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
`____________
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner
`
`____________
`
`Case IPR2018-01279
`Patent No. 7,844,037
`____________
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`
`Case IPR2018-01279
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ......................................................................................... 1
`I.
`II. OVERVIEW OF THE ’037 PATENT ......................................................... 2
`III. OVERVIEW OF THE PROSECUTION HISTORY OF THE
`’037 PATENT ................................................................................................. 5
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART ............................. 12
`V. CLAIM CONSTRUCTION ........................................................................ 13
`A.
`“prompting” ......................................................................................... 14
`B.
`“composing” ........................................................................................ 26
`VI. PETITIONER FAILS TO DEMONSTRATE THAT ANY OF
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ..................... 36
`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) .................................. 36
`1.
`The combination of Makela and Moran does not disclose
`“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.” ................................................................... 36
`a)
`“prompting a user of the first computing device” .......... 37
`b)
`“in response to receiving the incoming call . . .
`handle the incoming call by composing” ....................... 41
`The combination of Makela and Moran does not disclose
`“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.” .......... 51
`
`2.
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`ii
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`Case IPR2018-01279
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`B.
`
`Claims 2-14 and 16-18 .............................................................. 54
`3.
`Petitioner Fails to Establish a Motivation to Combine or
`Reasonable Expectation of Success .................................................... 56
`VII. CONCLUSION ............................................................................................ 60
`
`
`
`iii
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`EXHIBIT LIST
`
`Patent Owner’s Exhibits
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
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`2011
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`2012
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`2013
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`2014
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`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`Disclaimer in Patent Under 37 CFR 1.321(a)
`
`U.S. Patent No. 6,219,413 to Burg
`
`Declaration of Puneet Kohli
`
`Declaration of Dr. Kevin Jeffay
`
`CV of Dr. Kevin Jeffay
`
`Transcript of Dr. Narayan Mandayam’s Deposition
`
`U.S. Patent No. 8,737,578
`
`Prosecution History for ’578 Patent
`
`Apple’s Invalidity Contentions
`
`Exhibit E to Apple’s Invalidity Contentions
`
`U.S. Pub. No. 2004/0127263 to Vegh
`
`U.S. Patent No. 6,484,027 to Mauney
`
`U.S. Patent No. 6,253,075 to Beghtol
`
`U.S. Pub. No. 2002/0132608 to Shinohara
`
`U.S. Pub. No. 2004/0185885 to Kock
`
`U.S. Pub. No. 2002/0084549 to Yang
`
`EP 1263201 A2 to Hoersten
`
`Sascha Segan, “Coming Attractions-Nokia’s Latest Camera Phone,”
`PCMag at 22
`Nokia 6682 User Guide (May 4, 2005) (“Nokia 6682 User Guide”)
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`iv
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`Case IPR2018-01279
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`2020
`
`2022
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`Sascha Segan, “Nokia 6682,” PCMag (June 27, 2005)
`
`“IEEE 100: The Authoritative Dictionary of IEEE Standards Terms”
`(7th ed. 2000)
`
`2023
`
`Merriam-Webster’s Collegiate Dictionary (10th ed. 1997)
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`
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`v
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`Case IPR2018-01279
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`Arendi S.A.R.L. v. Google LLC,
`882 F.3d 1132 (Fed. Cir. 2018) ........................................................ 22, 23, 26, 52
`Baker Hughes Inc. v. LiquidPower Specialty Prods. Inc.,
`No. IPR2016-01905, 10 (P.T.A.B. Apr. 10, 2017) ............................................. 13
`Creative Integrated Sys., Inc. v. Nintendo of Am., Inc.,
`526 F. App’x 927 (Fed. Cir. 2013) ..................................................................... 31
`Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 13
`Curtiss-Wright Flow Control Corp. v. Velan, Inc.,
`438 F.3d 1374 (Fed. Cir. 2006) .......................................................................... 30
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 60
`In re Smith Int’l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017) .......................................................................... 13
`In re Translogic Tech., Inc.,
`504 F.3d 1250 (Fed. Cir. 2007) .......................................................................... 13
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 57
`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015) .......................................................................... 31
`Trustees of Columbia Univ. in City of New York v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) .................................................................... 14, 31
`STATUTES
`35 USC § 103(a) .............................................................................................. 6, 8, 10
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`
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`I.
