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 No. 7,844,037
`
`
`
`
`DECLARATION OF KEVIN JEFFAY, PH.D.
`
`
`
`
`
`
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`Qualcomm Exhibit 2004
`Apple v. Qualcomm, IPR2018-01279
`Page 1
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`

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`TABLE OF CONTENTS
`
`I.
`
`Page
`INTRODUCTION ............................................................................................... 4
`A. BACKGROUND ................................................................................................... 4
`II. UNDERSTANDING OF THE LAW ................................................................. 7
`A. PRIOR ART ........................................................................................................ 7
`B. ANTICIPATION ................................................................................................... 9
`C. OBVIOUSNESS ................................................................................................... 9
`D. CLAIM CONSTRUCTION ................................................................................... 13
`III. LEVEL OF ORDINARY SKILL IN THE ART .............................................. 16
`IV. THE ’037 PATENT .......................................................................................... 18
`V. CLAIM CONSTRUCTION .............................................................................. 19
`A. “PROMPTING A USER OF THE FIRST COMPUTING DEVICE” ................................. 19
`B. “COMPOSING” ................................................................................................. 31
`VI. SUMMARY OF REFERENCES CITED IN THE PETITION ........................ 40
`A. U.S. PATENT NO. 6,301,338 TO MAKELA (APPLE-1004) .............................. 40
`B. U.S. PUBLICATION NO. 2003/0104827 TO MORAN (APPLE-1006)................ 40
`C. U.S. PUBLICATION NO. 2004/0203956 TO TSAMPALIS (APPLE-1007) .......... 40
`D. U.S. PATENT NO. 6,456,696 TO FARGANO (APPLE-1008) ............................ 41
`VII. PETITIONER FAILS TO DEMONSTRATE THAT ANY OF THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ............................................. 41
`A. PETITIONER FAILS TO DEMONSTRATE THAT THE COMBINATION OF MAKELA
`AND MORAN DISCLOSES EVERY LIMITATION OF INDEPENDENT CLAIM 1
`(GROUNDS 1A AND 1B: CLAIMS 1-14 AND 16-18) ......................................... 42
`B. PETITIONER FAILS TO DEMONSTRATE THAT THE COMBINATION OF MAKELA,
`MORAN, AND TSAMPALIS DISCLOSES “VERIFYING THAT THE SECOND
`COMPUTING DEVICE IS ENABLED FOR RECEIVING THE MESSAGE,” AS DISCLOSED
`IN CLAIM 7 (GROUND 1A: CLAIMS 7-8; GROUND 1B: CLAIMS 7-11) .............. 59
`C. PETITIONER FAILS TO ESTABLISH A MOTIVATION TO COMBINE OR
`REASONABLE EXPECTATION OF SUCCESS ....................................................... 63
`VIII. WRITTEN DESCRIPTION SUPPORT FOR SUBSTITUTE CLAIMS .... 65
`IX. CONCLUSION ................................................................................................. 76
`
`
`
`
`
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`I, Kevin Jeffay, declare as follows:
`
`1.
`
`I make this declaration based upon my own personal knowledge and, if
`
`called upon to testify, would testify competently to the matters contained herein.
`
`2.
`
`I have been retained as a technical expert on behalf of Patent Owner
`
`Qualcomm Incorporated in connection with the inter partes review (“IPR”) of U.S.
`
`Patent No. 7,844,037 (“the ’037 Patent,” APPLE-1001). I understand that Apple Inc.
`
`(“Petitioner” or “Apple”) has filed two petitions (IPR2018-01279 (“the 1279
`
`Petition” or “the 1279 Pet.”) and IPR2018-1280 (“the 1280 Petition” or “the 1280
`
`Pet.”), collectively “Petitions”) for inter partes review of Claims 1-14 and 16-18 of
`
`the ’037 Patent (“the Challenged Claims”). I am being compensated for the time
`
`that I spend on this matter, but my compensation is not dependent on and in no way
`
`affects the substance of my statements in this declaration.
`
`3.
