UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc.
`Petitioner
`
`v.
`Qualcomm Inc.,
`Patent Owner
`
`Inter Partes Review No. IPR2018-01279
`Patent 7,844,037
`
`PATENT OWNER SUR-REPLY IN SUPPORT OF
`PATENT OWNER RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`

`

`2.
`
`3.
`
`III.
`
`B.
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`A.
`“prompting a user of the first computing device” ................................. 1
`1.
`Petitioner Does Not and Can Not Rebut That The Patentee
`Disclaimed “Embodiments Where No Reply Option Is
`Provided” ..................................................................................... 2
`Patent Owner’s Construction Is Not Only Entirely
`Consistent With The Specification And The Prosecution
`History, But It Is Mandated By The Intrinsic Record. ............... 8
`Patent Owner’s Construction Is Supported by the extrinsic
`record.........................................................................................11
`“composing” ........................................................................................12
`B.
`PETITIONER FAILS TO DEMONSTRATE THAT ANY OF THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ..................................15
`A.
`Neither Makela nor Moran, alone or in combination, disclose,
`teach, or suggest the claimed “prompting a user of the first
`computing device,” as recited in claim 1. ...........................................15
`Neither Makela nor Moran, alone or in combination, disclose, teach,
`or suggest the claimed “in response to receiving the incoming call,
`prompting a user of the first computing device to enter user input
`that instructs the first computing device to handle the incoming call
`by composing . . . a message,” as recited in claim 1. .............................16
`Neither Makela nor Moran, alone or in combination, disclose,
`teach, suggest, or render obvious the “automatically addressing the
`message to the second computing device,” as recited in claim 1. ........16
`Petitioner’s arguments regarding the dependent claims 2-14 and
`16-18 likewise lack merit ....................................................................17
`Petitioner has failed to show the absence of impermissible
`hindsight underlying its arguments .....................................................19
`IV. CONCLUSION ..............................................................................................21
`
`C.
`
`D.
`
`E.
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Arendi S.A.R.L. v. Google LLC,
`882 F.3d 1132 (Fed. Cir. 2018) ................................................................ 6, 7, 8, 9
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016) ............................................................................ 7
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .......................................................................... 20
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 20
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 15
`NHK Spring Co., Ltd.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................. 1
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 6
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 7
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) .......................................................................... 19
`STATUTES
`36 U.S.C. § 316(e) ................................................................................................... 20
`
`iii
`
`

`

`EXHIBIT LIST
`
`Patent Owner’s Exhibits
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`Disclaimer in Patent Under 37 CFR 1.321(a)
`
`U.S. Patent No. 6,219,413 to Burg
`
`Declaration of Puneet Kohli
`
`Declaration of Dr. Kevin Jeffay
`
`CV of Dr. Kevin Jeffay
`
`Transcript of Dr. Narayan Mandayam’s Deposition
`
`U.S. Patent No. 8,737,578
`
`Prosecution History for ’578 Patent
`
`Apple’s Invalidity Contentions
`
`Exhibit E to Apple’s Invalidity Contentions
`
`U.S. Pub. No. 2004/0127263 to Vegh
`
`U.S. Patent No. 6,484,027 to Mauney
`
`U.S. Patent No. 6,253,075 to Beghtol
`
`U.S. Pub. No. 2002/0132608 to Shinohara
`
`U.S. Pub. No. 2004/0185885 to Kock
`
`U.S. Pub. No. 2002/0084549 to Yang
`
`EP 1263201 A2 to Hoersten
`
`Sascha Segan, “Coming Attractions-Nokia’s Latest Camera Phone,”
`PCMag at 22
`
`2019
`
`Nokia 6682 User Guide (May 4, 2005) (“Nokia 6682 User Guide”)
`
`v
`
`

`

`2020
`
`Sascha Segan, “Nokia 6682,” PCMag (June 27, 2005)
`
`2022
`
`“IEEE 100: The Authoritative Dictionary of IEEE Standards Terms”
`(7th ed. 2000)
`
`2023
`
`Merriam-Webster’s Collegiate Dictionary (10th ed. 1997)
`
`2024
`
`2025
`
`Newton’s Telecom Dictionary, 16th Updated, Expanded and Much
`Improved Edition
`
`Oral Deposition of Jeremy R. Cooperstock, Ph.D. dated October 22,
`2019, Apple Inc. vs. Qualcomm Incorporated
`
`vi
`
`

