UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`QUALCOMM INC.,
`Patent Owner
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`Case No. IPR2018-01279
`Patent No. 7,844,037
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`QUALCOMM INC.,
`Patent Owner
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`Case No. IPR2018-01279
`Patent No. 7,844,037
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`TABLE OF CONTENTS
`I.
`INTRODUCTION ......................................................................................... 1
`THE AMENDED FEATURES OF THE SUBSTITUTE CLAIMS ......... 1
`II.
`III. THE SUBSTITUTE CLAIMS IMPERMISSIBLY ENLARGE THE
`SCOPE OF THE CLAIMS OF THE ’037 PATENT ................................. 2
`A. Substitute independent claim 26 enlarges the scope of the claims of the
`’037 patent ....................................................................................................... 3
`B. Substitute dependent claims 27-42 impermissibly enlarge the scope of
`the claims of the ’037 patent ............................................................................ 7
`IV. SUBSTITUTE CLAIMS 26, 27, 30, 40, AND 41 ARE NON-
`RESPONSIVE TO THE INSTITUTED GROUNDS OF REJECTION . 7
`A. Substitute independent claim 26 is not responsive ................................. 8
`B. Substitute dependent claims 27, 30, 40, and 41 are not responsive ........ 9
`THE SUBSTITUTE CLAIMS ARE UNPATENTABLE OVER THE
`PRIOR ART ................................................................................................. 11
`A. Substitute claims 26-33, and 37-42 are obvious over Mäkelä and
`Moran in view of Pirskanen ........................................................................... 11
`B. Substitute claim 30 is obvious over the combination of Mäkelä, Moran,
`and Pirskanen in view of Viinikanoja ........................................................... 22
`C. Substitute Claims 32-36 are obvious over Mäkelä, Moran, and
`Tsampalis in view of Pirskanen ..................................................................... 24
`VI. CONCLUSION ............................................................................................ 25
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`V.
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`i
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`Case No. IPR2018-01279
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`INTRODUCTION
`Qualcomm’s Motion to Amend (the “Motion”) suffers from a bevy of
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`I.
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`defects, and should be denied in full. In particular, Qualcomm’s proposed
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`amendments impermissibly broaden the scope of each amended claim in at least
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`one respect. In addition, even if the proposed amendments were permissible, the
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`substitute claims are rendered obvious by the previously cited art.
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`Accordingly, the Board should deny the Motion in full.
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`II. THE AMENDED FEATURES OF THE SUBSTITUTE CLAIMS
`Qualcomm’s Motion proposes substitute claims 26-42 corresponding to
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`claims 1-14 and 16-18 of the ’037 patent. See Motion, 1-2. Substitute claim 26 is
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`independent. See id. Substitute dependent claims 27-42 depend from substitute
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`claim 26. See id.
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`As discussed below, substitute independent claim 26 significantly and thus
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`impermissibly amends original claim 1 by entirely removing multiple limitations
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`and adding new limitations reciting different subject matter. See Motion,
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`Appendix A. Substitute dependent claims 27, 30, and 40-42 completely replace
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`the language of the corresponding original claims with new limitations. See id.
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`Substitute dependent claim 39 does not replace the language of the original claim
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`completely, but nonetheless replaces a large portion of the original language with
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`new limitations. See id. The remaining substitute dependent claims merely update
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`the dependencies of the original claims. See id.
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`III. THE SUBSTITUTE CLAIMS IMPERMISSIBLY ENLARGE THE
`SCOPE OF THE CLAIMS OF THE ’037 PATENT
`A motion to amend “may not enlarge the scope of the claims of the patent.”
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`35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii) (“A motion to amend may
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`be denied where . . . [t]he amendment seeks to enlarge the scope of the claims of
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`the patent . . . .”); Lectrosonics v. Zacxcom, IPR2018-01129, slip op. at 6 (PTAB
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`Feb. 25, 2019) (Paper 15) (informative) (“A patent owner may not seek to broaden
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`a challenged claim in any respect that enlarges the scope of the claims of the
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`patent, for example, in the name of responding to an alleged ground of
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`unpatentability. Likewise, a proposed substitute claim may not remove a feature of
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`the claim in a manner that broadens the scope of the claims of the challenged
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`patent.”). “A new claim enlarges if it includes within its scope any subject matter
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`that would not have infringed the original patent.” Thermalloy, Inc. v. Aavid Eng’g,
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`Inc., 121 F.3d 691, 692 (Fed. Cir. 1997) (emphasis added); see, e.g., MLB v. Front
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`Row, IPR2017-01127, slip op. at 11-12 (PTAB October 1, 2018) (Paper 42).
