throbber
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`David Champlin, et al.
`In re Patent of:
`7,844,037 Attorney Docket No.: 39521-0050IP1
`U.S. Patent No.:
`November 30, 2010
`
`Issue Date:
`Appl. Serial No.: 11/200,511
`
`Filing Date:
`August 8, 2005
`
`Title:
`METHOD AND DEVICE FOR ENABLING MESSAGE
`RESPONSES TO INCOMING PHONE CALLS
`
`
`
`DECLARATION OF DR. NARAYAN MANDAYAM
`
`1. My name is Dr. Narayan B. Mandayam. I am a Distinguished
`
`Professor of Electrical and Computer Engineering at Rutgers University. My
`
`current curriculum vitae is attached and some highlights follow.
`
`2.
`
`I received a bachelor degree (with Honors) in 1989 from the Indian
`
`Institute of Technology, Kharagpur, and M.S. and Ph.D. degrees in 1991 and 1994
`
`from Rice University, Houston, TX, all in electrical engineering.
`
`3.
`
`I was a Research Associate at the Wireless Information Network
`
`Laboratory (“WINLAB”), Department of Electrical and Computer Engineering,
`
`Rutgers University, between 1994 and 1996. In September 1996, I joined the
`
`faculty of Department of Electrical & Computer Engineering at Rutgers where I
`
`became Associate Professor in 2001, Professor in 2003, and Distinguished
`
`Professor in 2014. I also served as the Peter D. Cherasia Endowed Faculty Scholar
`
`at Rutgers University from 2010 to 2014. Currently, I also serve as the Chair of the
`
`Electrical and Computer Engineering Department as well as Associate Director at
`
`1
`
`APPLE 1003
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`

`

`WINLAB where I conduct research in various aspects of wireless systems and
`
`networks. I teach courses at Rutgers on the topics of Wireless System Design,
`
`Wireless Communication Technologies, Wireless Revolution, Detection and
`
`Estimation Theory and Introduction to Computing for Engineers. I was a visiting
`
`faculty fellow in the Department of Electrical Engineering at Princeton University
`
`in Fall 2002 and a visiting faculty at the Indian Institute of Science in Spring 2003.
`
`4. My research focuses on wireless networks and communications, and I
`
`have worked on various aspects of networking and wireless devices. Over the last
`
`25 years, I have published a wide range of articles on various aspects of wireless
`
`systems, including techniques for data transmission, resource allocation strategies,
`
`mathematical modeling, and performance analysis. Using constructs from game
`
`theory, communications and networking, my work has focused on system
`
`modeling and performance, signal processing as well as radio resource
`
`management for enabling wireless technologies to support various applications. I
`
`have coauthored 2 books on wireless networks (Principles of Cognitive Radio,
`
`Cambridge (2012) and Wireless Networks: Multiuser Detection in Cross-Layer
`
`Design, Springer (2005)), 6 book chapters and published over 200 papers in
`
`prestigious international journals and conferences. I have also given numerous
`
`invited presentations at a variety of industry, government, and academic forums.
`
`2
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`

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`5.
`
`Specifically, I have been doing research in various aspects of wireless
`
`data transmission for over 25 years addressing PHY, MAC and Network layer
`
`issues. I have made seminal research contributions to wireless data
`
`communications on issues ranging from the systems level (such as power control,
`
`base station assignment, capacity evaluation, protocol design, medium access
`
`control, and radio resource management) to the physical layer (such as detection
`
`and estimation). I have also done seminal work in the area of the PHY layer
`
`security, where properties of the radio channel are exploited for the purposes of
`
`key generation, authentication and encryption. My expertise includes cellular
`
`systems such as for 2G, 3G and 4G and I have published papers on a wide variety
`
`of topics related to the design and operation of GSM/TDMA, CDMA and LTE
`
`based systems. During this time, I have also worked extensively on wireless local
`
`area network (WLAN) technologies as well as wireless ad-hoc and sensor
`
`networks, and as such, I am quite familiar with 802.11 and Bluetooth.
`
`6.
`
`I also teach both graduate and undergraduate courses at Rutgers where
`
`I introduce students to the wide area network (WAN) cellular and local area
`
`network (LAN) technologies mentioned above. I have also served as a technical
`
`consultant since its inception in 2002 to the company Mojo Networks Inc., a world
`
`leader in enterprise network security for WLANs that offers the next generation of
`
`intelligent edge, secure, and flexible Wi-Fi solutions. I am familiar with the early
`
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`

