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`EXHIBIT E
`EXHIBIT E
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 1
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 1
`
`

`

`
`
`Exhibit E-1
`
`Invalidity Contentions for U.S. Patent No. 7,844,037
`
`Based on: U.S. Patent No. 6,301,338 to Mäkaelä with U.S. Pub. No. 2004/0203956 to Tsampalis
`
`Based on Qualcomm’s apparent positions as to the scope of the patent’s claims, as best they can be deciphered, the reference(s)
`charted below anticipate(s) or at least render(s) obvious the identified claims. The portions of the prior art reference cited below are
`not exhaustive but are exemplary in nature. Where Apple identifies a portion of the prior art reference’s text, the identification should
`be understood as referencing any corresponding figure or diagram, and vice versa.
`
`This disclosure is not an admission that Apple concedes any claim construction implied or suggested by Qualcomm’s apparent
`positions as to the scope of the patent’s claims, nor is it an admission by Apple that any of its products are covered by or infringe the
`patent’s claims, particularly when they are properly construed and applied. Apple is not taking any claim construction positions
`through this disclosure, including whether the preamble is a limitation.
`
`It would have been obvious under 35 U.S.C. § 103 to a person having ordinary skill in the art at the time of the alleged invention to
`combine the teachings of the following references:
`
`1. U.S. Patent No. 6,301,338 to Mäkaelä (“Mäkaelä”). Mäkaelä qualifies as prior art under at least 35 U.S.C § 102 (a), (b), (e)
`and/or (g)(2). Mäkaelä was issued on October 9, 2001 from a U.S. application filed on January 7, 1997. Mäkaelä discloses a
`communication device permitting a user to send an SMS or other reply message in response to an incoming call in a situation
`where the user cannot answer the call. The message is sent using Caller Line Identity (CLI) information obtained from the
`caller’s incoming call.
`
`
`
`
`
`2. U.S. Pub. No. 2004/0203956 to Tsampalis (“Tsampalis”). Tsampalis qualifies as prior art under at least 35 U.S.C § 102 (a)
`and/or (e). Tsampalis was published on October 14, 2004, based on an U.S. application filed on December 31, 2002.
`Tsampalis discloses a mobile wireless communication device that contains messaging format capabilities determinator
`circuitry, which is used to check the compatible message formats before sending a message and select a compatible format
`prior to sending a message to another mobile wireless communication device.
`
`
`
`
`Ex. E-1 1
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 2
`
`

`

`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`[1a] A method for operating a first computing
`device, the method being implemented by one or
`more processors of the computing device and
`comprising:
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“In a communication device (20) comprising a message function (SMS, Short
`Message Service) a certain short message (7) or other reply message is sent in
`response to an incoming call in a situation where the user can't answer the call
`him/herself.” Abstract (emph. added).
`
`“[T]he communication device in accordance with the invention must have means
`for controlling the operation. They are preferably implemented as software
`processes that are stored to the memory means included in the communication
`device in a form to be performed by the microprocessor controlling its
`operation.” 8:22-27 (emph. added).
`
`“The invention is especially applicable to mobile communication devices of
`digital cellular networks like GSM telephones.” 9:57-59.
`
`See also Fig. 3.
`
`[1b] receiving, from a second computing device,
`an incoming call to initiate a voice-exchange
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`
`Ex. E-1 2
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 3
`
`

`

`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`session;
`
`and/or figures, as well as all related disclosures:
`
`Title: “Activation of a telephone’s own call answering equipment according to
`the number of the calling party.”
`
`“In a communication device (20) comprising a message function (SMS, Short
`Message Service) a certain short message (7) or other reply message is sent in
`response to an incoming call in a situation where the user can’t answer the call
`him/herself.” Abstract (emph. added).
`
`“The present mobile phones have, almost without exception, a display, by means
`of which the receiving party, when the telephone rings, can see the telephone
`number of the calling party connected to a digital exchange. In fast situations it is
`preferable that the receiving party can still at that moment decide, which kind of
`a reply service will be applied to the calling party in question.” 1:48-54.
`
`“In FIG. 1 there is a flow diagram of a function according to one simple
`embodiment of the invention in a mobile communication device comprising the
`short message function. The operation starts from point 1, where an incoming
`call is noticed.” 4:66-5:3 (emph. added).
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Mäkelä, Detail of FIG. 1 (annotated).
`
`
`
`Ex. E-1 3
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 4
`
`

