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 REPLY TO PATENT OWNER’S RESPONSE
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`TABLE OF CONTENTS
`I. 
`Introduction .................................................................................................... 1 
`Level of Ordinary Skill in the Art ................................................................ 1 
`II. 
`III.  Claim Construction ....................................................................................... 2 
`A. 
`“prompting a user of the first computing device” (claim 1) ......................... 2 
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`1.  Qualcomm’s proposed construction impermissibly imports limitations
`into unambiguous language recited by the claims ............................................ 4 
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`2.  The ’037 specification shows that the applicant did not intend
`“prompting” to be limited as Qualcomm proposes ........................................... 4 
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`3.  Qualcomm’s extrinsic evidence is not indicative of how a POSITA would
`have understood the term “prompting” as of the Critical Date ........................ 7 
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`4.  Qualcomm’s construction of “prompting” is improper ............................ 9 
`B.  Qualcomm’s proposed construction directly contradicts disclosure in the
`’037 specification ................................................................................................. 10 
`C. 
`“composing” (claim 1) ................................................................................ 11 
`IV.  Qualcomm’s Rebuttals Fail ........................................................................ 13 
`A.  The combination of Mäkelä and Moran renders obvious “prompting a user
`of the first computing device” (claim 1) .............................................................. 13 
`B.  The combination of Mäkelä and Moran renders obvious “in response to
`receiving the incoming call . . . handle the incoming call by composing” (claim
`1)
`14 
`C.  The combination of Mäkelä and Moran renders obvious “automatically
`addressing the message to the second computing device” (claim 1) ................... 14 
`D.  Dependent Claims 2-14 and 16-18 .............................................................. 16 
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`Case No. IPR2018-01279
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`1.  Claim 2 ..................................................................................................... 16 
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`2.  Claim 5 ..................................................................................................... 18 
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`3.  Claim 14 ................................................................................................... 19 
`E.  A POSITA would have had a reason to combine Mäkelä and Moran and a
`reasonable expectation of success ........................................................................ 19 
`V.  Conclusion .................................................................................................... 23 
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`EXHIBITS
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`APPLE-1001
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`U.S. Patent No. 7,844,037 to Champlin, et al. (“the ’037
`patent”)
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`APPLE-1002
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`Excerpts from the Prosecution History of the ’037 patent (“the
`Prosecution History”)
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`APPLE-1003
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`Declaration of Dr. Narayan Mandayam
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`APPLE-1004
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`U.S. Patent No. 6,301,338 to Mäkelä (“Mäkelä”)
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`APPLE-1005
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`U.S. Pub. No. 20040203794 to Brown (“Brown”)
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`APPLE-1006
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`U.S. Pub. No. 20030104827 to Moran (“Moran”)
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`APPLE-1007
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`U.S. Pub. No. 20040203956 to Tsampalis (“Tsampalis”)
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`APPLE-1008
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`U.S. Patent No. 6,456,696 to Fargano (“Fargano”)
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`APPLE-1009
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`U.S. Patent No. 6,996,217 to Goldman (“Goldman”)
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`APPLE-1010
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`U.S. Pub. No. 20020065065 to Lunsford (“Lunsford”)
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`APPLE-1011
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`U.S. Patent No. 7,468,934 to Janik (“Janik”)
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`APPLE-1012
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`U.S. Patent No. 6,868,272 to Berkowitz (“Berkowitz”)
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`APPLE-1013
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`U.S. Pub. No. 20070133775 to Winkler (“Winkler”)
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`APPLE-1014
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`U.S. Patent No. 6,483,899 to Agraharam (“Agraharam”)
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`APPLE-1015
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`Declaration of Sara C. Fish
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`iii
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`Case No. IPR2018-01279
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`APPLE-1016
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`Excerpts from Newton’s Telecom Dictionary, 2005 Edition
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`APPLE-1017
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`Deposition Transcript of Dr. Jeffay
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`APPLE-1018
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`Second Declaration of Dr. Narayan Mandayam
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`APPLE-1019
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`APPLE-1020
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`European Patent App. No. 1104151A2 to Pirskanen et al.,
`published May 30, 2001
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`U.S. Patent Pub. 20030164895 to Viinikanoja et al.