`developments in the area of cellular systems (2G, 3G, 4G and 5G) and have served
`
`on several graduate thesis defense committees pertaining to all aspects of cellular
`
`systems operation.
`
`7.
`
`I have received several prestigious awards relating to my research on
`
`wireless networks and communications: the 2015 IEEE COMSOC Advances in
`
`Communications Award for seminal work on power control in wireless data
`
`networks (this is the highest paper award given by the IEEE Communications
`
`Society), the 2014 IEEE Donald G. Fink Award (recognizes the most outstanding
`
`tutorial paper across all IEEE publications) for the paper titled “Frontiers of
`
`Wireless and Mobile Communications” that discusses the historical and future
`
`landscape of both WAN and LAN wireless technologies, and the Fred W. Ellersick
`
`Prize from the IEEE Communications Society in 2009 for work on dynamic
`
`spectrum access models and spectrum policy. I also received the Peter D. Cherasia
`
`Faculty Scholar Award from Rutgers University in 2010, the National Science
`
`Foundation Career Award in 1998, and the Institute Silver Medal from the Indian
`
`Institute of Technology, Kharagpur, in 1989.
`
`8.
`
`I have served as an Editor for the journals IEEE Communication
`
`Letters (1999- 2002) and IEEE Transactions on Wireless Communications (2002-
`
`2004). I have also served as a guest editor of the IEEE JSAC Special Issues on
`
`Adaptive, Spectrum Agile and Cognitive Radio Networks (2007) and Game
`
`4
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`

`

`Theory in Communication Systems (2008). I was elected Fellow of the IEEE for
`
`“contributions to wireless data transmission.” I have also served as a Distinguished
`
`Lecturer of the IEEE Communications Society.
`
`9. My experience of nearly 30 years with networking and
`
`telecommunications in academic and practical situations as well as my hands on
`
`experience, has given me a detailed appreciation of the technology involved with
`
`the ‘037 patent.
`
`10.
`
`In writing this Declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the above fields; my
`
`experience in teaching those subjects; and my experience in working with others
`
`involved in those fields. In addition, I have analyzed the following publications
`
`and materials, in addition to other materials I cite in my declaration:
`
`11.
`
`I have been retained on behalf of Apple Inc. to offer technical
`
`opinions relating to U.S. Patent No. 7,844,037 (“the ’037 Patent” or APPLE-1001),
`
`and prior art references relating to its subject matter. I have reviewed the ’037
`
`Patent and relevant excerpts of the prosecution history of the ’037 Patent (“the
`
`Prosecution History” or APPLE-1002). Additionally, I have reviewed the
`
`following:
`
` U.S. Patent No. 6,301,338 to Mäkelä (“Mäkelä” or APPLE-1004);
`
` U.S. Pub. No. 20040203794 to Brown (“Brown” or APPLE-1005);
`
`5
`
`

`

` U.S. Pub. No. 20030104827 to Moran (“Moran” or APPLE-1006);
`
` U.S. Pub. No. 2004/0203956 to Tsampalis (“Tsampalis” or APPLE-1007);
`
` U.S. Patent No. 6,456,696 to Fargano (“Fargano” or APPLE-1008);
`
` U.S. Patent No. 6,996,217 to Goldman (“Goldman” or APPLE-1009);
`
` U.S. Pub. No. 2002/0065065 to Lunsford (“Lunsford” or APPLE-1010);
`
` U.S. Patent No. 7,468,934 to Janik (“Janik” or APPLE-1011);
`
` U.S. Patent No. 6,868,272 to Berkowitz (“Berkowitz” or APPLE-1012);
`
` U.S. Pub. No. 20070133775 to Winkler (“Winkler” or APPLE-1013); and
`
` U.S. Patent No. 6,483,899 to Agraharam (“Agraharam” or APPLE-1014).
`
`12. Counsel has informed me that I should consider these materials
`
`through the lens of a person having ordinary skill in the art related to the ’037
`
`Patent at the time of the earliest purported priority date of the ’037 Patent, and I
`
`have done so during my review of these materials. I understand issued on
`
`November 30, 2010 from U.S. Patent Application No. 11/200,511 (“the ’511
`
`application”), filed August 8, 2005. See APPLE-1002. There is no claim to an
`
`earlier priority application. It is therefore my understanding that the earliest
`
`priority date purported by the ’037 patent is August 8, 2005 (hereinafter the
`
`“Critical Date”).
`
`13. A person of ordinary skill in the art as of the Critical Date of the ’037
`
`patent (hereinafter a “POSITA”) would have had a Master of Science Degree in an
`
`6
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`

