IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`David Champlin, et al.
`In re Patent of:
`7,844,037 Attorney Docket No.: 39521-0050IP1
`U.S. Patent No.:
`November 30, 2010
`
`Issue Date:
`Appl. Serial No.: 11/200,511
`
`Filing Date:
`August 8, 2005
`
`Title:
`METHOD AND DEVICE FOR ENABLING MESSAGE
`RESPONSES TO INCOMING PHONE CALLS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,844,037 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`SUMMARY OF THE ’037 PATENT ............................................................. 1 
`A.  Brief Description ....................................................................................... 1 
`B.  Prosecution History of the ’037 Patent ..................................................... 2 
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 2 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 2 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 2 
`C.  Level of Ordinary Skill in the Art ............................................................. 4 
`D.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 5 
`1. 
`“voice-exchange session” (claim 1) ................................................ 5 
`2. 
`“instant message” (claims 3, 4, 8, 12, 13, and 22) .......................... 5 
`3. 
`“programmatically” (claims 12, 17, 19, and 22) ............................. 6 
`4. 
`“automatically” (claims 1, 3, 4, 11, 14, and 17) ............................. 6 
`5. 
`“one or more communication components” (claim 19) .................. 7 
`6. 
`“one or more wireless communication ports” (claim 22) ............... 8 
`III.  THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 9 
`A.  [GROUND 1A] – Claims 1-8, 12-14, and 16-22 are obvious over
`Mäkelä in view of Moran .......................................................................... 9 
`1.  Overview of Mäkelä ........................................................................ 9 
`2.  Overview of Moran ....................................................................... 10 
`3. 
`Combination of Mäkelä and Moran .............................................. 11 
`4. 
`Reasons to combine Mäkelä and Moran ....................................... 11 
`B.  [GROUND 1B] – Claims 7-11, 19-22 and 24-25 are obvious over
`Mäkelä and Moran in view of Tsampalis ............................................... 42 
`1.  Overview of Tsampalis ................................................................. 42 
`2. 
`Combination of Mäkelä, Moran, and Tsampalis ........................... 43 
`3. 
`Reasons to combine Mäkelä, Moran, and Tsampalis .................... 44 
`C.  [GROUND 1C] – Claim 23 is obvious over Mäkelä and Moran in view
`of Fargano ............................................................................................... 59 
`1.  Overview of Fargano ..................................................................... 59 
`2. 
`Combination of Mäkelä, Moran, and Fargano .............................. 60 
`3. 
`Reasons to combine Mäkelä, Moran, and Fargano ....................... 60 
`IV.  PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 62 
`V. 
`CONCLUSION .............................................................................................. 63 
`VI.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 63 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 63 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 63 
`
`i
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 63 
`D.  Service Information ................................................................................ 64 
`
`
`
`
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`
`ii
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 7,844,037 to Champlin, et al. (“the ’037
`patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’037 patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Narayan Mandayam
`
`APPLE-1004
`
`U.S. Patent No. 6,301,338 to Mäkelä (“Mäkelä”)
`
`APPLE-1005
`
`U.S. Pub. No. 20040203794 to Brown (“Brown”)
`
`APPLE-1006
`
`U.S. Pub. No. 20030104827 to Moran (“Moran”)
`
`APPLE-1007
`
`U.S. Pub. No. 20040203956 to Tsampalis (“Tsampalis”)
`
`APPLE-1008
`
`U.S. Patent No. 6,456,696 to Fargano (“Fargano”)
`
`APPLE-1009
`
`U.S. Patent No. 6,996,217 to Goldman (“Goldman”)
`
`APPLE-1010
`
`U.S. Pub. No. 20020065065 to Lunsford (“Lunsford”)
`
`APPLE-1011
`
`U.S. Patent No. 7,468,934 to Janik (“Janik”)
`
`APPLE-1012
`
`U.S. Patent No. 6,868,272 to Berkowitz (“Berkowitz”)
`
`APPLE-1013
`
`U.S. Pub. No. 20070133775 to Winkler (“Winkler”)
`
`APPLE-1014
`
`U.S. Patent No. 6,483,899 to Agraharam (“Agraharam”)
`
`
`
`
`
`iii
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`

`

`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-14, and 16-25
`
`(“the Challenged Claims”) of U.S. Patent No. 7,844,037 (“the ’037 patent”). As
`
`explained in this petition, there exists a reasonable likelihood that Apple will
`
`prevail with respect to at least one of the Challenged Claims.
