Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: November 20, 2018
`
`
`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 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: November 20, 2018
`
`
`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 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2018–01079
`Patent 8,213,970 B2
`
`I. INTRODUCTION
`
`Google LLC (“Petitioner”)1 filed a request for inter partes review of
`claims 1 and 3–9 (the “challenged claims”) of U.S. Patent No. 8,213,970 B2
`(Ex. 1001, “the ’970 patent”). Paper 2 (“Pet.”). AGIS Software
`Development, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Petitioner filed a Reply to the Preliminary Response.
`Paper 8.
`Under 35 U.S.C. § 314, an inter partes review must not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`considering the evidence presented and the arguments made, we determine
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one of the challenged claims.
`Accordingly, we institute an inter partes review.
`
`A. Related Proceedings
`The parties advise that the ’970 patent has been asserted in AGIS
`Software Development LLC v. Huawei Device USA Inc. et al., No. 2:17-cv-
`00513 (E.D. Tex.); AGIS Software Development LLC v. HTC Corporation,
`No. 2:17-cv-00514 (E.D. Tex.); AGIS Software Development LLC v. LG
`Electronics, Inc., No. 2:17-cv-00515 (E.D. Tex.); AGIS Software
`Development LLC v. Apple Inc., No. 2:17-cv-00516-JRG (E.D. Tex.); AGIS
`
`
`1 The Petition identifies as real parties-in-interest Google LLC, Huawei
`Device USA Inc., Huawei Device Co., Ltd., Huawei Device (Dongguan)
`Co., Ltd., Huawei Technologies USA Inc., Huawei Technologies Co., Ltd.,
`and LG Electronics, Inc. Paper 2, 79.
`
`2
`
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`IPR2018–01079
`Patent 8,213,970 B2
`Software Development LLC v. ZTE Corporation et al., No. 2:17-cv-00517
`(E.D. Tex.). Pet. 79–80; Paper 5, 3–4. Patent Owner further advises that the
`’970 patent and patents related to the ’970 patent are the subject of various
`filings requesting inter partes review. Paper 5, 2–3 (see table identifying
`inter partes review case numbers).
`
`B. The ’970 Patent
`The ’970 patent generally discloses a specialized software application
`program on a personal computer (“PC”) or PDA/cell phone for creating and
`processing forced message alerts. Ex. 1001, Abstract. The specification of
`the ’970 patent (“Specification”) discloses it is desirable for a PDA/cell
`phone user to be able to simultaneously send Digital Smart Message Service
`(“SMS”) or TCP/IP messages to a large group of PCs or cell phones using
`cellular technology (such as GSM or CDMA) or WiFi. Id. at 1:51–57. The
`Specification further discloses that in some situations it is additionally
`desirable to know which PCs and PDA/cell phones received the message,
`which PCs and PDA/cell phones did not receive the message, and the
`response of each recipient of the message. Id. at 1:57–61. “As a result,
`what is needed is a method in which a sender of a text or voice message can
`force an automatic acknowledgement upon receipt from a recipient’s cell
`phone or PC and a manual response from the recipient via the recipient’s
`cell phone or PC.” Id. at 1:65–67. In addressing these issues, the
`Specification discloses “[t]he heart of the invention lies in [a] forced
`message alert software application program provided in each PC or
`PDA/cell phone.” Id. at 4:47–49. The software provides the ability to
`(a) allow an operator to create and transmit a forced
`message alert from a sender PDA/cell phone to one
`or more recipient PCs and PDA/cell phones within
`the communication network; (b) automatically
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`IPR2018–01079
`Patent 8,213,970 B2
`transmit an acknowledgement of receipt to the
`sender PDA cell phone upon the receipt of the
`forced message alert; (c) periodically resend the
`message to the recipient PCs and PDA/cell phones
`that have not sent an acknowledgement; (d) provide
`an indication of which recipient PCs and PDA/cell
`phones have acknowledged the forced message
`alert; (e) provide a manual response list on the
`display of the recipient PC and PDA/cell phone's
`display that can only be cleared by manually
`transmitting a response; and (f) provide an
`indication on the sender PDA/ cell phone of the
`status and content the manual responses.