`

`I.
`
`INTRODUCTION
`Petitioner’s obviousness challenges fail because Petitioner’s combinations do
`
`not disclose all the limitations of any challenged claim. Specifically, none of
`
`Petitioner’s prior art references disclose “prompting a user of the first computing
`
`device to enter user input,” “in response to the incoming call, handle the incoming
`
`call by composing,” or “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,”
`
`as required by the claims. Petitioner argues for constructions of claim terms that are
`
`divorced from the language and structure of the claims, the specification, and the file
`
`history. For the reasons set forth herein, and in the Patent Owner Response, the
`
`Board should confirm the patentability of the challenged claims of the ’037 Patent.
`
`II.
`
`CLAIM CONSTRUCTION
`Petitioner argues that no construction is necessary; however, because the
`
`parties dispute the meanings of certain terms, these terms are in controversy and
`
`should be construed accordingly. See NHK Spring Co., Ltd., IPR2018-00752, Paper
`
`8 at 7 (PTAB Sept. 12, 2018).
`
`“prompting a user of the first computing device”
`A.
`Based on the plain meaning of the term in light of the intrinsic record,
`
`“prompting a user of the first computing device” should be construed to mean
`
`“presenting reply options to the user of the first computing device,” which
`1
`
`

`

`necessarily entails “displaying a symbol or message to a user of the first computing
`
`device indicative of an option.” See Patent Owner Response at 14. Put simply,
`
`“prompting a user of the first computing device” requires the display of a symbol or
`
`message that expressly communicates that (1) input is desired or possible, and (2)
`
`that the user has an option for their response. See id. Accordingly, the claimed
`
`“prompting” is distinct from displaying call data (including Caller ID, caller name,
`
`and/or caller number) or notifications such as audio rings/chimes, image data containing
`
`the caller ID information, and vibrations. See EX-2004 at ¶ 63; Patent Owner
`
`Response at 15. Critically, and consistent with Patent Owner’s proposed
`
`construction, the intrinsic record establishes that a prompt is distinct from call data
`
`(including Caller ID, caller name, and/or caller number) and notifications such as
`
`audio rings/chimes, image data containing the caller ID information on a display of the
`
`device, and vibrations. See Patent Owner Response at 15.
`
`1.
`
`Petitioner Does Not and Can Not Rebut That the Applicant
`Disclaimed “Embodiments Where No Reply Option Is
`Provided”
`As discussed in the Patent Owner Response, in describing Figure 4, the
`
`specification notes that “[a]ccording to one embodiment, reply options are provided to
`
`the user in step 430.” APPLE-1001 at 7:38-39; see Patent Owner Response at 19. In the
`
`Institution Decision, therefore, the Board declined to construe “prompting” to mean
`
`“presenting reply options,” and noted that “[a]lthough the cited section describes ‘one
`
`2
`
`

`

`embodiment’ in which reply options are presented, the phrase ‘one embodiment’
`
`implies there are other embodiments where the reply options may not be provided.”
`
`Paper No. 11 (“Institution Decision”) at 12 (emphasis added); see Patent Owner
`
`Response at 19. While the Board agreed that “presenting reply options” in an
`
`embodiment constituted “prompting,” it understood that there were other embodiments
`
`in which no reply option is presented. Indeed, the specification expressly notes such
`
`other embodiments:
`
`While an embodiment such as described with FIG. 4 illustrates the use of
`multiple reply options, alternative implementations may be used where
`no reply option is provided. For example, the user may designate
`(i) message replies are to be generated for all incoming calls, or
`(ii) message replies are to be generated for all callers whom are known to
`be using a message-enabled device; or (iii) message replies are to be
`generated for a specific caller or set of callers. Thus, the user may remove
`the need to decide through manual input whether a particular call
`should be message replied.
`
`APPLE-1001 at 8:43-53 (emphasis added); see Patent Owner Response at 20. It is
`
`evident that when describing embodiments in which no reply option is provided, the
`
`specification contemplates situations in which the user has “remove[d] the need to
`
`decide through manual input whether a particular call should be message replied.”
`
`APPLE-1001 at 8:50-52 (emphasis added); see EX-2004 at ¶ 69; Patent Owner
`
`Response at 20. Put simply, the specification teaches that embodiments in which no
`
`3
`
`