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`Several of Qualcomm’s substitute claims, including independent claim 26,
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`include within their scope subject matter that would not have infringed the original
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`claims of the ’037 patent.
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`A.
`Substitute independent claim 26 enlarges the scope of the claims
`of the ’037 patent
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`“enabling the user of the first computing device to manually
`compose” the message
`Substitute independent claim 26 enlarges the scope of original claim 1 to
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`include manual composition of the message sent in response to the incoming call.
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`In particular, original claim 1 includes the following limitation:
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`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 … a message
`to a user of the second computing device;
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`APPLE-1001, claim 1 (emphasis added). The emphasized portion of the claim
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`requires composition of the message by the first computing device, not the user.
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`See id.; APPLE-1018, [54]. Substitute independent claim 26 entirely removes the
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`“prompting” limitation from claim 1, and it omits the language regarding the “first
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`computing device…composing…[the] message.” See Motion, Appendix A. In
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`addition, substitute claim 26 includes the following limitation:
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`in response to the selection of the message
`responding option and while not answering the incoming
`call, enabling the user of the first computing device to
`manually compose all of the content of the message;
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`Motion, Appendix A (emphasis added). This limitation requires enabling the “user
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`of the first computing device … to manually compose” the message. Id.; APPLE-
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`1018, [55]. A user manually composing the message would not have infringed the
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`original claims of the ’037 patent, because original claim 1 required “the first
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`computing device,” rather than the user, to “compos[e]…the message.” See
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`APPLE-1001, claim 1; Motion, Appendix A; APPLE-1018, [55].
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`As previously discussed, “a new claim enlarges if it includes within its scope
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`any subject matter that would not have infringed the original patent.” Thermalloy,
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`121 F.3d at 692 (emphasis added); see, e.g., MLB v. Front Row at 11-12. Because
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`substitute independent claim 26 includes within its scope a device that does not
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`prompt a user of the first computing device to enter user input that instructs the
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`first computing device to handle the incoming call by composing … a message to a
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`user of the second computing device, substitute claim 26 impermissibly enlarges
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`the scope of the claims of the ’037 patent. See APPLE-1001, claim 1; Motion,
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`Appendix A. APPLE-1018, [53]-[55]. The remaining substitute claims depend
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`from claim 26, and are thus improper for the same reasons. In light of this
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`impermissible enlargement of the scope of the claims, Qualcomm’s Motion to
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`Amend should be denied in full.
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`“automatically addressing the message”
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`Substitute independent claim 26 also enlarges the scope of original claim 1
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`to include scenarios in which the automatic addressing of the message does not
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`occur “responsive to receiving the incoming call and the user entering the user
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`input,” as required by the original claims. See Motion, Appendix A. The table
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`below demonstrates how Qualcomm amends the “automatically addressing”
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`limitation of original claim 1 to replace “responsive to receiving the incoming call
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`and the user entering the user input” with “while not answering the incoming call:”
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`Original Claim 1
`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.
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`Substitute Claim 26
`while not answering the incoming
`call, automatically addressing the
`message to the second computing
`device using the message identifier
`determined from the incoming call.
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`See Motion, Appendix A (emphasis added). By removing the language specifying
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`that the “automatically addressing” must be “responsive to receiving the incoming
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`call,” Qualcomm enlarges the scope of the claim to include automatic addressing
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`of messages that is not responsive to receiving an incoming call, such as automatic
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`addressing performed responsive to another event such as a call ending. See id.;
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`APPLE-1018, [57]. In addition, by removing the language specifying that the
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`“automatically addressing” must be “responsive to…the user entering the user
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`input,” Qualcomm enlarges the scope of the claim to include automatic addressing
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`of messages that is not responsive to user input, such as automatic addressing
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`performed without the user providing any input indicating the message should be
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`sent. See Motion, Appendix A; APPLE-1018, [57]. For example, a system that
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`automatically addressed the reply message prior to receipt of the incoming call,
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`such as by having a pre-stored template for a specific reply message for the second
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`computing device addressed to its phone number, would not have infringed the
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`original claims, but could infringe the substitute claims due to the removal of the
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`“responsive” conditions discussed above. See Motion, Appendix A.
