UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner
`
`____________
`
`Case IPR2018-01280
`Patent No. 7,844,037
`____________
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`

`

`Case IPR2018-01280
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1
`I.
`OVERVIEW OF THE ’037 PATENT ............................................................ 3
`II.
`III. OVERVIEW OF THE PROSECUTION HISTORY OF THE ’037 PATENT
` ......................................................................................................................... 4
`IV. CLAIM CONSTRUCTION .......................................................................... 11
`A.
`“prompting” ......................................................................................... 12
`PETITIONER FUNDAMENTALLY MISCONSTRUES ITS PRIMARY
`REFERENCE (BROWN) ............................................................................... 17
`VI. PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY OF THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ........................................................................................ 24
`A.
`Petitioner Fails to Demonstrate that the Combination of Brown and
`Moran Discloses Every Limitation of Independent Claim 1 (Grounds
`2A and 2B: Claims 1–16 and 18) ........................................................ 24
`1.
`The combination of Brown and Moran does not disclose
`“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.” ................................................................... 24
`“prompting” .............................................................................. 25
`The combination of Brown and Moran does not disclose
`“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.” .......... 27
`Petitioner Fails to Establish a Motivation to Combine or Reasonable
`Expectation of Success ........................................................................ 31
`
`V.
`
`a)
`2.
`
`B.
`
`
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`Case IPR2018-01280
`
`B.
`
`C.
`
`VII. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 325(D) TO DENY REVIEW .......................................................... 34
`A.
`Similarity of the asserted art and the prior art involved during
`examination: Brown was substantially considered during prosecution
` ............................................................................................................. 35
`The extent to which the asserted art was considered during
`examination: Brown was the basis for a rejection during prosecution
`and it was substantively considered .................................................... 36
`The cumulative nature of the asserted art and the prior art considered
`during examination: Moran is cumulative to other references cited
`during prosecution ............................................................................... 39
`D. Whether Examiner erred in its consideration of the asserted prior art:
`Petitioner fails to show how Examiner erred in its consideration of
`Brown .................................................................................................. 41
`Extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior art
`or Patent Owner’s arguments during examination: Petitioner relies on
`Brown in substantially the same manner as the Examiner .................. 42
`The extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art: Petitioner’s
`“additional evidence” does not warrant reconsideration of the art ..... 43
`VII. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 315(D) TO DENY REVIEW OF DUPLICATIVE
`PROCEEDINGS ............................................................................................ 45
`VIII. CONCLUSION .............................................................................................. 46
`
`
`
`E.
`
`F.
`
`
`
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`Case IPR2018-01280
`
`EXHIBIT LIST
`
`Patent Owner’s Exhibits
`
`2001
`
`2002
`
`2003
`
`Disclaimer in Patent Under 37 CFR 1.321(a)
`
`U.S. Patent No. 6,219,413 to Burg
`
`U.S. Publication No. 2002/0187794 to Fostick
`
`
`
`iv
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`Case IPR2018-01280
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Arctic Cat Inc. v. Bombardier Recreational Prod. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) .......................................................................... 33
`Arctic Cat, Inc. v. Polaris Indus., Inc.,
`No. IPR2017-00199, 2017 WL 1394062 (P.T.A.B. Apr. 17, 2017) .................. 39
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................. 23, 29, 44
`Baker Hughes Inc. v. LiquidPower Specialty Prods. Inc.,
`No. IPR2016-01905, 10 (P.T.A.B. Apr. 10, 2017) ................................. 11, 13, 14
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`No. IPR2017-01587, 23 (P.T.A.B. Dec. 15, 2017) (designated
`informative Mar. 21, 2018) ........................................................................... 39, 41
`Becton, Dickinson and Company v. B. Braun Melsungen AG,
`No. IPR2017-01586, 17–18 (P.T.A.B. Dec. 15, 2017) ...................................... 35
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................ 11
`Echostar Corporation v. Realtime Data LLC,
`No. IPR2018-00614, 2018 WL 4232406 (P.T.A.B. Sept. 5, 2018) ................... 39
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 33
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) .................................................................... 23, 31