`
`INTRODUCTION
`The Board should confirm the patentability of Claims 1-14 and 16-18 (“the
`
`challenged claims”) of U.S. Patent No. 7,844,037 (APPLE-1001, “the ’037 Patent”).
`
`Petitioner has not demonstrated that the challenged claims are unpatentable for at
`
`least the following reasons.
`
`First, none of the cited prior art—U.S. Patent No. 6,301,338 (APPLE-1004,
`
`“Makela”), U.S. Publication No. 2003/0104827 (APPLE-1006, “Moran”), U.S.
`
`Publication No. 2004/0203956 (APPLE-1007, “Tsampalis”), or U.S. Patent
`
`No. 6,456,696 (APPLE-1008, “Fargano”)—discloses three critical limitations of
`
`the challenged claims: “prompting a user of the first computing device to enter user
`
`input,” “composing, while not answering the incoming call, a message to a user of
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`the second computing device,” and “automatically addressing the message to the
`
`second computing device using the message identifier determined from the incoming
`
`call,” as recited in independent Claim 1—on which Claims 2-14 and 16-18 depend.
`
`For this reason alone, the Board should confirm the patentability of the challenged
`
`claims.
`
`Second, Petitioner’s obviousness grounds fail to establish a reason to combine
`
`or modify references as the Petitioner proposes and fail to set forth how such
`
`combinations would be achieved. Petitioner’s proposed combinations are the result
`
`of impermissible hindsight. Moreover, Petitioner relies on the conclusory testimony
`
`1
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`
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`of Dr. Mandayam, who considered himself to be a person of “extraordinary” skill at
`
`the time of the invention, not a person of ordinary skill. See Transcript of Dr.
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`Case IPR2018-01279
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`Narayan Mandayam’s Deposition (EX-2006) at 27:21-28:25.
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`II. OVERVIEW OF THE ’037 PATENT
`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;
`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.
`APPLE-1001 at 9:63-10:15.
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`According to Claim 1, while an incoming call is being received, a message
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`identifier associated with the calling device is determined, and the user of the called
`
`device is prompted to enter user input that instructs the device that the call will be
`
`handled by the user composing a message—as opposed to, say, the user answering
`
`the call or declining the call. See id.; see also Declaration of Dr. Kevin Jeffay (EX-
`
`2004) at ¶ 60. Claim 1 further requires that when the user selects the option of
`
`composing a message, the message is automatically addressed using the determined
`
`message identifier of the caller. See APPLE-1001 at 10:12-15; EX-2004 at ¶ 60.
`
`As discussed in Section V, the intrinsic record establishes that the “prompting
`
`a user of the first computing device” means displaying a symbol or message to the
`
`user of the first computing device indicative of an option [to enter user input]. See,
`
`e.g., id. at 5:26-34 (“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.”) (emphasis added); id. at 9:5-7 (“The call notification
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`606 may also present options as to whether the user can answer the call, decline the call,
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`and/or message reply the call.”).
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`In addition, as discussed in Section V, the intrinsic record establishes that in
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`response to receiving a call, the user input instructs the device that the call will be
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`handled by the user manually composing a message—as opposed to, say, the user
`
`inserting or selecting a preformulated or precomposed message. See, e.g., id. at 7:39-
`
`42 (“For example, the user may be provided the options of answering the call,
`
`declining the call, or sending a message responding to the call.”) (emphasis added);
`
`id. at 4:1-3 (“For example, the user of the receiving device 110 may insert or
`
`compose a text message . . . the user may send an image that communicates
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`information . . . the user may include audio in the message response 122.”)
`
`(emphasis added); id. at 9:5-7 (“The call notification 606 may also present options
`
`as to whether the user can answer the call, decline the call, and/or message reply
`
`the call.”) (emphasis added), 6:54-7:11.