`(“Viinikanoja”)
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`Case No. IPR2018-01279
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`Introduction
`The arguments in the Patent Owner Response (“Response”) fail when
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`I.
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`longstanding legal principles are properly applied to the factual record developed
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`in this proceeding. The Board should reject the arguments in the POR as they are
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`inconsistent with, mischaracterize, and, at times, ignore the teachings of the cited
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`art, the arguments presented in the Petition, and the evidence of record. In
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`addition, overly-narrow and self-serving claim constructions presented by Patent
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`Owner (“Qualcomm”) are untenable, as they are inconsistent with the specification
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`and claims of the ’037 patent, and do not represent the broadest reasonable
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`interpretation (BRI) of the terms in question.
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`In its Institution Decision, the Board found that Petitioner (“Apple”)
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`established a reasonable likelihood that claims 1–14 and 16–18 (“the Challenged
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`Claims”) of U.S. Patent No. 7,844,037 (“the ’037 patent”) are unpatentable for the
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`reasons advanced in the Petition. As explained herein, the arguments presented in
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`the Response fail to rebut the positions advanced in the Petition. Accordingly, the
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`Board should echo the reasoning and holding from its Institution Decision in its
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`Final Written Decision, and find the Challenged Claims unpatentable.
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`II. Level of Ordinary Skill in the Art
`Qualcomm argues that Apple’s witness, Dr. Mandayam, was “a person of
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`‘extraordinary’ skill at the time of the invention, not a person of ordinary skill,”
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`and appears to suggest that this should somehow diminish or cloud his testimony.
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`See Response, 1-2 (citing Ex-2006, 27:21-28:25). But Qualcomm’s position is
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`belied by its offering of testimony from Dr. Jeffay, who testified that he had “more
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`expertise and more experience” than a person of ordinary skill, as defined in the
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`present proceeding. See APPLE-1017, 23:13-16; see also 8:19-21:16 (testimony
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`from Jeffay regarding his “extensive” experience).
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`Moreover, Apple is unaware of any governing authority that precludes or
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`diminishes the weight to be attributed to testimony offered to establish the
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`knowledge of a person of ordinary skill in the art (POSITA) simply because that
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`testimony was offered by a from witness whose the level of skill in the art exceeds
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`that of a POSITA. But even if such authority were to exist, it would apply equally
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`to the testimony of both Dr. Mandayam and Dr. Jeffay, as the level of skill of both
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`experts exceeds the level of ordinary skill in the art proposed in the present
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`proceeding.
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`III. Claim Construction
`A.
`“prompting a user of the first computing device” (claim 1)
`Qualcomm proposes narrowly construing “prompting a user of the first
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`computing device” to require “displaying a symbol or message to a user of the first
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`computing device indicative of an option.” Response, 14. But no construction of
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`“prompting a user of the first computing device” is necessary for the purposes of
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`the present proceeding, as the language is unambiguous and simply means what it
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`says.
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`Qualcomm’s proposed construction of the term “prompting” is not supported
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`by the intrinsic and extrinsic evidence associated with the ’037 patent.
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` As explained in the sections below, Qualcomm’s self-serving construction
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`is impermissibly narrow, and it is not supported by the ’037 specification (or any
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`other intrinsic evidence) and it is contradicted by several of the ‘037 patent
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`embodiments. Indeed the only extrinsic support offered by Qualcomm is a cherry-
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`picked definition of “prompt” taken from a dictionary published more than five
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`years before the earliest possible priority date of the ’037 patent (August 8, 2005,
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`hereinafter the “Critical Date”); this narrow view of prompt is belied by a broader
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`survey of dictionaries more proximate to the priority date. See, e.g., Apple-1006.
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`indeed, the Board has already (preliminarily) ruled on the construction of
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`this term in the Institution Decision, finding that the term “prompting” does not
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`require “presenting reply options [to a user].” See Decision, 11-12. In its
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`Response, Qualcomm doubles down, not only again advocating for prompting to
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`require “displaying,” but going even further in seeking further narrowing to a
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`particular kind of display – of a “symbol or message” that is “indicative of an
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`option.” As it did in the Institution Decision, the Board should decline to adopt
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`Qualcomm’s improper construction of “prompting.”