`In re Smith Int’l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017) .......................................................................... 12
`In re Translogic Tech., Inc.,
`504 F.3d 1250 (Fed. Cir. 2007) .......................................................................... 12
`
`
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`v
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`

`

`Case IPR2018-01280
`
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) .......................................................................... 22
`Institut Pasteur. Pasteur v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .......................................................................... 33
`Kayak Software Corp. v. Int’l Bus. Mach. Corp.,
`No. CBM2016-00075, 9 (P.T.A.B. Dec. 15, 2016) (designated
`informative Mar. 21, 2018) ................................................................................. 36
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 32
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 22
`Liberty Mut. Ins. Co. v. Progressive Casualty Insurance Co.,
`No. CBM-2012-00003, 2012 WL 9494791 (P.T.A.B. Oct. 25,
`2012) ................................................................................................................... 45
`Microsoft Corp. v. Koninkijke Philips N.V.,
`No. IPR2018-00277 (June 8, 2018) .............................................................. 40, 41
`Nobel Biocare Servs. AG v. Instradent USA, Inc.,
`903 F.3d 1365 (Fed. Cir. 2018) ............................................................................ 2
`Oracle Corp. v. Clouding IP, LLC,
`No. IPR2013-00075 (P.T.A.B. June 13, 2013) ................................................... 46
`Personal Web Techs. v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 23
`Trustees of Columbia Univ. in City of New York v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 12
`Unified Patents Inc. v. Berman,
`No. IPR2016-01571, 9 (P.T.A.B. Dec. 14, 2016) (designated
`informative October 24, 2017) ..................................................................... 34, 36
`Ziegmann v. Stephens,
`No. IPR2015-01860, 2017 WL 3923543 (P.T.A.B. Sept. 6, 2017) ....... 34, 42, 44
`
`
`
`vi
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`Case IPR2018-01280
`
`STATUTES
`35 U.S.C. 253(a) ........................................................................................................ 1
`35 U.S.C. § 315(d) ............................................................................................... 3, 45
`35 U.S.C. § 325(d) ................................................................................... 3, 34, 39, 44
`35 USC 103(a) ................................................................................................... 5, 7, 9
`OTHER AUTHORITIES
`37 C.F.R. § 42.1 ................................................................................................. 45, 46
`37 C.F.R. § 42.24(a)(1)(i) ........................................................................................ 46
`37 C.F.R. § 42.100(b) .............................................................................................. 11
`37 C.F.R. § 42.107 (e) ................................................................................................ 1
`
`
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`Case IPR2018-01280
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`I.
`
`INTRODUCTION
`Petitioner asserts three grounds of unpatentability, all of which should be
`
`denied institution. In Ground 2A, Petitioner alleges that claims 1–6, 12–16, and 18–
`
`22 of U.S. Patent No. 7,844,037 (“the ’037 Patent”) are obvious in view of the
`
`combination of U.S. Publication No. 2004/0203794 (“Brown”) and U.S. Publication
`
`No. 2003/0104827 (“Moran”). Petition for Inter Partes Review of U.S. Pat. No.
`
`7,844,037, Case IPR2018-01280 (“Petition” or “Pet.”) at 3. In Ground 2B, Petitioner
`
`alleges that claims 7–11 and 24–25 of the ’037 Patent are obvious in view of the
`
`combination of Brown, Moran, and U.S. Publication No. 2004/0203956
`
`(“Tsampalis”). Id. In Ground 2C, Petitioner alleges that claim 23 is obvious in view
`
`of the combination of Brown, Moran, and U.S. Patent No. 6,456,696 (“Fargano”).
`
`Id. The Petition should be denied as to all challenged claims and all asserted grounds
`
`for at least four reasons.1
`
`
`1
`Patent Owner has filed a statutory disclaimer to disclaim claims 19 through
`
`25; accordingly, Ground 2C (claim 23) is rendered moot, and the remaining
`
`grounds/claims are as follows: Ground 2A (claims 1–6, 12–16, and 18–22); Ground
`
`2B (claims 7–11). See Ex. 2001 (Disclaimer); 37 C.F.R. § 42.107 (e) (“The patent
`
`owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with §
`
`1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter
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`Case IPR2018-01280
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`First, none of the cited prior art discloses two critical limitations of the
`
`challenged claims: “prompting a user of the first computing device to enter user
`
`input” and “automatically addressing the message to the second computing device
`
`using the message identifier determined from the incoming call,” as recited in
`
`independent claim 1—on which claims 2–18 depend. And Petitioner has failed to
`
`establish that Brown, Moran, Tsampalis, or Fargano either alone or in combination,
`
`disclose, teach, or suggest every limitation of independent claim 1 or its dependent
`
`claims 2–18. For this reason alone, the Petition should be denied.