`academic area emphasizing electrical engineering, computer engineering, computer
`
`science, or an equivalent field (or a similar technical Master’s Degree, or higher
`
`degree) with a concentration in mobile computing and user interface design.
`
`Alternatively, a POSITA would have had a Bachelor’s Degree (or higher degree)
`
`in an academic area emphasizing electrical engineering, or computer engineering
`
`and having two or more years of experience in mobile computing and user
`
`interface design. Additional education in a relevant field, such as computer
`
`engineering, or electrical engineering, or industry experience may compensate for
`
`a deficit in one of the other aspects of the requirements stated above. I base this on
`
`my own practical and educational experiences, including my knowledge of
`
`colleagues and others at the time.
`
`14.
`
`I am familiar with the knowledge and capabilities of a POSITA as
`
`noted above. Specifically, my experience working with industry, undergraduate
`
`and post-graduate students, colleagues from academia, and designers and engineers
`
`practicing in industry has allowed me to become directly and personally familiar
`
`with the level of skill of individuals and the general state of the art.
`
`15.
`
`I have no financial interest in either party or in the outcome of this
`
`proceeding. I am being compensated for my work as an expert on an hourly basis,
`
`for all tasks involved. My compensation is not dependent in any manner on the
`
`outcome of these proceedings or on the content of my opinions.
`
`7
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`

`

`16. My opinions, as explained below, are based on my education,
`
`experience, and background in the fields discussed above. Unless otherwise stated,
`
`my testimony below refers to the knowledge of a POSITA in the fields as of the
`
`Critical Date.
`
`17. This declaration is organized as follows:
`
`I. 
`Brief Overview of the ’037 Patent ................................................................... 8 
`II. 
`Legal Standards for Prior Art .......................................................................... 9 
`III.  Claim Construction ........................................................................................ 14 
`IV.  Prior Art Grounds Based on Mäkelä ............................................................. 18 
`V. 
`Prior Art Grounds Based on Brown .............................................................. 40 
`VI.  Conclusion ..................................................................................................... 59 
`
`
`I.
`
`Brief Overview of the ’037 Patent
`18. Generally, the ’037 patent purportedly provides a method for enabling
`
`message responses to incoming phone calls. APPLE-1001, Abstract. In particular,
`
`the ’037 patent describes that “[i]n response to receiving [an] incoming call, [a]
`
`computing device” (e.g., a mobile phone) “may identify or determine a message
`
`identifier of the other computing device” that is attempting to initiate the call. Id.
`
`This “message identifier is determined based at least in part on data provided with
`
`the incoming communication.” Id. The ’037 patent describes that the “computing
`
`device may programmatically address a message to the other computing device
`
`using the message identifier determined from the incoming communication.” Id.
`
`8
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`