`
`I submit this declaration in support of Qualcomm’s Patent Owner
`
`Responses to Apple’s petitions. I reserve the right to supplement my opinions should
`
`I be requested to provide additional analysis in connection with the patentability of
`
`the Challenged Claims. As part of my work on this declaration, I have reviewed the
`
`1279 and 1280 Petitions and the supporting exhibits, the ’037 Patent, the prosecution
`
`history of the ’037 Patent, the prior art asserted by Petitioner, and any other materials
`
`
`
` 3
`
`identified in this declaration.
`
`
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`I.
`
`INTRODUCTION
`
`4. My relevant qualifications, including my educational background and
`
`career history is summarized below. A copy of my curriculum vitae, which includes
`
`a more detailed enumeration of my background, experience, patents, and
`
`publications, is attached as EX-2005.
`
`A. Background
`
`5.
`
`I am a tenured professor in the Department of Computer Science at the
`
`University of North Carolina at Chapel Hill where I currently hold the position of
`
`Gillian T. Cell Distinguished Professor of Computer Science. I also currently serve
`
`as the Chairman of the Department. I have been a faculty member at UNC since
`
`1989.
`
`6.
`
`I received a Ph.D. in computer science from the University of
`
`Washington in 1989. Before that I received a M.Sc. degree in computer science
`
`from the University of Toronto in 1984, and a B.S. degree with Highest Distinction
`
`in mathematics from the University of Illinois at Urbana-Champaign in 1982.
`
`7.
`
`I have been involved in the research and development of computing
`
`systems for over 35 years. I have been a faculty member at the University of North
`
`Carolina since 1989 where I perform research and I teach in the areas of computer
`
`networks, distributed systems, computer supported cooperative work, real-time
`
`systems, operating systems, multimedia networking, and network management and
`
`performance evaluation, among others.
`
`
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`8.
`
`Relevant to this matter is the fact that throughout much of the 1990s I
`
`was actively involved in variety of research projects that collectively sought to create
`
`a comprehensive computing and communications environment that enabled
`
`distributed groups of professionals to work together effectively, both synchronously
`
`and asynchronously, while being geographically distributed. This research included
`
`work on user interface design, mobile computing, as well as network and operating
`
`system support for real-time continuous media applications such as voice, video, and
`
`data conferencing (e.g., real-time screen sharing). Much of this work was performed
`
`jointly with industry partners such as Intel, IBM, Cabletron, and Digital Equipment
`
`Corporation.
`
`9.
`
`For example, starting in 1991, in collaboration with IBM and Intel my
`
`research group constructed and operated one of the first Internet videoconferencing
`
`systems. We also developed a data conferencing, “shared window system” that was
`
`functionally and visually equivalent to today’s Cisco’s WebEx and Citrix’s
`
`GoToMeeting screen sharing products and services. Part of this work involved the
`
`development of collaboration-support applications for portable computers such as
`
`pen computers (an early form of a personal digital assistant, or PDA). This particular
`
`sub-project involved the development of user interfaces for mobile computing
`
`devices. In addition, I have previously developed a variety of user interfaces for a
`
`number of imbedded systems such as controllers used in a manufacturing context.
`
`10.
`
`I have authored or co-authored over 100 articles in peer-reviewed
`
`
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`journals, conference proceedings, texts, and monographs in the aforementioned
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`areas of computer science and others. I have previously served as Editor-in-Chief
`
`for the journal Multimedia Systems, and I served as Associate Editor for the journal
`
`Real-Time Systems. In addition, I have edited and co-edited numerous published
`
`proceedings of technical conferences and have edited a book of readings in
`
`multimedia computing and networking (with Hong-Jiang Zhang) published by
`
`Morgan Kaufman. I am a co-author (with Long Le and F. Donelson Smith) of a
`
`monograph related to computer network protocols, and a co-author (with Jay Aikat
`
`and F. Donelson Smith) of a second monograph related to experimental computer
`
`networking.
`
`11.
`
`I have served on numerous proposal review panels for the National
`
`Science Foundation and other international funding agencies in the aforementioned
`
`areas of computer science. I have served as a program chair or member of the
`
`technical program committee for over 100 professional, international, and technical
`
`conferences, workshops, and symposia.
`
`12.
`
`I am a named inventor on four U.S. Patents. These patents are generally
`
`related to computer networking and the delivery of services over networks.