`
`Second, Petitioner has not articulated a rational basis for combining the
`
`asserted references. More specifically, Petitioner fails to explain not only why a
`
`skilled artisan would have been motivated to make the proposed combinations, but
`
`how the skilled artisan would have had a reasonable expectation of success in doing
`
`so. Moreover, even if a skilled artisan could have made and would have been
`
`motivated to make the proposed combinations, those combinations still would not
`
`satisfy each and every element of the challenged claims. For this additional reason,
`
`the Petition should be denied.
`
`Third, Petitioner relies on art and arguments that were extensively considered
`
`
`partes review will be instituted based on disclaimed claims.”); Nobel Biocare Servs.
`
`AG v. Instradent USA, Inc., 903 F.3d 1365, 1372 (Fed. Cir. 2018).
`
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`Case IPR2018-01280
`
`by the Examiner during the prosecution of the ’037 Patent. The Board should,
`
`therefore, exercise its discretion under 35 U.S.C. § 325(d) to deny review.
`
`Fourth, Petitioner has filed two petitions for inter partes review against the
`
`’037 Patent, including the Petition in this IPR proceeding. The Board should,
`
`therefore, exercise its discretion under 35 U.S.C. § 315(d) to deny review of
`
`duplicative proceedings.
`
`II. OVERVIEW OF THE ’037 PATENT
`Claim 1 of the ’037 Patent recites:
`
`1. A method for operating a first computing device, the method being
`implemented by one or more processors of the computing device and
`comprising:
`receiving, from a second computing device, an incoming call to initiate
`a voice-exchange session;
`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;
`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;
`and
`
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`Case IPR2018-01280
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`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.
`APPLE-1001 at 9:63–10:11.
`
`According to Claim 1, while an incoming call is being received, a message
`
`identifier associated with the calling device is determined and the user of the called
`
`device is presented with at least the option to handle the incoming call by composing
`
`a message to the caller, without answering the call. Claim 1 further recites that in
`
`response to receiving the incoming call, the user is presented with the option of
`
`composing a message in response to receiving the call, and when the user selects the
`
`option of composing a message, the message is automatically addressed using the
`
`determined message identifier of the caller.
`
`III. OVERVIEW OF THE 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, after four office
`
`actions, involving fifty-three (53) references cited by the Examiner, as well as claim
`
`amendments and arguments in response. APPLE-1002 (file history of ’037 Patent).
`
`Petitioner, however, appears to conveniently overlook much of the relevant file
`
`history. In many instances, the Examiner considered prior art references that
`
`disclose substantially similar subject matter as the references cited by Petitioner.
`
`APPLE-1002 at 219 (February 27, 2009, list of references cited by Examiner); id. at
`
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`Case IPR2018-01280
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`222 (February 27, 2009, list of references cited by Applicant and considered by
`
`Examiner); id. at 188 (July 24, 2009, list of references cited by Examiner); id. at 24
`
`(October 21, 2010, list of references cited by Examiner); id. at 71–72 (June 17, 2010,
`
`list of references cited by Examiner); id. at 75 (June 17, 2010, list of references cited
`
`by Applicant and considered by Examiner); id. at 25 (October 20, 2010, list of
`
`references cited by Applicant and considered by Examiner). Most crucially,
`
`Petitioner overlooks the office action dated July 24, 2009, in which the Examiner
`
`rejected the then pending claims “under 35 USC 103(a) as being unpatentable over
`
`Fostick et al. (US 2002/087794 A1) in view of Brown et al. (US 2004/0203794 A1).”
`
`Id. at 180 (July 24,2 009, non-final rejection). In response, Applicant amended the
`
`claims and noted:
`
`The amended Claims recite limitations that are not disclosed, taught, or
`suggested by Fostick or Brown, either individually or in combination.