`

`A. Terminology
`19.
`I have been informed by petitioner's counsel that claim terminology
`
`must be given its plain and ordinary meaning in light of the specification.
`
`II. Legal Standards for Prior Art
`20. Given that I am not an attorney, my understanding of the legal
`
`standards throughout this section are based on discussion with plaintiff's counsel
`
`and experience in prior patent cases.
`
`21.
`
`I understand that a patent or other publication must first qualify as
`
`prior art before it can be used to invalidate a patent claim.
`
`22.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is prior to the invention of the
`
`asserted patent. I further understand from petitioner's counsel that a printed
`
`publication, such as an article published in a journal, magazine or trade
`
`publication, qualifies as prior art to an asserted patent if the date of publication is
`
`prior to the invention of the asserted patent.
`
`23.
`
`I understand that a U.S. or foreign patent also qualifies as prior art to
`
`an asserted patent if the date of issuance of the patent is more than one year before
`
`the filing date of the asserted patent. I further understand that a printed
`
`publication, such as an article published in a magazine or trade publication,
`
`9
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`

`constitutes prior art to an asserted patent if the publication occurs more than one
`
`year before the filing date of the asserted patent.
`
`24.
`
`I understand that a U.S. patent qualifies as prior art to the asserted
`
`patent if the application for that patent was filed in the United Stated before the
`
`invention of the asserted patent.
`
`A. Legal Standards for Anticipation
`25.
`I understand that patents or printed publications that qualify as prior
`
`art can be used to invalidate a patent claim as anticipated or as obvious.
`
`26.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a
`
`limitation-by-limitation basis.
`
`27.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all limitations of the claim are disclosed in
`
`that prior art reference, either explicitly or inherently (i.e., necessarily present).
`
`28.
`
`I understand that anticipation in an inter partes review must be proven
`
`by a preponderance of the evidence.
`
`B.
`29.
`
`Legal Standards for Obviousness
`I understand that even if a patent is not anticipated, it is still invalid if
`
`the differences between the claimed subject matter and the prior art are such that
`
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`

`the subject matter as a whole would have been obvious at the time the invention
`
`was made to a POSITA.
`
`30.
`
`I understand that a POSITA provides a reference point from which the
`
`prior art and claimed invention should be viewed. This reference point is applied
`
`instead of someone using his or her own insight or hindsight in deciding whether a
`
`claim is obvious.
`
`31.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as: (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, etc.
`
`32.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but other times the linkage between two or more prior art references is common
`
`sense. I further understand that obviousness analysis recognizes that market
`
`demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
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`33.
`
`I understand that if a technique has been used to improve one device,
`
`and a POSITA would recognize that it would improve similar devices in the same
`
`way, using the technique is obvious unless its actual application is beyond his or
`
`her skill.
`
`34.
`
`I also understand that practical and common sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a POSITA
`
`looking to overcome a problem through invention will often be able to fit together
`
`the teachings of multiple publications. I understand that obviousness analysis
`
`therefore takes into account the inferences and creative steps that a POSITA would
`
`employ under the circumstances.
`
`35.
`
`I understand that a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a POSITA has good reason to pursue
`
`the known options within his or her technical grasp because the result is likely the
`
`product not of innovation but of ordinary skill and common sense.
`
`36. The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. When a
`
`work is available in one field of endeavor, design incentives and other market
`
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`

`forces can prompt variations of it, either in the same field or a different one. If a
`
`POSITA can implement a predictable variation, the patent claim is likely obvious.
`
`37.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a POSITA, not just the patentee.
`
`Accordingly, I understand that any need or problem known to those of ordinary
`
`skill in the field of endeavor at the time of invention and addressed by the patent
`
`can provide a reason for combining the elements in the manner claimed.
`
`38.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common
`
`sense of one of ordinary skill in the art.
`
`39.
`
`I understand that secondary indicia of non-obviousness may include
`
`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
`
`the patent; (2) commercial success of processes covered by the patent; (3)
`
`unexpected results achieved by the invention; (4) praise of the invention by others
`
`skilled in the art; (5) taking of licenses under the patent by others; (6) deliberate
`
`copying of the invention; (7) failure of others to find a solution to the long felt
`
`need; and (8) skepticism by experts. I understand that evidence of secondary
`
`indicia of non-obviousness, if available, should be considered as part of the
`
`obviousness analysis.
`
`13
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`