`

`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`“Even though it has been referred above to a calling party, call and receiving
`party in the sense meaning a normal telephone connected speech contact, the
`reply function in accordance with the present invention is applicable to all
`connections between such communication devices where the short message
`communication or other messaging function according to the invention can be
`used.” 9:50-56 (emph. added).
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“[T]he number identification of the calling party is used. This function is known
`in the art and called ANI (Automatic Number Identification) or CLI (Caller Line
`Identity). In the solution proposed by the reference publication, the telephone
`number of the calling party or a corresponding identity code is transmitted
`through the telephone network[.]” 1:56-62.
`
`“The objects of the invention will be achieved by accomplishing the incoming-
`call related calling number identification in the telephone device that is receiving
`the call[.]” 3:19-21.
`
`“[I]n response to the incoming call, the communication device identifies the
`caller on the basis of an identification information included within the
`incoming call and sends a reply according to a selection made by the user,”
`3:30-34 (emph. added).
`
`“When the service is switched on, the apparatus then checks in point 4 which
`kind of an alarm procedure is applied to and in point 5 if the identity code of the
`caller (CLI, Caller Line Identity) is available. The latter is required for sending a
`short message.” 5:7-11 (emph. added).
`
`“The identity code of the calling party read in point 5 can be used in many
`ways. The user can e.g. program his/her device in advance so that it sends a short
`
`Ex. E-1 4
`
`[1c] in response to receiving the incoming call,
`determining a message identifier associated with
`the second computing device, wherein the
`message identifier is determined based at least in
`part on data provided with the incoming call;
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 5
`
`

`

`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`message only in reply to the calls of certain, separately named callers, whereby
`the others are not answered with the short message, or that it does not send the
`short message to certain named callers. There can also be several short message
`replies, whereby the caller determines in advance, which message is sent to each
`calling party. The choices can be based e.g. on a system that internal calls of the
`own company are separately identified or that it is judged from the country code
`of the telephone number of the calling party, which country the call is coming
`from, so that the short message can be sent in the language of the country in
`question. By comparing the country code to a certain data base, it can also be
`judged, what is the time in the position of the calling party, whereby a part
`applying to time zone can be attached to the short message. The user can also
`have simply named certain telephone numbers, the calls coming from which are
`answered with certain short messages.” 5:53-6:5 (emph. added).
`
`“If the CLI information is present in the knocking call, the selection of an
`answer may be based on the identification of the knocking party, either
`automatically or through displaying the knocking caller’s identification to the
`receiving party in the telephone’s display.” 9:40-45 (emph. added).
`
`See also Fig. 1.
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Ex. E-1 5
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 6
`
`

`

`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`[1d] in response to receiving the incoming call,
`prompting a user of the first computing device to
`enter user input that instructs the first computing
`device to handle the incoming call by
`composing, while not answering the incoming
`call, a message to a user of the second
`computing device; and
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“In fast situations it is preferable that the receiving party can still at that moment
`decide, which kind of a reply service will be applied to the calling party in
`question.” 1:51-54.
`
`“Further, a call answering machine located in the exchange requires for remote
`using through a terminal device that the receiving party gets in advance into a
`telecommunication with the exchange and gives a group of key commands, that
`Ex. E-1 6
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 7
`
`

`

`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`can be difficult to know by heart. Also, these commands can’t be given when
`the telephone is already alarming for an incoming call, so that it is not possible
`to react in fast situations according to the number of the calling party, but only
`to decide whether the call will be answered by oneself or given to the reply
`service.” 2:26-36 (emph. added).
`
`“[I]n response to the incoming call, the communication device identifies the
`caller on the basis of an identification information included within the incoming
`call and sends a reply according to a selection made by the user… said reply
`being one of the following: … an SMS message in the form of a character
`string.” 3:30-38.
`
`“Transmission of a short message can be effected automatically or through a key
`command and it can be effected immediately after the call has come or with a
`short delay, so that the receiving party can choose between different alternative
`functions after having seen the telephone number of the calling party on the
`display of the telephone.” 4:3-8 (emph. added).
`
`“[T]he apparatus gives a sound or a soundless alarm, whereby the user can
`answer the call normally or give a certain key command that means sending a
`short message. In the last mentioned case there can be several key commands
`each of them corresponding a different short message. The operation alternative
`11 has the advantage that if there are certain standard messages stored into the
`memory of the device, it is applicable, even if the user has not taken any
`preliminary measures in order to take the reply service employing short messages
`into use.” 5:33-43 (emph. added).
`
`“The receiving party may, according to the invention, give a simple key
`command that sends the knocking caller an answering message like “I'm busy,
`please wait for . . . one minute” or any other message that has been described
`above. This answer may be a previously selected standard answer to all knocking
`parties, or the receiving party may select the most proper answer message at the
`
`Ex. E-1 7
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 8
`
`

