Filed on behalf of Google LLC
`By:
`
`
`Jonathan Tuminaro, Reg. No. 61,327
`
`Robert E. Sokohl, Reg. No. 36,013
`
`Karen Wong-Chan, Reg. No. 69,235
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`1100 New York Avenue, NW
`
`
`Washington, D.C. 20005
`
`
`Tel: (202) 371-2600
`
`Fax: (202) 371-2540
`
`
`
`
`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
`
`
`
`
`PETITIONER’S REPLY TO
` PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`I.
`
`II.
`
`III. GROUND 1 ..................................................................................................... 2
`
`A. AGIS relies on features that are not required by limitations 1.5
`and 6.2 to argue that Kubala and Hammond do not disclose a
`“forced message alert.” ......................................................................... 3
`
`1.
`
`2.
`
`The claims do not require a message to be forced to a
`display “without any action on the part of the recipient.” .......... 4
`
`AGIS confuses “automatic acknowledgements” with
`opening an email. ........................................................................ 6
`
`B.
`
`C.
`
`AGIS’s arguments for limitations 1.6 and 6.8 misread Google’s
`petition and fail to consider Kubala’s combined teachings. ................. 9
`
`AGIS’s arguments for limitations 1.7, 1.9, and 6.5 again
`misread Google’s petition and rely on so-called statements that
`Google’s expert never actually made. .................................................12
`
`IV. GROUNDS 2 AND 3 ....................................................................................16
`
`A. AGIS again relies on features that are not required by
`limitations 1.5 and 6.2 to argue that Hammond, Johnson, Pepe,
`and Banerjee do not disclose a “forced message alert.” .....................17
`
`1.
`
`2.
`
`Google provides motivation to combine Pepe, Hammond,
`and Johnson and identifies how Hammond and Johnson
`disclose a “forced message alert software packet.” .................. 18
`
`Contrary to AGIS’s argument, Hammond’s electronic
`message and Johnson’s electronic mail object are forced. ....... 19
`
`B.
`
`C.
`
`AGIS’s arguments for limitations 1.6 and 6.8 misread Google’s
`petition and fail to consider the references’ combined teachings. ......20
`
`AGIS’s arguments for limitations 1.7, 1.9, and 6.5 fail for the
`exact same reasons as discussed above for Ground 1. ........................23
`
`
`
`- i -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`CONCLUSION ..............................................................................................24
`
`V.
`
`
`
`
`
`
`
`- ii -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`Exhibit No. Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 8,213,970 B2 to Beyer (“ʼ970 patent”)
`
`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 ap-
`plication”)
`Prosecution History of U.S. Application No. 11/612,830 (“’830 ap-
`plication”)
`McKinsey & Company, The McKinsey Report : FDNY 9/11 Re-
`sponse (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com,
`https://en.wikipedia.org/wiki/History_of_mobile_phones (last visit-
`ed May 10, 2018) (“Hist. Mobile Phones”)
`Apple Newton, Wikipedia.com,
`https://en.wikipedia.org/wiki/Apple_Newton (last visited May 10,
`2018) (“Apple”)
`
`
`
`- iii -
`
`

`

`Exhibit No. Description
`
`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`1017
`
`1018
`
`1019
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`
`
`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”)
`Palm VII,Wikipedia.com, https://en.wikipedia.org/wiki/Palm_VII
`(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 Peti-
`tioner’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.
`
`SUPPLEMENTAL EXHIBITS SERVED (NOT FILED)
`
`Exhibit No. Description
`
`1020
`
`Supplemental Declaration of David H. Williams
`
`
`
`- iv -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`I.
`
`INTRODUCTION
`
`The claims of the ʼ970 patent recite nothing but known elements according
`
`to their ordinary use. In an attempt to salvage these obvious claims, AGIS misreads
`
`the petition, misconstrues the deposition testimony of Google’s expert, David H.
`
`Williams, and misinterprets the applied references. When considered in the proper
`
`context, however, the petition, Williams’ declaration, and the applied references
`
`themselves show that claims 1 and 3-9 are unpatentable. Accordingly, these claims
`
`should be canceled.