`Id., Abstract. The Specification explains that a forced message alert is
`comprised of a text or voice message and a forced message alert software
`packet. Id. at 2:11–13, 8:23–25.
`
`C. Challenged Claims
`Petitioner challenges claims 1 and 3–9 of the ’970 patent. Claims 1
`and 6 are independent. Claim 1 is illustrative.
`1. A communication system for transmitting,
`receiving, confirming receipt, and responding to an
`electronic message, comprising:
`[1.1] a predetermined network of participants,
`wherein each participant has a similarly equipped
`PDA/cell phone that includes a CPU and a touch
`screen display and a CPU memory;
`[1.2] a data transmission means that facilitates the
`transmission of electronic files between said
`PDA/cell phones in different locations;
`[1.3] a sender PDA/cell phone and at least one
`recipient PDA/cell phone for each electronic
`message;
`[1.4] a forced message alert software application
`program including a list of required possible
`
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`IPR2018–01079
`Patent 8,213,970 B2
`responses to be selected by a participant recipient of
`a forced message response
`loaded on each
`participating PDA/cell phone;
`[1.5] 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
`acknowledgement to the sender PDA/cell phone as
`soon as said forced message alert is received by the
`recipient PDA/cell phone;
`[1.6] means for requiring a required manual
`response from the response list by the recipient in
`order to clear the recipient’s response list from
`recipient’s cell phone display;
`[1.7] 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;
`[1.8] means for periodically resending said forced
`message alert to said recipient PDA/cell phones that
`have not automatically acknowledged the forced
`message alert; and
`[1.9] 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 responses from each recipient PDA/cell
`phone that responded.
`Ex. 1001, 8:65–9:39 (brackets and numbering added).
`
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`IPR2018–01079
`Patent 8,213,970 B2
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1 and 3–9 on the following grounds.
`Pet. 12.
`
`Ground
`References
`§ 103(a)
`Kubala2 and Hammond3
`Hammond, Johnson,4 and Pepe5 § 103(a)
`Hammond, Johnson, Pepe, and
`§ 103(a)
`Banerjee6
`
`Claims
`1 and 3–9
`1 and 3–9
`1 and 3–9
`
`
`
`Petitioner relies on the declaration of David Hilliard Williams to
`support its contentions. Ex. 1003 (“Williams declaration”).
`
`E. Priority of the ’970 Patent
`The ’970 patent was filed November 26, 2008 (“the ’970 filing date”),
`and claims priority through a chain of continuation-in-part applications to an
`application, U.S. Patent Application 10/711,490 (“the ’490 application”),
`filed on September 21, 2004 (“the ’490 filing date”). Ex. 1001, [22], [63].
`However, Petitioner asserts the earliest filing date to which the ’970 patent
`may claim priority is the ’970 filing date. Pet. 13. Petitioner argues that the
`claims of the ’970 patent lack sufficient written description support in the
`
`
`2 U.S. Patent Publication 2006/0218232 A1, filed March 24, 2005 and
`published September 29, 2006. Ex. 1005 (“Kubala”).
`3 U.S. Patent 6,854,007 B1, filed September 17, 1998 and issued Febuary 8,
`2005. Ex. 1006 (“Hammond”).
`4 U.S. Patent 5,325,310, filed June 26, 1992 and issued June 28, 1994.
`Ex. 1007 (“Johnson”).
`5 U.S. Patent 5,742,905, filed September 19, 1994 and issued April 21, 1998.
`Ex. 1008 (“Pepe”).
`6 U.S. Patent Publication 2003/0128195 A1, filed January 8, 2002 and
`published July 10, 2003. Ex. 1009 (“Banerjee”).
