the
`
`Apple Newton in 1993. Similarly, I identify (id., ¶202) a To-Do list as being
`
`known in the art, and I show (id., ¶47) an IBM Simon Mobile Office screen that
`
`includes a To Do list icon. The IBM Simon manual mentions many types of lists
`
`and states for example, “[w]hen you are looking at the entire Done list, you can
`
`choose to erase all the items in the Done list by touching the Erase All button.”
`
`(Ex. 1010, 65-66.) In addition, I stated in my initial declaration (Ex. 1003, ¶109)
`
`that “[t]he need to both require a response when the recipient first reviews the
`
`email message, and in turn clear the message, was necessary and obvious from a
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`POSA perspective in that recipient wireless devices in the time prior to the ’970
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`Case IPR2018-01079
`Patent 8,213,970
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`filing had limited screen ‘real estate’ to display information and limited memory to
`
`use in application execution.” So, as of 1994, clearing a list or a message from a
`
`display was well known in the art. Given this background, a person of ordinary
`
`skill in the art would have understood Kubala’s disclosures to teach or suggest both
`
`clearing a message from a display and clearing a list from a display.
`
`B.
`
`
`In addition to Kubala, Hammond also discloses the “displaying a
`listing” required by claim limitations 1.7, 1.9, and 6.5.
`
`8. Dr. Carbonell implied that in my deposition I confirmed “that the
`
`Message Tracking Table is merely stored and not displayed.” (Carbonell Decl.,
`
`¶43.) I did not. The sections below (i) respond to Dr. Carbonell’s points regarding
`
`my deposition testimony, and (ii) explain that a skilled artisan would have
`
`understood that Hammond’s a Message Tracking Table or portions of that table
`
`can be stored and displayed on other devices.
`
`1. During my deposition, I did not say that a Message Tracking
`Table is “not displayed.”
`
`9. Dr. Carbonell misinterprets my deposition testimony. He alleges that
`
`by not saying that the Message Tracking Table is displayed, I imply that the
`
`Message Tracking Table is not displayed. I disagree.
`
`10.
`
`In my deposition, I explained that there is a display element associated
`
`with the listing that the Message Tracking Table itself doesn’t describe. (Ex. 2007,
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`- 4 -
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`
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`83:6-13.) And I explained further that it is a somewhat nonsensical statement to
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`Case IPR2018-01079
`Patent 8,213,970
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`say that the Message Tracking Table by itself is displaying the listing, because
`
`there are additional technical elements associated with getting data into and out of
`
`the Message Tracking Table. (Ex. 2007, 83:19-23.) Thus, a person of ordinary skill
`
`in the art would read Hammond with the understanding that a display capability is
`
`a necessary component for any table data input-entering/output-(re)viewing
`
`process.
`
`11.
`
`I explain further in my deposition (Ex. 2007, 84:2-7) that the Message
`
`Tracking Table is a data structure. I meant that the data structure does not describe
`
`how any information would be displayed on a user screen—its purpose is to
`
`organize (structure) data. I did not state—nor did I intend to convey the notion—
`
`that the Message Tracking Table is not displayed.
`
`2. Portions of a Message Tracking Table can be stored and
`displayed on other devices.
`
`12.
`
`In my deposition, I also explain that a “POSA would recognize that
`
`[that the Message Tracking Table data structure] could also be stored on other
`
`devices, not just the server.” Ex. 2007, 84:8-13 (emphasis added). What I meant by
`
`that statement is that the Message Tracking Table or portions of the Message
`
`Tracking Table could be stored on another computer or a PDA/cell phone attached
`
`to network 140. Accordingly, in my opinion, a person of ordinary skill in the art
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`- 5 -
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`
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`would have understood that Hammond’s Message Tracking Table or portions of
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`Case IPR2018-01079
`Patent 8,213,970
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`the Message Tracking Table could also be displayed on another computer or a
`
`PDA/cell phone attached to network 140. In fact, Hammond explicitly discloses a
`
`display that can graphically present information. (Hammond, FIG. 1, 4:40-43,
`
`claim 27.)
`
`IV. GROUNDS 2 AND 3
`In my initial declaration, I set forth my opinion that Hammond in
`13.
