`AGIS SOFTWARE DEVELOPMENT LLC
`Patent Owner
`
`
`IPR2018-01079
`
`U.S. Patent No. 8,213,970
`
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`
`BROWN RUDNICK LLP
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`Vincent J. Rubino, III
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`Peter Lambrianakos
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`Enrique W. Iturralde
`Counsel for Patent Owner
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`Before: TREVOR M. JEFFERSON,
`
`
` CHRISTA P. ZADO, and
`
`
` KEVIN C. TROCK
`
`
` Administrative Patent
`
`
` Judges
`
` Patent Owner Ex. 2009
`Google v. AGIS Software
` IPR2018-01079
` 1
`
`

`

`
` University Professor, Allen Newell Professor, School of Computer
`Science, Carnegie Mellon University
` Director, Language Technologies Institute,
`Carnegie Mellon University
` B.S. Physics and Mathematics, Massachusetts
`
`Institute of Technology (1975)
` M.S., M.Phil., and Ph.D. degrees in Computer
`
`Science, Yale University
`
`(1976, 1977, and 1979, respectively)
`
`
`
`See, e.g., Exhibits 2005, 2006
`
`

`

` Taught a wide variety of graduate and undergraduate courses at Carnegie
`Mellon falling within the general field of Computer Science (including courses
`in software engineering, data mining, natural language processing, electronic
`commerce, machine learning algorithms, system design, and AI) since 1979
` Involvement in a number of professional organizations and activities including
`the Association of Computing Machinery (ACM), Association for the
`Advancement of Artificial Intelligence (AAAI), and the Cognitive Science
`Society
` Leadership in professional organizations such as:
` Chair of the ACM’s Special Interest Group on Artificial Intelligence
`(“SIGART”) (1983-1985)
` Fellow of the AAAI (1988 to present)
` Member of the AAAI Executive Committee (1990-1992)
`See, e.g., Exhibits 2005, 2006
`
`

`

` Author or Co-Author on more than 390 technical papers directed towards
`computer-implemented algorithms and methods that related to machine
`learning (applications as mapping protein sequences to 3-D shapes, predicting
`protein folds, detecting financial fraud, natural language processing)
` Editor and peer-reviewer for a number of technical journals
` Recipient of:
` The Recognition of Service Award for role as chair of SIGART
` The Sperry Fellowship for excellence in artificial intelligence research
` Carnegie Mellon University Computer Science Department’s Teaching
`Award
` Technical Consultant on Computer Science Applications for variety of
`industrial clients including Industrial Scientific Corporation, Carnegie Group
`Inc., Citicorp, Dynamic Technologies, Meaningful Machines
`See, e.g., Exhibits 2005, 2006
`
`

`

`
` Named Inventor on a number of issued U.S. Patents:
` U.S. Patent No. 5,677,835 (“Integrated Authoring and Translation System”)
` U.S. Patent No. 5,995,920 (“Computer-based method and system for
`monolingual document development”)
` U.S. Patent No. 6,139,201 (“Integrated authoring and translation system”)
` U.S. Patent No. 6,163,785 (“Integrated authoring and translation system”)
` U.S. Patent No. 7,406,443 (“Method and system for multi-dimensional
`trading”)
`
`
`
`See, e.g., Exhibits 2005, 2006
`
`

`

`U.S. Patent No. 8,213,970
`
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`U.S. Patent No. 8,213,970
`
`US 8.213370 B2
`1
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`1. Field of the Invention
`
`manual response from the recipient.
`
`A communications system and. method that uses a plurality
`of PCs a1 d PDAfcell phones for the coordination of two or
`more people through the use of a cormnunications network.
`The system and method provide each user with a PC or
`PDAl'cell phone that has
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`enables a user to create and sen a voice or test mes s age alert
`that forces an automatic acknowledgement upon receipt and a
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`

`

`
`• Petitioner filed 10 petitions for inter partes review directed the ’970
`Patent and related patents—IPR2018-01079 is one of two IPRs that
`were instituted.
`
`• Petitioner petitions for inter partes review of claims 1 and 3-9 of the
`’970 Patent.
`
`• Petitioner raises three grounds for inter partes review based on five
`references: Kubala, Hammond, Pepe, Johnson, and Banerjee.
`
`
`