`
`The specification makes it clear that the claimed composing is done by the
`
`user by manually providing message content. See, e.g., id. at 6:54-7:11 (“Input
`
`mechanisms 340 may enable the user to enter message input 342. . . . When used
`
`to compose message content 242 (FIG. 2), input mechanisms 340 may have any
`
`one of a variety of forms. For example, input mechanisms 340 may correspond to
`
`a set of hard or soft keys . . . arranged in the form of a QWERTY keyboard or other
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`layout. . . . As another example, input mechanism 340 may correspond to a
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`microphone, so that the message input is a voice file. Still further, the input
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`mechanism 340 may correspond to a camera or other image capturing device, which
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`captures an image for the message response 354.”) (emphasis added).
`
`Put simply, Claim 1 and Claims 2-14 and 16-18 that depend on Claim 1
`
`require that in response to receiving an incoming call and while not answering the
`
`incoming call, displaying a symbol or message to a user of the first computing device
`
`indicative of an option to enter user input that instructs the device that the call will
`
`be handled by the user manually providing message content.
`
`III. OVERVIEW OF THE PROSECUTION HISTORY OF THE
`’037 PATENT
`The ’037 Patent issued on November 30, 2010, from U.S. Patent Application
`
`No. 11/200,511 (“the ’511 Application”), filed August 8, 2005, after four office
`
`actions, involving fifty-three (53) references cited by the Examiner, as well as claim
`
`amendments and arguments in response. See APPLE-1002 (File History of the
`
`’037 Patent). Petitioner, however, appears to overlook much of the relevant file
`
`history. In many instances, the Examiner considered prior art references that
`
`disclose substantially similar subject matter as the references cited by Petitioner. See
`
`id. at 219 (February 27, 2009, List of References cited by Examiner), 222 (February
`
`27, 2009, List of References cited by Applicant and considered by Examiner), 188
`
`(July 24, 2009, List of References cited by Examiner), 24 (October 21, 2010, List of
`
`References cited by Examiner), 71-72 (June 17, 2010, List of References cited by
`
`Examiner), 75 (June 17, 2010, List of References cited by Applicant and considered
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`by Examiner), 25 (October 20, 2010, List of References cited by Applicant and
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`considered by Examiner). Most crucially, Petitioner overlooks the Office Action
`
`dated July 24, 2009, in which the Examiner rejected the then pending claims “under
`
`35 USC § 103(a) as being unpatentable over Fostick et al. (US 2002/087794 A1) in
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`view of Brown et al. (US 2004/0203794 A1).” Id. at 180 (July 24, 2009, Non-Final
`
`Rejection). In response, Applicant amended the claims and noted:
`
`The amended Claims recite limitations that are not disclosed, taught, or
`suggested by Fostick or Brown, either individually or in combination.
`Claim 1
`Claim 1 recites:
`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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`answering the incoming call, a message to a user of the
`second computing device; and
`input, automatically
`responsive
`to
`the user
`composing the message to the second computing device
`using
`the message
`identifier determined from
`the
`incoming call.
`At least the above-underlined portions of Claim 1 are not disclosed,
`taught, or suggested by Fostick or Brown, either individually or in
`combination.
`Id. at 165-166 (November 25, 2009, Amendment and Response) (emphasis in
`
`original). Applicant then explained the approaches of Fostick and Brown as follows:
`
`The approach of Fostick
`Fostick is directed towards improved management of SMS messages,
`and in particular, automatic replies, forwarding, saving, and deleting of
`SMS messages on a SMS enabled device (see Abstract). Importantly,
`Fostick lacks any teaching or suggestion of initiating a SMS message
`in response to receiving an incoming phone call. Indeed, the Office
`acknowledges that Fostick fails to disclose a reply message to an
`incoming call (see Office Action).
`The approach of Brown
`Brown is directed towards providing an automatic response to a
`telephone call (see title). Brown is cited to show an approach where, in
`response to answering a phone call, a message is automatically played
`within the voice-exchange session of the phone call, and then the call
`is disconnected (see step 210 of FIG. 2, step 210 of FIG. 3, step 510 of
`FIG. 5, step 510 of FIG. 6, and paragraph 27).
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`Id. at 166 (emphasis in original).