`

`reply option is provided are embodiments that describe automatically responding—
`
`without manual input—to an incoming call with a message. See Paper No. 11 at 11
`
`(“[W]e determine that the term ‘automatically’ is broad enough to encompass ‘without
`
`manual input from the user.’”); see also EX-2004 at ¶ 69; Patent Owner Response at
`
`20. Thus, the specification only contemplates two types of embodiments:
`
`(i) embodiments in which reply options are provided to the user; and (ii) embodiments
`
`in which no reply options are provided to the user.
`
`Of the two types of embodiments contemplated by the specification, the
`
`Applicant disclaimed during prosecution those embodiments in which no reply options
`
`are provided to the user; in other words, the Applicant disclaimed embodiments in
`
`which an incoming call is automatically (without manual input) responded to with a
`
`message. See APPLE-1002 at 166-168; Patent Owner Response at 19-20.
`
`Specifically, the Applicant stated:
`
`Brown does disclose another approach where a text message is
`transmitted to a caller in response to a call from the caller being sent to
`voicemail or ignored (see steps 406 and 408 of FIG. 4). However,
`Brown teaches:
`In block 402 of FIG. 4, the user requests that incoming
`telephone calls be automatically responded to with a text
`response. As in block 302, the user may request this function
`by actuating a key or key sequence that is pre-programmed to
`start the auto-response function. For example, wireless phones
`
`4
`
`

`

`100 with integral auto-response modules 108 may also include
`one or more auto-response buttons 118 that would start the
`auto-response function until further notice (see paragraph 30 of
`Brown, emphasis added).
`Such an approach teaches away from the express limitations of Claim 1,
`as Claim 1 requires “(a) prompting a user of the first computing device
`to enter user input that instructs the first computing device to handle the
`incoming call by composing . . .” Instead of showing the features of this
`element, Brown discloses an approach where the user is not prompted
`to respond to an incoming call, since the user has previously instructed
`that all incoming calls be automatically responded to by a text message.
`Thus, in the approach of Brown, there is no action taught or
`suggested that is analogous to requesting user input in response to an
`incoming call, let alone, ‘in response to receiving the incoming call,
`prompting a user of the first computing device to enter user input that
`instructs the first computing device to handle the incoming call by
`composing, while not answering the incoming call, a message to a user
`of the second computing device:’ as required by Claim 1.
`
`APPLE-1002 at 166-168 (underlined emphasis in original, bolded emphasis
`added).
`To distinguish over Brown, the Applicant amended the claims and presented
`
`associated arguments that clearly disclaimed any claim scope corresponding to the type
`
`of embodiments in which an incoming call is automatically responded to with a
`
`message. See APPLE-1002 at 166-168; Patent Owner Response at 20. Moreover, the
`
`Examiner included the “prompting” limitation in the “Reasons for Allowance” in
`
`5
`
`

`

`the Notice of Allowance. See APPLE-1002 at 35; see also Arendi S.A.R.L. v. Google
`
`LLC, 882 F.3d 1132, 1136 (Fed. Cir. 2018) (“Here the applicant amended the claims
`
`and explained what was changed and why, and the examiner confirmed the reasons why
`
`the amended claims were deemed allowable. . . . Here too, the examiner's ‘Reasons for
`
`Allowance’ made clear that the examiner and the applicant understood what the
`
`applicant had changed, and what the claim amendment required.”).
`
`Crucially, neither Petitioner nor its expert disputes (nor can they) that the
`
`Applicant disclaimed embodiments in which no reply option is presented. In fact,
`
`the Petitioner’s Reply does not even mention the prosecution history—let alone
`
`address the disclaimer. Similarly, the Petitioner’s expert Dr. Cooperstock did not
`
`even review the prosecution history—a far cry from taking into account the
`
`Applicant’s disclaimer as to the embodiments in which no reply options are
`
`presented. Specifically, Dr. Cooperstock testified:
`
`Q.
`
`(By Mr. Oaks)· Did you look at the prosecution
`history of the '037 patent in -- in preparing for
`your deposition?
`A. No, I did not.
`Q.
`So you haven't read that at all?
`A. No.
`Cooperstock Transcript at 38:8-13.
`
`“Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to
`
`the ordinary artisan after reading the entire patent.” See Phillips v. AWH Corp., 415
`
`6
`
`