`

`The Board granted institution on claims 1 and 3-9 of the ’970 Patent .
`
`Ground 1: “[W]e find that Petitioner has made a sufficient showing for
`purposes of institution. We discuss limitations 1.2, 1.5, and 1.6 and
`Petitioner’s rationale to combine below.”
`
`Grounds 2-3: “At this stage, we are not persuaded that this provides
`sufficient rationale to combine across all limitations of claim 1.”
`
`Grounds 2-3: “Petitioner’s rationale is less than one page. Pet. 56–57 .”
`
`
`Decision Granting Institution, Paper 9 at 23, 35.
`
`

`

`Ground 2-3: “Petitioner’s argument regarding rationale to combine
`Johnson with Pepe does not explain sufficiently why or how a skilled
`artisan would have modified the software in Pepe to include an algorithm
`that performs the steps of requiring a required manual response by the
`recipient in order to clear the recipient’s response list from the recipient’s
`cell phone display.”
`
`Ground 2-3: “Petitioner does not identify any such algorithm in Pepe.
`This, combined with Petitioner’s reliance on Johnson for disclosure of the
`specified function, suggests Petitioner relies on Johnson for the
`corresponding algorithm. .”
`
`Decision Granting Institution, Paper 9 at 35-36.
`
`

`

`Ground 2-3: “We do not discern any identification in the Petition of where
`or how the asserted references disclose a “forced message alert software
`packet.”
`
`Ground 2-3: “However, Petitioner does not explain how the messages
`transmitted in these references comprise a voice or text message and a
`forced message alert software packet attached thereto.”
`
`
`Decision Granting Institution, Paper 9 at 36.
`
`

`

`1. A communication system for transmitting, receiving, confirming receipt, and responding to an
`electronic message, comprising:
`
`-a predetermined network of participants, wherein each participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen
`display a CPU and memory;
`-a data transmission means that facilitates the transmission of electronic files between said PDA/cell phones in different locations;
`-a sender PDA/cell phone and at least one recipient PDA/cell phone for each electronic message;
`-a forced message alert software application program including a list of required possible responses to be selected by a participant recipient of a forced
`message response loaded on each participating PDA/cell phone;
`-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 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;
`-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;
`-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;
`-means for periodically resending said forced message alert to said recipient PDA/cell phones that have not automatically acknowledged the forced
`message alert; and
`-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.
`
`
`Exhibit 1001, claim 1
`
`

`

`1. A method of sending a forced message alert to one or more recipient PDA/cell phones within a
`predetermined communication network, wherein the receipt and response to said forced message alert
`by each intended recipient PDA/cell phone is tracked, said method comprising the steps of:
`-accessing a forced message alert software application program on a sender PDA/cell phone;
`-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;
`-designating one or more recipient PDA/cell phones in the communication network;
`-electronically transmitting the forced message alert to said recipient PDA/cell phones;
`-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;
`-periodically resending the forced message alert to the recipient PDA/cell phones that have not acknowledged receipt;
`-receiving responses to the forced message alert from the recipient PDA/cell phones and displaying the response from each recipient PDA/cell phone; and
`-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;
`-clearing the recipient's display screen or causing the repeating voice alert to cease upon recipient selecting a response from the response list required
`that can only be cleared by manually selecting and transmitting a response to the manual response list.
`
`
`Exhibit 1001, claim 6
`
`

`

`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
`
`Kubala and Hammond do not disclose:
`
`•
`
`forced message alert
`
`• “displaying a listing” of which phones have automatically acknowledge and
`have not acknowledged the forced message alert
`
`• displaying a listing which recipient PDA/cell phones have transmitted a
`manual response to said forced message alert
`
`Paper 17 at 14-28.
`
`

`

`
`• Kubala is directed to an e-mail
`application.
`
`• Kubala’s e-mail message is voluntarily
`opened by the recipient.
`
`• Kubala provides warning windows,
`which are not e-mails.
`
`
`Paper 17, at 3-4
`
`

`

`
`• Hammond discloses an e-mail application system
`utilizing data structures stored on a server to
`implement a “Message Tracking Table,” which is
`not displayed.”
`
`
`
`• Hammond’s e-mails are voluntarily opened by the
`recipient.
`
`
`
`Paper 17 at 4; Ex. 1006, 3:41-42; Ex. 2007,
`Williams Dep., 82:22-84:7.
`
`