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`As previously discussed, “a new claim enlarges if it includes within its scope
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`any subject matter that would not have infringed the original patent.” Thermalloy,
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`121 F.3d at 692 (emphasis added); see, e.g., MLB v. Front Row at 11-12. Because
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`substitute claim 26 includes within its scope the subject matter discussed above
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`which was not within the scope of original claim 1, substitute claim 26
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`impermissibly enlarges the scope of the claims of the ’037 patent. See APPLE-
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`1001, claim 1; Motion, Appendix A. APPLE-1018, [56]-[57]. The remaining
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`substitute claims depend from claim 26, and are thus improper for the same
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`reasons. In light of this impermissible enlargement of the scope of the claims,
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`Qualcomm’s Motion to Amend should be denied in full.
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`B.
`Substitute dependent claims 27-42 impermissibly enlarge the
`scope of the claims of the ’037 patent
`As discussed, substitute independent claim 26 impermissibly enlarges the
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`scope of the original claims of the ’037 patent. See Section III.A, supra.
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`Substitute claims 27-42 depend from substitute claim 26, and thus include the
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`offending limitations from substitute independent claim 26. See Motion, Appendix
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`A. Accordingly, substitute claims 27-42, like substitute claim 26, include within
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`their scope subject matter that was not within the scope of the original claims, and
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`thus impermissibly enlarge the scope of the claims of the ’037 patent. See Motion,
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`Appendix A; APPLE-1018, [53]-[57]. In light of this impermissible enlargement
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`of the scope of the claims, Qualcomm’s Motion to Amend should be denied in full.
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`IV. SUBSTITUTE CLAIMS 26, 27, 30, 40, AND 41 ARE NON-
`RESPONSIVE TO THE INSTITUTED GROUNDS OF REJECTION
`“A proposed substitute claim is not responsive to an alleged ground of
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`unpatentability of a challenged claim if it does not either include or narrow each
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`feature of the challenged claim being replaced.” See Apple v. Valencell, IPR2017-
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`00321, slip op. at 53 (PTAB Jun. 5, 2018) (Paper 44) (emphasis added) (citing Idle
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`Free v. Bergstrom, IPR2012-00027, slip op. at 5 (PTAB June 11, 2013) (Paper
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`26)). The Motion offends this responsiveness requirement by offering substitute
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`claims 26, 27, 30, 40, and 41 that include amendments that neither include nor
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`narrow language of original claims for which they serve as substitutes.
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`A.
`Substitute independent claim 26 is not responsive
`Substitute independent claim 26 removes the “prompting” limitation from
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`original claim 1, as clearly shown in the marked-up text of claim 26 showing the
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`proposed amendments from Qualcomm’s Motion:
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`Motion, Appendix A (annotated)
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`As shown, the proposed amendments entirely remove the highlighted “prompting”
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`limitation from original claim 1. See Motion, Appendix A. Thus, substitute claim
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`26 does not include this limitation of original claim 1.
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`Substitute claim 26 also does not narrow the “prompting” limitation from
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`original claim 1. As discussed above, substitute claim 26 impermissibly enlarges
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`the scope of original claim 1 to cover manual composition of the reply message by
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`the user, whereas the “prompting” limitation of original claim 1 recites that the
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`“first computing device,” rather than the user, composes the message. See Section
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`8
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`III.A.1, supra. Thus, substitute claim 26 does not narrow the “prompting”
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`limitation from original claim 1.
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`Accordingly, because substitute claim 26 “does not either include or narrow
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`each feature” of original claim 1, substitute claim 26 is not responsive. See Apple
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`v. Valencell at 53. For this same reason, all claims depending from claim 26 also
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`are non-responsive.
