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 SUR-REPLY TO PATENT OWNER’S REPLY TO
`OPPOSITION TO 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 SUR-REPLY TO PATENT OWNER’S REPLY TO
`OPPOSITION TO MOTION TO AMEND
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`I.
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`TABLE OF CONTENTS
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`THE SUBSTITUTE CLAIMS IMPERMISSIBLY ENLARGE THE SCOPE
`OF THE CLAIMS OF THE ’037 PATENT .................................................... 1
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`A.
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`B.
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`C.
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`Substitute claim 26 removes the requirement of “the first computing
`device to handle the incoming call by composing . . . a message” from
`original claim 1 ...................................................................................... 2
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`Patent Owner’s arguments with respect to the language “automatically
`addressing the message” are unsupported by record evidence ............. 3
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`The removal of limitations from substitute claims 26, 27, 30, 40, and
`41 is nonresponsive ............................................................................... 5
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`II.
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`THE SUBSTITUTE CLAIMS ARE UNPATENTABLE DESPITE
`PATENT OWNER’S REPLY ARGUMENTS ............................................... 6
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`A.
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`B.
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`The combination of Mäkelä, Moran, and Pirskanen teaches
`“presenting a user of the first computing device a graphic user-
`interface” having “reply options” .......................................................... 6
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`Patent Owner’s attempt to paper over the disclosure of manual
`message composition in Mäkelä’s claims fails ..................................... 8
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`III. CONCLUSION ................................................................................................ 9
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`i
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`Patent Owner Qualcomm’s Reply1 fails to overcome the arguments
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`presented in Apple’s Opposition2 to its Motion to Amend.3 In particular, the
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`substitute claims presented in the Motion impermissibly broaden the original
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`claims of the ’037 patent. The substitute claims are also non-responsive to any
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`instituted ground, and therefore improper. In addition, Patent Owner is ineffective
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`in its attempts to rebut the arguments from the Opposition applying the cited art to
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`the substitute claims.
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`In short, Patent Owner’s Reply arguments fail to overcome the arguments in
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`the Opposition. Accordingly, for the reasons described in the Opposition and
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`herein, the substitute claims are unpatentable, and Patent Owner’s Motion to
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`Amend should be denied in full.
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`I.
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`THE SUBSTITUTE CLAIMS IMPERMISSIBLY ENLARGE THE
`SCOPE OF THE CLAIMS OF THE ’037 PATENT
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`As described in the Opposition, Patent Owner’s substitute claims, such as
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`independent claim 26, include within their scope subject matter that would not
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`have infringed the original claims of the ’037 patent. See Opposition, 2-7. These
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`1 Paper 38, hereinafter the “Reply.”
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`2 Paper 31, hereinafter the “Opposition.”
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`3 Paper 24, hereinafter the “Motion.”
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`1
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`substitute claims thus impermissibly broaden the scope of the original claims of the
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`’037 patent, and are improper. See id., 2; Thermalloy v. Aavid Eng’g, 121 F.3d
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`691, 692 (Fed. Cir. 1997) (emphasis added); see, e.g., MLB v. Front Row,
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`IPR2017-01127, slip op. at 11-12 (PTAB October 1, 2018) (Paper 42).
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`A.
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`Substitute claim 26 removes the requirement of “the first
`computing device to handle the incoming call by composing . . . a
`message” from original claim 1
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`Original claim 1 of the ’037 patent recites “prompting a user of the first
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`computing device to enter user input that instructs the first computing device to
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`handle the incoming call by composing … a message to a user of the second
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`computing device.” APPLE-1001, claim 1 (emphasis added). Substitute claim 26
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`changes the entity that composes the message from the “first computing device” to
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`“the user.” See Opposition, 3. As explained in the Opposition, a “user manually
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`composing the message would not have infringed the original claims of the ’037
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`patent, because original claim 1 required ‘the first computing device,’ rather than
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`the user, to ‘compos[e]…the message.’” Id., 4; see APPLE-1001, claim 1; Motion,
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`Appendix A; APPLE-1018, [55]. Thus, substitute claim 26 impermissibly
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`broadens original claim 1. Opposition, 4; see Thermalloy, 121 F.3d at 692
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`(emphasis added); see, e.g., MLB v. Front Row at 11-12.
