IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`David Champlin, et al.
`In re Patent of:
`7,844,037 Attorney Docket No.: 39521-0050IP2
`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
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,844,037 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`SUMMARY OF THE ’037 PATENT ............................................................. 1 
`A.  Brief Description ....................................................................................... 1 
`B.  Prosecution History of the ’037 Patent ..................................................... 2 
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................ 2 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 2 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 2 
`C.  Level of Ordinary Skill in the Art ............................................................. 4 
`D.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 5 
`1. 
`“voice-exchange session” (claim 1) ................................................ 5 
`2. 
`“instant message” (claims 3, 4, 8, 12, 13, and 22) .......................... 6 
`3. 
`“programmatically” (claims 12, 17, 19, and 22) ............................. 6 
`4. 
`“automatically” (claims 1, 3, 4, 11, 14, and 17) ............................. 6 
`5. 
`“one or more communication components” (claim 19) .................. 7 
`6. 
`“one or more wireless communication ports” (claim 22) ............... 8 
`III.  THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 9 
`A.  [GROUND 2A] – Claims 1-6, 12-16, and 18-22 are obvious over Brown
`in view of Moran ....................................................................................... 9 
`1.  Overview of Brown ......................................................................... 9 
`2.  Overview of Moran ....................................................................... 11 
`3. 
`Combination of Brown and Moran ............................................... 12 
`4. 
`Reasons to combine Brown and Moran ........................................ 12 
`B.  [GROUND 2B] – Claims 7-11, and 24-25 are obvious over Brown and
`Moran in view of Tsampalis ................................................................... 37 
`1.  Overview of Tsampalis ................................................................. 37 
`2. 
`Combination of Brown, Moran, and Tsampalis ............................ 38 
`3. 
`Reasons to combine Brown, Moran, and Tsampalis ..................... 39 
`C.  [GROUND 2C] – Claim 23 is obvious over Brown and Moran in view
`of Fargano ............................................................................................... 46 
`1.  Overview of Fargano ..................................................................... 46 
`2. 
`Combination of Brown, Moran, and Fargano ............................... 47 
`3. 
`Reasons to combine Brown, Moran, and Fargano ........................ 47 
`IV.  PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................. 49 
`V. 
`CONCLUSION .............................................................................................. 49 
`VI.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 50 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .............................. 50 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ....................................... 50 
`
`i
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 50 
`D.  Service Information ................................................................................ 51 
`
`
`
`
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`
`ii
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`
`
`
`EXHIBITS
`
`APPLE-1001
`
`U.S. Patent No. 7,844,037 to Champlin, et al. (“the ’037
`patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’037 patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. Narayan Mandayam
`
`APPLE-1004
`
`U.S. Patent No. 6,301,338 to Mäkelä (“Mäkelä”)
`
`APPLE-1005
`
`U.S. Pub. No. 20040203794 to Brown (“Brown”)
`
`APPLE-1006
`
`U.S. Pub. No. 20030104827 to Moran (“Moran”)
`
`APPLE-1007
`
`U.S. Pub. No. 2004/0203956 to Tsampalis (“Tsampalis”)
`
`APPLE-1008
`
`U.S. Patent No. 6,456,696 to Fargano (“Fargano”)
`
`APPLE-1009
`
`U.S. Patent No. 6,996,217 to Goldman (“Goldman”)
`
`APPLE-1010
`
`U.S. Pub. No. 20020065065 to Lunsford (“Lunsford”)
`
`APPLE-1011
`
`U.S. Patent No. 7,468,934 to Janik (“Janik”)
`
`APPLE-1012
`
`U.S. Patent No. 6,868,272 to Berkowitz (“Berkowitz”)
`
`APPLE-1013
`
`U.S. Pub. No. 20070133775 to Winkler (“Winkler”)
`
`APPLE-1014
`
`U.S. Patent No. 6,483,899 to Agraharam (“Agraharam”)
`
`
`
`
`iii
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-16, and 18-25
`
`(“the Challenged Claims”) of U.S. Patent No. 7,844,037 (“the ’037 patent”). As
`
`explained in this petition, there exists a reasonable likelihood that Apple will
`
`prevail with respect to at least one of the Challenged Claims.
