Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: February 1, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-01279
`Patent 7,844,037 B2
`____________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: February 1, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-01279
`Patent 7,844,037 B2
`____________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`I.
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–14 and 16–181 of U.S. Patent No. 7,844,037 B2
`(Ex. 1001, “the ’037 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2
`(“Petition” or “Pet.”). Qualcomm Incorporated (“Patent Owner”) filed a
`Patent Owner Preliminary Response. Paper 10 (“Preliminary Response” or
`“Prelim. Resp.”).
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“the information presented in the petition filed under section 311 and any
`response filed under section 313 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). On April 24, 2018, the
`Supreme Court held that a decision to institute under 35 U.S.C. § 314 may
`not institute on fewer than all claims challenged in the petition. SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`For the reasons set forth below, upon considering the Petition,
`Preliminary Response, and evidence of record, we determine that the
`information presented in the Petition establishes a reasonable likelihood that
`Petitioner will prevail with respect to at least one of the challenged claims.
`
`
`1 As discussed below in Section II.A, the Petition also seeks inter partes
`review of claims 19–25. However, because those claims have been
`statutorily disclaimed by the Patent Owner, they are treated as if they were
`never part of the ’037 patent. See infra Section II.A.
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`Accordingly, we institute inter partes review on all the challenged claims
`based on all the grounds identified in the Petition.
`Our findings of fact, conclusions of law, and reasoning discussed
`below are based on the evidentiary record developed thus far, and made for
`the sole purpose of determining whether the Petition meets the threshold for
`initiating review. This decision to institute trial is not a final decision as to
`the patentability of any challenged claim or the construction of any claim
`limitation. Any final decision will be based on the full record developed
`during trial.
`
`Real Party-In-Interest
`A.
`Petitioner identifies Apple, Inc. as the real party-in-interest. Pet. 63.
`
`Related Proceedings
`B.
`The parties identify the following currently pending patent litigation
`proceeding in which the ’037 patent is asserted: Qualcomm Inc. v. Apple
`Inc., Case No. 3:17-cv-02403 (S.D. Cal.). Id.; Paper 3, 2. Additionally,
`Patent Owner identifies a second request for inter partes review of the
`’037 patent: Apple Inc. v. Qualcomm Inc., Case IPR2018–01280. Paper 3, 2
`
`The ’037 Patent
`C.
`The ’037 patent is titled “Method and Device for Enabling Message
`Responses to Incoming Phone Calls.” Ex. 1001, [54]. According to the
`’037 patent, the claimed invention enables “message replies to be made to
`incoming calls.” Id. at 1:64–65. “For example, rather than pick up a phone
`call or forward the phone call to voicemail, the user may simply generate a
`text (or other form of) message to the caller.” Id. at 1:67–2:3. Thus, when
`using the claimed invention,
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`[r]ather than answer the call or perform some other action
`like forwarding the call to voicemail, . . . the recipient
`computing device 110 issues a message response 122 to the
`calling device 120. In one embodiment, the message response
`122 is an alternative to the user of the recipient device 110
`having to decline or not answer the incoming call 112.
`Id. at 3:56–63.
`As another alternative, in one implementation, the
`message creation data 222 is generated in response to a trigger
`from a user 202. The phone application 210, message response
`module 230, or some other component may prompt the user to
`message respond to a caller in response to receipt of call data
`202. The prompt may occur shortly after the incoming call 204
`is received, such as with or before the first “ring” generated on
`the computing device 200 for the incoming call. For example,
`the user may be able to elect message response as one option
`along with other options of answering or declining the
`incoming call 204.
`Id. at 5:24–34. Figure 4 of the ’037 patent (not reproduced herein)
`“illustrates a message for handling incoming calls with message replies,
`under an embodiment of the invention.” Id. at 1:53–54.
`
`The Challenged Claims
`D.
`Petitioner challenges claims 1–14 and 16–18 of the ’037 patent.
`Pet. 1. Claim 1 is independent, is illustrative of the subject matter of the
`challenged claims, and reads as follows:
`1.
`A method for operating a first computing device,
`the method being implemented by one or more processors of
`the computing device and comprising:
`receiving, from a second computing device, an incoming
`call to initiate a voice-exchange session;
`in response to receiving the incoming call, determining a
`message identifier associated with the second computing
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`device, wherein the message identifier is determined based at
`least in part on data provided with the incoming call;
`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
`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.
`Ex. 1001, 9:63–10:15
`
`E.