`
`The Challenged Claims are unpatentable based on teachings set forth in at
`
`least the references presented in this petition. Apple respectfully submits that an
`
`IPR should be instituted, and that the Challenged Claims should be canceled as
`
`unpatentable.
`
`I.
`
`SUMMARY OF THE ’037 PATENT
`A. Brief Description
`Generally, the ’037 patent purportedly provides a method for enabling
`
`message responses to incoming phone calls. APPLE-1001, Abstract. In particular,
`
`the patent describes that “[i]n response to receiving [an] incoming call, [a]
`
`computing device” (e.g., a mobile phone) “may identify or determine a message
`
`identifier of the other computing device” that is attempting to initiate the call. Id.
`
`This “message identifier is determined based at least in part on data provided with
`
`the incoming communication.” Id. The ’037 patent describes that the “computing
`
`device may programmatically address a message to the other computing device
`
`using the message identifier determined from the incoming communication.” Id.
`
`1
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`

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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`B.
`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. See APPLE-1002.
`
`The patent does not claim priority to any earlier application. Thus, the earliest
`
`proclaimed priority date of the claims of the ’037 patent is August 8, 2005.
`
`After multiple rounds of Office Actions and amendments to the claims, the
`
`Office ultimately allowed the case and stated that the prior art of record failed to
`
`disclose the “prompting a user” and “automatically addressing the message” steps
`
`of the claimed method. See APPLE-1002, 35. As described in detail below, these
`
`claim limitations, and other limitations recited in the claims of the ’037 patent, are
`
`taught by the cited references.
`
`II. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Apple certifies that the ’037 patent is available for IPR. The present petition
`
`is being filed within one year of service of a complaint against Apple in the
`
`Southern District of California. Apple is not barred or estopped from requesting
`
`this review challenging the Challenged Claims on the below-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`Apple requests an IPR of the Challenged Claims on the grounds set forth in
`
`the table below, and requests that each of the Challenged Claims be found
`
`2
`
`

`

`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`unpatentable. An explanation of how these claims are unpatentable under the
`
`statutory grounds identified below is provided in Section III, infra, which indicates
`
`where each element can be found in the cited prior art, and the relevance of that
`
`prior art. Additional explanation and support for each ground of rejection is set
`
`forth in APPLE-1003, the Declaration of Dr. Narayan Mandayam, referenced
`
`throughout this Petition.
`
`Ground
`Ground 1A
`Ground 1B
`
`Ground 1C
`
`Basis for Rejection
`’037 Patent Claims
`1-8, 12-14, 16-22
`Obvious over Mäkelä in view of Moran
`7-11, 19-22, 24-25 Obvious over Mäkelä in view of Moran
`and Tsampalis
`Obvious over Mäkelä in view of Moran
`and Fargano
`
`23
`
`
`
`Mäkelä (APPLE-1004) qualifies as prior art at least under 35 U.S.C §
`
`102(b). Specifically, Mäkelä issued on October 9, 2001, more than one year before
`
`the ’037 patent’s earliest proclaimed priority date of August 8, 2005 (hereinafter
`
`the “Critical Date”).
`
`Moran (APPLE-1006) qualifies as prior art at least under 35 U.S.C § 102(b).
`
`Specifically, Moran published on June 5, 2003, more than one year before the
`
`Critical Date.
`
`Tsampalis (APPLE-1007) qualifies as prior art at least under 35 U.S.C §§
`
`102(e) and 102(a). Specifically, Tsampalis qualifies under 35 U.S.C. § 102(e)
`
`3
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`

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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`based on its filing date of December 31, 2002, which is over two years before the
`
`Critical Date. Further, Tsampalis qualifies under 35 U.S.C. § 102(a) based on its
`
`publication date of October 14, 2004, which is over nine months before the Critical
`
`Date.