`Claim 1
`Claim 1 recites:
`A method for operating a first computing device, the method being
`implemented by one or more processors of the computing device and
`comprising:
`receiving, from a second computing device, an incoming call to initiate
`a voice-exchange session;
`in response to receiving the incoming call, determining a message
`identifier associated with the second computing device, wherein the
`
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`Case IPR2018-01280
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`message identifier is determined based at least in part on data provided
`with the incoming call;
`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;
`and
`responsive to the user input, automatically composing the message to
`the second computing device using the message identifier determined
`from the incoming call.
`At least the above-underlined portions of Claim 1 are not disclosed,
`taught, or suggested by Fostick or Brown, either individually or in
`combination.
`Id. at 165–166 (November 25, 2009, amendment and response).
`
`Applicant then explained the approaches of Fostick and Brown as follows:
`
`The approach of Fostick
`Fostick is directed towards improved management of SMS messages,
`and in particular, automatic replies, forwarding, saving, and deleting of
`SMS messages on a SMS enabled device (see Abstract). Importantly,
`Fostick lacks any teaching or suggestion of initiating a SMS message
`in response to receiving an incoming phone call. Indeed, the Office
`acknowledges that Fostick fails to disclose a reply message to an
`incoming call (see Office Action).
`The approach of Brown
`Brown is directed towards providing an automatic response to a
`telephone call (see title). Brown is cited to show an approach where, in
`
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`Case IPR2018-01280
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`response to answering a phone call, a message is automatically played
`within the voice-exchange session of the phone call, and then the call
`is disconnected (see step 210 of FIG. 2, step 210 of FIG. 3, step 510 of
`FIG. 5, step 510 of FIG. 6, and paragraph 27).
`Id. at 166.
`
`Accordingly, Applicant pointed out that in Fostick, there was no disclosure of
`
`composing a message in response to receiving an incoming call, and in Brown, the
`
`voice message is played within the voice-exchange session, and the call is
`
`disconnected only after the message is played. Id. In contrast, the claimed invention
`
`requires the message to be composed after receiving an incoming call and without
`
`answering the incoming call. Applicant further distinguished its claimed invention
`
`from Fostick and Brown as follows:
`
`Claim 1 recites:
`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.”
`This element is not suggested by Fostick, because, as acknowledged by
`the Office, Fostick fails to disclose sending a reply message to an
`incoming call.
`Moreover, this element is not suggested by the cited portion of Brown,
`because the cited portion of Brown discloses an approach where a
`message is transmitted over the voicepath of the incoming call (see step
`210 of FIG. 2, step 210 of FIG. 3, step 510 of FIG. 5, step 510 of FIG.
`
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`Case IPR2018-01280
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`6). Consequently, the cited portion of Brown teaches away from the
`express limitation of handling “the incoming call by composing, while
`not answering the incoming call, a message to a user of the second
`computing device.”
`Brown does disclose another approach where a text message is
`[automatically] transmitted to a caller in response to a call from the
`caller being sent to voicemail or ignored (see steps 406 and 408 of FIG.
`4). However, Brown teaches:
`In block 402 of FIG. 4, the user requests that incoming telephone calls
`be automatically responded to with a text response. As in block 302,
`the user may request this function by actuating a key or key sequence
`that is pre-programmed to start the auto-response function. For
`example, wireless phones 100 with integral auto-response modules 108
`may also include one or more auto-response buttons 118 that would
`start the auto-response function until further notice (see paragraph 30
`of Brown, emphasis added).
`Such an approach teaches away from the express limitations of Claim 1,
`as Claim 1 requires “(a) prompting a user of the first computing device
`to enter user input that instructs the first computing device to handle the
`incoming call by composing . . .” Instead of showing the features of
`this element, Brown discloses an approach where the user is not
`prompted to respond to an incoming call, since the user has previously
`instructed that all incoming calls be automatically responded to by a
`text message. Thus, in the approach of Brown, there is no action taught
`or suggested that is analogous to requesting user input in response to an
`incoming call, let alone, “in response to receiving the incoming call,
`prompting a user of the first computing device to enter user input that
`
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`Case IPR2018-01280
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`instructs the first computing device to handle the incoming call by
`composing, while not answering the incoming call, a message to a user
`of the second computing device: as required by Claim 1.