`40.
`
`I also understand that there must be a relationship between any such
`
`secondary considerations and the invention. I further understand that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`41.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a POSITA having the understanding and knowledge reflected in
`
`the prior art and motivated by the general problem facing the inventor, would have
`
`been led to make the combination of elements recited in the claims. Under this
`
`analysis, the prior art references themselves, or any need or problem known in the
`
`field of endeavor at the time of the invention, can provide a reason for combining
`
`the elements of multiple prior art references in the claimed manner.
`
`42.
`
`I understand that obviousness in an inter partes review must be
`
`proven by a preponderance of the evidence.
`
`III. Claim Construction
`43.
`I have been instructed by counsel to give all claim terms their plain
`
`and ordinary meaning in light of the specification. In addition, I have been asked
`
`to opine on the proper constructions of the following terms under this standard.
`
`A.
`“voice-exchange session” (claim 1)
`44. The ’037 patent states that a “voice-exchange includes any data
`
`transfer method in which a user’s speech or utterance is transmitted across a
`
`14
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`

`network to the location of another device or user in real-time (e.g. instantaneous)
`
`or near real-time (e.g. less than three seconds).” APPLE-1001, 2:47-52. The ’037
`
`patent further states that “telephone calls are just one example of a voice-exchange
`
`session.” Id., 4:27-28 (emphasis added).
`
`45. Thus, in my opinion, a POSITA would have understood the term
`
`“voice-exchange session,” when viewed in light of the ’037 specification, to mean
`
`“a data transfer in which a user’s speech or utterance is transmitted across a
`
`network to the location of another device or user in real-time (e.g., instantaneous)
`
`or near real-time (e.g., less than three seconds), such as a telephone call.” See id.,
`
`2:47-52, 4:27-28.
`
`B.
` “instant message” (claims 3, 4, 8, 12, 13, and 22)
`46. The ’037 patent states “[a]s used herein, the term ‘instant message’ or
`
`‘instant messaging’ means messages that when transmitted to a recipient, [are]
`
`rendered on a device of the recipient immediately, nearly immediately, or
`
`alternatively without user-action.” APPLE-1001, 2:60-64. The ’037 patent
`
`indicates that one example of an “instant message” is a “Short Message Service” or
`
`“SMS” text message. See APPLE-1001, claims 3 and 4. Thus, in my opinion, the
`
`term “instant message,” when viewed in light of the ’037 specification, means “a
`
`message that when transmitted to a recipient, are rendered on a device of the
`
`recipient immediately, nearly immediately, or alternatively without user-action,
`
`15
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`

`such as a ‘Short Message Service’ or ‘SMS’ text message.” See APPLE-1001,
`
`2:60-64, claims 3, 4.
`
`C.
`“programmatically” (claims 12, 17, 19, and 22)
`47. The ’037 patent states that “[p]rogrammatically means through the use
`
`of code, or computer-executable instructions.” APPLE-1001, 3:18-19 (emphasis
`
`added). Thus, the term “programmatically,” when viewed in light of the ’037
`
`specification, means “through the use of code, or computer-executable
`
`instructions.” See id.
`
`D.
`“automatically” (claims 1, 3, 4, 11, 14, and 17)
`48. The ’037 patent states that a “message may be transmitted
`
`automatically in response to an event, such [as] upon completion of the message”
`
`or “[a]lternatively, the message may be transmitted through manual input from the
`
`user.” APPLE-1001, 8:5-9 (emphasis added). Based on the occurrence of “manual
`
`input” being presented in the ’037 patent as an alternative to the message being
`
`transmitted “automatically,” a POSITA would have understood the term
`
`“automatically,” when viewed in light of the ’037 specification, to mean
`
`“performed without user input.” See id.
`
`E.
`“one or more communication components” (claim 19)
`49. Claim 19 of the ’037 patent recites “one or more communication
`
`components, at a first computing device, for handling voice and messaging
`
`16
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`