`
`Fargano (APPLE-1008) qualifies as prior art at least under 35 U.S.C §
`
`102(b). Specifically, Fargano issued on September 24, 2002, more than one year
`
`before the Critical Date.
`
`C. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art as of the Critical Date of the ’037 patent
`
`(hereinafter 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 a concentration in wireless communication and networking systems.
`
`Alternatively, a 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. Additional 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. See APPLE-1003, ¶13.
`
`4
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`D. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`Unless otherwise noted below, Petitioner submits that all terms should be
`
`given their plain meaning, and reserves the right to respond to any constructions
`
`that may later be offered by the Patent Owner or adopted by the Board. Petitioner
`
`is not waiving any arguments concerning indefiniteness or claim scope that may be
`
`raised in litigation.
`
`1.
`“voice-exchange session” (claim 1)
`The ’037 patent states that a “voice-exchange includes any data transfer
`
`method in which a user’s speech or utterance is transmitted across a network to the
`
`location of another device or user” and that it includes transmission “in real-time
`
`(e.g. instantaneous) or near real-time (e.g. less than three seconds).” APPLE-1001,
`
`2:47-52. The ’037 patent further states that “telephone calls are just one example
`
`of a voice-exchange session.” Id., 4:27-28 (emphasis added). Thus, the term
`
`“voice-exchange session,” when construed in light of the specification of the ’037
`
`patent, means “a data transfer in which a user’s speech or utterance is transmitted
`
`across a network to the location of another device or user in real-time (e.g.,
`
`instantaneous) or near real-time (e.g., less than three seconds), such as a telephone
`
`call.” See id., 2:47-52, 4:27-28; APPLE-1003, ¶¶44-45.
`
`2.
` “instant message” (claims 3, 4, 8, 12, 13, and 22)
`The ’037 patent states “[a]s used herein, the term ‘instant message’ or
`
`‘instant messaging’ means messages that when transmitted to a recipient, [are]
`
`5
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`rendered on a device of the recipient immediately, nearly immediately, or
`
`alternatively without user-action.” APPLE-1001, 2:60-64. The ’037 patent
`
`indicates that one example of an “instant message” is a “Short Message Service” or
`
`“SMS” text message. See APPLE-1001, claims 3 and 4. Thus, the term “instant
`
`message” should be construed light of the specification of the ’037 patent to mean
`
`“a message that when transmitted to a recipient, are rendered on a device of the
`
`recipient immediately, nearly immediately, or alternatively without user-action,
`
`such as a ‘Short Message Service’ or ‘SMS’ text message.” See APPLE-1001,
`
`2:60-64, claims 3, 4; APPLE-1003, ¶46.
`
`3.
`“programmatically” (claims 12, 17, 19, and 22)
`The ’037 patent states that “[p]rogrammatically means through the use of
`
`code, or computer-executable instructions.” APPLE-1001, 3:18-19 (emphasis
`
`added). Thus, the term “programmatically” should be construed in light of the
`
`specification of the ’037 patent to mean “through the use of code, or computer-
`
`executable instructions.” Id.; APPLE-1003, ¶47;
`
`4.
`“automatically” (claims 1, 3, 4, 11, 14, and 17)
`The ’037 patent states that a “message may be transmitted automatically in
`
`response to an event, such [as] upon completion of the message” or
`
`“[a]lternatively, the message may be transmitted through manual input from the
`
`user.” APPLE-1001, 8:5-9 (emphasis added). Based on the occurrence of “manual
`
`6
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`input” being presented in the ’037 patent as an alternative to the message being
`
`transmitted “automatically,” the term “automatically” should be construed in light
`
`of the specification to mean “performed without user input.” See id.; APPLE-
`
`1003, ¶48.
`
`5.