`
`6
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`IPR2018–01079
`Patent 8,213,970 B2
`earlier-filed applications through which priority is claimed, and therefore the
`’970 patent is not entitled to claim priority back to the ’490 filing date. Id.
`Patent Owner asserts that Petitioner bears the burden of showing that the
`’970 patent is not entitled to a priority date of September 21, 2004, and that
`Petitioner has not met this burden. Prelim. Resp. 29.
`Patent Owner is incorrect as to who bears the burden of production, at
`this stage, of demonstrating that the ’970 patent is entitled to claim priority
`to a date earlier than the ’970 filing date. Petitioner bears the ultimate
`burden of demonstrating unpatentability of the challenged claims. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir.
`2015). However, a different burden, the burden of production, shifts to the
`patent owner once a petitioner provides invalidating art that predates the
`filing date of the challenged patent, where the patent-at-issue claims priority
`through continuations-in-part (which may add, or remove, subject matter)
`and the Examiner did not expressly address the priority issue. PowerOasis,
`Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305-06 (Fed. Cir. 2008);
`Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 871 (Fed. Cir.
`2010). Petitioner has presented art (see Sec. I.D above) that predates the
`filing date of the ’970 patent, which claims priority through continuations-
`in-part, and the Examiner has not expressly addressed the priority issue.
`Therefore, the burden of production has shifted to Patent Owner, who must
`show not only the existence of the earlier applications through which Patent
`Owner seeks to claim priority, but also how the written description in the
`earlier applications supports the challenged claims. Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). “[T]o gain the benefit
`of the filing date of an earlier application under 35 U.S.C. § 120, each
`application in the chain leading back to the earlier application must comply
`
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`IPR2018–01079
`Patent 8,213,970 B2
`with the written description requirement of 35 U.S.C. § 112.” Zenon
`Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed.Cir.2007)
`(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571
`(Fed.Cir.1997)); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977)
`(“[T]here has to be a continuous chain of copending applications each of
`which satisfies the requirements of § 112 with respect to the subject matter
`presently claimed.” (quoting In re Schneider, 481 F.2d 1350, 1356 (CCPA
`1973)) (alteration in original). Thus, Patent Owner must show that each
`application in the priority chain makes the requisite disclosure of subject
`matter, otherwise the ’970 patent is not entitled to the benefit of the filing
`date of applications preceding a break in the priority chain.
`Patent Owner, at this stage, has made no attempt to show that the ’490
`application, or any intervening applications through which the ’970 patent
`claims priority, satisfy the written description requirement of 35 U.S.C.
`§ 112. Because Patent Owner has not yet met its burden, Patent Owner has
`not established that the ’970 patent is entitled to rely on a filing date earlier
`than November 26, 2008, the filing date of the ’970 patent.
`
`II. DISCUSSION
`
`A. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co. of Kansas City, 383
`U.S. 1, 17 (1966). “The importance of resolving the level of ordinary skill
`in the art lies in the necessity of maintaining objectivity in the obviousness
`inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`1991).
`Petitioner argues that a person of ordinary skill in the art in the field of
`
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`IPR2018–01079
`Patent 8,213,970 B2
`the ’970 patent would have had either (1) a Bachelor of Science degree in
`electrical engineering or an equivalent field, with three to five years of
`academic or industry experience in the field of electronic communications,
`or (2) a Master of Science degree in electrical engineering or an equivalent
`field, with two to four years of academic experience in the same field.
`Pet. 9–10 (citing Ex. 1003 ¶¶ 29–30).
`Patent Owner does not provide any evidence or argument as to the
`level of ordinary skill in the art. See generally Prelim. Resp. 1–49.
`For purposes of this Decision, and based on the record before us, we
`adopt Petitioner’s assessment of the level of ordinary skill in the art.