`
`II. CLAIM CONSTRUCTION
`The Board instructed the parties to “provide their proposed construction for
`
`the term ‘packet.’” (Inst. Dec., 30.) The term “packet” should be construed as a
`
`unit of information. This construction 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
`
`one device to another on a network” (Ex. 1024, 3 (emphasis added)), nothing in the
`
`’970 patent requires the claimed packet to be transmitted as a whole. Thus, the
`
`construction for “packet” here should not be so limited, and instead should be
`
`construed as a unit of information.
`
`In the petition, the claimed “forced message alert software packet” is
`
`mapped to Kubala’s mandatory response flag 216 (Pet., 28-29 (citing Kubala, FIG.
`
`- 1 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`2, ¶¶0032, 0036-0041, 0054-0061)), Hammond’s message delivery information
`
`(id., 60 (citing Hammond, 3:1-4:28)), and Johnson’s persistent reply attribute (id.
`
`(citing Johnson, 3:64-4:42)).1 Each of these things is a packet in accordance with
`
`Google’s proposed construction because Kubala’s mandatory response flag 216,
`
`Hammond’s message delivery information, and Johnson’s persistent reply attribute
`
`are each a unit of information.
`
`III. GROUND 1
`Google’s petition shows how Kubala and Hammond teach or suggest each
`
`and every limitation of claims 1 and 3-9. (See Pet., 13-51 (discussing Ground 1).)
`
`AGIS has not challenged this showing for any of the dependent claims, nor has
`
`AGIS challenged this showing for the preamble of claim 1, limitations 1.1, 1.2,
`
`1.3, 1.4, 1.8, the preamble of claim 6, or limitations 6.1, 6.3, 6.4, 6.6, and 6.7. (See
`
`POR, 14-28; Carbonell Tr., 134:14-144:10.) So, at this point, it is undisputed that
`
`Kubala and Hammond teach or suggest each and every one of these limitations,
`
`and the Board may consider any arguments for patentability based on those
`
`limitations to be waived. (Scheduling Order, 5.)
`
`
`
`
`1 See also Section IV.A.1 below, which discusses Hammond’s and
`
`Johnson’s disclosure of the claimed “forced message alert software packet.”
`
`- 2 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`Rather than challenging these limitations, AGIS’s patentability arguments
`
`focus on certain other limitations of independent claims 1 and 6. First, AGIS
`
`argues that neither Kubala nor Hammond teach or suggest the “forced message
`
`alert” of limitations 1.5 and 6.2. (See POR, 14-18.) This argument, however, relies
`
`on features that are not actually required by these claim limitations. Second, with
`
`respect to limitations 1.6 and 6.8, AGIS argues that Kubala supposedly fails to
`
`disclose “a single embodiment in which selection of a response from the response
`
`list is required in order to clear the response list from recipient’s cell phone
`
`display.” (See id., 18.) But AGIS’s argument misreads Google’s petition and fails
`
`to consider Kubala’s combined teachings. Third, AGIS argues that neither Kubala
`
`nor Hammond “display a listing” as required by limitations 1.7, 1.9, and 6.5. (See
`
`id., 22-28.) But AGIS again misreads Google’s petition and relies on so-called
`
`statements that Google’s expert never actually made. Each of these arguments is
`
`addressed in turn below.
`
`A. AGIS relies on features that are not required by limitations 1.5
`and 6.2 to argue that Kubala and Hammond do not disclose a
`“forced message alert.”
`Google’s petition shows how Kubala teaches or suggests limitations 1.52 and
`
`
`
`2 Limitation 1.5 recites “means for attaching a forced message alert software
`
`packet to a voice or text message creating a forced message alert that is transmitted
`
`
`
`- 3 -
`
`

`

`6.23. (Pet., 28-30, 43.) In response, AGIS argues that Kubala does not disclose the
`
`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`“forced message alert” of these limitations for two reasons: (i) Kubala’s email
`
`messages are supposedly not forced to the display “without any action on the part
`
`of the recipient” (POR, 15); and (ii) the ’970 patent discloses that “automatic
`
`acknowledgement[s]” are sent immediately upon receipt (id., 16-17). But neither of
`
`these arguments rebuts Google’s showing that Kubala teaches these limitations.