`“one or more communication components” (claim 19)
`Claim 19 of the ’037 patent recites “one or more communication
`
`components, at a first computing device, for handling voice and messaging
`
`communications over wireless networks.” The specification of the ’037 patent
`
`states:
`
`components 318 may
`communication
`The
`configure computing device 300 to transmit and receive
`communications on Code Division Multiple Access
`(CDMA) networks, Global System
`for Mobile
`Communications (GSM) networks, and/ or other types of
`cellular networks. The communication components 318
`may include a Subscriber Identity Module (SIM) card, an
`input/output controller, a radio frequency transceiver, and
`an input/output controller. Combined, communication
`components 318 may enable voice-exchange, as well as
`text and other kinds of message data exchanges.
`
`APPLE-1001, 6:35-44 (emphasis added). Here, the ’037 patent expressly
`
`identifies a “radio frequency transceiver” as one example of a communication
`
`7
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`component. See id., 6:41. Accordingly, the term “communication component”
`
`should be construed in light of the specification to mean “a component that
`
`configures a computing device to transmit and receive communications from
`
`wireless networks, such as a radio frequency (RF) transceiver.” See APPLE-1001,
`
`6:35-44, 6:41; APPLE-1003, ¶¶49-50.
`
`6.
`
`“one or more wireless communication ports” (claim
`22)
`Claim 22 of the ’037 patent recites “one or more wireless communication
`
`ports that communicate with the one or more processors to enable the device to
`
`handle both voice and messaging communications over one or more wireless
`
`networks.” APPLE-1001, claim 22 (emphasis added). The specification of the
`
`’037 patent does not include any explicit mention of wireless communication ports,
`
`but a POSITA as of the Critical Date would have understood a wireless
`
`communication port to be a component that allows communication on a wireless
`
`network, such as a radio frequency (RF) transceiver. APPLE-1003, ¶51; see
`
`APPLE-1010, ¶0028 (“a wireless port, or transceiver”); APPLE-1012, 3:63-64
`
`(“Radio transceivers include radio ports and appropriate transceiver circuitry”);
`
`APPLE-1011, 18:18-19; APPLE-1001, 6:35-44. Accordingly, the term “wireless
`
`communication port” should be construed in light of the specification to mean “a
`
`component that configures a computing device to transmit and receive
`
`communications from wireless networks, such as a radio frequency (RF)
`
`8
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`

`

`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`transceiver.” APPLE-1003, ¶51; see APPLE-1010, ¶0028; APPLE-1012, 3:63-64;
`
`APPLE-1011, 18:18-19; APPLE-1001, 6:35-44.
`
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`The following analysis shows how the cited references, either alone or in
`
`combination, teach or render obvious all limitations of the Challenged Claims,
`
`thereby rendering claims 1-14, and 16-25 of the ’037 patent unpatentable. Thus, a
`
`reasonable likelihood exists that the Petitioner will prevail with respect to claims 1-
`
`14, and 16-25 of the ’037 patent.
`
`A.
`
`[GROUND 1A] – Claims 1-8, 12-14, and 16-22 are obvious
`over Mäkelä in view of Moran
`1. Overview of Mäkelä1
`Mäkelä teaches a method “for replying to a call coming to a portable
`
`terminal in a situation where the user of the portable terminal can’t answer the
`
`call[.]” APPLE-1004, Claim 1, 3:26-30. Mäkelä teaches that “in response to the
`
`incoming call, the communication device identifies the caller on the basis of an
`
`identification information included within the incoming call and sends a reply
`
`according to a selection made by the user[.]” Id., 3:30-34 (emphasis added). The
`
`
`1 Petitioner hereby expressly incorporates the entirety of the following
`
`discussions of Brown, Moran and the combination in Sections 1-4 into the
`
`element-by-element analysis of each of Grounds 2-A through 2-C, infra.
`
`9
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`“reply” may be “a voice message, an e-mail message, a facsimile, [or] an SMS
`
`message in the form of a character string. Id., 3:44-46 (emphasis added). Mäkelä
`
`states that the identification information of the caller includes an “ANI (Automatic
`
`Number Identification) or CLI (Caller Line Identity),” which includes “the
`
`telephone number of the calling party[.]” Id., 1:56-62 (emphasis added). This CLI
`
`information is extracted from the call signaling (rather than entered manually by
`
`the user), and is used to automatically address the short message response to the
`
`calling party. APPLE-1003, ¶52; see APPLE-1004, 3:38-46; see also 5:9-16.