`
`Accordingly, Applicant pointed out that in Fostick, there was no disclosure of
`
`composing a message in response to receiving an incoming call, and in Brown, the
`
`voice message is played within the voice-exchange session, and the call is
`
`disconnected only after the message is played. See id. In contrast, according to
`
`Claim 1, the claimed invention requires the message to be composed after receiving
`
`an incoming call and without answering the incoming call at all. See EX-2004 at
`
`¶ 60. Applicant further distinguished its claimed invention from Fostick and Brown
`
`as follows.
`
`Claim 1 recites:
`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
`This element is not suggested by Fostick, because, as acknowledged by
`the Office, Fostick fails to disclose sending a reply message to an
`incoming call.
`Moreover, this element is not suggested by the cited portion of Brown,
`because the cited portion of Brown discloses an approach where a
`message is transmitted over the voicepath of the incoming call (see
`step 210 of FIG. 2, step 210 of FIG. 3, step 510 of FIG. 5, step 510 of
`FIG. 6). Consequently, the cited portion of Brown teaches away from
`the express limitation of handling “the incoming call by composing,
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`while not answering the incoming call, a message to a user of the
`second computing device.”
`Brown does disclose another approach where a text message is
`transmitted to a caller in response to a call from the caller being sent to
`voicemail or ignored (see steps 406 and 408 of FIG. 4). However,
`Brown teaches:
`In block 402 of FIG. 4, the user requests that incoming telephone
`calls be automatically responded to with a text response. As in
`block 302, the user may request this function by actuating a key
`or key sequence that is pre-programmed to start the auto-
`response function. For example, wireless phones 100 with
`integral auto-response modules 108 may also include one or
`more auto-response buttons 118 that would start the auto-
`response function until further notice (see paragraph 30 of
`Brown, emphasis added).
`Such an approach teaches away from the express limitations of Claim 1,
`as Claim 1 requires “(a) 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 . . .” Instead of showing the features of this
`element, Brown discloses an approach where the user is not prompted
`to respond to an incoming call, since the user has previously instructed
`that all incoming calls be automatically responded to by a text message.
`Thus, in the approach of Brown, there is no action taught or
`suggested that is analogous to requesting user input in response to an
`incoming call, let alone, ‘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
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`composing, while not answering the incoming call, a message to a user
`of the second computing device:’ as required by Claim 1.
`APPLE-1002 at 166-168 (underlined emphasis in original, bolded emphasis added).
`
`Accordingly, in addition to distinguishing over Fostick by highlighting that
`
`Fostick failed to disclose composing a message in response to an incoming call,
`
`Applicant distinguished over Brown by pointing out that in Brown the messages
`
`were either (i) sent over the same voicepath as the incoming call, and/or (ii) the
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`messages were sent without requesting user input in response to an incoming call.
`
`See id. In the subsequent office action, the Examiner raised no further objections
`
`based on the combination of Fostick and Brown. See id. at 141-150 (January 26,
`
`2010, Non-Final Rejection). Applicant, thus, successfully distinguished over Brown
`
`and Fostick by pointing out that there was no teaching, disclosure, or suggestion in
`
`Brown or Fostick of “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
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`to handle the incoming call by composing, while not answering the incoming call, a
`
`message to a user of the second computing device,” as required by Claim 1. Id. at
`
`156-172 (November 25, 2009, Amendment and Response).
`
`The Examiner did, however, reject the claims in the subsequent office action
`
`based on Fostick and U.S. Patent No. 6,219,413 (“Burg”). See id. at 144 (January 26,
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`2010, Non-Final Rejection); EX-2002 (Burg). Applicant successfully distinguished
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`over Fostick and Burg by amending the claims and pointing out that the cited art did
`
`not disclose, teach, or suggest the following:
`
`With regard to Claim 1, it states:
`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-1002 at 87-90 (April 27, 2010, Amendment and Response). Applicant
`
`further explained:
`
`In particular, Applicant notes that the Examiner has correctly identified
`that Fostick’s disclosure does not provide for an SMS response to an
`“incoming call.” Moreover, it is Applicant’s contention that Burg does
`not teach “responsive to receiving the incoming call and the user
`entering the user input, automatically addressing the message . . .” In
`fact, Burg teaches away. Column 9, line 28-35 of Burg provides that
`the caller-ID information is provided to the called party in order to
`enable “a more specific response,” but the disclosure does not provide
`for “automatically addressing the message.” Burg does not address a
`message “using the message identifier determined from the incoming
`call.” Accordingly, Applicant submits an embodiment of claim 1
`recites features which are not disclosed or suggested in the cited art.