`
`1.
`
`The claims do not require a message to be forced to a
`display “without any action on the part of the recipient.”
`AGIS argues that Kubala’s enhanced email application is somehow not
`
`“forced” simply because Kubala does not disclose that the email messages are
`
`
`
`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
`
`requiring the forced message alert software on said recipient PDA/cell phone to
`
`transmit an automatic acknowledgment to the sender PDA/cell phone as soon as
`
`said forced message alert is received by the recipient PDA/cell phone.”
`
`3 Limitation 6.2 recites “creating the forced message alert on said sender
`
`PDA/cell phone by attaching a voice or text message to a forced message alert
`
`application software packet to said voice or text message.”
`
`- 4 -
`
`

`

`forced to the display “without any action on the part of the recipient.” (POR, 15.)
`
`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`But the “without any action” feature is not a limitation of any claim.
`
`Neither limitation 1.5 nor limitation 6.2 requires the claimed “forced
`
`message alert” to be forced to the display “without any action on the part of the
`
`recipient,” as AGIS asserts. Instead, limitation 6.2 merely requires “creating the
`
`forced message alert on said sender PDA/cell phone by attaching a voice or text
`
`message to a forced message alert application software packet to said voice or text
`
`message.” And AGIS has not offered any construction for this claim limitation.
`
`(See POR, 9-14.) Thus, nothing in limitation 6.2 requires the email message to be
`
`forced to the display “without any action on the part of the recipient.”
`
`This requirement is also not present in limitation 1.5. The Board construed
`
`limitation 1.5 as a means-plus-function limitation. (Inst. Dec., 13-14.) And AGIS
`
`agreed that this is a means-plus-function limitation with the corresponding
`
`structure being “a PC or PDA/cell phone configured to implement the algorithm
`
`disclosed in the ’970 Patent at 7:8-8:36; and equivalents thereof.” (POR, 11.)
`
`Nothing in these cited portions of the specification even mentions how the alert is
`
`displayed. (See generally ’970 patent at 7:8-8:36.) But a subsequent portion of the
`
`specification does say that the “forced voice alert software application program
`
`causes the text message and the response list to be shown on the display of the
`
`recipient PC or PDA/cell phone.” (’970 patent, 8:39-44 (emphasis).) But this
`
`- 5 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`portion of the specification merely specifies that it is the “forced voice alert
`
`software application program” that “causes” the message and response list to be
`
`shown on the display. Nothing in the specification corresponding to limitation 1.5
`
`requires the email message to be forced to the display “without any action on the
`
`part of the recipient”—as AGIS alleges.
`
`Because AGIS’s argument relies on an unpatented feature, this argument
`
`fails to rebut Google’s showing that Kubala teaches limitations 1.5 and 6.2.
`
`2.
`
`AGIS confuses “automatic acknowledgements” with
`opening an email.
`
`AGIS also argues that Kubala’s option to open an email does not meet the
`
`claimed “forced message alert” of limitations 1.5 and 6.2, because Kubala’s email
`
`messages are allegedly not forced. (See POR, 16.) AGIS points to the ’970 patent
`
`at column 7, lines 20-24, and column 8, lines 25-39, as allegedly supporting the
`
`argument that “[t]he ’970 patent expressly describes that the nature of the receipt
`
`and presentation of the text message within the forced message alert is automatic.”
`
`(POR, 16 (citing ’970 patent, 7:20-24, 8:25-39).) The cited portions of the ’970
`
`patent, however, merely disclose that “automatic acknowledgements” can be
`
`generated upon receipt of a message. These “automatic acknowledgements” fail to
`
`distinguish limitations 1.5 and 6.2 over Kubala for at least two reasons.
`
`First, like the ’970 patent, Kubala also discloses that “automatic
`
`acknowledgements” can be sent immediately upon receipt of a forced message
`
`- 6 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`alert. Specifically, Kubala discloses that it was known “to generate return receipts
`
`to the sender when the sender’s email message is received at its intended
`
`destination or when the recipient opens the e-mail message, thereby providing an
`
`acknowledgement that a particular message has been received and/or opened.”