`

`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`very moment. If the CLI information is present in the knocking call, the selection
`of an answer may be based on the identification of the knocking party, either
`automatically or through displaying the knocking caller's identification to the
`receiving party in the telephone's display.” 9:34-45 (emp. added).
`
`“A method in accordance with claim 1 comprising a further step of the user
`selecting a mode of the reply subsequent to receipt of the incoming call to effect
`said user selection of the reply after receipt of the incoming call.” Claim 23.
`
`“A portable terminal in accordance with claim 21 further comprising means
`enabling the user to select a mode of the reply subsequent to receipt of the
`incoming call to effect said user selection of the reply after receipt of the
`incoming call, wherein the selection enabling means is operative in response to a
`key command as an input from the user of the portable terminal for selection of a
`mode of transmission of said reply from anyone of a set of modes including short
`message service, electronic mail facsimile, and voice message.” Claim 25.
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“The present invention also concerns a communication device characterized in
`that it comprises means for identifying the caller on the basis of an
`identification information included within the incoming call and for sending,
`according to a selection made by the user, a reply in response to the call, said
`reply being one of the following: a voice message, an e-mail message, a
`facsimile, an SMS message in the form of a character string.” 3:38-46 (emph.
`added).
`
`“[T]he Short Message Service (SMS) feature of the telephone be utilized,
`whereby the short message to be sent in response to a call given by a certain
`calling party[.]” 3:62-65 (emph. added).
`
`Ex. E-1 8
`
`[1e] responsive to receiving the incoming call
`and the user entering the user input,
`automatically addressing the message to the
`second computing device using the message
`identifier determined from the incoming call.
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 9
`
`

`

`
`
`
`
`
`
`’037 Patent – Claim 1
`
`Mäkelä
`
`“When the service is switched on, the apparatus then checks in point 4 which
`kind of an alarm procedure is applied to and in point 5 if the identity code of the
`caller (CLI, Caller Line Identity) is available. The latter is required for sending
`a short message.” 5:7-11 (emph. added).
`
`“In point 7, the message is sent to the calling party, supposing that the
`communication device of the calling party has the short message function. In
`order to check this, it is possible to judge e.g. from the telephone number
`included in the CLI information of the calling party, if the calling party has a
`GSM telephone.” 5:13-19 (emph. added).
`
`’037 Patent – Claim 7
`
`Mäkelä
`
`[7a] The method of claim 1, further comprising:
`
`See claim 1, supra.
`
`[7b] verifying that the second computing device
`is enabled for receiving the message.
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“When the service is switched on, the apparatus then checks in point 4 which
`kind of an alarm procedure is applied to and in point 5 if the identity code of the
`caller (CLI, Caller Line Identity) is available. The latter is required for sending a
`short message.” 5:7-11.
`
`“In point 7, the message is sent to the calling party, supposing that the
`communication device of the calling party has the short message function. In
`order to check this, it is possible to judge e.g. from the telephone number
`included in the CLI information of the calling party, if the calling party has a
`GSM telephone.” 5:13-19 (emph. added).
`
`Ex. E-1 9
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 10
`
`