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`1.
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`Qualcomm’s proposed construction impermissibly imports
`limitations into unambiguous language recited by the claims
`Qualcomm’s construction plainly and impermissibly seeks to import several
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`unrecited limitations into unambiguous language recited by claim 1. Specifically,
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`to the language of claim 1, Qualcomm’s construction adds limitations of
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`“displaying” a “symbol or message” that is “indicative of an option”. See
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`Response, 14. Yet, claim 1 was drafted to omit these limitations, as it merely and
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`unambiguously recites “prompting a user of the first computing device.” See
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`APPLE-1001, claim 1. Qualcomm has not contended that this claim language is
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`ambiguous, nor can it credibly maintain that this language can itself be reasonably
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`interpreted to require “displaying” a “symbol or message” that is “indicative of an
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`option.” See id. Rather, contrary to well established cannons of claim
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`interpretation, Qualcomm’s construction represents a blatant and unjustifiable
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`attempt to inject limitations into claim 1.
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`2.
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`The ’037 specification shows that the applicant did not intend
`“prompting” to be limited as Qualcomm proposes
`The ’037 specification lacks any “suggestion … that the applicant intended
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`the claims” to limit prompting to narrowly require “displaying a symbol or
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`message to a user of the first computing device indicative of an option.” See
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`Response, 14-20. In fact, the ’037 patent describes embodiments in which
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`“prompting” is not limited in this way, as revealed by the portions of the ‘037
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`patent specification that are quoted by Qualcomm in its argument on this point.
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`See Response, 17-18.
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`For example, in arguing that the ’037 patent “informs a POSITA that in
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`accordance with the plain and ordinary meaning of the term, a prompt is a symbol
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`or message indicative of an option,” Qualcomm quotes the ’037 patent’s text
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`relating to the embodiment depicted by FIG. 2, which states:
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`The phone application 210, message response
`module 230, or some other component may prompt the
`user to message respond to a caller in response to receipt
`of call data 202. The prompt may occur shortly after the
`incoming call 204 is received, such as with or before the
`first “ring” generated on the computing device 200 for the
`incoming call. For example, the user may be able to elect
`message response as one option along with other options
`of answering or declining the incoming call 204.
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`
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`Response, 16-17 (quoting APPLE-1001, 5:26-34) (Qualcomm’s added emphasis
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`retained). Notably absent from this text is any indication that the “prompt” relates
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`to “displaying” a “symbol or message” that is “indicative of an option.” See
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`APPLE-1001, 5:26-34; APPLE-1018, [40]. Instead, and despite Qualcomm’s
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`suggestion to the contrary, this text merely describes that the “user may be able to
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`elect” the message when prompted. Quite simply, this text does not specify that
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`the prompt be “display[ed],” that it include a “symbol or message,” or that it be
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`“indicative” of the option the user can elect. See APPLE-1001, 5:26-34; APPLE-
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`1018, [40].
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`Qualcomm also quotes the following portion of the ’037 patent:
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`In one embodiment, the computing device identifies
`a phone number of a caller of the incoming call. The
`computing device may prompt the user of the computing
`device to generate a message reply to the incoming phone
`call.
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`Response, 17 (quoting APPLE-1001, 2:42-44) (Qualcomm’s added emphasis
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`retained). As described, this embodiment also defies Qualcomm’s proposed
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`requirements for “displaying” a “symbol or message” that is “indicative of an
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`option.” See APPLE-1001, 5:26-34; APPLE-1018, [42].
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`Each of these portions of the ‘037 patent specification, cited by Qualcomm
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`in support of its proposed construction, reveal that even the ‘037 patent
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`specification fails to narrowly apply “prompting” in the manner advanced by
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`Qualcomm’s self-serving construction. Indeed, Qualcomm has failed to identify
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`any portion of the ‘037 patent specification that narrowly applies “prompting a
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`user of the first computing device” to require “displaying a symbol or message to a
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`user of the first computing device indicative of an option.” Nor does Qualcomm
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`contend that this term was redefined, nor does Qualcomm substantiate the
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`existence of any “suggestion in the intrinsic record that the applicant intended the
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`claims” to be so limited. See Williamson, 792 F. 3d at 1345. Accordingly, the
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`Board should reject Qualcomm’s proposed construction.