`
`13.
`
`I have served as an expert witness and technical consultant in litigation
`
`and inter partes review matters concerning cellular and wireline telephony, voice
`
`over IP (VoIP) telephony, distributed systems, operating systems, multimedia
`
`networking, computer networks, datacenter networking, embedded systems and
`
`
`
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`embedded software, and real-time systems, among others. I have testified in several
`
`trials, arbitrations, and claim construction hearings as an expert witness.
`
`14. EX-2005, my curriculum vitae, includes a more detailed list of my
`
`qualifications. My C.V. also contains a list of all other cases in which, during the
`
`previous 4 years, I testified as an expert at trial or by deposition.
`
`15. My work on this case is being billed at a rate of $700.00 per hour, with
`
`reimbursement for actual expenses. My compensation is not contingent upon the
`
`outcome of this inter partes review.
`
`II. UNDERSTANDING OF THE LAW
`
`16.
`
`I am not an attorney and offer no legal opinions, but, in my work, I have
`
`had experience studying and analyzing patents and patent claims from the
`
`perspective of a person skilled in the art (a “POSITA”).
`
`17. For the purposes of this declaration, Petitioner’s counsel has informed
`
`me about certain aspects of the law that are relevant to my opinions, as set forth
`
`below. I understand that the patentability of a patent is analyzed on a claim-by-claim
`
`basis, from the perspective of a hypothetical person of ordinary skill in the art
`
`(“POSITA”).
`
`A.
`
`18.
`
`Prior Art
`
`I understand that publications and patents, that were published or
`
`otherwise publicly available before the date of a claimed invention may qualify as
`
`“prior art” to that invention. I further understand that prior art may render one or
`
`
`
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`more claims of a patent invalid for one of two reasons: (a) anticipation and (b)
`
`obviousness. However, I understand that a patent or other publication must first
`
`qualify as prior art before it can be used to invalidate a patent claim and that all prior
`
`art must be viewed from the perspective of a POSITA at the time of the invention.
`
`19.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`issued patent if the date of publication of the patent is prior to the invention(s)
`
`claimed in the issued patent. I further understand that a printed publication, such as
`
`a book or an article published in a magazine or trade publication, qualifies as prior
`
`art to an issued patent if the date of publication is prior to the invention(s) claimed
`
`in the issued patent.
`
`20.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`issued patent if the date of publication of the patent is more than one year before the
`
`filing date of the issued patent. I further understand that a printed publication, such
`
`as a book or an article published in a magazine or trade publication, constitutes prior
`
`art to an issued patent if the publication occurs more than one year before the filing
`
`date of the issued patent.
`
`21.
`
`I understand that a U.S. patent qualifies as prior art to the issued patent
`
`if the application for that patent was filed in the United States before the invention
`
`of the issued patent.
`
`22.
`
`I understand that to qualify as prior art, a reference must contain an
`
`enabling disclosure that allows one of ordinary skill to practice the claims without
`
`
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`undue experimentation.
`
`23.
`
`I understand that documents and materials that qualify as prior art can
`
`be used to invalidate a patent claim as anticipated or as obvious.
`
`B. Anticipation
`
`24.
`
`I was informed and understand that a patent claim may be “anticipated”
`
`if each element of that claim is present either explicitly or inherently (i.e., necessarily
`
`present or implied) in a single prior art reference. I was informed and understand that
`
`to be inherently present, the prior art reference must necessarily disclose the
`
`limitation, and the fact that the reference might possibly practice or contain a claimed
`
`limitation is insufficient to establish that the reference inherently teaches the
`
`limitation.
`
`25.
`
`I understand that in this inter partes review, Petitioner does not allege
`
`that any claims are anticipated.
`
`26.
`
`I have written this report with the understanding that in an inter partes
`
`review, anticipation must be shown by a preponderance of the evidence.
`
`C. Obviousness
`
`27.
`
`I have been instructed by counsel on the law regarding obviousness,
`
`and I understand that even if a patent is not anticipated, it is still invalid if the
`
`differences between the claimed subject matter 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 POSITA.
`
`
`
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`28.