`
`The Challenged Claims are unpatentable based on teachings set forth in at
`
`least the references presented in this petition. Apple respectfully submits that an
`
`IPR should be instituted, and that the Challenged Claims should be canceled as
`
`unpatentable.
`
`I.
`
`SUMMARY OF THE ’037 PATENT
`A. Brief Description
`Generally, the ’037 patent purportedly provides a method for enabling
`
`message responses to incoming phone calls. APPLE-1001, Abstract. In particular,
`
`the 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.
`
`1
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`

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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`B.
`Prosecution History of the ’037 Patent
`The ’037 patent issued on November 30, 2010 from U.S. Patent Application
`
`No. 11/200,511 (“the ’511 application”), filed August 8, 2005. See APPLE-1002.
`
`The patent does not claim priority to any earlier application. Thus, the earliest
`
`proclaimed priority date of the claims of the ’037 patent is August 8, 2005
`
`(hereinafter the “Critical Date”).
`
`After multiple rounds of Office Actions and amendments to the claims, the
`
`Office ultimately allowed the case and stated that the prior art of record failed to
`
`disclose the “prompting a user” and “automatically addressing the message” steps
`
`of the claimed method. See APPLE-1002, p. 35. As described in detail below,
`
`these claim limitations, and other limitations recited in the claims of the ’037
`
`patent, are taught by the cited references.
`
`II. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Apple certifies that the ’037 patent is available for IPR. The present petition
`
`is being filed within one year of service of a complaint against Apple in the
`
`Southern District of California. Apple is not barred or estopped from requesting
`
`this review challenging the Challenged Claims on the below-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`Apple requests an IPR of the Challenged Claims on the grounds set forth in
`
`2
`
`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`the table below, and requests that each of the Challenged Claims be found
`
`unpatentable. An explanation of how these claims are unpatentable under the
`
`statutory grounds identified below is provided in Section III, infra, which indicates
`
`where each element can be found in the cited prior art, and the relevance of that
`
`prior art. Additional explanation and support for each ground of rejection is set
`
`forth in APPLE-1003, the Declaration of Dr. Narayan Mandayam, referenced
`
`throughout this Petition.
`
`
`
`’037 Patent Claims
`Ground
`Ground 2A 1-6, 12-16, 18-22
`Ground 2B 7-11, 24-25
`
`Ground 2C 23
`
`
`
`Basis for Rejection
`Obvious over Brown in view of Moran
`Obvious over Brown in view of Moran
`and Tsampalis
`Obvious over Brown in view of Moran
`and Fargano
`
`Brown (APPLE-1005) qualifies as prior art at least under 35 U.S.C § 102(a)
`
`and § 102(e). Specifically, Brown published on October 14, 2004, more than nine
`
`months before the Critical Date, and is therefore prior art under 35 U.S.C § 102(a).
`
`Further, Brown was filed on May 6, 2002, more than three years before the Critical
`
`Date, and is therefore prior art under 35 U.S.C § 102(e).
`
`Moran (APPLE-1006) qualifies as prior art at least under 35 U.S.C § 102(b).
`
`Specifically, Moran published on June 5, 2003, more than one year before the
`
`3
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`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`
`Critical Date.
`
`Tsampalis (APPLE-1007) qualifies as prior art at least under 35 U.S.C §§
`
`102(e) and 102(a). Specifically, Tsampalis qualifies under 35 U.S.C. § 102(e)
`
`based on its filing date of December 31, 2002, which is over two years before the
`
`Critical Date. Further, Tsampalis qualifies under 35 U.S.C. § 102(a) based on its
`
`publication date of October 14, 2004, which is over nine months before the Critical
`
`Date.