`

`F.3d 1303, 1321 (Fed. Cir. 2005) (en banc); Trs. of Columbia Univ. v. Symantec
`
`Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). “A party is [] not entitled to a claim
`
`construction divorced from the context of the written description and prosecution
`
`history. Ordinary meaning is not something that is determined in a vacuum. To the
`
`contrary, a word describing patented technology takes its definition from the context in
`
`which it was used by the inventor.” Eon Corp. IP Holdings v. Silver Spring Networks,
`
`815 F.3d 1314, 1320 (Fed. Cir. 2016).
`
`In the context of the ’037 Patent, a POSITA would, therefore, understand that
`
`the written description only contemplates two types of embodiments—one in which
`
`reply options are presented to the user, and the other in which no reply options are
`
`presented. Based on the written description and the prosecution history, a POSITA
`
`would understand that the only type of embodiments disclosed in the specification and
`
`not disclaimed during prosecution is the type in which reply options are provided to the
`
`user. The intrinsic record, therefore, compels construing “prompting a user of the first
`
`computing device” as providing reply options, which necessarily entails “displaying
`
`a symbol or message to a user of the first computing device indicative of an option,” as
`
`defined by the IEEE Dictionary. See EX-2022 at ¶ 70; Patent Owner Response at 23;
`
`see also Arendi, 882 F.3d at 1135 (“In construing patent claims, a court should consult
`
`the patent's prosecution history so that the court can exclude any interpretation that was
`
`disclaimed during prosecution.”). In other words, “prompting a user of the first
`
`7
`
`

`

`computing device” is something more than audio rings/chimes, image data containing
`
`the caller ID information on a display of the device, vibrations, display of caller name
`
`or caller number.
`
`2.
`
`Patent Owner’s Construction Is Not Only Entirely
`Consistent with the Specification and the Prosecution
`History, but It Is Mandated by the Intrinsic Record.
`As discussed in the Patent Owner Response, when considered as a whole, the
`
`specification of the ’037 Patent compels Patent Owner’s construction. First, the
`
`specification teaches the following:
`
`[A] computing device 200 may receive an incoming call 204, which is handled
`by the phone application 210. At an initial time, the incoming call 204 may
`include call data 212, which is identified by the phone application 210. In one
`embodiment, call data 212 includes identification information of the caller (e.g.
`"Caller ID" information). As such, call data 212 may include (i) a name of the
`caller, and/or (ii) a phone number used by the caller. The phone application
`210 may identify call data 212 from the incoming call 204 while causing
`transmission of audio rings/chimes, rendering of image data containing the
`Caller ID information on a display of the device, and/or other incoming call
`notification (e.g., vibration).
`APPLE-1001 at 4:60-5:5 (emphasis added). From this, it is apparent that call data
`
`includes identification information of the caller, which includes (i) a name of the caller
`
`and/or (ii) a phone number used by the caller. See id.; see also id. at 9:3-5. In addition,
`
`a user may be notified of the incoming call by audio rings/chimes, image data
`
`8
`
`

`

`containing the caller ID information on a display of the device, vibrations, etc. See id.
`
`at 4:60-5:5.
`
`The ’037 Patent differentiates between a prompt and call data. See EX-2004 at
`
`¶ 67. The specification specifically notes that “[t]he 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.” APPLE-1001 at 5:26-29
`
`(emphasis added). Not only does the specification differentiate between a prompt and
`
`call data (including Caller ID, caller name, and/or caller number), the specification also
`
`differentiates between a prompt and a ring (and by extension—as discussed above—
`
`other similar notifications such as chimes, image data containing the caller ID
`
`information on a display of the device, and vibrations). See EX-2004 at ¶ 67. In
`
`particular, the specification notes that “[t]he 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.” APPLE-1001 at 5:29-31 (emphasis
`
`added).
`
`In addition to differentiating a prompt from call data (including Caller ID, caller
`
`name, and/or caller number) and notifications such as audio rings/chimes, image data
`
`containing the caller ID information on a display of the device, and vibrations, the
`
`specification informs a POSITA that in accordance with the plain and ordinary meaning
`
`9
`
`