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`2
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`In its Reply, Patent Owner argues that “Petitioner fails to understand that
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`claim 1 does not recite the step of the computing device actually composing the
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`message,” and proclaims that “the focus when comparing claims 1 and 26 should
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`be on how the computing device prompts the user, not what entity composes the
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`message.” Reply, 4-5 (emphasis added). Patent Owner fails to cite to any
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`authority or provide any explanation for this novel approach to claim interpretation
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`that requires disregard of the words of the claim itself. See id. When the claims
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`are properly interpreted, Patent Owner cannot escape the fact that original claim 1
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`required “the first computing device to handle the incoming call by composing
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`… a message,” and substitute claim 26 requires no such thing. By removing this
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`requirement, substitute claim 26 impermissibly broadens the scope of original
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`claim 1, and is thus improper.
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`B.
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`Patent Owner’s arguments with respect to the language
`“automatically addressing the message” are unsupported by
`record evidence
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`Patent Owner argues that the claim language “while not answering the
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`incoming call, automatically addressing the message” requires the “automatic
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`addressing be both ‘responsive to receiving the incoming call and the user entering
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`the user input’ as in [original] claim 1.” Reply, 6. Patent Owner cites to no
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`evidence whatsoever to support its positions with respect to this claim language.
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`3
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`Attorney Docket No: 39521-0050IP1
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`Patent Owner’s positions thus constitute mere attorney argument and should be
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`afforded little weight. In contrast, Petitioner’s arguments with respect to this claim
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`language are, by contrast, supported by record evidence. See Opposition, 4-6
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`(citing APPLE-1018, [56]-[57]).
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`In addition, Patent Owner fails to address the various examples of systems
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`that would be covered by substitute claim 26, but not by original claim 1. See
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`Opposition, 5-6. Each demonstrate impermissible broadening through amendment.
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`For example, as noted in the Opposition:
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`A system that automatically addressed the reply
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`message prior to receipt of the incoming call, such as by
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`having a pre-stored template for a specific reply message
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`for the second computing device addressed to its phone
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`number, would not have infringed the original claims, but
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`could infringe the substitute claims due to the removal of
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`the “responsive” conditions discussed above.
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`Id., 6 (citing Motion, Appendix A).
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`Thus, the arguments and evidence from the Opposition with respect to the
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`“automatically addressing” language remain unrebutted. Accordingly, as shown in
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`the Opposition, substitute claim 26 impermissibly enlarges the scope of original
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`claim 1 and is thus improper.
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`4
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`Attorney Docket No: 39521-0050IP1
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`C. The removal of limitations from substitute claims 26, 27, 30, 40,
`and 41 is nonresponsive
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`Patent Owner argues that “substitute claim 26 is responsive at least because
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`it narrows claim 1 in response to the Petitioner’s arguments that the scope of claim
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`1 is disclosed in the prior art of record.” Reply, 6. Patent Owner further argues
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`that the added limitations in substitute claim 26 are responsive to any instituted
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`ground. See id., 7. Even assuming that is the case, which Petitioner does not
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`concede, the removal of the original claim limitations (which are replaced by the
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`added limitations in substitute claim 26) is not responsive to any instituted ground.
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`The Board has previously required that both limitations “added to or removed from
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`a claim in a motion to amend” be evaluated for responsiveness, and has found
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`removal of claim language without explanation to be non-responsive. Lectrosonics
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`v. Zacxcom, IPR2018-01129, slip op. at 6 (PTAB Feb. 25, 2019) (Paper 15)
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`(precedential); see, e.g., Blackberry v. MobileMedia Ideas, IPR2013-00016, slip
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`op. at 17 (PTAB Feb. 25, 2014) (Paper 32) (“Without a reasonable explanation as
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`to why the features recited in the original patent claims are eliminated,
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`MobileMedia has not demonstrated that such amendments are responsive to a
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`ground of unpatentability involved in the trial.”). The removal of limitations from
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`substitute claim 26 (as well as from substitute claims 27, 30, 40, and 41) lacks such
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`an explanation.
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`5
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`Attorney Docket No: 39521-0050IP1
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`Thus, with no viable explanation for the removal of limitations in the
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`substitute claims (or indeed, any explanation at all), the substitute claims are non-
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`responsive.
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`II. THE SUBSTITUTE CLAIMS ARE UNPATENTABLE DESPITE
`PATENT OWNER’S REPLY ARGUMENTS
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`As demonstrated in the Opposition, the substitute claims are rendered
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`obvious by the combination of Mäkelä, Moran, and Pirskanen. See Opposition,
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`11-24. As shown below, Patent Owner’s Reply fails to rebut any of the arguments
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`presented in the Opposition. Thus, even if the substitute claims were permissible,
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`which they are not, these claims are nonetheless unpatentable for the reasons
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`described below and in the Opposition.