`
`I was informed and understand that a patent claim can be considered to
`
`have been obvious to a POSITA at the time of the alleged invention. This means
`
`that, even if all of the requirements of a claim are not found in a single prior art
`
`reference, the claim is not patentable if the differences between the subject matter in
`
`the prior art and the subject matter in the claim would have been obvious to a POSITA
`
`at the time of the alleged invention.
`
`29.
`
`I was informed and understand that in considering obviousness, it is
`
`important not to determine obviousness using the benefit of hindsight derived from
`
`the patent being considered.
`
`30.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as (1) the scope and content of the prior art; (2)
`
`the differences between the prior art and the Challenged Claims; (3) the level of
`
`ordinary skill in the pertinent art; and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, etc.
`
`31.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that a claim may be
`
`obvious in light of multiple prior art references that disclose the claim elements if a
`
`POSITA would have been motivated to combine the references in a manner that
`
`would result in the claimed invention or render it obvious. I understand that the prior
`
`art references themselves may provide a suggestion, motivation, or reason to
`
`combine, but other times the nexus linking two or more prior art references is simple
`
`
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`common sense. I further understand that obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`32.
`
`I understand that if a technique has been used in one application, and a
`
`person of ordinary skill in the art would recognize that it would improve similar
`
`applications in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.
`
`33.
`
`I also understand that practical and common-sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
`
`ordinary skill in the art looking to overcome a problem will often be able to fit the
`
`teachings of multiple publications together like pieces of a puzzle, although the prior
`
`art need not be like two puzzle pieces that must fit perfectly together. I understand
`
`that obviousness analysis therefore takes into account the inferences and creative
`
`steps that a person of ordinary skill in the art would employ under the circumstances.
`
`34.
`
`I understand that a particular combination may be proven obvious by
`
`showing that it was obvious to try the combination. For example, when there is a
`
`design need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions, a person of ordinary skill has good reason to pursue
`
`the known options within his or her technical grasp because the result is likely the
`
`
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`product not of innovation but of ordinary skill and common sense.
`
`35.
`
`I understand that the combination of familiar elements according to
`
`known methods may be proven obvious when it does no more than yield predictable
`
`results. When a work is available in one field of endeavor, design incentives and
`
`other market forces can prompt variations of it, either in the same field or a different
`
`one. If a person of ordinary skill can implement a predictable variation, obviousness
`
`likely bars its patentability.
`
`36.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a person of ordinary skill in the art, not
`
`just the patentee. Accordingly, I understand that any need or problem known in the
`
`field of endeavor at the time of invention and addressed by the patent can provide a
`
`reason for combining the elements in the manner claimed.
`
`37.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common sense
`
`of one of skill in the art.
`
`38.
`
`I understand that a POSITA could have combined two pieces of prior
`
`art or substituted one prior art element for another if the substitution can be made
`
`with predictable results, even if the swapped-in element is different from the
`
`swapped-out element. In other words, the relevant question is whether prior art
`
`techniques are interoperable with respect to one another, such that that a person of
`
`
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`skill would view them as a design choice, or whether a person of skill could apply
`
`prior art techniques into a new combined system.
`
`39.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art having the understanding and
`
`knowledge reflected in the prior art and motivated by the general problem facing the
`
`inventor, would have been led to make the combination of elements recited in the
`
`claims. Under this analysis, the prior art references themselves, or any need or
`
`problem known in the field of endeavor at the time of the invention, can provide a
`
`reason for combining the elements of multiple prior art references in the claimed
`
`manner.
`
`40. Further, I understand that it is improper to base an obviousness analysis
`
`on hindsight, which is impermissible. To demonstrate that a claim is obvious one
`
`must explain how and why the references relied upon would be combined to arrive
`
`at the claimed invention.
`
`41.
`
`I have been informed and understand that the obviousness analysis
`
`requires a comparison of the properly construed claim language to the prior art on a
`
`limitation-by-limitation basis.
`
`42.
`
`I have written this report with the understanding that in an inter partes
`
`review obviousness must be shown by a preponderance evidence.
`
`D. Claim Construction
`
`43.