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`In addition, The Motion fails to mention the responsiveness requirement or
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`justify any of its substitute claims against this requirement. See, e.g., Motion, 2-3.
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`In fact, no such justification exists, because the amendments giving rise to
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`substitute claim 26 (and, by extension, all claims depending from claim 26) are not
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`responsive to any instituted ground of unpatentability. With no viable explanation
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`for the removal of these claim limitations (or indeed, any explanation at all), the
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`substitute claims are not proper. See Blackberry v. MobileMedia Ideas LLC,
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`IPR2013-00016, Paper 32, 19 (“MobileMedia does not explain why it is necessary
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`to eliminate all of the limitations recited in claim 15. … Therefore, substitute
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`claims 20-23 are not proper substitute claims.”).
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`B.
`Substitute dependent claims 27, 30, 40, and 41 are not responsive
`Specifically, substitute claims 27, 30, 40, and 41 remove limitations from the
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`original claims to which they are attributed as substitutes. For example, the
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`amendments giving rise to substitute claim 27 entirely remove the language of
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`original claim 2:
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`Motion, Appendix A (annotated)
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`As shown, Qualcomm’s proposed amendments completely remove the language of
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`original claim 2. Claims 30, 40, and 41 similarly remove the original language of
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`the claims to which they correspond. See id. Thus, substitute claims 29, 30, 40,
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`and 41 do not “either include or narrow each feature of the challenged claim being
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`replaced,” and therefore are not responsive. IPR2017-00321, Paper 44, 53
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`Further, Qualcomm fails to specifically mention substitute claims 29, 30, 40,
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`and 41 in the body of its Motion. The Motion also fails to mention the
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`responsiveness requirement or justify any of its substitute claims against this
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`requirement. See, e.g., Motion, 2-3. In fact, no such justification exists, because
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`the amendments giving rise to substitute claims 29, 30, 40, and 41 are not
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`responsive to any instituted ground of unpatentability. With no viable explanation
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`for the removal of these claim limitations (or indeed, any explanation at all), the
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`substitute claims are not proper. See Blackberry v. MobileMedia Ideas LLC,
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`IPR2013-00016, Paper 32, 19 (“MobileMedia does not explain why it is necessary
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`to eliminate all of the limitations recited in claim 15. … Therefore, substitute
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`claims 20-23 are not proper substitute claims.”)
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`V. THE SUBSTITUTE CLAIMS ARE UNPATENTABLE OVER THE
`PRIOR ART
`As discussed above, substitute claims 26-42 run afoul of the rules governing
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`Motions to Amend, and thus need not be substantively considered with respect to
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`the patentability over the prior. See Sections III, IV, supra. However, even if
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`these substitute claims were compliant with the rules, they are nonetheless
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`unpatentability in view of the prior art.
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`A.
`Substitute claims 26-33, and 37-42 are obvious over Mäkelä and
`Moran in view of Pirskanen1
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`Overview of Pirskanen
`Pirskanen (APPLE-1019) describes a graphical “user interface” presented on
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`the display of a “mobile station” (e.g., “a cellular radiotelephone or a personal
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`1 Pirskanen was published May 30, 2001, and is thus prior art to the ’037
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`patent under 35 U.S.C. § 102(b).
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`communicator”). APPLE-1019, [0016], [0020]-[0021]. The reference describes
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`displaying an “Incoming Call window” to the user in response to “an incoming
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`call” received by the phone. Id., [0079]. Pirskanen further teaches “display[ing]
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`user-selectable options using a ‘pop-up’ menu technique wherein available options
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`may be partitioned into different logical groups of options.” APPLE-1019, [0007].