`
`Mäkelä further teaches that this short message response “can be effected
`
`automatically or through a key command and it can be effected immediately after
`
`the call has come or with a short delay, so that the receiving party can choose
`
`between different alternative functions after having seen the telephone number of
`
`the calling party on the display of the telephone.” Id., 4:3-8 (emphasis added); see
`
`also claim 6.
`
`2. Overview of Moran
`Moran teaches a method that “enables wireless device users to send
`
`messages” such as SMS text messages, “from their devices to other wireless
`
`devices that use a different service provider than the sending device.” APPLE-
`
`1006, Abstract. Moran teaches that the “conventional” manner in which “SMS
`
`wireless message[s]” are sent involves “sending the message to the phone number
`
`10
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`of the destination wireless device.” See APPLE-1006, claim 2 (emphasis added);
`
`APPLE-1003, ¶54.
`
`3.
`Combination of Mäkelä and Moran
`In the combination, the method of Makela is modified according to the
`
`“conventional” techniques of Moran to address its SMS text message replies sent
`
`in response to incoming calls using the “phone number” of the calling party, to the
`
`extent the method described in Makela is found not to include such functionality.
`
`See APPLE-1004, Claim 1, 1:56-62, 3:26-46, 4:3-8, 5:9-16; APPLE-1006,
`
`Abstract, claim 2; APPLE-1003, ¶55.
`
`4.
`Reasons to combine Mäkelä and Moran
`A POSITA would have modified Mäkelä according to the teachings of
`
`Moran to send the SMS message to the calling party number, as taught by Moran,
`
`in order to conform Mäkelä’s operation with the conventional method of sending
`
`SMS messages described in Moran, thereby allowing Mäkelä’s communication
`
`device to interoperate with and send SMS messages using conventional wireless
`
`communications networks. APPLE-1003, ¶78; see APPLE-1006, ¶¶4-6
`
`(describing SMS as being in use on the AT&T, Sprint, and Verizon wireless
`
`networks). Such a result would have been predictable because Moran teaches a
`
`device operating in this manner. APPLE-1003, ¶78; see APPLE-1006, ¶¶4-6.
`
`Claim 1
`[1 pre] “A method for operating a first computing device”
`
`11
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`The combination of Mäkelä and Moran renders obvious a method for
`
`operating a first computing device. In particular, in the combination, Mäkelä
`
`teaches a method “for replying to a call coming to a portable terminal” (e.g., a
`
`“communication device”) “in a situation where the user of the portable terminal
`
`can’t answer the call[.]” APPLE-1004, Claim 1, 3:26-30. Mäkelä teaches that “in
`
`response to the incoming call, the communication device identifies the caller on the
`
`basis of an identification information included within the incoming call and sends a
`
`reply according to a selection made by the user[.]” Id., 3:30-34 (emphasis added).
`
`The “reply” may be “a voice message, an e-mail message, a facsimile, [or] an SMS
`
`message in the form of a character string. Id., 3:44-46 (emphasis added); APPLE-
`
`1003, ¶55.
`
`Accordingly, the method for operating the communication device to reply to
`
`incoming calls with various types of messages, as provided by the combination of
`
`Mäkelä and Moran, renders obvious “[a] method for operating a first computing
`
`device” as recited in the claim.
`
`[1a] “the method being implemented by one or more processors of the
`computing device and comprising:”
`The combination of Mäkelä and Moran renders this limitation obvious. In
`
`the combination, Mäkelä teaches that “the communication device” (the first
`
`computing device) “must have means for controlling the operation,” which are
`
`“preferably implemented as software processes that are stored to the memory
`
`12
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`means included in the communication device in a form to be performed by the
`
`microprocessor controlling its operation.” APPLE-1004, 8:22-27 (emphasis
`
`added). A POSITA would thus understand that the communication device is a
`
`computing device. APPLE-1003, ¶56; see, e.g., APPLE-1004, 8:22-27.