`

`of the term, a prompt is a symbol or message indicative of an option. See EX-2004 at
`
`¶ 67.
`
`Petitioner’s argument that “Qualcomm’s proposed construction directly
`
`contradicts disclosure in the ’037 specification” is a strawman. See Petitioner’s
`
`Reply at 10-11. Petitioner misleadingly quotes Patent Owner’s Response and/or
`
`misapprehends Patent Owner’s position when Petitioner asserts that “Qualcomm
`
`argues for further narrowing of ‘prompting,’ by suggesting that prompting must be
`
`distinct from presenting a ‘call notification,’ such as ‘a ring, . . . chimes, image data
`
`containing the caller ID information on a display of the device, and vibrations.’ ”
`
`Petitioner’s Reply at 10 (citing Patent Owner Response at 16 (citing EX-2004 at
`
`[67])). In the Response, Patent Owner did not assert that a prompt must be different
`
`from a “call notification.” Rather, Patent Owner asserted that a prompt is different
`
`from “notifications such as audio rings/chimes, image data . . . and vibrations.” See
`
`Patent Owner Response at 16. This statement that prompting is different from a
`
`notification is restricted to specific types of notifications: audio rings/chimes, image
`
`data and vibrations—this is because Patent Owner did not use a comma in front of
`
`“such as.” See id. Accordingly, Patent Owner is not arguing that all notifications—
`
`let alone all “call notifications”—are distinct from the claimed “prompt.” Indeed,
`
`Patent Owner expressly acknowledges that certain “call notification 606 may also
`
`present options.” See id. at 17.
`
`10
`
`

`

`3.
`
`Patent Owner’s Construction Is Supported by the Extrinsic
`Record.
`Patent Owner’s proposed construction is also supported by the extrinsic record.
`
`“Prompt” is defined by “The Authoritative Dictionary of IEEE Standards Terms” as
`
`“[a] symbol or message displayed by a computer system requesting input from the
`
`user of the system.” See Patent Owner Response at 14-15. As discussed above and in
`
`the Patent Owner Response, based on the intrinsic evidence, a POSITA would
`
`understand “prompting a user of the first computing device” to mean presenting reply
`
`options to the user of the first computing device, which necessarily entails “displaying
`
`a symbol or message to a user of the first computing device indicative of an option.”
`
`See id.
`
`Not only did Patent Owner’s expert vouch for the reliability of The Authoritative
`
`Dictionary of IEEE Standards Terms, but the Petitioner’s expert, too, emphasized that
`
`for technical terms, he would turn to standards-based dictionaries. See Jeffay
`
`Declaration at 21; Patent Owner Response at 14-15; Cooperstock Transcript at 14:2-11
`
`(“And if it involves a technical term, then I would look at what the standards were at
`
`the time in terms of how that term was interpreted.”). In addition, Petitioner’s assertion
`
`that “the definition of ‘prompting’ in the field . . . change[d]” between 2000 and 2005
`
`is meritless. See Petitioner’s Reply at 7. Indeed, as confirmed by Petitioner’s expert, a
`
`simple comparison of the definitions of “prompting” in the 2000 and 2005 versions of
`
`Newton’s Dictionary—the very dictionary that Petitioner’s relies upon—shows that the
`
`11
`
`