`
`(Kubala, ¶0006 (emphasis added); see also Pet., 28-32.) Moreover, AGIS’s own
`
`expert, Dr. Carbonell, conceded that generating a return receipt was known before
`
`2006. (Carbonell Tr., 102:6-11 (“Q. In like an E-mail application or service,
`
`generating a return receipt in response to an E-mail was known in 2006 and even
`
`before that; right? A. It – the answer to your questions is yes. Some E-mail service
`
`had it, some did not.”).) And he also conceded that return receipts can be a form of
`
`an automatic acknowledgement. (Id., 103:2-10 (“Q. So I guess my question is,
`
`given that answer, a return receipt can be a form of an automatic
`
`acknowledgement? . . . A. It will be an automatic acknowledgement that the E-mail
`
`client has received it, not that the person has read it.”).) Thus, Kubala’s disclosure
`
`of “return receipts” teaches at least as much as the claimed “automatic
`
`acknowledgement” of limitation 1.5.4
`
`
`
`
`4 The “automatic acknowledgement” feature is not recited in limitation 6.2.
`
`- 7 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`Second, that limitation 1.5 recites an “automatic acknowledgement” does not
`
`mean that Kubala’s option to open an email falls outside of limitation 1.5, because
`
`acknowledging that a message has been received is different than opening an
`
`email. Dr. Carbonell confirmed this at his deposition. (Id., 103:19-22 (“Q. So an
`
`acknowledgement that the message has been received is different than opening an
`
`E-mail? A. That is correct.”).) In fact, he confirmed that a return receipt can be
`
`generated without the message even being opened. (Id., 104:1-8 (“Q. So an E-mail
`
`client can generate a return receipt even if the message isn’t opened; right? . . . A.
`
`It doesn’t even – I will just answer with a simple yes. I can give you more details,
`
`but yes.”).)
`
`Accordingly, the “automatic acknowledgement” recited in the claims and
`
`disclosed in the specification does not distinguish limitations 1.5 and 6.2 over
`
`Kubala. For at least this additional reason, AGIS has failed to rebut Google’s
`
`showing that limitations 1.5 and 6.2 are taught by Kubala.
`
`- 8 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`B. AGIS’s arguments for limitations 1.6 and 6.8 misread Google’s
`petition and fail to consider Kubala’s combined teachings.
`
`Google’s petition shows how Kubala teaches or suggests each and every
`
`feature of limitations 1.65 and 6.86. (Pet., 30-32, 46.) AGIS’s arguments to the
`
`contrary fundamentally misread Google’s petition and attack individual disclosures
`
`within Kubala without considering this reference’s teachings as a whole.
`
`Specifically, AGIS argues: (i) Google relies on “a single embodiment” in Kubala
`
`(POR, 18); (ii) Google relies on “other embodiments” with allegedly “no
`
`obviousness analysis or motivation to combine the distinct embodiments” (id., 20);
`
`and (iii) the “different embodiments” lack a response list and pertain to clearing a
`
`received message, not clearing a response list (id., 21, 22). None of these
`
`arguments rebut Google’s showing with respect to limitations 1.6 and 6.8.
`
`
`
`
`5 Limitation 1.6 recites “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.”
`
`6 Limitation 6.8 recites “providing a manual response list on the display of
`
`the recipient PDA/cell phone that can only be cleared by the recipient providing a
`
`required response from the list.”
`
`- 9 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`AGIS’s first argument that Google supposedly relies on “a single
`
`embodiment” in Kubala is contradicted by AGIS’s own acknowledgement that
`
`Google also relies on Kubala’s “other embodiments.” (Compare POR, 18
`
`(“Petitioner elects a single embodiment that corresponds to Figure 11C”) with id.,
`
`20 (“Petitioner . . . alleges generally that other embodiments disclose . . . .”).) In
`
`fact, contrary to AGIS’s argument, the Petition explicitly mentions other figures
`
`besides Figure 11C, such as Figures 11A and 11D (Pet., 19-20, 30-32, 46), and
`
`explains that text strings used as menu items may be “configurable” or “extracted
`
`from the original e-mail message” (id., 19-20). Thus, AGIS’s single-embodiment
`
`argument is internally inconsistent and ignores Kubala’s teachings that Google
`
`relies on.