`
`I have been instructed by counsel on the law regarding claim
`
`
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`construction and patent claims, and I understand that a patent may include two types
`
`of claims, independent claims and dependent claims. An independent claim stands
`
`alone and includes only the limitations it recites. A dependent claim can depend
`
`from an independent claim or another dependent claim. I understand that a
`
`dependent claim includes all the limitations that it recites in addition to all of the
`
`limitations recited in the claim from which it depends.
`
`44.
`
`I was informed that in inter partes review proceedings filed before
`
`November 13, 2018 claim terms of an unexpired patent are given their “broadest
`
`reasonable construction” in light of the patent specification. I understand that claim
`
`terms are generally given their ordinary and customary meaning, which is the
`
`meaning that the term would have to a POSITA at the time of the invention,
`
`consistent with the broadest reasonable construction. I also understand that claims
`
`involved in patent litigation in a United States District Court could be construed under
`
`a different standard than the standard used before the PTAB in this IPR.
`
`45.
`
` In comparing the claims of the ’037 Patent to the prior art, I have
`
`carefully considered the ’037 Patent and its file history in light of the understanding
`
`of a person of skill at the time of the alleged invention.
`
`46.
`
`I further understand that dependent claims can aid in the interpretation
`
`of claim terms. For example, if a dependent claim adds a particular limitation, there
`
`is a presumption that the limitation in question is not part of the independent claim
`
`from which the dependent claim depends.
`
`
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`47.
`
`I understand that, in construing a claim term, one looks primarily to the
`
`intrinsic patent evidence, including the words of the claims themselves, the
`
`remainder of the patent specification, and the prosecution history.
`
`48.
`
`I understand that extrinsic evidence, which is evidence external to the
`
`patent and the prosecution history, may also be useful in interpreting patent claims
`
`when the intrinsic evidence itself is insufficient.
`
`49.
`
`I understand that words or terms should be given their ordinary and
`
`accepted meaning unless it appears that the inventors were using them to mean
`
`something else. In making this determination, the claims, the patent specification,
`
`and the prosecution history are of paramount importance. Additionally, the
`
`specification and prosecution history must be consulted to confirm whether the
`
`patentee has acted as its own lexicographer (i.e., provided its own special meaning
`
`to any disputed terms), or intentionally disclaimed, disavowed, or surrendered any
`
`claim scope.
`
`50.
`
`I understand that the claims of a patent define the scope of the rights
`
`conferred by the patent. The claims particularly point out and distinctly claim the
`
`subject matter which the patentee regards as his invention. Because the patentee is
`
`required to define precisely what he claims his invention to be, it is improper to
`
`construe claims in a manner different from the plain import of the terms used
`
`consistent with the specification. Accordingly, a claim construction analysis must
`
`begin and remain centered on the claim language itself. Additionally, the context in
`
`
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`which a term is used in the claim can be highly instructive. Likewise, other claims
`
`of the patent in question can inform the meaning of a claim term. For example,
`
`because claim terms are normally used consistently throughout the patent, the usage
`
`of a term in one claim can often illuminate the meaning of the same term in other
`
`claims. Differences among claims can also be a useful guide in understanding the
`
`meaning of particular claim terms.
`
`51.
`
`I understand that the claims of a patent define the purported invention.
`
`I understand that the purpose of claim construction is to understand how one skilled
`
`in the art would have understood the claim terms at the time of the purported
`
`invention.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`52. When interpreting a patent, I understand that it is important to view the
`
`disclosure and claims of that patent from the level of ordinary skill in the relevant
`
`art at the time of the invention.
`
`53.
`
`I understand that the ’037 Patent issued on November 30, 2010, from
`
`U.S. Patent Application No. 11/200,511 (“’511 Application”), filed August 8, 2005.
`
`I understand that the ’037 Patent names David Champlin, Srikiran Prasad, Lang
`
`Chen, Rajan Ranga, and Robert Haitani as the inventors.
`
`54.
`
`I understand that, to determine the appropriate level of ordinary skill in
`
`the art, I may consider the following factors: (a) the types of problems encountered
`
`in the art; (b) prior art solutions to those problems; (c) the rapidity with which
`
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`innovations are made in the field; (d) the sophistication of the technology in
`
`question; and (e) the educational level of active workers in the field. I further
`
`understand that the actual inventor’s level of skill is not determinative of the level
`
`of ordinary skill. I was informed and understand that one of ordinary skill in the art
`
`has ordinary creativity and is not an automaton.