`Id. at 87-88.
`
`Applicant, therefore, reasoned that unlike the prior art, the message is
`
`automatically addressed in the claimed invention. Id. Accordingly, the Examiner
`
`noted the following “Reasons for Allowance” in the Notice of Allowance:
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`Regarding claims 1, 19 and 30, in combination with other limitations
`of the claims, the prior art of record fails to disclose or specifically
`suggested 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.
`Id. at 35 (September 21, 2010, Notice of Allowability).
`
`As discussed, Applicant successfully distinguished the claimed invention over
`
`the prior art—including Brown, Fostick, and Burg—by relying on the limitations
`
`related to “prompting a user . . . by composing” and “automatically addressing,” and
`
`accordingly, these limitations are in independent Claim 1 of the ’037 Patent.
`
`APPLE-1001 at 9:63-10:15.
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner asserts that a POSA would have “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 “a Bachelor’s Degree (or higher degree) in an academic area emphasizing
`
`electrical engineering, computer engineering, or computer science and having two
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`Case IPR2018-01279
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`or more years of experience in wireless communication and networking systems.”
`
`Paper No. 2 (Petition, hereinafter “Pet.”) at 4. However, as discussed below, even
`
`under Petitioner’s definition, Petitioner has failed to show that the Challenged
`
`Claims are invalid.
`
`V. CLAIM CONSTRUCTION
`The claim construction standard that applies in this proceeding is the “broadest
`
`reasonable construction in light of the specification of the patent.” 37 C.F.R. §
`
`42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144-45 (2016).
`
`“Under that standard, claim terms are given their ordinary and customary meaning in
`
`view of the specification, as would be understood by one of ordinary skill in the art at
`
`the time of the invention.” Baker Hughes Inc. v. LiquidPower Specialty Prods. Inc.,
`
`No. IPR2016-01905, 10 (P.T.A.B. Apr. 10, 2017) (citing In re Translogic Tech., Inc.,
`
`504 F.3d 1250, 1257 (Fed. Cir. 2007)).
`
`“The correct inquiry in giving a claim term its broadest reasonable
`
`interpretation in light of the specification is not whether the specification proscribes or
`
`precludes some broad reading of the claim term adopted by the Examiner. And it is not
`
`simply an interpretation that is not inconsistent with the specification.” In re Smith Int'l,
`
`Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017). Rather, “[i]t is an interpretation that
`
`corresponds with what and how the inventor describes his invention in the
`
`specification, i.e., an interpretation that is ‘consistent with the specification.’” Id.; see
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`also Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359,
`
`1364 (Fed. Cir. 2016) (“[A] claim term may be clearly redefined without an explicit
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`statement of redefinition” and “[e]ven when guidance is not provided in explicit
`
`definitional format, the specification may define claim terms by implication such that
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`the meaning may be found in or ascertained by a reading of the patent documents.”);
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`id. (“We have also found that a patent applicant need not expressly state ‘my invention
`
`does not include X’ to indicate his exclusion of X from the scope of his patent because
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`the patentee's choice of preferred embodiments can shed light on the intended scope of
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`the claims.”).
`
`A.
`“prompting”
`Independent Claim 1, and its dependent Claims 2-18, recites, in part: “in
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`response to receiving the incoming call, prompting a user of the first computing device
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`to enter user input that instructs the first computing device to handle the incoming
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`call by composing, while not answering the incoming call, a message to a user of the
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`second computing device.” APPLE-1001 at 10:6-11 (emphasis added). Consistent
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`with the intrinsic record and the plain meaning of the term, a POSITA would understand
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`“prompting a user of the first computing device” to mean “displaying a symbol or
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`message to a user of the first computing device indicative of an option.” See EX-
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`2004 at ¶ 62; see also EX-2022, (“IEEE 100: The Authoritative Dictionary of IEEE
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`Standards Terms,” published December 2000, defining prompt as: “(A) (computer
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`14
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`Case IPR2018-01279
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`graphics) (software) A symbol or message displayed by a computer system
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`requesting input from the user of the system. (B) (software) (computer graphics) To
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`display a symbol or message as in definition ‘A.’”) (emphasis added). Put simply,
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`“prompting a user of the first computing device” requires the display of a symbol or
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`message that expressly communicates that (1) input is desired or possible, and (2)
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`that the user has an option for their response. See EX-2004 at ¶ 63.