`
`Accordingly, the combination of Mäkelä and Moran teaches that the method
`
`of replying to incoming calls is implemented by a microprocessor of the
`
`communication device, thereby rendering obvious “the method being implemented
`
`by one or more processors of the computing device” as recited in the claim.
`
`[1b] “receiving, from a second computing device, an incoming call to initiate a
`voice-exchange session;”
`The combination of Mäkelä and Moran renders this limitation obvious.
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`receiving an incoming call to initiate a voice-exchange session from a second
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`computing device. As previously discussed, the ’037 patent defines the term
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`“voice-exchange session” to include “telephone call[s].” See Section II.D.1, supra.
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`In the combination, Mäkelä states that its method starts when “an incoming
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`call is noticed” by the communication device (first computing device). APPLE-
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`1004, 5:2-3 (emphasis added). Mäkelä also refers to this action as “receiving the
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`call.” Id., 3:22 (emphasis added). FIG. 1 from Mäkelä shows that its described
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`method begins with the communication device receiving a call:
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
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`APPLE-1004, Detail of FIG. 1 (annotated)
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`Mäkelä further teaches that the communication device is a “mobile phone,”
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`and that the received call is a telephone call, which is one example of a “voice-
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`exchange session” per the ’037 patent. See id., 6:54-7:7, 9:15-18, 3:19-26, FIG. 3;
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`Section II.D.1, supra.
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`Mäkelä also teaches that the incoming call is received from a second
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`computing device. Mäkelä states that “it is possible to judge e.g. [sic] from the
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`telephone number included in the CLI information of the calling party, if the
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`calling party has a GSM telephone.” APPLE-1004, 5:16-19 (emphasis added).
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`This passage indicates that the incoming call is received from another
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`communications device (e.g., a GSM telephone), which is a second computing
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`device. See id.; APPLE-1003, ¶60. Further, a POSITA would have understood
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`that the incoming telephone call received by the communication device of Mäkelä
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`(the first computing device) would have been generated by another communication
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`Attorney Docket No. 39521-0050IP1
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`device (a second computing device). APPLE-1003, ¶60; see, e.g., APPLE-1009,
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`FIG. 2; 5:13-16, 35-40; APPLE-1013, ¶¶ 0017, 0023; APPLE-1014, 5:58-60.
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`Accordingly, the combination of Mäkelä and Moran makes obvious that the
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`communication device receives a new telephone call generated by another
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`computing device, thereby rendering obvious “receiving, from a second computing
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`device, an incoming call to initiate a voice-exchange session” as recited in the
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`claim.
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`[1c] “in response to receiving the incoming call, determining a message
`identifier associated with the second computing device wherein the message
`identifier is determined based at least in part on data provided with the
`incoming call”
`The combination of Mäkelä and Moran renders this claim limitation
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`obvious. In the combination, Mäkelä states that the communication device (the
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`first computing device) “identifies the caller on the basis of an identification
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`information included within the incoming call.” APPLE-1004, 3:30-34 (emphasis
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`added). This identification information (the message identifier) includes an “ANI
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`(Automatic Number Identification) or CLI (Caller Line Identity),” which includes
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`“the telephone number of the calling party[.]” Id., 1:56-62 (emphasis added). This
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`disclosure by Mäkelä is consistent with disclosure within the ’037 patent, which
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`identifies one example of a message identifier as a phone number, such as the
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`telephone number of the calling party. See APPLE-1001, claim 5 (“wherein… the
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`message identifier is a phone number”); APPLE-1003, ¶61.
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`Attorney Docket No. 39521-0050IP1
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`Accordingly, determining the telephone number of the calling party based on
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`information transmitted through the telephone network with the incoming call, as
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`contemplated by the combination of Mäkelä and Moran, renders obvious “in
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`response to receiving the incoming call, determining a message identifier
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`associated with the second computing device wherein the message identifier is
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`determined based at least in part on data provided with the incoming call,” as
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`recited in the claim.