`
`B. Claim Construction
`Presently, in an inter partes review claim terms in an unexpired patent
`are given their broadest reasonable construction in light of the specification
`of the patent. 37 C.F.R. § 42.100(b). Consistent with that standard, we
`assign claim terms their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art at the time of the invention, in
`the context of the entire patent disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in
`controversy need be construed, and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`1. Proposed Constructions
`Petitioner proposes that we construe the terms in claim 1 that include
`the word “means” as means-plus-function under 35 U.S.C. § 112(6).
`Pet. 10–12. Patent Owner does not propose constructions for any claim
`
`9
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`terms. See generally Prelim. Resp. 1–49. The district court issued an order
`construing these terms in AGIS Software Development LLC v. Huawei
`Device USA Inc. et al., No. 2:17-cv-00513 (E.D. Tex.) on October 10, 2018.
`Ex. 3001, 9–29 (“District Court Claim Construction Order”). We have
`considered the district court’s constructions.
`2. Preliminary Constructions
`We adopt the following preliminary claim constructions based on the
`current record. We determine, for purposes of this Decision, that no other
`claim terms require express construction.
`
`a. “data transmission means that facilitates the transmission of
`electronic files between said PDA/cell phones in different
`locations” (limitation 1.2)
`We construe the term “data transmission means” under 35 U.S.C.
`§ 112(6). Petitioner asserts that the specified function is to “facilitate the
`transmission of electronic files between said PDA/cell phones in different
`locations,” as recited in limitation 1.2 Pet. 10. We agree that this is the
`specified function. Petitioner asserts that the corresponding structure is a
`server that communicates according to either (1) Wifi, WiMax, or other
`peer-to-peer communications or (2) SMS, TCP/IP, or other messaging
`protocols. Id. (citing Ex. 1001, 4:1–36). The disclosure upon which
`Petitioner relies describes a communication server that acts as a forwarder of
`data addressed from one network participant to another, “thus permitting the
`transmission of forced message alerts, other text and voice messages,
`photographs, video, E-mail, and URL data” between network participants.
`Ex. 1001, 4:1–6. However, the Specification does not refer to the server as a
`data transmission means. Rather, the Specification refers to a network such
`as the Internet as a transmission means: “[t]o operate on the network,
`
`10
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`IPR2018–01079
`Patent 8,213,970 B2
`obviously the PC must be on and have an active connection to the Internet or
`other digital transmission means.” Ex. 1001, 3:43–45 (emphasis added).
`The Specification also refers to TCP/IP as transmission means: “[a] plurality
`of PCs/ and PDA/cell phones each having forced alert software installed
`providing a communication network . . . with the ability to: a) allow an
`operator to create and transmit (via TCP/IP or another digital transmission
`means) a forced voice alert).” Id. at 2:7–11 (emphasis added). The
`Specification also refers to cellular telephony as including the ability to
`access local WiFi connections, thereby allowing cell phones to “utilize
`cellular phone data transmission technology as well as the data transmission
`ability of the Internet.” Id. at 1:39–43. Based on these disclosures, we are
`not persuaded that a server is a “data transmission means.” Rather, we
`determine for purposes of this Decision that the corresponding structure is “a
`data transmission network such as the Internet, and equivalents thereof.”
`The District Court Claim Construction Order finds that the
`corresponding structure is a “communications network server; and
`equivalents thereof,” but does not provide analysis, instead stating that the
`construction was agreed upon by the parties. Ex. 3001, 10. Furthermore,
`there is no indication in the Order that the court considered the portions of
`the Specification we highlighted above about the Internet or other digital
`transmission means and the data transmission ability of the Internet. Id.
`
`b. “means for . . .” limitations (limitations 1.5 to 1.9)
`Petitioner treats limitations 1.5 to 1.9 similarly. For each of these
`limitations, Petitioner identifies as the specified function some or all of the
`language of the limitation following the words “means for.” Pet. 10–12.