`

`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
`
`Kubala and Hammond do not disclose:
`
`•
`
`forced message alert
`
`• “displaying a listing” of which phones have automatically acknowledge and
`have not acknowledged the forced message alert
`
`• displaying a listing which recipient PDA/cell phones have transmitted a
`manual response to said forced message alert
`
`Paper 17 at 14-28.
`
`

`

`1. A communication system for transmitting, receiving, confirming receipt, and responding to an electronic
`message, comprising:
`
`-a predetermined network of participants, wherein each participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen display a
`CPU and memory;
`-a data transmission means that facilitates the transmission of electronic files between said PDA/cell phones in different locations;
`-a sender PDA/cell phone and at least one recipient PDA/cell phone for each electronic message;
`-a forced message alert software application program including a list of required possible responses to be selected by a participant recipient of a forced message
`response loaded on each participating PDA/cell phone;
`-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 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;
`-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;
`-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;
`-means for periodically resending said forced message alert to said recipient PDA/cell phones that have not automatically acknowledged the forced message
`alert; and
`-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.
`
`Exhibit 1001, claim 1
`
`

`

`Forced Message Alert
`
`
`Kubala and Hammond fail to disclose: forced message alert.
`
`
`
`“It is my opinion that neither Kubala nor Hammond nor their
`combination discloses the claimed ‘forced message alert.’”
`
`
`
`
`
`Exhibit 2005, Carbonell Decl. ¶ 34.
`
`

`

`Kubala fails to disclose: forced message alert
`
`Petitioner identifies Kubala’s “e-mail message 214” that “may be a text message” without
`providing explanation regarding whether the e-mail message corresponds to the
`claimed forced message alert or the claimed text message.
`
`Kubala does not disclose that its conventional e-mail messages are forced to the
`display without any action by the recipient.
`
`• Kubala discloses that a recipient manually selects and opens the e-mail message.
`
`• Kubala discloses that the selection is the user’s voluntary choice.
`
`
`Paper 17 at 15-16; Exhibit 1005, Fig. 7
`
`

`

`Kubala discloses that a recipient manually selects and opens the e-mail message.
`
`
`
`
`Exhibit 1005 ¶ 0047
`
`Exhibit 2007, Williams
`Dep. at 60:16-21
`
`

`

`Kubala discloses that the selection is the user’s voluntary choice, not a forced
`message alert.
`
`
`
`
`

`

`The ’970 Patent expressly describes that the nature of the receipt and presentation of the
`text message within the forced message alert is automatic.
`
`“When the forced text or voice alert is received, the user operator is presented with the
`requested response list.” Exhibit 1001, 7:20-24.
`
`“Immediately following the detection of the forced message alert, the forced message
`alert software application program on the recipient PC or PDA/cell phones prepares
`and electronically transmits an automatic acknowledgement of receipt to the sender
`. . . [and] effectively takes control of the recipient PC or PDA/cell phone.” Exhibit 1001,
`8:25-39.
`
`•
`
`•
`
`
`
`Paper 17 at 16-17.
`
`

`

`The ’970 Patent describes that upon receipt and automatic acknowledge of a forced
`message alert with a text message,
`
`•
`
`“the forced message alert software application program causes the text message
`and the response list to be shown on the display of the recipient until selection of a
`manual response from the response list.” Exhibit 1001 at 8:37-44.
`
`• A recipient is not permitted to ignore the forced message alert.
`
`• Kubala’s e-mail message can be disregarded, and cannot satisfy the forced element of
`the claims.
`
`
`
`Paper 17 at 17.
`
`

`

`Petitioner disregards the forced nature of the claims.
`
`• Petitioner cannot point to the response list to meet the forced limitation.
`
`• The forced message can contain the response list, but the response list does not
`necessarily include the forced message.
`
`
`
`
`
`
`
`
`
`
`
`
`Paper 17 at 17; Exhibit 2005, Carbonell Dec. ¶ 37.
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`• The response list does not have to be sent along with the forced message:
`
`
`
`
`
`
`
`Paper 17 at 17; Exhibit 1001 at 7:56-58.
`
`
`
`
`
`