`
`Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference(s)
`Basis2
`Challenged Claims
`Mäkelä3 in view of Moran4
`§ 103(a) 1–8, 12–14, and 16–18
`Mäkelä in view of Moran and
`§ 103(a) 7–11
`Tsampalis5
`
`Pet. 3. In its analysis, Petitioner relies on the declaration testimony of
`Dr. Narayan B. Mandayam (Ex. 1003).
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’037 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA versions of the statutory bases for unpatentability.
`3 U.S. Patent No. 6,301,338 (issued Oct. 9, 2001) (Ex. 1004).
`4 U.S. Patent Appl. 2003/0104827 (published June 5, 2003) (Ex. 1006).
`5 U.S. Patent Appl. 2004/0203956 (published Oct. 14, 2004) (Ex. 1007).
`
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`II. ANALYSIS
`Patent Owner’s Disclaimer of Claims 19–25
`A.
`Petitioner seeks, among other things, inter partes review of claims
`19–25 of the ’037 patent. See Pet. 3, 34–42, 51–59, 61–62. Subsequent to
`the filing of the Petition, Patent Owner filed a statutory disclaimer of claims
`19–25 of the ’037 patent. Ex. 2001; see also Prelim. Resp. 1–2 n.1.
`Patent Owner argues that statutory disclaimer renders moot
`Petitioner’s request regarding claims 19–25. Prelim. Resp. 1–2 n.1. Patent
`Owner also cites our rules that state that “[n]o inter partes review will be
`instituted based on disclaimed claims.” Id. (quoting 37 C.F.R. § 42.107(e)).
`In considering Federal Circuit precedent and our rules, we conclude
`that we cannot institute a trial on claims that have been disclaimed, and,
`thus, no longer exist. Cf. Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term
`‘considered as part of the original patent’ in section 253 to mean that the
`patent is treated as though the disclaimed claims never existed.”); Guinn v.
`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); Genetics Inst., LLC v. Novartis
`Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011)). That
`conclusion is consistent with other panel decisions in inter partes review
`proceedings that addressed a near identical circumstance as we address here.
`See, e.g., Vestas-American Wind Tech., Inc. v. Gen. Elec. Co., IPR2018-
`01015, slip op. 12–14 (PTAB Nov. 14, 2018) (Paper 9) (“the ’1015 IPR”);
`Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-00935, slip op. 9–10
`(PTAB Dec. 7, 2018) (Paper 9). We share the same view as the panel in the
`’1015 IPR that such a conclusion is consistent with the statutory scope of
`inter partes review as laid out in 35 U.S.C. §§ 311(b) and 318(a), and is not
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`at odds with the Supreme Court’s recent decision in SAS. See Vestas, slip
`op. at 12–14. Accordingly, we treat claims 19–25 as having never been part
`of the ’037 patent, and Petitioner cannot seek inter partes review of those
`claims.
`
`B. Discretionary Denial under 35 U.S.C. § 315(d)
`Patent Owner argues Petitioner filed two separate Petitions for inter
`partes review, each seeking review of claims 1–14, 16, and 18–25 of the
`’037 patent. Prelim. Resp. 30. Patent Owner further argues we have “broad
`discretion to manage duplicative proceedings before the USPTO concerning
`the same patent, including ‘providing for stay, transfer, consolidation, or
`termination of any such matter or proceeding.’” Id. at 29 (quoting 35 U.S.C.
`§ 315(d)). Patent Owner further argues “Petitioner fails to demonstrate that
`grounds in the two petitions are distinct and separate” and, accordingly, we
`“should exercise [our] discretion to reject both (or at least one of the)
`petitions to emphasize that the practice of filing multiple redundant petitions
`on the same claims is excessive and will not be encouraged by the Board.”
`Id. at 30. Further, according to Patent Owner, “[t]o do otherwise would
`invite parties to circumvent the 14,000-word limit mandated by 37 C.F.R.
`§ 42.24(a)(1)(i) by filing multiple petitions, placing continually heavier
`burdens on the inter partes review process and causing unnecessary delays.”
`Id. at 31.
`We are not persuaded by Patent Owner’s arguments. First, in a
`separate decision we are denying, based on section 325(d), the request for
`inter partes review in the other petition related to the ’037 patent, Apple Inc.
`v. Qualcomm Inc., Case IPR2018-01280. Accordingly, there is no risk of
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`redundant trials or unnecessary expenses associated with multiple trials on
`the same patent.