`For the corresponding structure, Petitioner identifies either “a computer
`configured to perform a portion of the forced-message alert software-
`11
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`IPR2018–01079
`Patent 8,213,970 B2
`application program” or “the forced-message alert software application
`program on the recipient[/sender’s] PDA/cell[ular] phone” that performs
`certain specified functions. Id.
`
`c. “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 acknowledgement to the sender
`PDA/cell phone as soon as said forced message alert is
`received by the recipient PDA/cell phone” (limitation 1.5)
`For limitation 1.5, Petitioner asserts that the specified function is to
`attach a forced message alert software packet to a voice or text message
`creating a forced message alert that is transmitted by a sender PDA/cell
`phone to a recipient PDA/cell phone. Pet. 10. We agree that the function
`includes the language Petitioner recites. However, without explanation,
`Petitioner omits the remaining recitation of limitation 1.5. Petitioner does
`not adequately explain, nor do we discern why, the remaining language
`recited in element 1.5 should not be construed as part of the specified
`function.
`Petitioner asserts that the corresponding structure is a computer
`configured to perform a portion of the forced-message alert software-
`application program that allows a user to create a message, select recipients
`of that message, select a default or new response list to be sent with the
`message, and send the message to the recipients. Pet. 10 (citing Ex. 1001,
`7:43–63; Fig. 3A). The disclosure upon which Petitioner relies refers to a
`personal computer (“PC”) or PDA/cell phone. Ex. 1001, 7:44–46. The
`Specification indicates that these are general computing devices, except that
`
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`they include special software—the forced message alert software application
`program. Id. at 3:41–43 (“Each PC described herein is like any other
`contemporary PC, except that it has the forced message alert software
`application program installed on it.”); see also id. at 3:29–31 (“Each
`PDA/cell phone described herein . . . can function just as any other cell
`phone . . . [i]n addition . . . it has the forced message alert software
`application program.”). Accordingly, we find that the corresponding
`structure is a PC or PDA/cell phone and the portion of the forced message
`alert software application program that performs the recited function.
`Furthermore, because the disclosed PC or PDA/cell phone is described as a
`computing device that includes special software for performing various
`functions, the Specification must include sufficient disclosure of an
`algorithm for performing the specified function.
`We are persuaded at this stage that the disclosure identified by
`Petitioner provides sufficient detail to disclose an algorithm because it
`describes the steps of a process for sending a forced message alert, except
`that it does not specifically describe “attaching” the forced message alert
`software packet to a voice or text message. Ex. 1001, 7:43–63; Fig. 3A.
`However, it is implies that this step occurs because a user types a text or
`records a voice message, and a forced message alert is sent, id., and
`elsewhere the Specification discloses that the software allows a user to
`create a forced message alert comprising a voice or text message and forced
`message alert software packet, id. at 2:11–13.
`We determine, therefore, that the recited function is the entire
`recitation of limitation 1.5 following the words “means for,” and that the
`corresponding structure is a PC or PDA/cell phone and software that
`performs the steps disclosed at Ex. 1001, 7:43–63, Fig. 3A, 2:11–13, and
`
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`equivalents thereof.
`
`d. “means for . . . “ (limitations 1.6 to 1.9)
`As with limitation 1.5, for each of limitations 1.6 to 1.9, we determine
`that the specified function is the language of the respective limitation
`following the words “means for.” For the reasons stated above, supra
`Section. II.B.c, we also determine that the corresponding structure for each
`specified function is a PC or PDA/cell phone and software that performs the
`respective applicable algorithm disclosed in the Specification, and
`equivalents thereof. Below, we discuss the applicable algorithm
`corresponding to each specified function.