`

`Kubala and Hammond do not disclose or suggest the claimed forced
`message alert.
`
`1. Petitioner inconsistently maps the term forced message alert to a single element
`of Kubala.
`
`2. Petitioner does not identify or explain whether forced message alert corresponds
`to (1) Kubala’s e-mail message 214 or the warning message 1112, or any other
`element in Kubala.
`
`3. Petitioner does not explain how Kubala’s e-mail message 214 is forced.
`
`Paper 27 at 7-15.
`
`

`

`Petitioner inconsistently maps the term forced message alert to a single
`element of Kubala.
`
`• Petitioner maps both Kubala’s email message 214 and warning
`message 1112 shown in Figure 11C to forced message alert.
`
`• Petitioner mapped:
`
`• Kubala’s e-mail message 214 to the claimed voice or text message;
`
`• Kubala’s flag 216 to the forced message alert software packet; and
`
`• Kubala’s menu 1120 of Fig. 11C to the claimed list of possible
`required responses.
`
`Paper 27 at 10.
`
`

`

`Petitioner does not show or explain how Kubala’s e-mail message 214 is
`forced.
`
`• The e-mail message is voluntary or optional—not forced.
`
`• Petitioner attempts to read out the forced requirement to reduce the
`invention to a conventional e-mail message that can sit unopened and
`disregarded.
`
`• Mr. Williams testified he did not conduct an analysis as to whether the
`forced message alert required display of the message and acknowledge
`of the alert to be forced by the software.
`
`Paper 27 at 11-14.
`
`

`

`The e-mail message is voluntary or optional—not forced.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper 27 at 11-12; Exhibit 2005, Carbonell Dec. ¶ 35.
`
`

`

`Petitioner attempts to read out the forced requirement to reduce the
`invention to a conventional e-mail message that can sit unopened and
`disregarded, despite its own Petition conceding the ’970 Patent is
`directed to forced message alerts.
`
`
`
`
`
`
`
`
`
`
`
`Paper 27 at 12; Pet. at 6.
`
`

`

`The ’970 Patent makes clear the forced message alert software forces the
`message and list of responses to the display
`
`Kubala and Hammond do not display a listing of which phones have auto-
`acknowledged or transmitted a manual response—only teach storage of
`data about read receipts in a table in memory.
`
`
`
`
`
`
`Paper 27 at 14.
`
`

`

`Mr. Williams testified he did not conduct an analysis as to whether the
`forced message alert required display of the message and
`acknowledgement of the alert to be forced by the software.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper 27 at 14; Exhibit 2008 at 32:5-13.
`
`

`

`1. A communication system for transmitting, receiving, confirming receipt, and responding to an electronic
`message, comprising:
`
`-a predetermined network of participants, wherein each participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen display a
`CPU and memory;
`-a data transmission means that facilitates the transmission of electronic files between said PDA/cell phones in different locations;
`-a sender PDA/cell phone and at least one recipient PDA/cell phone for each electronic message;
`-a forced message alert software application program including a list of required possible responses to be selected by a participant recipient of a forced message
`response loaded on each participating PDA/cell phone;
`-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 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;
`-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;
`-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;
`-means for periodically resending said forced message alert to said recipient PDA/cell phones that have not automatically acknowledged the forced message
`alert; and
`-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.
`
`Exhibit 1001, claim 1
`
`

`

`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 acknowledgement to the sender PDA/cell phone as soon as said forced message
`alert is received by the recipient
`
`
`• Kubala teaches a flag 216
`
`• Kubala’s background section teaches that “one prior art solution” is a priority flag
`
`• Kubala’s background section then contrasts the priority flag in one prior art solution
`with “other prior art solutions” such as return receipts.
`
`
`
`
`
`
`
`Paper 17 at 18-22; Paper 12 at 2-3;
`Exhibit 1005 at ¶ 0006.
`
`

`

`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 acknowledgement to the sender PDA/cell phone as soon as said forced message
`alert is received by the recipient
`
`
`• Petitioner did not argue obviousness between Kubala and the other prior art read-
`receipt solutions to disclose this limitation
`
`• The Board sua sponte makes the obviousness argument for Petitioner, relying on the
`unrelated opinion from the Williams declaration
`
`
`
`• The improper obviousness argument made by the Board, and not the Petitioner,
`should be disregarded
`
`
`
`
`
`
`Paper 26 at 3-4; Paper 12 at 3; Paper 17 at 18-22.
`
`