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`3.
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`Qualcomm’s extrinsic evidence is not indicative of how a
`POSITA would have understood the term “prompting” as of the
`Critical Date
`Qualcomm also attempts to support its construction of “prompting” with a
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`definition of the term included in a dictionary published in December 2000—more
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`than four years before the Critical Date of August 8, 2005. See Response, 14
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`(citing Ex-2022 (hereinafter the “IEEE Dictionary”)). Even though Qualcomm’s
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`expert characterized the field of the ’037 patent as “constantly changing” and
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`undergoing “continual evolution” between 2000 and 2005, Qualcomm appears to
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`assume, by citing evidence from the IEEE Dictionary published in 2000, that the
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`definition of “prompting” in the field would not change during this time period.
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`APPLE-1017, 35:23-38:23.
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`Qualcomm’s assumption is incorrect, as shown by the definition of
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`“prompting” from the 2005 edition of Newton’s Telecom Dictionary (hereinafter
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`the “Newton’s Dictionary”), which was published in March 2005, just months
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`prior to the critical date, and which defines “prompting” as:
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`prompting Visually or audibly indicating to a user of a
`telephony device that a call has reached (and been
`accepted by) the device and is capable of being answered.
`This is typically done by ringing the device, flashing a
`lamp, or presenting a message on the device display.
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`See APPLE-1016, 5 (emphasis in original). Notably, “prompting” is not
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`narrowed by Netwon’s Dictionary to require “displaying” a “symbol or message”
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`that is “indicative of an option,” as encouraged by Qualcomm’s proposed
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`construction. See id.
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`Beyond its greater proximity to the critical date, and hence, its enhanced
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`temporal relevance, the importance of which was emphasized by Qualcomm’s
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`expert, the Newton’s Dictionary definition is technologically more relevant than
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`the outdated version of the IEEE dictionary referenced by Qualcomm Newton’s
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`Dictionary includes definitions specific to telecommunications, revealing the
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`meaning attributed by a person of ordinary skill in the field of the ‘037 patent to
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`the term “prompting” as of the Critical Date. See APPLE-1016, 1, 3, 5; APPLE-
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`1018, [47]. By contrast, the IEEE Dictionary offers an outdated and generic
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`interpretation of “prompting,” relating generically to the fields of “computer
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`graphics” and “software.” See Response, 14-15 (citing Ex-2022); APPLE-1018,
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`[47].
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`Thus, the definition of “prompting” from the IEEE Dictionary, which was
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`published over four years before the Critical Date, is not indicative of how a
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`POSITA would have understood the term as of the Critical Date, and thus has no
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`bearing on the proper construction of “prompting.” The Newton’s Dictionary,
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`which published five months prior to the Critical Date and is specifically related to
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`the field of art of the ’037 patent, indicates that a POSITA would not have
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`understood the term “prompting” to require “displaying” a “symbol or message”
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`that is “indicative of an option” as proposed by Qualcomm.
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`4.
`Qualcomm’s construction of “prompting” is improper
`As described in the sections above, Qualcomm’s proposed construction of
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`the term “prompting” is not supported by the intrinsic and extrinsic evidence
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`associated with the ’037 patent. Notably, the Board has already (preliminarily)
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`ruled on the construction of this term in the Institution Decision, finding that the
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`term “prompting” does not require “presenting reply options [to a user].” See
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`Decision, 11-12. In its Response, Qualcomm doubles down, again advocating for
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`prompting to require “displaying,” and going even further by advocating for
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`further narrowing to a particular kind of display – of a “symbol or message” that is
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`“indicative of an option.” As it did in the Institution Decision, the Board should
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`decline to adopt Qualcomm’s improper construction of “prompting” in the Final
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`Written Decision, and find the claims of the ’037 patent unpatentable.