`Second, there is nothing per se improper with filing multiple petitions
`at the same time to avoid issues associated with the word limit. The Board
`previously has provided guidance that Petitioners should consider filing
`multiple petitions if exceeding word or page limits were of concern. See
`Rules of Practice for Trials Before the Patent Trial and Appeal Board and
`Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg.
`48,612, 48,635 (Aug. 14, 2012) (“Where a petitioner can demonstrate how a
`waiver of the page limit is in the interests of justice, a motion to waive the
`page limit should be considered. Alternatively, the filing of multiple
`petitions directed to subsets of related claims should be considered.”).
`Moreover, so long as the multiple petitions are filed on or about the same
`day, none of the policy concerns set forth in General Plastic6 are implicated.
`Accordingly, we decline to exercise our discretion to deny institution
`of the instant Petition based on 35 U.S.C. § 315(d).
`
`
`6 General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case
`IPR2016-01357, slip op. at 8–11 (PTAB Sept. 6, 2017) (Paper 19) (§ II.B.4.i
`precedential) (setting forth nonexclusive factors to consider when multiple
`petitions are filed seeking review of the same patent claims). See also
`Office Trial Practice Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug.
`13, 2018) (providing notice of update); Trial Practice Guide Update (August
`2018), 9–10, at https://www.uspto.gov/sites/default/files/documents/
`2018_Revised_Trial_Practice_Guide.pdf. (setting forth considerations in
`Instituting a Review (discussing General Plastic)).
`
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`
`Claim Construction
`C.
`In this inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2108).7 “Under a broadest reasonable interpretation, words of the claim
`must be given their plain meaning, unless such meaning is inconsistent with
`the specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016). In addition, the Board may not “construe
`claims during [an inter partes review] so broadly that its constructions are
`unreasonable under general claim construction principles.” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (emphasis
`omitted). An inventor may provide a meaning for a term that is different
`from its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes claim constructions for six terms: “voice-
`exchange session,” “instant messages,” “programmatically,”
`“automatically,” “one or more communication components,” and “one or
`more wireless communication ports.” Pet. 5–9. Patent Owner does not
`
`
`7 Per recent regulation, the Board will apply the Phillips claim construction
`standard to petitions filed on or after November 13, 2018. See Changes to
`the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340
`(Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). Because Petitioner filed
`the Petition before November 13, 2018, we apply the BRI standard.
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`contest Petitioner’s proposed constructions but proposes its own
`construction of “prompting.” Prelim. Resp. 12–17.
`In light of the parties’ arguments and evidence, we address the
`constructions of “automatically” and “prompting” below. For all other
`terms, we conclude that no express claim construction is necessary for our
`determination of whether to institute review of the challenged claims. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`
`Automatically
`1.
`Claim 1 recites “automatically addressing the message to the second
`computing device using the message identifier determined from the
`incoming call.” Ex. 1001, 10:13–15. Petitioner argues that “automatically”
`as recited in claim 1 should be construed to mean “performed without user
`input.” Pet. 6–7 (citing Ex. 1001, 8:5–9; Ex. 1003 ¶ 48).
`The ’037 patent draws a distinction between automatically sending a
`message and manually sending a message: “In step 480, the message is
`transmitted to the caller. The message may be transmitted automatically in
`response to an event, such [as] upon completion of the message.
`Alternatively, the message may be transmitted through manual input from
`the user.” Ex. 1001, 8:5–9 (emphases added).
`By using the word “alternatively,” the applicant drew a distinction
`between two different ways a function, such as transmitting, could be
`performed: (1) automatically or (2) through manual input from the user.
`See id. In light of the distinction drawn between transmitting with manual
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`input and transmitting automatically, based on the current record, we
`determine that the term “automatically” is broad enough to encompass
`“without manual input from the user.”
`
`Prompting
`2.
`Claim 1 also recites “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.” Id. at 10:6–11. Patent
`Owner argues “prompting” as used in the prompting step above means
`“presenting reply options [to a user].” Prelim. Resp. 12–13. According to
`Patent Owner, that claim construction is required based on the Specification
`and the prosecution history. Id. at 12–17. However, based on the current
`record, we are not persuaded that the term “prompting” is so limited.