`

`1. A communication system for transmitting, receiving, confirming receipt, and responding to an electronic
`message, comprising:
`
`-a predetermined network of participants, wherein each participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen display a
`CPU and memory;
`-a data transmission means that facilitates the transmission of electronic files between said PDA/cell phones in different locations;
`-a sender PDA/cell phone and at least one recipient PDA/cell phone for each electronic message;
`-a forced message alert software application program including a list of required possible responses to be selected by a participant recipient of a forced message
`response loaded on each participating PDA/cell phone;
`-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 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;
`-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;
`-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;
`-means for periodically resending said forced message alert to said recipient PDA/cell phones that have not automatically acknowledged the forced message
`alert; and
`-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.
`
`Exhibit 1001, claim 1
`
`

`

`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
`
`
`Kubala fails to 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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`“It is my opinion that Kubala does not 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.”
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`Exhibit 2005, Carbonell Dec. ¶ 38.
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`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 response from a
`response list is required in order to clear the response list from the recipient’s cell phone
`display.
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`Paper 17 at 18; Exhibit 2005, Carbonell Dec. ¶ 38.
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`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
`
`
`Petitioner submits that the menu 1120 of Figure 11C contains the claimed response list,
`but later acknowledges that a response is not required in order to clear the response
`list:
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`Exhibit 1005 Fig. 11C; Pet. at 31.
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`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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`
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`Petitioner alleges generally that other embodiments disclose:
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`• preventing the recipient from closing a review of the received e-mail message;
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`• deleting the e-mail message; and
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`• exiting the e-mail application until the recipient has responded to the e-mail message.
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`Pet. at 30-32.
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`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
`
`
`• However, Petitioner does not present an obviousness analysis or motivation to
`combine the distinct embodiments.
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`• Petitioner’s general allegations points to different embodiments that lack menu
`1120, the claimed response list.
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`• Petitioner’s embodiments point to clearing the received message from the display, not
`the claimed response list from the display.
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`Paper 17 at 21-22.
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`1. A communication system for transmitting, receiving, confirming receipt, and responding to an electronic
`message, comprising:
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`-a predetermined network of participants, wherein each participant has a similarly equipped PDA/cell phone that includes a CPU and a touch screen display a
`CPU and memory;
`-a data transmission means that facilitates the transmission of electronic files between said PDA/cell phones in different locations;
`-a sender PDA/cell phone and at least one recipient PDA/cell phone for each electronic message;
`-a forced message alert software application program including a list of required possible responses to be selected by a participant recipient of a forced message
`response loaded on each participating PDA/cell phone;
`-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 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;
`-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;
`-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;
`-means for periodically resending said forced message alert to said recipient PDA/cell phones that have not automatically acknowledged the forced message
`alert; and
`-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.
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`Exhibit 1001, claim 1
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`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
`
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`Kubala and Hammond fail to disclose:
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`displaying a listing which recipient PDA/cell phones have transmitted a manual
`response to said forced message alert.
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`“It is my opinion that Kubala and Hammond do not disclose or suggest displaying a listing
`of which recipient phones have automatically acknowledged and have not acknowledged
`the forced message alert, as recited in claims 1 and 6.”
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`Exhibit 2005, Carbonell Decl. ¶ 42.
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`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
`
`
`Petitioner concedes that the required function is to “receive and display 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.”
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`Kubala’s collection and recording of information does not disclose or suggest a displaying
`a listing.
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`Pet. at 11, 32.
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`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
`
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`Petitioner relies on Hammond’s Message Tracking Tables.
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`• Petitioner relies on the Williams Declaration, who merely parrots the conclusion
`regarding the accessibility of the message, not the required display.
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`• Mr. Williams conceded during his deposition that Hammond’s Message Tracking Table
`is located and stored in the server’s memory.
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`Pet. at 11; Exhibit 2007 at 65:6-9.
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`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
`
`Mr. Williams also testified that the existence of the Message Tracking Table itself is
`insufficient to show the table is displayed.
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`Pet. at 11; Exhibit 2007 at 75:14-25
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`displaying a listing of which recipi