`
`AGIS’s second argument that Google “presents no obviousness analysis or
`
`motivation to combine the distinct embodiments” (at 20) fundamentally misreads
`
`Google’s petition, Kubala’s teachings, and Mr. Williams’ declaration. The petition
`
`itself explains that Google is not relying solely on Kubala’s Figure 11C for
`
`limitations 1.6 and 6.8, but instead is also relying on Kubala’s teachings at
`
`paragraphs 0009, 0054, 0055, and 0059-0060. (Pet., 31-32, 46.) These paragraphs
`
`from Kubala explicitly provide the motivation to combine. For example, Kubala’s
`
`paragraph 0054 explains:
`
`- 10 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`FIGS. 11A-11D may be used in different scenarios depending upon
`the manner in which the enhanced e-mail application is implemented
`or configured to handle an e-mail message that contains a mandatory
`response flag. Other scenarios could be handled in different ways that
`are not illustrated within FIGS. 11A-11D, and these different
`processes would also be considered as embodiments of the present
`invention because each different process would represent a different
`way of attempting to fulfill a request from the sender of the original
`message that the recipient should or must provide a reply message in
`response to the original message.
`
`(Kubala, ¶0054 (emphasis added).) And Kubala’s paragraph 0059 contains
`
`additional motivation-to-combine statements. (Id., ¶0059.) Moreover, Mr.
`
`Williams also provides motivations for combining Kubala’s various teachings. (Ex.
`
`1003, ¶¶109-110.) Thus, AGIS’s lack-of-motivation-to-combine argument is
`
`meritless.
`
`AGIS’s third argument (at 22) that Kubala does not disclose “clear[ing]
`
`recipient’s response list from recipient’s cell phone display” again misreads the
`
`petition, Kubala’s teachings, and Mr. Williams’ declaration. The petition explains
`
`that the relied-upon disclosures from Kubala “teach or suggest the claimed
`
`requirement that a response is required ‘in order to clear recipient’s response list
`
`from recipient’s cell phone display.’” (Pet., 32.) And Mr. Williams explained why
`
`it was important to clear “each piece of functionality” displayed on a screen:
`
`- 11 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`The 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 POSA perspective in that recipient wireless devices in
`the time prior to the ’970 filing had limited screen ‘real estate’ to
`display information and limited memory to use in application
`execution. Thus it was important to complete (e.g. clear) each piece
`of functionality being processed by the device in order to have as
`much (screen and memory) space for the next piece of application
`functionality,
`thus avoiding crowded/unintelligible screens and
`‘memory full’ issues.
`
`Ex. 1003, ¶¶109 (emphasis added). Thus, contrary to AGIS’s third argument (POR,
`
`22), neither the petition, Kubala’s teachings, nor Mr. Williams’ explanations are
`
`limited to clearing a received message from the display.
`
`For the reasons above, AGIS has failed to rebut Google’s showing that
`
`limitations 1.6 and 6.8 are taught by Kubala.
`
`C. AGIS’s arguments for limitations 1.7, 1.9, and 6.5 again misread
`Google’s petition and rely on so-called statements that Google’s
`expert never actually made.
`
`Google’s petition shows how Kubala and Hammond teach or suggest each
`
`and every feature of limitations 1.77, 1.98, and 6.59. (Pet., 32-35, 37-40, 44.)
`
`
`
`7 Limitation 1.7 recites “means for receiving and displaying a listing of
`
`which recipient PDA/cell phones have automatically acknowledged the forced
`
`
`
`- 12 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`AGIS’s arguments to the contrary misread Google’s petition, Mr. Williams’
`
`declaration and deposition testimony, and the references that Google relies on.
`
`Each of these deficiencies is explained in more detail below.