`

`definition of prompting remained unchanged between 2000 and 2005. See Exhibit
`
`2024; APPLE-1016-5;see also id. at 38:15-39:11. Moreover, the very dictionary that
`
`Petitioner relies on defines a “prompt” as “[a]n audible or visible signal to the system
`
`user that some process is complete or some user action is required. Also used to signify
`
`a need for further input and/or location of needed input.” APPLE-1016 at 5. As is
`
`evident, this definition of “prompt” supports Patent Owner’s construction.
`
`For at least these reasons and those discussed in the Patent Owner Response, the
`
`broadest reasonable interpretation of “prompting a user of the first computing device,”
`
`in view of the intrinsic record, means “providing reply options to the user of the first
`
`computing device,” which necessarily entails “displaying a symbol or message to a user
`
`of the first computing device indicative of an option.” See Patent Owner Response at
`
`26.
`
`“composing”
`B.
`Petitioner’s sole rebuttal to Patent Owner’s proposed construction is that the
`
`proposed construction “is inconsistent with the plain language of claim 1.”
`
`Petitioner’s Reply at 11. Specifically, Petitioner asserts that the “claim language
`
`clearly recites that the user’s input ‘instructs’ the first computing device to perform
`
`an action, namely, to handle the incoming call by composing.” Id. Petitioner’s
`
`rebuttal, however, fails to take into account the precise nature of the action that the
`
`user input instructs the computer to perform—i.e., the claim language only requires
`
`12
`
`

`

`the user input to instruct the computer to handle the call. Indeed, contrary to
`
`Petitioner’s assertion, the claim does not recite “user input that instructs the first
`
`computing device to compose . . . a message to a user of the second computing
`
`device.” See Patent Owner Response at 26.
`
`In addition, the specification makes it clear that “composing” a message is
`
`different from inserting or selecting a pre-formulated or precomposed message content,
`
`and refers to the user manually providing the contents for the message. See EX-2004 at
`
`¶ 75. For instance, the specification teaches that “the user of the receiving device [(i.e.,
`
`the first computing device)] may insert or compose a text message (e.g., ‘Call me
`
`later’).” APPLE-1001 at 4:1-3 (emphasis added); EX-2004 at ¶ 75. Further, in the only
`
`discussion in the specification on how a user may compose a message—i.e., the input
`
`mechanisms that enable a user to compose a message—the specification discloses:
`
`When used to compose message content 242 (FIG. 2), input
`mechanisms 340 may have any one of a variety of forms. For example,
`input mechanisms 340 may correspond to a set of hard or soft keys
`(soft keys may be iconic inform and displayed through use of a contact-
`sensitive display) arranged in the form of a QWERTY keyboard or
`other layout. The 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). As another example, input
`mechanism 340 may correspond to a microphone, so that the message
`input is a voice file. Still further, the input mechanism 340 may
`
`13
`
`

`

`correspond to a camera or other image capturing device, which
`captures an image for the message response 354.
`
`APPLE-1001 at 6:65-7:11 (emphasis added). The specification thereby teaches using
`
`input mechanisms such as keyboards, microphones, and image capturing devices for
`
`composing a message by typing, voice recording, and image capturing, respectively—
`
`i.e., different ways of manually providing message content. See id. Accordingly, the
`
`specification not only defines “composing [a message]” as being different from
`
`inserting or selecting precomposed content for the message, but it also describes the
`
`input mechanisms that enable a user to compose a message by manually providing
`
`message content. See EX-2004 at ¶ 75.
`
`The prosecution history of the ’037 Patent family reinforces the understanding
`
`that “composing” means providing manual content for the message. For instance, each
`
`of the independent claims of U.S. Patent No. 8,737,578 (the “’578 Patent”)—which is
`
`a continuation of U.S. Patent No. 8,311,189 (the “’189 Patent”), which in turn is a
`
`continuation of the ’037 Patent—specifically recites, “enabling the user to select a pre-
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`formulated or precomposed message content for the message or compose a
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`message content for the message.”
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`Petitioner, however, insists on reading the claim language divorced from the
`
`specification and the prosecution history. Not only does Petitioner not cite to the
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`intrinsic record in support of its position, but Petitioner also overlooks the intrinsic
`
`14
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`