`communications over wireless networks.” The specification of the ’037 patent
`
`states:
`
`components 318 may
`communication
`The
`configure computing device 300 to transmit and receive
`communications on Code Division Multiple Access
`(CDMA) networks, Global System
`for Mobile
`Communications (GSM) networks, and/ or other types of
`cellular networks. The communication components 318
`may include a Subscriber Identity Module (SIM) card, an
`input/output controller, a radio frequency transceiver, and
`an input/output controller. Combined, communication
`components 318 may enable voice-exchange, as well as
`text and other kinds of message data exchanges.
`
`50. APPLE-1001, 6:35-44 (emphasis added). Thus, the ’037 patent states
`
`that one example of a communication component is a “radio frequency
`
`transceiver.” See id., 6:41. Thus, in my opinion, a POSITA would understand that
`
`the term “communication component,” in light of the specification, means “a
`
`component that configures a computing device to transmit and receive
`
`communications from wireless networks, such as a radio frequency (RF)
`
`transceiver.” See APPLE-1001, 6:35-44, 6:41.
`
`F.
`
`“one or more wireless communication ports” (claim 22)
`
`17
`
`

`

`51. Claim 22 of the ’037 patent recites “one or more wireless
`
`communication ports that communicate with the one or more processors to enable
`
`the device to handle both voice and messaging communications over one or more
`
`wireless networks.” APPLE-1001, claim 22 (emphasis added). The specification
`
`of the ’037 patent does not include any explicit mention of wireless
`
`communication ports, but a POSITA as of the Critical Date would have understood
`
`a wireless communication port to be a component that allows communication on a
`
`wireless network, such as a radio frequency (RF) transceiver. See APPLE-1010,
`
`¶0028 (“a wireless port, or transceiver”); APPLE-1012, 3:63-64 (“Radio
`
`transceivers include radio ports and appropriate transceiver circuitry”); APPLE-
`
`1011, 18:18-19; APPLE-1001, 6:35-44. Thus, a POSITA would have understood
`
`the term “ wireless communication port,” in light of the ’037 specification, to mean
`
`“a component that configures a computing device to transmit and receive
`
`communications from wireless networks, such as a radio frequency (RF)
`
`transceiver.” See APPLE-1010, ¶0028; APPLE-1012, 3:63-64; APPLE-1011,
`
`18:18-19; APPLE-1001, 6:35-44.
`
`IV. Prior Art Grounds Based on Mäkelä
`A. Overview of Mäkelä
`52. Mäkelä, entitled “Activation of a Telephone’s Own Call Answering
`
`Equipment According to the Number of the Calling Party,” teaches a method “for
`
`18
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`

`replying to a call coming to a portable terminal in a situation where the user of the
`
`portable terminal can’t answer the call[.]” APPLE-1004, Claim 1, 3:26-30.
`
`Mäkelä teaches that “in response to the incoming call, the communication device
`
`identifies the caller on the basis of an identification information included within
`
`the incoming call and sends a reply according to a selection made by the user[.]”
`
`Id., 3:30-34 (emphasis added). The “reply” may be “a voice message, an e-mail
`
`message, a facsimile, [or] an SMS message in the form of a character string. Id.,
`
`3:44-46 (emphasis added). Mäkelä states that the identification information of the
`
`caller includes an “ANI (Automatic Number Identification) or CLI (Caller Line
`
`Identity),” which includes “the telephone number of the calling party[.]” Id., 1:56-
`
`62 (emphasis added). This CLI information is extracted from the call signaling
`
`(rather than entered manually by the user), and is used to automatically address the
`
`short message response to the calling party. See APPLE-1004, 3:38-46; see also
`
`5:9-16.
`
`53. Mäkelä further teaches that this short message response “can be
`
`effected automatically or through a key command and it can be effected
`
`immediately after the call has come or with a short delay, so that the receiving
`
`party can choose between different alternative functions after having seen the
`
`telephone number of the calling party on the display of the telephone.” Id., 4:3-8
`
`(emphasis added); see also claim 6.
`
`19
`
`