`
`Fargano (APPLE-1008) qualifies as prior art at least under 35 U.S.C §
`
`102(b). Specifically, Fargano issued on September 24, 2002, more than one year
`
`before the Critical Date.
`
`C. Level of Ordinary Skill in the Art
`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
`
`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 wireless communication and networking systems.
`
`Alternatively, a POSITA would have had a Bachelor’s Degree (or higher degree)
`
`in an academic area emphasizing electrical engineering, computer engineering, or
`
`computer science and having two or more years of experience in wireless
`
`communication and networking systems. Additional education in a relevant field,
`
`4
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`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. See APPLE-1003, ¶13.
`
`D. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`Unless otherwise noted below, Petitioner submits that all terms should be
`
`given their plain meaning, and reserves the right to respond to any constructions
`
`that may later be offered by the Patent Owner or adopted by the Board. Petitioner
`
`is not waiving any arguments concerning indefiniteness or claim scope that may be
`
`raised in litigation.
`
`1.
`“voice-exchange session” (claim 1)
`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 network to the
`
`location of another device or user” and that it includes transmission “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). Thus, the term
`
`“voice-exchange session,” when construed in light of the specification of the ’037
`
`patent, means “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
`
`5
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`call.” See id., 2:47-52, 4:27-28; APPLE-1003, ¶¶44-45.
`
`2.
` “instant message” (claims 3, 4, 8, 12, 13, and 22)
`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, the term “instant
`
`message” should be construed light of the specification of the ’037 patent to mean
`
`“a message that when transmitted to a recipient, are rendered on a device of the
`
`recipient immediately, nearly immediately, or alternatively without user-action,
`
`such as a ‘Short Message Service’ or ‘SMS’ text message.” See APPLE-1001,
`
`2:60-64, claims 3, 4; APPLE-1003, ¶46.
`
`3.
`“programmatically” (claims 12, 17, 19, and 22)
`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” should be construed in light of the
`
`specification of the ’037 patent to mean “through the use of code, or computer-
`
`executable instructions.” Id.; APPLE-1003, ¶47.
`
`4.
`“automatically” (claims 1, 3, 4, 11, 14, and 17)
`The ’037 patent states that a “message may be transmitted automatically in
`
`6
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`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,” the term “automatically” should be construed in light
`
`of the specification to mean “performed without user input.” See id.; APPLE-
`
`1003, ¶48.
`
`5.
`“one or more communication components” (claim 19)
`Claim 19 of the ’037 patent recites “one or more communication
`
`components, at a first computing device, for handling voice and messaging
`
`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.
`
`7
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`
`
`APPLE-1001, 6:35-44 (emphasis added). Here, the ’037 patent expressly
`
`identifies a “radio frequency transceiver” as one example of a communication
`
`component. See id., 6:41. Accordingly, the term “communication component”
`
`should be construed in light of the 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-1001,
`
`6:35-44, 6:41; APPLE-1003, ¶¶49-50.
`
`6.
`
`“one or more wireless communication ports” (claim
`22)
`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. APPLE-1003, ¶51; 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. Accordingly, the term “wireless
`
`8
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`communication port” should be construed in light of the 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.” APPLE-1003, ¶51; see APPLE-1010, ¶0028; APPLE-1012, 3:63-64;
`
`APPLE-1011, 18:18-19; APPLE-1001, 6:35-44.
`
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`The following analysis shows how the cited references, either alone or in
`
`combination, teach or render obvious all limitations of the Challenged Claims,
`
`thereby rendering claims 1-16, and 18-25 of the ’037 patent unpatentable. Thus, a
`
`reasonable likelihood exists that the Petitioner will prevail with respect to claims 1-
`
`16, and 18-25 of the ’037 patent.
`
`A.