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`A. The combination of Mäkelä, Moran, and Pirskanen teaches
`“presenting a user of the first computing device a graphic user-
`interface” having “reply options”
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`Patent Owner’s arguments in its Reply fail to acknowledge or address the
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`description of the combination of Mäkelä, Moran, and Pirskanen, and related
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`evidence, as presented in the Opposition. See Opposition, 11-17. The Opposition
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`establishes that a “POSITA would have modified the communication device of
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`Mäkelä and Moran to implement the various reply options for incoming calls
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`taught by Mäkelä using the graphical user interface techniques taught by
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`Pirskanen.” Opposition, 12-13 (emphasis added) (citing APPLE-1004, Abstract,
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`6
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`3:30-34, 4:3-8, claim 6, claims 27-29; APPLE-1019, [0007], [0063], [0079];
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`APPLE-1018, [58]). Patent Owner’s arguments that, for example, “Pirskanen does
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`not … disclose … responding to an incoming call with a message response”
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`(Reply, 10); and “Mäkelä does not disclose presenting a user with a GUI that
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`presents reply options in response to receiving an incoming call” (Reply, 9) are
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`inconsequential to the combination advanced by the Opposition, as the references
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`are not being relied on for these features in the combination. See Opposition, 11-
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`17.
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`The closest Patent Owner comes to addressing the combination advanced by
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`the Opposition was its argument that “[e]ven if Pirskanen is only being used to
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`disclose a pop-up window that can be displayed in response to an incoming call …
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`it fails there as well.” Reply, 11. But again, Patent Owner fails to address the
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`described combination in which “the reply options of Mäkelä,” which Mäkelä
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`teaches are provided in response to an incoming call (see, e.g., APPLE-1004, 5:23-
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`36), “are implemented in the communication device … using the user interface
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`techniques of Pirskanen” (i.e., the pop-up windows). Opposition, 12.
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`Without addressing the combination of Mäkelä, Moran, and Pirskanen as it
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`is presented and applied in the Opposition, Patent Owner’s arguments fail. Indeed,
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`7
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`for reasons articulated by the Opposition, the advanced combination should be
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`sustained. See Opposition, 11-17.
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`B.
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`Patent Owner’s attempt to paper over the disclosure of manual
`message composition in Mäkelä’s claims fails
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`As described in the Opposition, Mäkelä “teaches that the message
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`responding option allows manual composition of all of the content of the message
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`and insertion of preformulated content for the message.” Opposition, 15 (citing
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`APPLE-1004, claims 27-28; APPLE-1018, [62]). The Opposition relies on claims
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`27 and 28 from Mäkelä as providing this teaching. See Opposition, 15.
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`In response, Patent Owner does not address the text of claims 27 and 28, or
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`the opinions of Petitioner’s expert regarding what the text of the claims would have
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`meant to a POSITA. See Opposition, 15; APPLE-1001, claims 27-28; APPLE-
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`1018, [62]. Patent Owner instead declares that “Makela is directed exclusively to
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`inserting pre-formulated, stored, content for the message,” and that the “claims of
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`Mäkelä, therefore, cannot possibly cover subject matter (i.e., related to
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`composing[)] that is outside the scope of the invention described in the
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`specification.” Reply, 10. But the proper inquiry in this context is not what
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`Mäkelä’s claims “cover,” but what their text would teach or suggest to a POSITA.
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`Patent Owner’s reliance on § 112 written description analysis would be relevant to
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`8
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`whether Mäkelä’s claims were infringed, but not with respect to their meaning in a
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`prior art context.
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`III. CONCLUSION
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`Patent Owner’s attempts to remedy the errors in its Motion to Amend are
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`futile. The proffered substitute claims simply are not patentable, and thus the
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`Motion should be denied in full.
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`Dated: November 12, 2019
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`Respectfully submitted,
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`/Dan Smith/
`W. Karl Renner, Reg. No. 41,265
`Thomas A. Rozylowicz, Reg. No. 50,620
`Timothy W. Riffe, Reg. No. 43,881
`Dan Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`9
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`Case No. IPR2018-01279
`Attorney Docket No: 39521-0050IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.8(b), the undersigned certifies that on November
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`12, 2019, a complete and entire copy of this Petitioner’s Sur-Reply to Patent
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`Owner’s Reply to Opposition to Motion to Amend was provided via email to the
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`Patent Owner by serving the correspondence email address of record as follows:
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`Brian W. Oaks
`Eliot Williams
`Chad Walters
`Joseph Akalski
`Charles Yeh
`Jessica Lin
`Puneet Kohli
`Baker Botts L.L.P.
`1001 Page Mill Road, Building One, Suite 200
`Palo Alto, California 94304-1007
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`Email: Qualcomm_037IPR@bakerbotts.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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