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`The combination of Mäkelä, Moran, and Pirskanen
`In the combination, Mäkelä teaches providing the user of the communication
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`device a number of options of how to handle an incoming call. See APPLE-1004,
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`Abstract, 3:30-34, 4:3-8, claim 6, claims 27-29. In the combination, the reply
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`options of Mäkelä are implemented in the communication device of Mäkelä using
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`the user interface techniques of Pirskanen. See APPLE-1004, Abstract, 3:30-34,
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`4:3-8, claim 6, claims 27-29; APPLE-1019, [0007], [0063], [0079]. Specifically,
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`in the combination, the communication device of Mäkelä displays, in response to
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`an incoming call, a pop-up menu (as taught by Pirskanen) populated with the reply
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`options taught by Mäkelä. See APPLE-1004, Abstract, 3:30-34, 4:3-8, claim 6,
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`claims 27-29; APPLE-1019, [0007], [0063], [0079]
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`Reasons to combine Mäkelä and Moran with Pirskanen
`In the combination, a POSITA would have modified the communication
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`device of Mäkelä and Moran to implement the various reply options for incoming
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`calls taught by Mäkelä using the graphical user interface techniques taught by
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`Pirskanen. See APPLE-1004, Abstract, 3:30-34, 4:3-8, claim 6, claims 27-29;
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`APPLE-1019, [0007], [0063], [0079]; APPLE-1018, [58]. A POSITA would have
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`been motivated to implement the reply options in the graphical user interface of
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`Pirskanen in order to provide a presentation of the options that is more visually
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`pleasing to the user, and also to take advantage of the graphics capabilities
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`described as present in the communication device of Mäkelä. See APPLE-1004,
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`Abstract, 3:30-34, 4:3-8, 6:60-7:16, claim 6, claims 27-29; APPLE-1019, [0007],
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`[0063], [0079]; APPLE-1018, [58]. The results of the combination would be
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`predictable because both Pirskanen and Mäkelä describe devices operable to
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`display options in graphical user interface windosws. See APPLE-1004, 6:60-
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`7:16; APPLE-1019, [0007], [0063], [0079]; APPLE-1018, [58].
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`Claim 26 (Substitute for Claim 1)
`[26pre] (Original) “A method for operating a first computing device”
`See Petition, 11-12.
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`[26a] (Original) “the method being implemented by one or more processors of
`the computing device and comprising:”
`See Petition, 12-13.
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`[26b] (Original) “receiving, from a second computing device, an incoming call
`to initiate a voice-exchange session;”
`See Petition, 13-15.
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`[26c] (Original) “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”
`See Petition, 15-16.
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`[26d] (Amended) “in response to receiving the incoming call, generating an
`incoming call notification;”
`The combination of Mäkelä, Moran, and Pirskanen renders this limitation
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`obvious. In the combination, Mäkelä teaches “where an incoming call” is received
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`at the communication device, the device notifies the user of the incoming call by
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`generating “a sound alarm or a soundless alarm.” See APPLE-1004, 5:23-36;
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`APPLE-1018, [59]. Accordingly, the combination of Mäkelä, Moran, and
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`Pirskanen teaches “in response to receiving the incoming call, generating an
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`incoming call notification.”
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`[26e] (Amended) “in response to receiving the incoming call and while not
`answering the incoming call, presenting a user of the first computing device a
`graphic user-interface that at least has the following reply options: (i)
`answering the incoming call, and (ii) message responding to the incoming call
`by sending a message to a user of the second computing device, wherein the
`message responding option allows insertion of preformulated content for the
`message and manual composition of all of the content of the message;”
`In the combination, Mäkelä teaches that “[t]he reply message can be sent
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`immediately (9) or after a short delay (10,11), whereby during the delay, the user
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`can choose, whether he/she answers him/herself.” APPLE-1004, Abstract
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`(emphasis added).
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`In the combination, Mäkelä also teaches that the user has the option of
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`responding to the incoming call by sending a message to a user of the second
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`computing device. Mäkelä states that “in response to the incoming call, the
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`communication device … sends a reply according to a selection made by the
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`user[.]” Id., 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.
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`Mäkelä further teaches that the message responding option allows manual
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`composition of all of the content of the message and insertion of preformulated
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`content for the message and. Mäkelä describes that sending the response to the
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`incoming call “includes a step of entering a response by the user,” which includes
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`the user “generating [the] response” (manually composing the response). APPLE-
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`1004, claims 27-28; APPLE-1018, [62]. Mäkelä also describes that the user
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`“entering a response includes designating a previously stored response” (insertion
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`of preformulated content for the message). APPLE-1004, claim 29; APPLE-1018,
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`[62].