`
`[GROUND 2A] – Claims 1-6, 12-16, and 18-22 are obvious
`over Brown in view of Moran
`1. Overview of Brown1
`Brown teaches a “method for providing an automatic response to a telephone
`
`call” implemented in an “automatic response module may be integral to a wireless
`
`phone.” APPLE-1005, Abstract (emphasis added); APPLE-1003, ¶89. Brown
`
`
`1 Petitioner hereby expressly incorporates the entirety of the following
`
`discussions of Brown, Moran and the combination in Sections 1-4 into the
`
`element-by-element analysis of each of Grounds 2-A through 2-C, infra.
`
`9
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`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`teaches that “[a] user may recognize that an incoming call is being received by the
`
`activation of a ringer, vibration device, visual notification (such as a light, text
`
`message, etc.), etc.” APPLE-1005, ¶26 (emphasis added). After the incoming call
`
`is received, “information identifying the caller or the phone number of the caller
`
`(perhaps gathered from caller identification (ID)/automatic number identification
`
`(ANI) information) may be recorded” by the wireless phone. APPLE-1005, ¶27;
`
`see also claims 14, 18, 24, and 29; APPLE-1003, ¶89.
`
`In response to the visual notification or other prompt, the “user actuates a
`
`key or key sequence to request an auto-response to the incoming phone call.” Id.
`
`(emphasis added). Brown describes that “a user could select an auto-response
`
`button 118 on their wireless phone 100 when their phone starts ringing, which
`
`would stop the ringing of the phone and initiate the auto-response sequence.” Id.
`
`Brown teaches that the “auto-response to the incoming phone call” can include a
`
`“text message … transmitted using any suitable protocol, such as Short Message
`
`Service (SMS) or other protocols.” Id., ¶30; APPLE-1003, ¶90.
`
`As shown in FIG. 2, the method includes receiving an incoming phone call
`
`and responding with a “short message” if the user actuates a key or key sequence.
`
`APPLE-1003, ¶91:
`
`10
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`
`APPLE-1005, Detail of FIG. 2
`
`
`
`2. Overview of Moran
`Moran 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 (emphasis added);
`
`APPLE-1003, ¶54.
`
`11
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`3.
`Combination of Brown and Moran
`In the combination, the method of Brown 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 Brown is found not to include such functionality.
`
`See APPLE-1005, ¶27, claims 14, 18, 24, and 29; APPLE-1006, Abstract, claim 2;
`
`APPLE-1003, ¶92.
`
`4.
`Reasons to combine Brown and Moran
`A POSITA would have modified Brown according to the teachings of
`
`Moran to send the SMS message to the caller using the caller’s telephone number,
`
`as taught by Moran, in order to conform Brown’s operation with the conventional
`
`method of sending SMS messages, and thus allow Brown’s communication device
`
`to interoperate with and send SMS messages using conventional wireless
`
`communications networks. APPLE-1003, ¶114; see APPLE-1006, ¶¶4-6
`
`(describing SMS as being in use on the AT&T, Sprint, and Verizon wireless
`
`networks). Such a result would have been predictable because Moran teaches a
`
`communication device implemented in the manner proposed. APPLE-1003, ¶114;
`
`see APPLE-1006, ¶¶4-6.
`
`Claim 1
`[1 pre] “A method for operating a first computing device”
`The combination of Brown and Moran renders obvious a method for
`
`12
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`operating a first computing device. In the combination, Brown teaches a “method
`
`for providing an automatic response to a telephone call” implemented in an
`
`“automatic response module may be integral to a wireless phone” (a first
`
`computing device). APPLE-1005, Abstract (emphasis added); APPLE-1003, ¶89.
`
`As shown in FIG. 2, the method includes receiving an incoming phone call and
`
`responding with a “short message” if the user actuates a key or key sequence:
`
`APPLE-1005, Detail of FIG. 2
`
`
`
`Accordingly, the combination of Brown and Moran teaches a “method for
`
`operating a first computing device” as recited in the claim.