`
`i. “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” (limitation 1.6)
`For the structure corresponding to the specified function of
`limitation 1.6, Petitioner identifies the forced message alert software
`application program functionality described in Figure 4 and column 8, lines
`39 through 46, of the Specification. Pet. 10–11. We are persuaded at this
`stage that the disclosure identified by Petitioner provides sufficient detail to
`disclose the applicable algorithm. We determine, therefore, that the
`corresponding structure is a PC or PDA/cell phone and software that
`performs the steps disclosed at Ex. 1001, 8:39–46 and Fig. 4, and
`equivalents thereof.
`
`ii. “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” (limitation 1.7)
`For the structure corresponding to the specified function of
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`limitation 1.7, Petitioner identifies the forced message alert software
`application program functionality described in Figures 3A and 3B and
`column 7, line 64 through column 8, line 5, of the Specification. Pet. 11.
`We are persuaded at this stage that the disclosure identified by Petitioner
`provides sufficient detail to disclose the applicable algorithm. We
`determine, therefore, that the corresponding structure is a PC or PDA/cell
`phone and software that performs the steps disclosed at Ex. 1001, 7:64–8:5
`and Figs. 3A and 3B, and equivalents thereof.
`
`iii. “means for periodically resending said forced message
`alert to said recipient PDA/cell phones that have not
`automatically acknowledged the forced message alert”
`(limitation 1.8)
`For the structure corresponding to the specified function of
`limitation 1.8, Petitioner identifies the forced message alert software
`application program functionality described in Figures 3A and 3B and
`column 6, lines 6–9, of the Specification. Pet. 11–12. We are persuaded at
`this stage that the disclosure identified by Petitioner provides sufficient
`detail to disclose the applicable algorithm. We determine, therefore, that the
`corresponding structure is a PC or PDA/cell phone and software that
`performs the steps disclosed at Ex. 1001, 8:6–9 and Figs. 3A and 3B, and
`equivalents thereof.
`
`iv. “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
`responses from each recipient PDA/cell phone that
`responded” (limitation 1.9)
`For the structure corresponding to the specified function of
`limitation 1.9, Petitioner identifies the forced message alert software
`application program functionality described in Figures 3A and 3B and
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`column 8, lines 9–15, of the Specification. Pet. 12. We are persuaded at this
`stage that the disclosure identified by Petitioner provides sufficient detail to
`disclose the applicable algorithm. We determine, therefore, that the
`corresponding structure is a PC or PDA/cell phone and software that
`performs the steps disclosed at Ex. 1001, 8:9–15 and Figs. 3A and 3B, and
`equivalents thereof.
`3. Sufficiency of Petitioner’s Proposed Claim Constructions
`Patent Owner contends the Petition should be denied on grounds that
`the Petition fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3).
`Prelim. Resp. 2–20. Namely, Patent Owner argues the Petition has failed to
`identify for the Board how each claim term is to be construed because
`Petitioner’s claim construction positions in this proceeding are inconsistent
`with those taken by real parties in interest to the Petition in district court. Id.
`at 4–24. Patent Owner asserts “the Petition is deficient because Petitioner
`fails to meet its burden under 37 C.F.R. § 42.104(b)(3) to propose claim
`constructions that the real parties in interest believe are correct under
`applicable law.” Id. at 4. Patent Owner further contends that Petitioner has
`violated its duty of candor under 37 C.F.R. §§ 42.11, 11.18(b)(2) on grounds
`that Petitioner and the real parties in interest in this case “have knowingly
`advanced conflicting positions in the District Court Litigation and in this
`proceeding.” Id. at 20–24.
`Petitioner asserts that several claim terms written in means-plus-
`function format should be construed under 35 U.S.C. § 112(6). Pet. 9–12.
`For each such term, Petitioner identifies a specified function and cites to
`portions of the Specification Petitioner asserts provide disclosure of
`corresponding structure. Id. Patent Owner asserts this contradicts the
`position in district court of real parties in interest to the Petition, who argued
`
`16
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`IPR2018–01079
`Patent 8,213,970 B2
`these claim terms are indefinite because the Specification fails to disclose
`corresponding structures for the specified functions. Prelim. Resp. 5–17
`(citing Ex. 2001, 1–20; Ex. 2003, 1–13).