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`Also in the combination, Pirskanen teaches a communication device
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`operable to “display user-selectable options using a ‘pop-up’ menu technique
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`wherein available options may be partitioned into different logical groups of
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`options.” APPLE-1019, [0007]. Pirskanen describes that a “pop-up menu (see, for
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`example, Figs. 10 and 14) is employed to offer the user those options (actions) that
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`are available in a current state of the selected application.” Id., [0063]. FIG. 10
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`from Pirskanen shows an example pop-up menu:
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`APPLE-1019, Detail of FIG. 10 (annotated)
`
`
`
`Pirskanen further teaches that an “incoming call is indicated to the user by
`
`playing a ringing tone and displaying the text CALL in the Incoming Call
`
`window.” APPLE-1019, [0079]. “This occurs until the incoming call is answered
`
`16
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`
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`or is rejected, or deflected as in GSM (e.g., call transfer to voice mail or a second
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`Case No. IPR2018-01279
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`number).” Id.
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`As described above, it would have been obvious to a POSITA to present the
`
`reply options for incoming calls taught by Mäkelä in a “pop-up menu” displayed in
`
`the “Incoming Call window” graphic user interface of Pirskanen. See APPLE-
`
`1004, Abstract, 3:30-34, 4:3-8, claim 6, claims 27-29; APPLE-1019, [0007],
`
`[0063], [0079]; APPLE-1018, [58].
`
`Accordingly, the combination of Mäkelä, Moran, and Pirskanen renders this
`
`limitation obvious.
`
`[26f] (Amended) “in response to the selection of the message responding
`option and while not answering the incoming call, enabling the user of the
`first computing device to manually compose all of the content of the message;
`and”
`
`As described above, Mäkelä teaches enabling the user to manually compose
`
`all of the content of the message. Mäkelä describes that sending the response to
`
`the incoming call “includes a step of entering a response by the user,” which
`
`includes the user “generating [the] response” (manually composing the response).
`
`APPLE-1004, claims 27-28; APPLE-1018, [62].
`
`Accordingly, the combination of combination of Mäkelä, Moran, and
`
`Pirskanen renders this limitation obvious.
`
`[26f] (Amended) “while not answering the incoming call, automatically
`addressing the message to the second computing device using the message
`identifier determined from the incoming call.”
`17
`
`
`
`As previously shown in the Petition, the combination of Mäkelä and Moran
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`renders obvious “automatically addressing the message to the second computing
`
`device using the message identifier determined from the incoming call.” See
`
`Petition, 17-19. In the combination of combination of Mäkelä, Moran, and
`
`Pirskanen, Mäkelä further teaches that the “short message” sent in response to the
`
`user input is sent “in a situation wherein the user of the portable terminal does not
`
`answer the” incoming call. See APPLE-1004, claim 27 (emphasis added); see also
`
`claim 4, 3:64-4:3, 5:32-33; APPLE-1018, [66]. Thus, Mäkelä teaches that the
`
`“automatically addressing,” which is included in sending the short message, is
`
`performed in the situation where the incoming call is not answered. APPLE-1018,
`
`[66]; see APPLE-1004, claim 4, claim 27, 3:64-4:3, 5:32-33.
`
`Claim 27 (Substitute for Claim 2)
`[27a] (Amended) “The method of claim 26, further comprising in response to
`the selection of the message responding option, opening an instant or text
`messaging application that allows the user to manually compose the message
`content”
`See Petition, 22-24.
`
`Claim 39 (Substitute for Claim 14)
`[39a] (Amended) “The method of claim 38, further comprising launching
`either the instant or text messaging application automatically, in response to
`selection of the message responding option.”
`See Petition, 30-31.
`
`Claim 40 (Substitute for Claim 16)
`
`18
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`Case No. IPR2018-01279
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`[40a] (Amended) “The method of claim 26, wherein enabling the user of the
`first computing device to manually compose all of the content of the message
`comprises providing an input mechanism to generate an alphanumeric
`message”
`In the combination, Mäkelä teaches that the communication device includes
`
`an “an alphanumeric keypad [22],” as shown in FIG. 3. APPLE-1004, 6:64-67:
`
`Alphanumeric
`keypad 22
`
`
`APPLE-1004, Detail of FIG. 3 (annotated)
`
`
`
`An alphanumeric keypad is “an input mechanism to generate an
`
`alphanumeric message.” See APPLE-1004, 6:64-67, FIG. 3; APPLE-1018, [67].