`
`view of Johnson and further in view of Pepe discloses each and every limitation
`
`recited in the challenged claims 1 and 3-9. (Ex. 1003, ¶¶157-198.) After I
`
`submitted my declaration, the Board raised certain issues regarding (i) the
`
`motivation to combine Hammond, Johnson, and Pepe and (ii) how Hammond and
`
`Johnson disclose the claimed “forced message alert software packet.” (Inst. Dec.,
`
`35-36.) In addition, Dr. Carbonell opined that (i) Johnson did not disclose the
`
`“forced message alert” of limitations 1.5 and 6.2 because Johnson’s recipient has
`
`the option of opening an e-mail message (Carbonell Decl., ¶¶47-49), and
`
`(ii) Hammond, Johnson, and Pepe does not disclose the “displaying a listing”
`
`required by limitations of 1.7, 1.9, and 6.5 (Carbonell Decl., ¶¶54-56). I address
`
`each of these points below.
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`- 6 -
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`Case IPR2018-01079
`Patent 8,213,970
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`
` A person of ordinary skill in the art would have been motivated to A.
`combine Hammond, Johnson, and Pepe.
`
`14.
`
`In my initial declaration, I describe the state of the art (Ex. 1003,
`
`¶¶39-64) and the motivation to combine Hammond, Johnson, and Pepe (Id., ¶¶157-
`
`168). In particular, I stated, “[a] POSA would have been motivated to combine
`
`Hammond and Johnson because they are both directed to the same field of
`
`endeavor and attempt to solve the same problem—i.e., to help ensure that
`
`important electronic messages receive timely responses.” (Id., ¶164.) And I also
`
`explained that “Hammond discloses methods and systems for tracking
`
`acknowledgements of and responses to electronic messages including resending.
`
`Johnson improves Hammond’s system by requiring a specific response to an
`
`electronic mail object.” (Id., ¶163 (emphasis added).)
`
`15. Further, “by 1994 the trend for wireless personal communications
`
`made wireless communications devices with touchscreens and styluses available.
`
`(See Simon, 4.) Pepe discloses examples of such wireless communications devices.
`
`In particular, Pepe discloses software applications on cell phones and/or PDAs. A
`
`person of ordinary skill in the art would have been motivated to combine Pepe with
`
`Hammond’s system improved by Johnson at least based on the teachings in these
`
`references, to enable users to use the system of Hammond improved by Johnson on
`
`their cell phones and/or PDAs. And the combination of these references yielded
`
`- 7 -
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`
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`predictable results.” (Ex. 1003, ¶167.) Accordingly, a person of ordinary skill in
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`Case IPR2018-01079
`Patent 8,213,970
`
`the art would have been motivated to modify the software in Pepe to include an
`
`algorithm of Johnson to perform the steps of requiring a required manual response
`
`by the recipient in order to clear the recipient’s response list from the recipient’s
`
`PDA/cell phone display.
`
`
` Hammond and Johnson each disclose the claimed “forced B.
`message alert software packet” and the “forced message alert.”
`
`16. Hammond states that electronic messages that included email, paging
`
`messages, and voice mail were common place in business and personal settings.
`
`(Hammond, 1:13-26; Ex. 1003, ¶53.) So, Hammond teaches an electronic message
`
`that can be a voice or text message. Hammond also describes a sender specifying
`
`message delivery information stored with the original electronic “message (e.g., as
`
`a header or as attributes of a message object.)” (Hammond, 3:1-4:28; Ex. 1003,
`
`¶179 (emphasis added).) Accordingly, as Hammond’s message delivery
`
`information can be stored in a header of the electronic message, and the header can
`
`be attached to the electronic message body that includes voice or text message,
`
`Hammond teaches a “forced message alert software packet” as claimed, and
`
`creates a “forced message alert” as claimed.
`
`17.
`
`Johnson also teaches these limitations. Specifically, Johnson states
`
`that an “electronic mail object may be in the form of text, an image, or a voice
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`- 8 -
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`message.” (Johnson, 4:1-2; Ex. 1003, ¶¶172, 179.) Johnson also describes a sender
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`Case IPR2018-01079
`Patent 8,213,970
`
`that sets a persistent reply attribute on an electronic mail object before the
`
`electronic mail object is sent. For example, Johnson states:
`
` [T]he sender of the electronic mail object may mark or associate an
`attribute with the electronic mail object such that it cannot be exited
`out of until the appropriate reply has been made. These attributes are
`called ‘persistent reply attributes’. Persistent reply attributes are set on
`an electronic mail object before the mail object is sent for
`distribution. . . . Interpretation of these persistent reply attributes
`indicates how the recipient data processing system should govern user
`interaction for forcing a reply containing data from the recipient of
`the electronic mail object.