`

`B. Overview of Moran
`54. Moran, entitled “rerouting/reformating wireless messages for cross
`
`connectivity between service providers” teaches a method that “enables wireless
`
`device users to send messages” such as SMS text messages, “from their devices to
`
`other wireless devices that use a different service provider than the sending
`
`device.” APPLE-1006, Abstract. Moran teaches that the “conventional” manner
`
`in which “SMS wireless message[s]” are sent involves “sending the message to the
`
`phone number of the destination wireless device.” See APPLE-1006, claim 2.
`
`C. The combination of Mäkelä and Moran
`55.
`In the combination, the method of Makela is modified according to
`
`the “conventional” techniques of Moran to address its SMS text message replies
`
`sent in response to incoming calls using the “phone number” of the calling party, to
`
`the extent the method described in Makela is found not to include such
`
`functionality. See APPLE-1004, Claim 1, 1:56-62, 3:26-46, 4:3-8, 5:9-16;
`
`APPLE-1006, Abstract, claim 2; APPLE-1003, ¶55. In the combination, Mäkelä
`
`teaches a method “for replying to a call coming to a portable terminal” (e.g., a
`
`“communication device”) “in a situation where the user of the portable terminal
`
`can’t answer the call[.]” APPLE-1004, Claim 1, 3:26-30 (emphasis added).
`
`Mäkelä teaches that “in response to the incoming call, the communication device
`
`identifies the caller on the basis of an identification information included within
`
`20
`
`

`

`the incoming call and sends a reply according to a selection made by the user[.]”
`
`Id., 3:30-34 (emphasis added). The “reply” may be “a voice message, an e-mail
`
`message, a facsimile, [or] an SMS message in the form of a character string. Id.,
`
`3:44-46 (emphasis added).
`
`56. Also in the combination, Mäkelä teaches that “the communication
`
`device must have means for controlling the operation,” which are “preferably
`
`implemented as software processes that are stored to the memory means included
`
`in the communication device in a form to be performed by the microprocessor
`
`controlling its operation.” APPLE-1004, 8:22-27 (emphasis added). A POSITA
`
`would thus understand that the communciation device is a computing device. See
`
`id.
`
`57.
`
`In the combination, Mäkelä states that its method starts when “an
`
`incoming call is noticed” by the communication device (first computing device).
`
`APPLE-1004, 5:2-3 (emphasis added). Mäkelä also refers to this action as
`
`“receiving the call.” Id., 3:22 (emphasis added). This incoming telephone call is
`
`an “incoming telephony communication.” Further, FIG. 1 from Mäkelä shows that
`
`its described method begins with the communication device receiving a call:
`
`21
`
`

`

`APPLE-1004, Detail of FIG. 1 (annotated)
`
`
`
`58. Assuming that a telephony network is functioning properly, the device
`
`that receives a particular incoming call is the intended recipient of that incoming
`
`call. See, e.g., APPLE-1009, FIG. 2; 5:13-16, 35-40 (describing a “call recipient”
`
`receiving an incoming call from a “caller”); APPLE-1013, ¶¶ 0017, 0023; APPLE-
`
`1014, 5:58-60. Thus, the communications device of Mäkelä, which receives the
`
`incoming call, is the intended recipient of that call.
`
`59. Mäkelä further teaches that the communication device is a “mobile
`
`phone,” and that the received call is a telephone call. See id., 6:54-7:7, 9:15-18,
`
`3:19-26, FIG. 3. As previously discussed, the ’037 patent gives a telephone call as
`
`one example of a “voice-exchange session.”
`
`60. Further, in the combination, Mäkelä also teaches that the incoming
`
`call is received from a second computing device. Mäkelä states that “it is possible
`
`to judge e.g. from the telephone number included in the CLI information of the
`
`22
`
`

`

`calling party, if the calling party has a GSM telephone.” APPLE-1004, 5:16-19
`
`(emphasis added). This passage indicates that the incoming call is received from
`
`another communications device (e.g., a GSM telephone), which is a second
`
`computing device. See id. Further, a POSITA would have understood that the
`
`incoming telephone call received by the communication device of Mäkelä (the first
`
`computing device) would have been generated by another communication device
`
`(a second computing device).
`
`61.
`
`In the combination, Mäkelä states that the communication device (the
`
`first computing device) “identifies the caller on the basis of an identification
`
`information included within the incoming call.” Id., 3:30-34 (emphasis added).
`
`This identification information (the message identifier) includes an “ANI
`
`(Automatic Number Identification) or CLI (Caller Line Identity),” which includes
`
`“the telephone number of the calling party[.]” Id., 1:56-62 (emphasis added). The
`
`’037 patent indica

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