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`evidence (discussed above and in the Patent Owner Response) that the Patent Owner
`
`relies on in support of its construction. “Even under the broadest reasonable
`
`interpretation, the Board’s construction cannot be divorced from the specification
`
`and the record evidence, and must be consistent with one that those skilled in the art
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`would reach.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir.
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`2015). Thus, Petitioner’s rebuttal fails, as a matter of law.
`
`For these reasons and the reasons discussed in the Patent Owner Response,
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`Patent Owner submits that “composing a message” should be construed to mean
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`providing message content manually for a message—as opposed to mere insertion of
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`pre-formulated or precomposed content. See Patent Owner Response at 26-36.
`
`III. PETITIONER FAILS TO DEMONSTRATE THAT ANY OF THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`Neither Makela nor Moran, alone or in combination, disclose,
`teach, or suggest the claimed “prompting a user of the first
`computing device,” as recited in claim 1.
`Petitioner has not argued and thus tacitly concedes that neither Makela nor
`
`Moran, alone or in combination, disclose, teach, or suggest “prompting a user of the
`
`first computing device,” as properly construed under Patent Owner’s proposed
`
`construction. For the reasons discussed above and in the Patent Owner Response,
`
`Patent Owner’s proposed construction of the “prompting” limitation is compelled
`
`by the record. See, e.g., Patent Owner Response at 26. Accordingly, under the proper
`
`construction of the “prompting” limitation the challenged claims are patentable.
`
`15
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`

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`B.
`
`Neither Makela nor Moran, alone or in combination, disclose,
`teach, or suggest the claimed “in response to receiving the
`incoming call, prompting a user of the first computing device to
`enter user input that instructs the first computing device to
`handle the incoming call by composing . . . a message,” as recited
`in claim 1.
`Petitioner has not argued and thus tacitly concedes that neither Makela nor
`
`Moran, alone or in combination, disclose, teach, or suggest the claimed “composing”
`
`limitation, as properly construed under Patent Owner’s proposed claim construction.
`
`For the reasons discussed above and in the Patent Owner Response, Patent Owner’s
`
`proposed construction of the “composing” limitation is compelled by the record. See,
`
`e.g., Patent Owner Response at 36. Accordingly, under the proper construction of the
`
`“composing” limitation, the challenged claims are patentable.
`
`C.
`
`Neither Makela nor Moran, alone or in combination, disclose,
`teach, suggest, or render obvious the “automatically addressing the
`message to the second computing device,” as recited in claim 1.
`Petitioner asserts that “it would have been obvious to a POSITA that sending
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`the short message reply to the CLI involves addressing the short message to the CLI”
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`and “[b]ecause [Makela] teaches that this CLI information is extracted from the call
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`signaling (rather than entered manually by the user), [Makela] teaches automatically
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`addressing the short message.” Petitioner’s Reply at 15. However, as mentioned in
`
`the Patent Owner Response, extracting CLI information from an incoming call—
`
`even if it is deemed automatically extracting CLI information—is not the same as
`
`automatically addressing the message to the second computing device. Petitioner,
`
`16
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`

`

`therefore, makes a logical leap in an attempt to find a teaching in Makela that simply
`
`does not exist. See Patent Owner Response at 52. Indeed, “Petitioner’s “proposed
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`combinations are the result of impermissible hindsight.” Id. at 1.
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`D.
`
`Petitioner’s arguments regarding the dependent claims 2-14 and
`16-18 likewise lack merit
`In its Reply, Petitioner simply parrots the arguments that it made in the
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`Petition, without addressing the counterarguments included in the Patent Owner
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`Response. For example, claim 2 recites, in part: “generating a graphic user-interface
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`feature that prompts the user to elect to have the message at least partially composed
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`in response to the incoming call.” As discussed above and in the Patent Owner
`
`Response with respect to claim 1, the combination of Makela and/or Moran does not
`
`disclose prompting a user to enter user input that relates to composing a message—
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`let alone a graphic user interface that prompts the user to elect to have the message
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`at least partially composed in response to the incoming call. See Patent Owner
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`Response at 36-51. Yet, Petitioner asserts that “displaying the SMS Reply Mode
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`window that allows the user to compose a short message to be sent in response to
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`the incoming call, as contemplated by the combination of Makela and Moran,
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`renders [claim 2] obvious.” Pet. at 20. Claim 2 expressly requires “a graphic user-
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`interface feature that prompts the user to elect to have the message at least be
`
`partially composed in response to the incoming call”—not an interface that allows