`First, we find nothing in the cited sections of the Specification
`demonstrating that the applicant intended to limit the term “prompting” to
`presenting replies. For example, although the Specification provides an
`“example” in which potential responses are given to the user, the
`Specification does not state that those potential responses must be presented:
`The phone application 210, message response module
`230, or some other component may prompt the user to message
`respond to a caller in response to receipt of call data 202. The
`prompt may occur shortly after the incoming call 204 is
`received, such as with or before the first “ring” generated on the
`computing device 200 for the incoming call. For example, the
`user may be able to elect message response as one option along
`with other options of answering or declining the incoming call
`204.
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`Ex. 1001, 5:26–34 (emphases added). Similarly, the other sections of the
`Specification cited by Patent Owner use similar permissive language:
`“According to one embodiment, reply options are provided to the user in step
`430.” Id. at 7:38–39 (emphasis added). Although the cited section describes
`“one embodiment” in which reply options are presented, the phrase “one
`embodiment” implies there are other embodiments where the reply options
`may not be provided.
`Similarly, nothing in the cited sections of the prosecution history
`persuades us, based on the current record, that prompting is so limited.
`During prosecution, the Examiner rejected claim 1 as obvious over Fostick
`and Burg. Ex. 1002, 144. Specifically, the Examiner originally found that
`Burg taught the prompting step:
`However, Burg teaches 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 [When the telephony gateway notifies the called party of
`the incoming call, it also provides the called party with the
`options of accepting the call, declining to accept the call, or
`responding to the call by providing a response message to the
`calling party, column 3, lines 4–20].
`
`Id.
`
`Although the Examiner quoted a portion of Burg that recites a prompt
`that includes presenting various reply options (see Ex. 2002, 3:4–8), Patent
`Owner points to nothing in the rejection that indicates that the Examiner
`concluded that the claim limitation required including potential responses
`with the prompt.
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`Accordingly, we are not persuaded that the term “prompting” requires
`“presenting reply options [to a user].” No further construction of this term is
`needed at this time in order to determine whether to institute trial. See Vivid
`Techs, 200 F.3d at 803.
`
`Legal Principles
`D.
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
`others.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR,
`550 U.S. at 407 (“While the sequence of these questions might be reordered
`in any particular case, the [Graham] factors continue to define the inquiry
`that controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” 383 U.S. at 18.
`
`
`8 Neither Petitioner nor Patent Owner presented any evidence of objective
`indicia of nonobviousness (so-called “secondary considerations”).
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`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To reach this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
`that a person of ordinary skill at the time of the invention “would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.” (citation omitted)); see also Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530, 1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C.
`§ 103 is not whether the differences themselves would have been obvious.
`Consideration of differences, like each of the findings set forth in Graham,
`is but an aid in reaching the ultimate determination of whether the claimed
`invention as a whole would have been obvious.” (citation omitted)).
`“A reference must be considered for everything it teaches by way of
`technology and is not limited to the particular invention it is describing and
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`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
`907 (Fed. Cir. 1985). Additionally, “the question under 35 USC § 103 is not
`merely what the references expressly teach but what they would have
`suggested to one of ordinary skill in the art at the time the invention was
`made.” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807–08
`(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
`“Every patent application and reference relies to some extent upon
`knowledge of persons skilled in the art to complement that [which is]
`disclosed. . . .” In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting In re
`Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons “must be
`presumed to know something” about the art “apart from what the references
`disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421. This does not deny us, however,
`“recourse to common sense” or to that which the prior art teaches. Id.
`Against this general background, we consider the references, other
`evidence, and arguments on which the parties rely.
`
`Level of Ordinary Skill in the Art
`E.
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001).
`Factors pertinent to a determination of the level of ordinary skill in the
`art include (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
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`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, these factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
`Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a
`level of ordinary skill, we also may look to the prior art, which may reflect
`an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the
`Supreme Court informs us that “[a] person of ordinary skill is also a person
`of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
`Petitioner argues that a person having ordinary skill in the art would
`have had (1) “a Master of Science Degree in an academic area emphasizing
`electrical engineering, computer engineering, computer science, or an
`equivalent field (or a similar technical Master’s Degree, or higher degree)
`with a concentration in wireless communication and networking systems” or
`(2) “a Bachelor’s Degree (or higher degree) in an academic area
`emphasizing electrical engineering, computer engineering, or computer
`science and having two or more years of experience in wireless
`communication and networking systems.” Pet. 4 (citing Ex. 1003 ¶13).