`
`Accordingly, the combination of Mäkelä, Moran, and Pirskanen renders obvious
`
`“enabling the user of the first computing device to manually compose all of the
`
`content of the message comprises providing an input mechanism to generate an
`
`alphanumeric message.”
`
`Claim 41 (Substitute for Claim 17)
`
`19
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`Case No. IPR2018-01279
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`[41a] (Amended) “The method of claim 26, wherein enabling the user of the
`first computing device to manually compose all of the content of the message
`comprises providing an input mechanism to generate a voice file produced by
`a microphone of the first computing device”
`In the combination, Mäkelä teaches that the response to the incoming call
`
`“may also be a voice message, if the user’s communication device is capable of
`
`storing a voice message into its memory, from which it may reproduce it” as a
`
`response “to an incoming call.” APPLE-1004, 8:36-39 (emphasis added). Mäkelä
`
`further teaches that an “advantage of using a locally stored voice message as an
`
`answer to an incoming call according to the invention is that the caller
`
`momentarily reacts as if the receiving party had answered him/herself,” because
`
`the voice message will be a recording of the receiving party’s (i.e., the user’s) own
`
`voice. Id., 8:42-64; APPLE-1018, [69]. The “locally stored voice message[s]” of
`
`Mäkelä are “voice files,” because they are stored in the device’s memory and are
`
`retrieved when playback is requested. See APPLE-1004, 8:36-64; APPLE-1018,
`
`[69]. Further, mobile phones, such as the communication device of Mäkelä,
`
`include a microphone to capture user speech during phone calls. APPLE-1018,
`
`[69]; see, e.g., APPLE-1005, [0020] (“The wireless phone 100 also typically has
`
`… [a] voice input device 104, such as a microphone, for … receiving sounds from
`
`the user.”); APPLE-1019, [0020] (a typical mobile phone includes “a conventional
`
`microphone”). A POSITA would have understood that the microphone of the
`
`communication device of Mäkelä could be used to record the user’s voice to
`20
`
`
`
`produce the “locally stored voice messages” described in Mäkelä. See APPLE-
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`1004, 8:36-64; APPLE-1018, [69].
`
`Accordingly, the combination of Mäkelä, Moran, and Pirskanen renders
`
`obvious that “enabling the user of the first computing device to manually compose
`
`all of the content of the message comprises providing an input mechanism to
`
`generate a voice file produced by a microphone of the first computing device.”
`
`Claim 42 (Substitute for Claim 18)
`[42a] (Amended) “The method of claim 26, further comprising enabling the
`user of the first computing device to insert pre-formulated content for the
`message by generating images through the use of a keyboard of the first
`computing device.”
`The combination of Mäkelä and Moran renders this limitation obvious. The
`
`’037 patent states that “[t]he message input 342 may correspond to alphanumeric
`
`content, including phrases, keywords, or images that can be generated through use
`
`of keyboards (e.g. happy face).” APPLE-1001, 7:4-6 (emphasis added). Thus, an
`
`“image…generated through the use of a keyboard” is a text string representing an
`
`image, such as a “happy face” emoji or emoticon formed by a text string including
`
`a colon, followed by a hyphen, followed by a closed parenthesis (e.g., “ :-) ”). See
`
`id.; APPLE-1018, [70]. Because such text strings representing images include
`
`only standard alphanumeric characters, the “alphanumeric keypad” of the
`
`communication device of Mäkelä enables a user to “generate” such text strings
`
`representing images. See [40a], supra; APPLE-1018, [70].
`
`21
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`
`
`Accordingly, the combination of Mäkelä, Moran, and Pirskanen renders
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
`
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`obvious “enabling the user of the first computing device to insert pre-formulated
`
`content for the message by generating images through the use of a keyboard of the
`
`firs
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