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`B. Qualcomm’s proposed construction directly contradicts
`disclosure in the ’037 specification
`Although not expressly recited in its proposed construction, Qualcomm
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`argues for further narrowing of “prompting,” by suggesting that prompting must be
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`distinct from presenting a “call notification,” such as “a ring, … chimes, image
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`data containing the caller ID information on a display of the device, and
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`vibrations.” Response, 16 (citing Ex-2004, [67]). During his deposition, Dr.
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`Jeffay confirmed this position. See APPLE-1017, 58:13-17 (“[Jeffay]. A prompt is
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`different from displaying a call notification.”); see also id., 60:16-24.
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`This interpretation of “prompting” directly contradicts the disclosure of the
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`’037 patent. In its description of FIG. 6, the ’037 patent states that when an
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`“incoming call 612 is received,” a “call notification 616 may occur to provide the
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`user with the opportunity to answer, decline, or message reply to the incoming
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`call.” APPLE-1001, 9:20-22 (emphasis added). The patent further states that a
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`“call notification 606 may display, for example, information on the caller or the
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`caller’s number” and “may also present options as to whether the user can answer
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`the call, decline the call, and/or message reply the call.” APPLE-1001, 9:3-7
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`(emphasis added). In both of these examples, the call notification is prompting the
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`user to “answer, decline, or message reply to the incoming call,” which is
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`inconsistent with Qualcomm’s argument that a “call notification” and a “prompt”
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`must be completely distinct. See Response, 16; APPLE-1017, 58:13-17, 60:16-24;
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`APPLE-1018, [43].
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`Accordingly, this additional construction of prompting conflicts with the
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`express disclosure of the ’037 patent, and should be rejected.
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`C.
`“composing” (claim 1)
`Qualcomm construes “composing a message” to mean “providing message
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`content manually for a message—as opposed to mere insertion of pre-formulated
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`or precomposed content.” Response, 36 (emphasis added). This construction is
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`unjustified, particularly under the broadest reasonable interpretation standard.
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`Indeed, it is inconsistent with the plain language of claim 1, and is thus improper.
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`Claim 1 of the ’037 patent recites, in relevant part:
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`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
`answering the incoming call, a message to a user of the
`second computing device;
`APPLE-1001, claim 1 (emphasis added). The claim language clearly recites that
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`the user’s input “instructs” the first computing device to perform an action, namely
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`to handle the incoming call by composing ... a message. See id.; APPLE-1018,
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`[50]. Notably, the claim does not recite that the user composes the message, or
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`that the first computing device enables the user to compose the message. APPLE-
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`1001, claim 1; APPLE-1018, [50]. Such an interpretation would require one to
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`ignore the claim language about the user’s input “instruct[ing]” the first computing
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`device to “handle the incoming call by composing” the message. See APPLE-
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`1001, claim 1; APPLE-1018, [50]. Yet this is exactly how Qualcomm proposes
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`that claim 1 be construed.
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`By paraphrasing from claim 1, Qualcomm removes the language about the
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`first computing device being instructed by the user’s input, and turns the user,
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`rather than the first computing device, into the composer. Specifically, Qualcomm
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`states:
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`“[c]laim 1 requires a user input that instructs the computing device to
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`handle the call by letting the user compose a message.”
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`Response, 29 (emphasis added). This distortion is necessary to support
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`Qualcomm’s proposed construction that “composing” means “manually providing
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`content for the message.” Response, 31 (emphasis added). The plain language of
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`claim 1 simply cannot be interpreted to require that the user manually provide
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`content for the message unless it is reframed to switch the actor that “handle[s] the
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`incoming call by composing” from the first computing device to the user. See
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`APPLE-1001, claim 1. Qualcomm’s analysis never addresses the plain language
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`of claim 1, and instead repeatedly addresses its restated version of claim 1 in which
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`the user “handle[s] the incoming call by composing” rather than the first
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`computing device, as claimed. See, e.g, Response 28 (“the only discussion in the
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`specification on how a user may compose a message”, “input mechanisms that
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`enable a user to compose a message”), 29 (“[c]laim 1 requires a user input that
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`instructs the computing device to handle the call by letting the user compose a
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`message”, “enable a user to compose a message by manually providing message
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`content”).