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`When considered as a whole, the specification of the ’037 Patent compels such
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`a construction. First, the specification teaches the following:
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`[A] computing device 200 may receive an incoming call 204, which is handled
`by the phone application 210. At an initial time, the incoming call 204 may
`include call data 212, which is identified by the phone application 210. In one
`embodiment, call data 212 includes identification information of the caller (e.g.
`"Caller ID" information). As such, call data 212 may include (i) a name of the
`caller, and/or (ii) a phone number used by the caller. The phone application
`210 may identify call data 212 from the incoming call 204 while causing
`transmission of audio rings/chimes, rendering of image data containing the
`Caller ID information on a display of the device, and/or other incoming call
`notification (e.g., vibration).
`APPLE-1001 at 4:60-5:5 (emphasis added). From this, it is apparent that call data
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`includes identification information of the caller, which includes (i) a name of the caller
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`and/or (ii) a phone number used by the caller. See id.; see also id. at 9:3-5. In addition,
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`a user may be notified of the incoming call by audio rings/chimes, image data
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`15
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`Case IPR2018-01279
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`containing the caller ID information on a display of the device, vibrations, etc. See id.
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`at 4:60-5:5.
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`The ’037 Patent differentiates between a prompt and call data. See EX-2004 at
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`¶ 67. The specification specifically notes that “[t]he phone application 210, message
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`response module 230, or some other component may prompt the user to message
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`respond to a caller in response to receipt of call data 202.” APPLE-1001 at 5:26-29
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`(emphasis added). Not only does the specification differentiate between a prompt and
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`call data (including Caller ID, caller name, and/or caller number), the specification also
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`differentiates between a prompt and a ring (and by extension—as discussed above—
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`other similar notifications such as chimes, image data containing the caller ID
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`information on a display of the device, and vibrations.). See EX-2004 at ¶ 67. In
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`particular, the specification notes that “[t]he prompt may occur shortly after the
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`incoming call 204 is received, such as with or before the first “ring” generated on the
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`computing device 200 for the incoming call.” APPLE-1001 at 5:29-31 (emphasis
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`added).
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`In addition to differentiating a prompt from call data (including Caller ID, caller
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`name, and/or caller number) and notifications such as audio rings/chimes, image data
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`containing the caller ID information on a display of the device, and vibrations, the
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`specification informs a POSITA that in accordance with the plain and ordinary meaning
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`of the term, a prompt is a symbol or message indicative of an option. See EX-2004 at
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`16
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`
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`¶ 67. The specification does so by expressly providing the following examples of a
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`prompt:
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`Case IPR2018-01279
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` “The phone application 210, message response module 230, or some other
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`component may prompt the user to message respond to a caller in response to
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`receipt of call data 202. The prompt may occur shortly after the incoming call
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`204 is received, such as with or before the first “ring” generated on the computing
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`device 200 for the incoming call. For example, the user may be able to elect
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`message response as one option along with other options of answering or
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`declining the incoming call 204.” APPLE-1001 at 5:26-34 (emphasis added).
`
` “The call notification 606 may also present options as to whether the user can
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`answer the call, decline the call, and/or message reply the call.” Id. at 9:5-7
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`(emphasis added).
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` “In one embodiment, the computing device identifies a phone number of a
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`caller of the incoming call. The computing device may prompt the user of the
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`computing device to generate a message reply to the incoming phone call.”
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`Id. at 2:42-44 (emphasis added).
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` “According to one embodiment, reply options are provided to the user in step
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`430. For example, the user may be provided the options of answering the call,
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`declining
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`the call, or message responding
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`to
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`the call. Under one
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`implementation, a graphic-user interface may be generated to enable the user
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`Case IPR2018-01279
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`to make the decision on how the call should be answered.” APPLE-1
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