`
`(Ex. 1007, 4:28-39 (emphasis added); Ex. 1003, ¶179.) A persistent reply attribute
`
`being “set on” an electronic mail object is the same as it being “attached to” an
`
`electronic email object. Accordingly, Johnson’s persistent reply attribute is
`
`attached to an electronic mail object that includes a voice or text message. Thus,
`
`Johnson teaches a “forced message alert software packet” as claimed, and creates a
`
`“forced message alert” as claimed.
`
`
` Even with options to open electronic message objects, Johnson C.
`employs persistent reply attributes.
`
`18. As mentioned above, Dr. Carbonell opined that Johnson does not
`
`disclose the “forced message alert” of limitations 1.5 and 6.2 because Johnson’s
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`recipient has the option of opening an e-mail message. (Carbonell Decl., ¶¶47-49.)
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`Case IPR2018-01079
`Patent 8,213,970
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`I disagree.
`
`19. First, even with the option to open an electronic mail object, reviews
`
`are forced. Carbonell focuses on step 602 of FIG. 6 of Johnson (reproduced below)
`
`that is directed to opening an electronic mail object, and then states that review of a
`
`message is optional. (Carbonell Decl., ¶49.) Having the option to open an
`
`electronic mail does not affect the mechanism for forcing a recipient to reply to an
`
`electronic mail. It is typical that recipients have the option to open e-mail
`
`messages. Otherwise, if recipient PDA/cell phones were to require opening
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`automatically all the electronic messages or electronic message objects that were
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`Patent 8,213,970
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`received, a user would be inundated with emails (e.g., spam emails) demanding
`
`immediate attention, potentially in effect rendering the recipient PDA/cell phone
`
`inoperable.
`
`20. Second, Johnson states that “a preferred embodiment of the present
`
`invention, [is] a mechanism for forcing a recipient to reply to an electronic mail
`
`object.” (Johnson, 4:3-5 (emphasis added); Ex. 1003, ¶179.) With regards to Figure
`
`6, Johnson states that “block 612, which illustrates an indication to the recipient
`
`that the persistent reply attributes have not been satisfied. Thereafter, the process
`
`returns to block 602 so that the recipient may work with the persistent reply
`
`electronic mail object.” (Johnson, FIG. 6, 8:13-20 (emphasis added); Ex. 1003,
`
`¶176.) Thus, even with the option to open an electronic mail, the mechanism for
`
`forcing a recipient to reply remains intact.
`
`
` Hammond, Johnson, and Pepe disclose the “displaying a listing” D.
`required by limitations 1.7, 1.9, and 6.5.
`
`21. Again, Dr. Carbonell opined that Hammond, Johnson, and Pepe does
`
`not disclose the “displaying a listing” required by limitations of 1.7, 1.9, and 6.5.
`
`(Carbonell Decl., ¶¶54-56.) I disagree.
`
`22.
`
`In my original declaration (Ex. 1003, ¶¶183-184, 187-188), I explain
`
`how Hammond and Pepe disclose the claim feature of “displaying a listing” for
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`- 11 -
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`limitations 1.7 and 1.9. I further explain how Hammond and Johnson disclose the
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`Case IPR2018-01079
`Patent 8,213,970
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`claim feature of “displaying a listing” for limitation 6.5. (Ex. 1003 ¶¶ 204-205.)
`
`23. As described above, a Message Tracking Table can be displayed, and
`
`portions of a Message Tracking Table can be stored and displayed on other
`
`devices. (See ¶12. ) In fact, Carbonell acknowledges that a portion of the Message
`
`Tracking Table, such as single cell, can be the claimed “listing” feature of
`
`limitation 1.7, 1.9, and 6.5.
`
`24. As an example, a portion of Johnson that was cited (Ex. 1003, ¶204)
`
`explains that a sender can set a persistent reply attribute on an electronic mail
`
`object before sending via the sender PDA/cell phone. Later, the sender can receive
`
`a forced reply containing data from the recipient of the electronic mail object. That
`
`forced reply displayed on the sender PDA/cell phone (which could be a one-line
`
`item or statement) satisfies a “listing” and thus satisfies “displaying a listing” in the
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`limitations 1.7, 1.9, and 6.5.
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`I hereby declare that all statements made herein are of my own knowledge
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`Case IPR2018-01079
`Patent 8,213,970
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`and are true and that all statements made on information and belief are believed to
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`be true; and further that these statements were made with the knowledge that
`
`willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
`
`Executed on this 28th day of June, 2019
`
`
`
`___________________________________
`David H. Williams
`
`
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