`
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`[1a] “the method being implemented by one or more processors of the
`computing device”
`The combination of Brown and Moran teaches that the method is
`
`implemented by one or more processors of the computing device. In the
`
`combination, Brown teaches that its described method “can be practiced with
`
`various telecommunications or computer system configurations, including Internet
`
`appliances, hand-held devices, wearable computers, palm-top computers, cellular
`
`or mobile phones, multi-processor systems, microprocessor-based or
`
`programmable consumer electronics, set-top boxes, network PCs, mini-computers,
`
`mainframe computers, and the like.” APPLE-1005, ¶40 (emphasis added);
`
`APPLE-1003, ¶94.
`
`Accordingly, the combination of Brown and Moran teaches that the method
`
`is “implemented by one or more processors of the computing device” as recited in
`
`the claim.
`
`[1b] “receiving, from a second computing device, an incoming call to initiate a
`voice-exchange session;”
`The combination of Brown and Moran teaches receiving, from a second
`
`computing device, an incoming call to initiate a voice-exchange session. As
`
`previously discussed, the ’037 patent defines the term “voice-exchange session” to
`
`include “telephone call[s].” See Section II.D.1, supra. In the combination, Brown
`
`teaches that “the wireless phone 100 receives an incoming telephone call.”
`
`APPLE-1005, ¶26 (emphasis added). FIG. 2 from Brown illustrates this:
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`14
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`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`
`APPLE-1005, Detail of FIG. 2 (annotated)
`
`
`
`A POSITA would have understood that the incoming telephone call received
`
`by the wireless phone of Brown (the first computing device) would have been
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`generated by another communication device (a second computing device).
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`APPLE-1003, ¶96; see APPLE-1009, FIG. 2; 5:13-16, 35-40.
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`Accordingly, the combination of Brown and Moran renders obvious
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`“receiving, from a second computing device, an incoming call to initiate a voice-
`
`exchange session” as recited in the claim.
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`15
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`[1c] “in response to receiving the incoming call, determining a message
`identifier associated with the second computing device wherein the message
`identifier is determined based at least in part on data provided with the
`incoming call”
`The combination of Brown and Moran renders this claim limitation obvious,
`
`as it integrates the portion of Brown that teaches, after the incoming call is
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`received, “information identifying the caller or the phone number of the caller
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`(perhaps gathered from caller identification (ID)/automatic number identification
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`(ANI) information) may be recorded” by the wireless phone. APPLE-1005, ¶27
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`(emphasis added); see also claims 14, 18, 24, and 29.
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`As previously discussed, the ’037 patent indicates that one example of a
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`message identifier is a phone number, such as the phone number of the caller
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`taught by Brown. See APPLE-1001, claim 5 (“wherein… the message identifier is
`
`a phone number”). In addition, it would have been obvious to a POSITA that the
`
`“caller identification (ID)/automatic number identification (ANI) information”
`
`described in Brown is data provided with the incoming call because it is signaling
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`information sent with the incoming call. APPLE-1003, ¶97; see APPLE-1009,
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`Abstract (“automatic number identification (ANI) information [is] included within
`
`[a] telephone call.”).
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`Accordingly, determining the phone number of the caller based on the caller
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`identification / ANI information included with the incoming call, as contemplated
`
`by the combination of Brown and Moran, teaches “in response to receiving the
`
`16
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`incoming call, determining a message identifier associated with the second
`
`computing device wherein the message identifier is determined based at least in
`
`part on data provided with the incoming call” as recited in the claim.
`
`[1d] “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”
`The combination of Brown and Moran renders this claim limitation obvious.
`
`In the combination, Brown teaches that “[a] user may recognize that an incoming
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`call is being received by the activation of a ringer, vibration device, visual
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`notification (such as a light, text message, etc.), etc.” APPLE-1005, ¶26 (emphasis
`
`added). In response to the visual notification or other prompt, the “user actuates a
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`key or key sequence to request an auto-response to the incoming phone call.” Id.