`
`55.
`
`I understand that Petitioner asserts that a POSITA would have had 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 concentration in wireless
`
`communication and networking systems.” Paper No. 2 (Petition, hereinafter “Pet.”)
`
`at 4. Alternatively, the Petitioner asserts that the POSITA would have had 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,” and 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.
`
`56. Based on this description, I possessed ordinary skill in the art around
`
`the time of the invention of the ’037 Patent. As of 2001, I had a Ph.D. in computer
`
`science. In addition, I had been involved with various aspects of mobile computing,
`
`wireless communication, and networking systems for well more than two years.
`
`
`17
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`

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`57. Although I reserve the right to propose an alternative level of skill in
`
`the art in this or other proceedings involving the ’037 Patent, for the purposes of this
`
`declaration, I have applied Petitioner’s proposed level of skill. Even under
`
`Petitioner’s definition, Petitioner has failed to demonstrate that the Challenged
`
`Claims of the ’037 Patent are invalid.
`
`IV. THE ’037 PATENT
`58. The claims of the ’037 Patent are directed to a method for enabling a
`
`user of a computing device to compose a message to a caller in response to an
`
`incoming call, without answering the incoming call.
`
`59. Claim 1 of the ’037 Patent recites:
`
`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 device, wherein the message identifier
`is determined based at least in part on data provided with
`the incoming call;
`incoming call,
`the
`to receiving
`in response
`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
`
`
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`

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`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.
`APPLE-1001 at 9:63-10:11.
`60. According to Claim 1, while an incoming call is being received, a
`
`message identifier associated with the calling device is determined, and the user of
`
`the called device is presented with at least the option to handle the incoming call by
`
`composing a message to the caller, without answering the call. Claim 1 further
`
`recites that in response to receiving the incoming call, the user is presented with the
`
`option of composing a message in response to receiving the call, and when the user
`
`selects the option of composing a message, the message is automatically addressed
`
`using the determined message identifier of the caller. Id. at 10:12-15.
`
`V. CLAIM CONSTRUCTION
`
`61.
`
`I understand that claim terms are construed according to their ordinary
`
`and customary meaning as understood by one of ordinary skill in the art in view of
`
`the specification and the prosecution history pertaining to the patent.
`
`A.
`“prompting a user of the first computing device”
`62. Claim 1 recites, in part: “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
`
`19
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`

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`answering the incoming call, a message to a user of the second computing device.”
`
`APPLE-1001 at 10:6-11 (emphasis added). Read in light of the claims and
`
`specification of the ’037 patent, a POSITA would understand that “prompting a user
`
`of the first computing device” means “displaying a symbol or message to a user of
`
`the first computing device indicative of an option.”
`
`63. The specification of the ’037 Patent supports this construction of
`
`“prompting.” This construction is consistent with the plain and ordinary meaning of
`
`a “prompt” in the computing and software art. For example, the IEEE1 standards
`
`dictionary, “IEEE 100: The Authoritative Dictionary of IEEE Standards Terms,”
`
`(EX-2022) published December 2000—a scholarly, consensus-based dictionary
`
`used by computing professionals and academics worldwide—defines “prompt” as:
`
`prompt (A) (computer graphics) (software) A symbol or message
`displayed by a computer system requesting input from the user of the
`system. (B) (software) (computer graphics) To display a symbol or
`message as in definition “A.”
`
`
`1 The Institute of Electrical and Electronics Engineering (“IEEE”) is the
`
`world’s oldest and largest technical professional organization for the advancement
`
`of technology. It is best known as the leading developer of industry standards
`
`across a broad range of digital and electronic technologies. See IEEE,
`
`https://www.ieee.org (last visited June 8, 2019).
`
`
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`

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`See EX-2022 at 878 (emphasis added). Thus, a POSITA encountering the phrase
`
`“prompting a user of the first computing device” in Claim 1 of the ’037 patent
`
`would understand that the claimed method requires displaying a symbol or
`
`message to a user of the first computing device indicative of an option. Put
`
`anothe