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`Thus, Qualcomm’s proposed construction of “composing a message” to
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`mean “providing message content manually for a message—as opposed to mere
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`insertion of pre-formulated or precomposed content” is inconsistent with the plain
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`language of claim 1, and should be rejected.
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`IV. Qualcomm’s Rebuttals Fail
`A. The combination of Mäkelä and Moran renders obvious
`“prompting a user of the first computing device” (claim 1)
`Qualcomm argues that the combination of Mäkelä and Moran does not teach
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`“prompting a user of the first computing device,” but its argument cannot be
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`sustained because it is based on the unsustainable construction of “prompting” that
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`is exposed above. See Response, 37; see also Section IV.A, supra. Indeed, when
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`the claims are correctly interpreted according to their plain and ordinary meaning,
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`rather than Qualcomm’s misconceived interpretation, it is clear that the
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`combination Mäkelä and Moran renders obvious “prompting a user of the first
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`computing device,” as previously explained in the Petition and found persuasive by
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`the Board. See Petition, 16-17 (not reproduced here); Decision, 20-21, 23-24.
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`B.
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`The combination of Mäkelä and Moran renders obvious “in
`response to receiving the incoming call . . . handle the incoming
`call by composing” (claim 1)
`Qualcomm argues that the combination of Mäkelä and Moran does not teach
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`“in response to receiving the incoming call . . . handle the incoming call by
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`composing,” but its argument cannot be sustained because it is based on the
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`unsustainable construction of “composing” that is exposed above. See Response,
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`37; see also Section III.C, supra. Indeed, when the claims are correctly interpreted
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`according to their plain and ordinary meaning, rather than Qualcomm’s
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`misconceived interpretation, it is clear that the combination Mäkelä and Moran
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`renders obvious “in response to receiving the incoming call . . . handle the
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`incoming call by composing,” as previously explained in the Petition and found
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`persuasive by the Board. See Petition, 16-17 (not reproduced here); Decision, 20-
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`21, 23-24.
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`C. The combination of Mäkelä and Moran renders obvious
`“automatically addressing the message to the second computing
`device” (claim 1)
`Qualcomm argues that the Petition “makes a logical leap in an attempt to
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`find a teaching in Mäkelä that simply does not exist” when applying Mäkelä alone
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`to the “automatically addressing” limitation of claim 1. Response, 52. Qualcomm
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`further argues that “automatically extracting CLI information…is not tantamount
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`to automatically addressing the message to the second computing device.” Id.
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`(emphasis removed).
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`Qualcomm either mischaracterizes or misunderstands the Petition’s
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`argument on this point. The Petition states that “[i]t would have been obvious to a
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`POSITA that sending the short message reply to the CLI involves addressing the
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`short message to the CLI.” Petition, 18 (citing APPLE-1003, [65]; APPLE-1004,
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`3:38-46, 5:9-16). “Because Mäkelä teaches that this CLI information is extracted
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`from the call signaling (rather than entered manually by the user), Mäkelä teaches
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`automatically addressing the short message.” Petition, 18 (citing APPLE-1003,
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`[52]; APPLE-1004, 3:38-46, 5:9-16). Thus, the Petition explains how Mäkelä
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`discloses distracting CLI information from inbound call signaling and using the
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`same to address outbound short messages, and the petition further explains how
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`Mäkelä discloses performing those steps automatically without the user manually
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`entering the CLI information. See Petition, 18; APPLE-1018, [52]. Thus, the
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`Petition demonstrates that the combination of Mäkelä and Moran renders this
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`limitation obvious. See Petition, 17-19; Decision, 24-25.
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`Notably, the Board previously confronted and rejected this argument, as it
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`was earlier advanced by Qualcomm in the POPR. See Decision, 25 (“[W]e do not
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`agree with Patent Owner that Petitioner and Dr. Mandayam are ‘mak[ing] a logical
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`leap in an attempt to find a teaching in Mäkelä (sic) that simply does not exist.’”)
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`(quoting POPR, 23). For reasons noted herein, the Board should do the same with
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`present argument.
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`D. Dependent Claims 2-14 and 16-18
`Qualcomm presents several conclusory arguments addressing the challenged
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`dependent claims in succession in its Response. See Response, 54-56. These
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`arguments are addressed in turn below.