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`[1d] “in response to receiving the incoming call, prompting a user of the first
`computing device to enter user input that instructs the first computing device
`to handle the incoming call by composing, while not answering the incoming
`call, a message to a user of the second computing device; and”
`The combination of Mäkelä and Moran renders this claim limitation
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`obvious. In the combination, Mäkelä states that “in response to the incoming call,
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`the communication device … sends a reply according to a selection made by the
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`user[.]” APPLE-1004, 3:30-34 (emphasis added). Mäkelä further teaches that
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`“[t]ransmission of a short message” (e.g., an SMS text message) “can be effected
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`automatically or through a key command” (user input) “and it can be effected
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`immediately after the call has come or with a short delay, so that the receiving
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`party can choose between different alternative functions after having seen the
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`telephone number of the calling party on the display of the telephone.” Id., 4:3-8
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`(emphasis added); see also claim 6; APPLE-1003, ¶62.
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`Mäkelä further teaches that the “short message” sent in response to the user
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`input is sent “in a situation wherein the user of the portable terminal does not
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`answer the” incoming call. See APPLE-1004, claim 27 (emphasis added); see also
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`claim 4, 3:64-4:3, 5:32-33; APPLE-1003, ¶63. Thus, Mäkelä discloses a user
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`being asked whether to send a short message in a situation where the incoming call
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`is not answered, thereby teaching that the prompting occurs without answering the
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`incoming call. APPLE-1003, ¶63; see APPLE-1004, claim 4, claim 27, 3:64-4:3,
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`5:32-33.
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`Accordingly, the combination of Mäkelä and Moran teaches prompting the
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`user in response to receiving an incoming call to provide key input that indicates
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`whether to reply to the call with a text message, thereby rendering obvious “in
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`response to receiving the incoming call, prompting a user of the first computing
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`device to enter user input that instructs the first computing device to handle the
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`incoming call by composing, while not answering the incoming call, a message to
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`a user of the second computing device” as recited in the claim.
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`[1e] “responsive to receiving the incoming call and the user entering the user
`input, automatically addressing the message to the second computing device
`using the message identifier determined from the incoming call.”
`The combination of Mäkelä and Moran renders this claim limitation
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`obvious. In the combination, Mäkelä teaches “identifying the caller on the basis of
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`an identification information included within the incoming call” (e.g., “CLI”
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`including the “the calling party number”) and “sending, according to a selection
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`Attorney Docket No. 39521-0050IP1
`IPR of U.S. Patent No. 7,844,037
`made by the user, a reply in response to the call.” APPLE-1004, 3:38-46; see also
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`5:14-16. Mäkelä further teaches that “the identity code of the caller (CLI, Caller
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`Line Identity) … is required for sending a short message.” Id., 5:9-11 (emphasis
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`added). Mäkelä thus teaches using the CLI (the message identifier) to send the
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`short message to the calling party. See id., 3:38-46, 5:9-11; APPLE-1003, ¶64.
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`It would have been obvious to a POSITA that sending the short message
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`reply to the CLI involves addressing the short message to the CLI. APPLE-1003,
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`¶65; see APPLE-1004, 3:38-46; see also 5:9-16. Because Mäkelä teaches that this
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`CLI information is extracted from the call signaling (rather than entered manually
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`by the user), Mäkelä teaches automatically addressing the short message. APPLE-
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`1003, ¶52; see APPLE-1004, 3:38-46; see also 5:9-16; Section II.D.4, supra.
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`Moreover, Moran teaches that the “conventional” manner in which “SMS
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`wireless message[s]” are sent involves “sending the message to the phone number
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`of the destination wireless device.” See APPLE-1006, claim 2 (emphasis added);
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`APPLE-1003, ¶66. As discussed below, a POSITA would have modified Mäkelä
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`according to the teachings of Moran to send the SMS message to the calling party
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`using the calling party number in the “CLI,” as taught by Moran, in order to
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`conform Mäkelä’s operation with the conventional method of sending SMS
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`messages, and thus allow Mäkelä’s communication device to interoperate with and
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`send SMS messages using conventional wireless communications networks.
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`Attorney