`
`AGIS’s argument (POR, 23) that Google “does not rely on Kubala to
`
`disclose the recited function” in limitations 1.7 and 6.5 is simply wrong. To
`
`support its argument, AGIS relies on a citation to the petition at page 11, but
`
`Google’s analysis for these limitations appears in other pages not addressed by
`
`
`
`message alert and which recipient PDA/cell phones have not automatically
`
`acknowledged the forced message alert.”
`
`8 Limitation 1.9 recites “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.”
`
`9 Limitation 6.5 recites “receiving automatic acknowledgements from the
`
`recipient PDA/cell phones that received the message and displaying a listing of
`
`which recipient PDA/cell phones have acknowledged receipt of the forced message
`
`alert and which recipient PDA/cell phones have not acknowledged receipt of the
`
`forced message alert.”
`
`- 13 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`AGIS. (See Pet., 32-35 (discussing limitation 1.7); id., 44 (discussing limitation
`
`6.5).) In fact, Dr. Carbonell admitted that he relied on an incorrect citation to the
`
`petition in support of his allegation that Google does not rely on Kubala for the
`
`recited function and that Google’s analysis for this function actually appears in
`
`another portion of the petition that he didn’t cite:
`
`Q. So your statement that the Petitioner does not rely on Kubala to
`disclose the recited function, that is wrong; right?
`
`. . .
`
`A. So based on the cited paragraph, it is not wrong. Based on the
`paragraph that I didn’t cite, probably should have cited, it would be
`wrong.
`
`(Carbonell Tr., 57:16-25 (emphasis added); see also id., 53:8-57:25.)
`
`Contrary to AGIS’s argument, and as set forth in the petition, Kubala
`
`discloses limitations 1.7, 1.9, and 6.5. (Pet., 32-35, 37-40, 44.) For example,
`
`Kubala states that the receiving email application 208 may collect and record
`
`information about the manner in which the recipient responds to an e-mail message
`
`that has a mandatory-response flag. The information may include mandatory-
`
`response return-status codes included within the reply e-mail. (Kubala, ¶¶0050,
`
`0051, 0061, FIG. 9.) Further, Mr. Williams explains that a POSA would have
`
`known that a listing of the recorded information regarding the responses to email
`
`messages were available and accessible. (Ex. 1003, ¶¶111, 122.) In fact, in
`
`- 14 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`response to redirect examination by AGIS’s counsel, Dr. Carbonell conceded that
`
`it is possible to have a listing of just one entry. Carbonell Tr., 198:5-8 (“Q. Dr.
`
`Carbonell, it is possible to have a listing with one entry; correct? A. It is possible to
`
`have a listing of just one entry, yes.”) This testimony confirms that Kubala teaches
`
`or suggests the “displaying a listing” feature of limitations 1.7, 1.9, and 6.5.
`
`Moreover, Hammond also discloses these features. (Pet., 32-35, 37-40, 44;
`
`Williams ¶¶111-114, 119-124, 140.; Hammond, FIG. 1, 4:40-43, claim 27.) Yet
`
`AGIS asserts that Mr. Williams admits that Hammond’s “‘Message Tracking
`
`Table’ is not the displayed listing required by the claims.” (POR, 25.) But Mr.
`
`Williams admitted no such thing. Nowhere in his deposition does Mr. Williams say
`
`that Hammond’s Message Tracking Table cannot be displayed. Instead, Williams
`
`testified as follows:
`
`Q. So the table itself is not displayed, correct?
`
`A. The table in Figure 2 is a data structure that would—is very
`large, such that it is much more of an internal data structure
`than how any information would be displayed on a user screen.
`
`(Ex. 2007, Williams Tr., 84:2-7.) In this testimony, Williams does not
`
`acknowledge any difficulty in displaying a listing. (Ex. 1023, Supp. Williams
`
`Decl., ¶¶ 10-11.) Nor does he say that the table being a very large data structure
`
`exceeds any displayable size. (Id.) Instead, a person of ordinary skill in the art
`
`- 15 -
`
`

`

`would understand that Hammond’s Message Tracking Table or at least portions of
`
`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`that table could be displayed. (Id., ¶¶12, 22-24.)
`
`For the reasons above, AGIS has failed to rebut Google’s showing that
`
`limitations 1.7, 1.9, and 6.5 are taught by Kubala and Hammond.