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`1.
`Claim 2
`Claim 2 recites “generating a graphic user-interface feature that prompts the
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`user to elect to have the message at least partially composed in response to the
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`incoming call.” APPLE-1001, claim 2. In the Response, Qualcomm advances,
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`without explanation, that this limitation does not include “an interface that allows
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`the user to compose and store a message prior to an incoming call and then later
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`sent in response to the incoming call.” See Response, 55. If Qualcomm is relying
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`on its improper construction of “composing” as “manually composing” to arrive at
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`this conclusion, this argument is unsustainable for reasons provided in debunking
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`that claim construction as unjustified. See id.; Section III.B, IV.B, supra. In any
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`event, Petitioner does not concede that the claim language is properly read to
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`exclude the noted scenario, and reasserts the positions described in the Petition
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`with respect to the application of the combination of Mäkelä and Moran to this
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`claim language (which were preliminarily found persuasive by the Board in its
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`Institution Decision). See Petition, 19-20; Decision, 30.
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`For instance, as stated in the Petition, in the combination, Mäkelä teaches
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`that the communication device includes a “user interface comprising a display 21
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`and a keypad 22.” APPLE-1004, 6:64-67; Petition, 19. This “user interface of the
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`communication device 20 has a procedure for starting certain application
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`programs.” APPLE-1004, 7:8-9; Petition, 19. One such application program is “a
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`program called SMS Reply Mode (Short message reply mode)[.]” APPLE-1004,
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`7:11; Petition, 19. When this program is started, the “main window of the SMS
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`Reply Mode will be displayed in the display 21.” APPLE-1004, 7:13-14
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`(emphasis added); Petition, 19. By displaying the SMS Reply Mode window on
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`the display of the communication device, Mäkelä teaches “generating a graphic
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`user interface feature,” as recited in claim 2. APPLE-1003, ¶68; see, e.g., APPLE-
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`1004, 6:64-67, 7:8-14; Petition, 19.
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`Mäkelä further teaches that “the short messages used in reply to incoming
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`calls can be standard messages stored into the device in connection with
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`manufacturing or programming or the user can write his/her own messages
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`him/herself.” APPLE-1004, 5:44-47 (emphasis added); Petition 19-20. Mäkelä
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`teaches that, when an incoming call is received, “the user can answer the call
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`normally or give a certain key command that means sending a short message.”
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`APPLE-1004, 5:35-36 (emphasis added); Petition, 30. Mäkelä further states that
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`“[t]here can be several key commands each of them corresponding a different short
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`message,” enabling the communication device to at least partially compose a
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`message responsive to the incoming call from among the “standard messages
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`stored into the memory of the” communication device, based on user election of
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`the same. APPLE-1004, 5:36-42 (emphasis added); Petition, 30-31.
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`2.
`Claim 5
`Qualcomm’s argument with respect to claim 5 relies on its improper
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`construction of “composing” to mean “manually composing.” See Response, 56;
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`Section III.B, IV.B, supra. As previously discussed, this construction is improper,
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`and thus renders Qualcomm’s argument invalid. See Section III.B, IV.B, supra.
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`The aspects of the Petition devoted to addressing claim 5 thus remain
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`unrebutted by Qualcomm’s arguments. For instance, the Petition establishes that
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`that functionality in the device of Mäkelä, including the SMS message reply
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`functionality, is “implemented as software processes,” thereby rendering obvious
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`that “the message is composed using a Short Message Service application.”
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`APPLE-1004, 8:22-27; Petition, 23. This remains unrebutted. Further, the Petition
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`establishes that Mäkelä teaches that the communication device “identifies the
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`caller on the basis of an identification information” (the message identifier)
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`“included within the incoming call,” including an “ANI (Automatic Number
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`Identification) or CLI (Caller Line Identity),” which includes “the telephone
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`number of the calling party[.]” APPLE-1004, 1:56-62 and 3:30-34 (emphasis
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`added); Petition, 23-24.
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`3.
`Claim 14
`Qualcomm’s argument with respect to claim 14 is sim