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`(emphasis added). Brown describes that “a user could select an auto-response
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`button 118 on their wireless phone 100 when their phone starts ringing, which
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`would stop the ringing of the phone and initiate the auto-response sequence.” Id.
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`Brown teaches that the “auto-response to the incoming phone call” can
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`include a “text message … transmitted using any suitable protocol, such as Short
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`Message Service (SMS) or other protocols.” Id., ¶30. Brown teaches that the user
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`may elect, by actuating the key sequence described above, to have an “incoming
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`call … either sent to voice mail,” in which case the call is connected to an external
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`voice mail system, or “ignored,” in which case the call “will be responded to via a
`
`17
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`text message” and “need not be connected.” Id. (emphasis added). It would have
`
`been obvious to a POSITA that if an incoming call is not connected, as taught by
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`Brown, the incoming call is not answered. APPLE-1003, ¶99; see APPLE-1005,
`
`¶30.
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`Accordingly, prompting a user with a visual notification to actuate a key
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`sequence to respond to an incoming call with an SMS text message without
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`connecting the incoming call, as contemplated by the combination of Brown and
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`Moran, teaches “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 recited in the claim.
`
`[1e] “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.”
`The combination of Brown and Moran renders this claim limitation obvious.
`
`As previously discussed, in the combination, Brown teaches determining a phone
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`number of the caller (the message identifier) from the incoming call. See, e.g.,
`
`[1c], supra.2 As also previously discussed, Brown teaches responding to the
`
`
`2 Cross citations in the present Petition are exemplary. All analysis in
`
`Section III applies to all claim elements to the extent it is relevant.
`
`18
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`incoming call by transmitting an SMS text message if the user actuates a particular
`
`key sequence. See, e.g., [1d], supra. Brown further teaches that “the text message
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`is transmitted to the initiator of the incoming phone call.” APPLE-1005, ¶30
`
`(emphasis added). The “initiator of the incoming phone call” is the caller whose
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`phone number is the message identifier. APPLE-1003, ¶100; see APPLE-1005,
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`¶27. It would have been obvious to a POSITA that transmitting an SMS text
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`message to the caller includes addressing the SMS text message to the caller’s
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`phone number. APPLE-1003, ¶100; see APPLE-1005, ¶30. Because Brown
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`teaches that the caller’s phone number is extracted from the call signaling (rather
`
`than entered manually by the user), Brown teaches automatically addressing the
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`SMS text message with the caller’s phone number. APPLE-1003, ¶100; see
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`APPLE-1005, ¶27, claims 14, 18, 24, and 29; Section II.D.4, supra.
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`To the extent Brown is found not to teach that the message is “addressed” to
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`the caller (the second computing device), Moran teaches that the “conventional”
`
`manner in which “SMS wireless message[s]” are sent involves “sending the
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`message to the phone number of the destination wireless device.” See APPLE-
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`1006, claim 2 (emphasis added); APPLE-1003, ¶101.
`
`Accordingly, the combination of Brown and Moran renders obvious
`
`“responsive to receiving the incoming call and the user entering the user input,
`
`automatically addressing the message to the second computing device using the
`
`19
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`

`

`Attorney Docket No. 39521-0050IP2
`IPR of U.S. Patent No. 7,844,037
`message identifier determined from the incoming call” as recited in the claim.
`
`Claim 2
`[2a] “The method of claim 1, further comprising: generating a graphic user-
`interface feature that prompts the user to elect to have the message at least
`partially composed in response to the incoming call”
`The combination of Brown and Moran renders this claim limitation obvious.
`
`As previously discussed (see, e.g., [1d], supra), in the combination, Brown teaches
`
`that in response to a visual notification or other prompt, the “user actuates a key or
`
`key sequence to request an auto-response to the incoming phone call.” APPLE-
`
`1005, ¶26 (emphasis added). Brown further teaches that “the wireless phone 100
`
`may utilize ‘soft keys’ or soft buttons instead of auto response selector buttons
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`118” (i.e., the keys described above)