`
`IV. GROUNDS 2 AND 3
`Google showed that Hammond, Johnson, and Pepe (Ground 2)—and that
`
`Hammond, Johnson, Pepe, and Banerjee (Ground 3)—teach or suggest each and
`
`every limitation of claims 1 and 3-9. (See Pet., 51-78.) Like Ground 1, AGIS has
`
`not challenged this showing for the preamble of claim 1, limitations 1.1, 1.2, 1.3,
`
`1.4, 1.8, the preamble of claim 6, or limitations 6.1, 6.3, 6.4, 6.6, and 6.7. (See
`
`POR, 28-39; Carbonell Tr., 134:14-144:10.) So, at this point, it is undisputed that
`
`Hammond, Johnson, Pepe, and Banerjee teach or suggest each and every one of
`
`these limitations.
`
`Rather than challenging these limitations, AGIS rehashes the same three
`
`arguments that it made for Ground 1 and applies them to Hammond, Johnson,
`
`Pepe, and Banerjee. First, AGIS argues that these references do not teach or
`
`suggest the “forced message alert” of limitations 1.5 and 6.2. (See POR, 28-31.)
`
`But, as with Ground 1, AGIS’s first argument relies on features that are not
`
`actually required by these claim limitations. Second, with respect to limitations 1.6
`
`and 6.8, AGIS argues that Hammond, Johnson, Pepe, and Banerjee supposedly fail
`
`- 16 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`to disclose “a single embodiment in which selection of a response from the
`
`response list is required in order to clear the response list from recipient’s cell
`
`phone display.” (See POR, 31.) But AGIS’s argument misreads Google’s petition
`
`and the references and fails to consider the combined teachings of the references.
`
`Third, AGIS argues that Hammond does not “display a listing” as required by
`
`limitations 1.7, 1.9, and 6.5. (See POR, 34-39.) But this argument fails for the
`
`exact same reasons as discussed above with respect to Ground 1. Each of AGIS’s
`
`arguments for Grounds 2 and 3 is discussed below.
`
`A. AGIS again relies on features that are not required by limitations
`1.5 and 6.2 to argue that Hammond, Johnson, Pepe, and Banerjee
`do not disclose a “forced message alert.”
`
`Google’s petition shows how Hammond, Johnson, Pepe, and Banerjee teach
`
`or suggest each and every feature of limitations 1.5 and 6.2. (Pet., 60-61, 71.)
`
`AGIS disputes this showing for two reasons. First, AGIS “agrees with and adopts
`
`the Board’s findings” with respect to Grounds 2 and 3. (POR, 29.) In particular, at
`
`the preliminary stage, the Board (i) was not persuaded there was sufficient
`
`rationale to combine Pepe with Hammond or Johnson and (ii) did not discern
`
`where or how the asserted references disclose a “forced message alert software
`
`packet.” (Inst. Dec., 35, 36.) Second, AGIS argues that neither Hammond’s
`
`electronic messages nor Johnson’s electronic message object are “forced.” (POR,
`
`29.) Each point is addressed in turn below.
`
`- 17 -
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`1. Google provides motivation to combine Pepe, Hammond,
`and Johnson and identifies how Hammond and Johnson
`disclose a “forced message alert software packet.”
`
`Google’s petition provides the motivation to combine Pepe with Hammond
`
`and Johnson in the overview section that introduces Grounds 2 and 3 (Pet., 53-54,
`
`77-78) and in the analysis section of limitation 1.1 (id., 56-57). And each of these
`
`sections cites to Williams’ declaration, which provides additional analysis
`
`regarding the motivation to combine Pepe with Hammond and Johnson. ( Ex.
`
`1003, ¶¶164-167, 172-173.)
`
`In particular, Hammond and Johnson are both directed to sending and
`
`receiving electronic messages (e.g., emails). (Pet., 56; Ex. 1003, ¶172.) Neither of
`
`these references, however, provides details for how to send or receive such
`
`messages via a PDA or cell phone, even though PDAs and cell phones were widely
`
`available by 1998. (Se