`

`
`
`’037 Patent – Claim 8
`
`Mäkelä
`
`[8a] The method of claim 7, wherein:
`
`See claim 1, supra.
`
`[8b] verifying that the second computing device
`is enabled for receiving the message includes
`
`See claim 7, supra.
`
`[8c] (i) identifying a phone number of the other
`computing device used for the incoming call,
`and
`
`[8d] (ii) determining that the phone number is
`associated with a message-enabled device that
`can handle a text or instant message response.
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
` “The present invention also concerns a communication device characterized in
`that it comprises means for identifying the caller on the basis of an
`identification information included within the incoming call and for sending,
`according to a selection made by the user, a reply in response to the call, said
`reply being one of the following: a voice message, an e-mail message, a
`facsimile, an SMS message in the form of a character string.” 3:38-46 (emph.
`added).
`
`“When the service is switched on, the apparatus then checks in point 4 which
`kind of an alarm procedure is applied to and in point 5 if the identity code of the
`caller (CLI, Caller Line Identity) is available. The latter is required for sending
`a short message.” 5:7-11 (emph. added).
`
`“[T]he message is sent to the calling party, supposing that the communication
`device of the calling party has the short message function. In order to check this,
`it is possible to judge e.g. from the telephone number included in the CLI
`information of the calling party, if the calling party has a GSM telephone.”
`5:13-19 (emph. added).
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
` “When the service is switched on, the apparatus then checks in point 4 which
`kind of an alarm procedure is applied to and in point 5 if the identity code of the
`
`Ex. E-1 10
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 11
`
`

`

`
`
`
`
`’037 Patent – Claim 8
`
`Mäkelä
`
`caller (CLI, Caller Line Identity) is available. The latter is required for sending a
`short message.” 5:7-11.
`
`“[T]he message is sent to the calling party, supposing that the communication
`device of the calling party has the short message function. In order to check
`this, it is possible to judge e.g. from the telephone number included in the CLI
`information of the calling party, if the calling party has a GSM telephone.”
`5:13-19 (emph. added).
`
`’037 Patent – Claim 9
`
`Mäkelä with Tsampalis
`
`[9a] The method of claim 8,
`
`See claim 8, supra.
`
`[9b] wherein determining that the phone number
`is associated with a message enabled device
`includes accessing a contact record of a caller of
`the incoming call using the data provided with
`the incoming call,
`
`Mäkaelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“The user can also have simply named certain telephone numbers, the calls
`coming from which are answered with certain short messages. The marking can
`be based on an electronic notebook already included in the communication
`device or a short message notebook or a list available to the reply service
`especially employing the short messages. If the telephone number of the calling
`party refers to some record of the notebook integrated to the device, where, in
`addition to the telephone number, also the subscriber's name of the number is
`stored into, the short message to be sent as a reply can be personified by
`attaching the name in question to it, so that the message is e.g.: ‘Hello Anne, I'm
`in a meeting, call again in 20 minutes’. If the number of the calling party has
`been read as CLI data but the corresponding number has not been stored earlier
`to any notebook, it can be automatically stored.” 6:3-19 (emph. added).
`
`To the extent this limitation is not expressly satisfied by Mäkaelä, it would have
`been inherent or obvious to a person of ordinary skill in the art at the time to
`Ex. E-1 11
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 12
`
`

`

`
`
`’037 Patent – Claim 9
`
`Mäkelä with Tsampalis
`
`understand that to store the CLI data, for example in any notebook, as indicated
`above, the data was necessarily accessed from a record associated with the caller
`of the incoming call.
`
`Moreover, it would have been obvious to combine the teachings of Mäkelä with
`the following exemplary disclosure(s) from Tsampalis, which discloses this
`limitation.
`
`“[A] sending mobile wireless communication device stores the obtained
`messaging format capabilities information of the receiving mobile wireless
`communication device in a phonebook accessible by the sending mobile
`wireless communication device. This provides for the advantage of quickly and
`locally obtaining the messaging format capabilities information of the receiving
`mobile wireless communication device without having to retrieve such
`information externally over a network.” Tsampalis, ¶ 23 (emph. added).
`
`“FIG. 3 shows, in greater detail, the phonebook 222. Specifically, the phonebook
`222 is shown to include recipient name 302, recipient ID 304, phonebook flag
`306, phonebook messaging format capabilities 308, phonebook last update time
`310, and individual phonebook entry 312.” Tsampalis, ¶ 31.
`
`See also Figs. 2-4.
`
`[9c] and using the contact record to verify that
`the phone number is capable of being used to
`receive the message.
`
`It would have been obvious to combine the teachings of Mäkelä with the
`following disclosure from Tsampalis. The resulting combination would satisfy
`the requirements of this limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`See claim 9b, supra.
`
`“[A] sending mobile wireless communication device stores the obtained
`messaging format capabilities information of the receiving mobile wireless
`communication device in a phonebook accessible by the sending mobile
`
`Ex. E-1 12
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 13
`
`