`Additionally, Petitioner argues that “[a]dditional education in a relevant
`field, such as computer engineering, or electrical engineering, or industry
`experience may compensate for a deficit in one of the other aspects of the
`requirements stated above.” Id. (citing Ex. 1003 ¶ 13).
`
`16
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`
`Patent Owner does not address the issue of the level of ordinary skill
`in the art. See generally Prelim. Resp.
`Because Petitioner’s definition is supported by the testimony of
`Petitioner’s expert, Dr. Mandayam, we adopt Petitioner’s definition of the
`level of ordinary skill in the art for purposes of this Decision.9
`
`F. Obviousness over (1) Mäkelä in view of Moran or (2) Mäkelä
`and Moran in View of Tsampalis
`Petitioner argues the subject matter of claims 1–8, 12–14, and 16–18
`would have been obvious to a person of ordinary skill in the art at the time
`of the invention in light of the teachings of Mäkelä (Ex. 1004) and Moran
`(Ex. 1006). Petitioner further argues claims 7–11 would have been obvious
`to a person of ordinary skill in the art at the time of the invention in light of
`the teachings of Mäkelä, Moran, and Tsampalis (Ex. 1007). Based on the
`current record, we are persuaded that Petitioner has established a reasonable
`likelihood of prevailing on its asserted obviousness ground with respect to
`claims 1–14 and 16–18.
`
`Summary of Mäkelä
`1.
`Mäkelä is titled “Activation of a Telephone’s Own Call Answering
`Equipment According to the Number of the Calling Party” and is directed
`“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.” Ex. 1004, [54], 1:1–10. Mäkelä “provide[s] a
`
`9 If Patent Owner proposes a different level of ordinary skill in the art in the
`Patent Owner’s Response, the parties are encouraged to address whether
`there are any material differences between the two proposals and what
`impact, if any, the different level has on the obviousness analysis.
`
`17
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`method and an apparatus, by means of which the telephone answering
`function can be adapted to operate in different ways according to the number
`of the calling party and the use of which for the mentioned purpose is simple
`and flexible.” Id. at 3:10–14. One such device is
`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.
`Id. at 3:39–46.
`
`Summary of Moran
`2.
`Moran is titled “Rerouting/Reformat[t]ing Wireless Messages for
`Cross Connectivity Between Service Providers” and is directed to “a method
`and system for rerouting and reformatting messages so that users can send
`messages to other users that use different wireless service providers.”
`Ex. 1006, [54], ¶ 2. Specifically, Moran is directed “to provid[ing] a scheme
`that would provide a much higher degree of cross-compatibility for SMS
`messaging between users having different service providers [and which]
`may be implemented without requiring changes to the existing wireless
`services infrastructure.” Id. ¶ 8.
`
`Summary of Tsampalis
`3.
`Tsampalis is titled “Method and Apparatus for Providing Wireless
`Messaging” and is directed to a “mobile wireless communication device
`messaging format capabilities determinator circuitry” which can be used “to
`obtain second mobile wireless communication device messaging format
`
`18
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`capabilities information (110) of a second mobile wireless communication
`device (100)” along with circuity “operable to send a message (112) 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).” Ex. 1007, [54], [57].
`
`4.
`
`Claim 1
`Petitioner’s Arguments
`a.
`Petitioner argues that the combination of Mäkelä and Moran teaches
`all the limitations recited in claim 1. See Pet. 10–11.
`Claim 1 recites “[a] method for operating a first computing device, the
`method being implemented by one or more processors of the computing
`device.” Ex. 1001, 9:63–65. Petitioner argues Mäkelä teaches that
`limitation. Pet. 11–13. Specifically, Petitioner argues Mäkelä teaches a
`method for replying to an incoming call on a communication device whose
`operation is controlled by a microprocessor. Id. (citing Ex. 1003 ¶¶ 55–56;
`Ex. 1004, 3:26–34, 3:44–46, 8:22–27 cl. 1).
`Claim 1 further recites “receiving, from a second computing device,
`an incoming call to initiate a voice-exchange session.” Ex. 1001, 9:66–67.
`Petitioner argues Mäkelä teaches the receiving step. Pet. 13–15.
`Specifically, Petitioner argues Mäkelä teaches receiving a phone call, which
`is an example of a request to start a voice-exchange session by a second
`computing device. Id. (citing Ex. 1003 ¶ 60; Ex. 1004, 3:19–26, 5:2–3,
`5:16–19, 6:54–7:7, 9:15–18, Figs. 1, 3).10
`
`
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