`Patent Owner also asserts that in district court the real parties in
`interest to the Petition proposed constructions for the terms “forced message
`alert software application program,” “manual response,” and “repeating
`voice alert,” whereas in this proceeding the Petition does not propose an
`express construction for these terms. Pet. 19.
`Contrary to Patent Owner’s arguments, the applicable provisions of
`37 C.F.R. §§ 42.104(b)(3), 42.11, and 11.18(b)(2) do not require Petitioner
`to express its subjective belief regarding the correctness of its proposed
`claim constructions. See Western Digital Corp. v. SPEX Techs, Inc.,
`IPR2018–00084, Paper 14, slip op. at 10–12 (PTAB April 25, 2018)
`(rejecting the same argument made here, and distinguishing Toyota Motor
`Corp. v. Blitzsafe Texas LLC, IPR2016–00422, Paper 12 (PTAB July 6,
`2016)). Moreover, the standards used for claim construction and the burdens
`of proof are different in the district court than they are in this AIA
`proceeding, such that different constructions may be appropriate depending
`on the context. In district court proceedings, claims in issued patents are
`construed using the framework set forth in Phillips v. AWH Corp., which
`emphasizes considering the plain meaning of the claim terms in light of the
`intrinsic record. In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir.
`2016) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir.
`2005) (en banc)). In this AIA proceeding, however, we must apply the
`broadest reasonable construction consistent with the specification, otherwise
`known as “BRI.” See Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131
`(2016) (affirming the use of broadest reasonable construction standard in
`
`17
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`IPR2018–01079
`Patent 8,213,970 B2
`AIA proceedings despite the possibility of inconsistent results in district
`court litigation).
`In addition, Fed. R. Civ. P. 8(d)(3) allows a party to take different,
`alternative, or even inconsistent positions. See Bancorp Services v. Sun Life
`Assur. Co. of Canada, 687 F.3d 1266, 1280 (Fed. Cir. 2012) (citing Fed. R.
`Civ. P. 8(d)(3), and holding the party was entitled to take inconsistent
`positions); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed.
`Cir. 2010) (claims are indefinite, and in the alternative, anticipated); Nippon
`Suisan Kaisha Ltd. v. Pronova Biopharma Norge, AS, PGR2017–0033,
`Paper 7 (Jan. 17, 2018) (instituting review of alternative positions of
`indefiniteness and anticipation/obviousness).
`Here, Petitioner proposes that the claim terms written in means-plus-
`function format should be construed under 35 U.S.C. § 112(6), and for each
`such term Petitioner identifies a specified function and cites to portions of
`the Specification that Petitioner asserts provide disclosure of corresponding
`structure. Pet. 9–12.
`For the reasons stated above, we decline to deny the Petition for
`failure to comply with 37 C.F.R. §§ 104(b)(3), 42.11, and 11.18(b)(2) on the
`grounds requested by Patent Owner.
`
`C. Kubala (Ex. 1005)
`Kubala generally discloses a method, system, apparatus, or computer
`program product for processing electronic messages. Ex. 1005 ¶ 9. Kubala
`explains that employee productivity may suffer demonstrably in proportion
`to the number of email messages the employee receives. Id. ¶ 5. This is due
`in part to the high volume of emails an employee may receive, because the
`task of responding to emails messages consumes an increasingly larger
`portion of the employee’s workday. Id. ¶ 5. To address these issues,
`18
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`IPR2018–01079
`Patent 8,213,970 B2
`Kubala states that “it would be advantageous to provide productivity
`enhancing features within e-mail applications for the handling of email
`messages so that important messages receive the appropriate attention from
`the recipient of an e-mail message.” Id. ¶ 8.
`Kubala specifically discloses computing devices such as network-
`enabled phones and PDAs that
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