`

`
`
`’037 Patent – Claim 9
`
`Mäkelä with Tsampalis
`
`wireless communication device. This provides for the advantage of quickly and
`locally obtaining the messaging format capabilities information of the receiving
`mobile wireless communication device without having to retrieve such
`information externally over a network.” Tsampalis, ¶ 23 (emph. added).
`
`“The second mobile wireless communication device messaging format
`capabilities information 110 may be data representing that the device can process
`messages that are in an SMS format, EMS format, or another suitable format.”
`Tsampalis, ¶ 25.
`
`“The send message circuitry 106 operates to send a message in a message format
`compatible with at least one of the formats identified in the second mobile
`wireless communication device messaging format capabilities information 110.
`The send message circuitry 106 sends message 112, in a format identified in the
`second mobile wireless communication device messaging format capabilities
`information 110, to the network 108 via the transceiver 102.” Tsampalis, ¶ 25.
`
`“FIG. 3 shows, in greater detail, the phonebook 222. Specifically, the phonebook
`222 is shown to include recipient name 302, recipient ID 304, phonebook flag
`306, phonebook messaging format capabilities 308, phonebook last update time
`310, and individual phonebook entry 312.” Tsampalis, ¶ 31.
`
`“In operation, and referencing FIGS. 2-4, a user (not shown) interacts with the
`first mobile wireless communication device 100 via the user interface 202 by
`entering message text, files, etc. 220 and an active message recipient list 218. As
`the active message recipient list 218 is populated with each recipient ID 402,
`then, in one embodiment having local messaging format capabilities determinator
`circuitry 210 and a phonebook 222, immediately after each such recipient ID 402
`is entered, the send message circuitry 106 interacts the mobile wireless
`communication device messaging format capabilities determinator circuitry 104,
`specifically the local messaging format capabilities determinator circuitry 210, to
`retrieve the second mobile wireless communication device messaging format
`
`Ex. E-1 13
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 14
`
`

`

`
`
`
`
`’037 Patent – Claim 9
`
`Mäkelä with Tsampalis
`
`capabilities information 110 associated with the second mobile wireless
`communication device 200. If such recipient 402 is found in the phonebook 222,
`then, for that individual phonebook entry 312, it is determined whether there is a
`corresponding phonebook flag 306 set for that recipient ID 402. If the phonebook
`flag 306 is not set, the remote messaging format capabilities determinator
`circuitry 208 is called to determine the second mobile wireless communication
`device messaging format capabilities information 110. However, if the
`phonebook flag 306 is set for the individual phonebook entry 312, the phonebook
`messaging format capabilities 308, (e.g., the second mobile wireless
`communication device messaging format capabilities information 110 previously
`stored in the phonebook), are returned to the local messaging format capabilities
`determinatory circuitry 210.” Tsampalis, ¶ 33.
`
`’037 Patent – Claim 22
`[22a] A computing device comprising:
`
`Mäkelä
`Mäkelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`[22b] one or more processors;
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`See claim 1a, supra.
`
`Mäkelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“[T]he communication device in accordance with the invention must have means
`for controlling the operation. They are preferably implemented as software
`processes that are stored to the memory means included in the communication
`device in a form to be performed by the microprocessor controlling its
`operation.” 8:22-27 (emph. added).
`
`One of ordinary skill would have found this limitation disclosed either expressly
`or inherently in the teachings of the reference(s) and incorporated disclosures
`
`Ex. E-1 14
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 15
`
`

`

`
`
`’037 Patent – Claim 22
`
`[22c] one or more wireless communication ports
`that communicate with the one or more
`processors to enable the device to handle both
`voice and messaging communications over one
`or more wireless networks;
`
`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Mäkelä
`taken as a whole, or in view of or combination with the state of the art at the time
`of the alleged invention, as evidenced, for example, by substantial body of
`additional references identified in Apple’s Patent L.R. 3-3 Statement, reflecting
`the state of the art at the time of the alleged invention. Rather than repeat those
`disclosures here, they are incorporated by reference into this chart.
`Mäkelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`“The present invention relates in general to message services between telephone
`devices and in particular to using the number of the calling party for transmitting
`a message in a situation that the receiving party is busy.” 1:8-11 (emph. added).
`
`“In FIG. 1 there is a flow diagram of a function according to one simple
`embodiment of the invention in a mobile communication device comprising the
`short message function. The operation starts from point 1, where an incoming
`call is noticed. The apparatus checks according to point 2 if the reply service
`employing the short message service (SMS Reply) is switched on. If not, it
`moves to point 3 corresponding the treatment of the call in a usual and known
`way. When the service is switched on, the apparatus then checks in point 4 which
`kind of an alarm procedure is applied to and in point 5 if the identity code of the
`caller (CLI, Caller Line Identity) is available. The latter is required for sending a
`short message.” 4:66-5:11.
`
`“[T]he communication device in accordance with the invention must have means
`for controlling the operation. They are preferably implemented as software
`processes that are stored to the memory means included in the communication
`device in a form to be performed by the microprocessor controlling its
`operation.” 8:22-27 (emph. added).
`
`“The invention is especially applicable to mobile communication devices of
`digital cellular networks like GSM telephones.” 9:57-59.
`
`To the extent Mäkelä does not expressly disclose this claim limitation, it would
`
`Ex. E-1 15
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 16
`
`

`

`
`
`’037 Patent – Claim 22
`
`[22d] wherein the one or more processors are
`configured to:
`[22e] receive an incoming telephony
`communication over one of the wireless
`communication ports from another computing
`device;
`[22f] in response to receiving the incoming
`telephony communication, determine a message
`identifier of the other computing device, wherein
`the message identifier is determined based at
`least in part on data provided with the incoming
`telephony communication; and
`[22g] enable a user to elect to respond to the
`incoming telephony communication by
`programmatically addressing a message to the
`other computing device using the message
`identifier that is communicated with the
`incoming telephony communication,
`[22h] wherein the computing device, in response
`to receiving the incoming telephony
`communication, displays a user interface that
`enables the user to elect to respond to the
`incoming telephony communication by sending
`a instant message or text message or answering
`the incoming telephony communication.
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`3:17-CV-02403-CAB-MDD (S.D. Cal.)
`
`Mäkelä
`have been inherent or obvious to a person of ordinary skill in the art at the time to
`understand that the computing device disclosed by Mäkelä included one or more
`wireless communication ports that communicate with the one or more processors
`to enable the device to handle both voice and messaging communications over
`one or more wireless networks.
`
`See claim 22b, supra.
`
`See claim 1b, supra.
`
`
`See claim 1c, supra.
`
`See claims 1d and 1e, supra.
`
`Mäkelä discloses this claim limitation. For example, see the following passages
`and/or figures, as well as all related disclosures:
`
`See claim 1d, supra.
`
`See also:
`
`“The present mobile phones have, almost without exception, a display, by means
`Ex. E-1 16
`
`Qualcomm Exhibit 2010
`Apple v. Qualcomm, IPR2018-01279
`Page 17
`
`

`

`’037 Patent – Claim 22
`
`
`
`
`
`’037 Patent – Claim 24
`[24a] The computing device of claim 22,
`
`[24b] further comprising memory resources that
`store a plurality of contact records on the
`computing device,
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`Mäkelä
`of which the receiving party, when the telephone rings, can see the telephone
`number of the calling party connected to a digital exchange. In fast situations it is
`preferable that the receiving party can still at that moment decide, which kind of
`a reply service will be applied to the calling party in question.” 1:48-54
`
`“[I]n response to the incoming call, the communication device identifies the
`caller on the basis of an identification information included within the incoming
`call and sends a reply according to a selection made by the user… said reply
`being one of the following: … an SMS message in the form of a character
`string.” 3:30-38 (emph. added).
`
`“The receiving party may, according to the invention, give a simple key
`command that sends the knocking caller an answering message like “I'm busy,
`please wait for . . . one minute” or any other message that has been described
`above. This answer may be a previously selected standard answer to all knocking
`parties, or the receiving party may select the most proper answer message at the
`ver