`Id. at 166–168 (November 25, 2009, amendment and response).
`
`Accordingly, in addition to distinguishing over Fostick by highlighting that
`
`Fostick failed to disclose composing a message in response to an incoming call,
`
`Applicant distinguished over Brown by pointing out that in Brown the messages
`
`were either (i) sent over the same voicepath as the incoming call, and/or (ii) the
`
`messages were sent without requesting user input in response to an incoming call.
`
`Id. In the subsequent office action, the Examiner raised no further objections based
`
`on the combination of Fostick and Brown. Id. at 141–150 (January 26, 2010, non-
`
`final rejection). Applicant, thus, successfully distinguished over Brown and Fostick
`
`by pointing out that there was no teaching, disclosure, or suggestion in Brown or
`
`Fostick of “in response to receiving the incoming call, prompting a user of the first
`
`computing device to enter user input that instructs the first computing device to
`
`handle the incoming call by composing, while not answering the incoming call, a
`
`message to a user of the second computing device,” as required by claim 1. Id. at
`
`156–172 (November 25, 2009, amendment and response).
`
`The Examiner did, however, reject the claims in the subsequent office action
`
`based on Fostick and U.S. Patent No. 6,219,413 (“Burg”). Id. at 144 (January 26,
`
`2010, non-final rejection); Ex. 2002 (Burg). Applicant successfully distinguished
`
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`Case IPR2018-01280
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`over Fostick and Burg by amending the claims and pointing out that the cited art did
`
`not disclose, teach, or suggest the following:
`
`With regard to Claim 1, it states:
`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.
`APPLE-1002 at 87–90 (April 27, 2010, amendment and response). Applicant
`
`further explained:
`
`In particular, applicant notes that the Examiner has correctly identified
`that Fostick’s disclosure does not provide for an SMS response to an
`“incoming call.” Moreover, it is applicant’s contention that Burg does
`not teach “responsive to receiving the incoming call and the user
`entering the user input, automatically addressing the message . . .” In
`fact, Burg teaches away. Column 9, line 28-35 of Burg provides that
`the caller-ID information is provided to the called party in order to
`enable “a more specific response,” but the disclosure does not provide
`for “automatically addressing the message.” Burg does not address a
`message “using the message identifier determined from the incoming
`call.” Accordingly, applicant submits an embodiment of claim 1 recites
`features which are not disclosed or suggested in the cited art.
`Id. at 87–88.
`
`Applicant, therefore, reasoned that unlike the prior art, the message is
`
`automatically addressed in the claimed invention. And accordingly, the Examiner
`
`noted the following “reasons for allowance” in the Notice of Allowance:
`
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`Case IPR2018-01280
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`Regarding claims 1, 19 and 30, in combination with other limitations
`of the claims, the prior art of record fails to disclose or specifically
`suggested 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; and 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.
`Id. at 35 (September 21, 2010, notice of allowability).
`
`As discussed, Applicant successfully distinguished the claimed invention over
`
`the prior art—including Brown, Fostick, and Burg—by relying on the limitations
`
`related to “prompting” and “automatically addressing,” and accordingly, these
`
`limitations are in the independent claim 1 of the ’037 Patent. APPLE-1001 at 9:63–
`
`10:15.
`
`IV. CLAIM CONSTRUCTION
`The Board construes claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent.” 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`
`“Under that standard, claim terms are given their ordinary and customary meaning in
`
`view of the specification, as would be understood by one of ordinary skill in the art at
`
`the time of the invention.” Baker Hughes Inc. v. LiquidPower Specialty Prods. Inc.,
`
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`11
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`Case IPR2018-01280
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`No. IPR2016-01905, 10 (P.T.A.B. Apr. 10, 2017) (citing In re Translogic Tech., Inc.,
`
`504 F.3d 1250, 1257 (Fed. Cir. 2007)).
`
`“The correct inquiry in giving a claim term its broadest reasonable
`
`interpretation in light of the specification is not whether the specification proscribes or
`
`precludes some broad reading of the claim term adopted by the Examiner. And it is not
`
`simply an interpretation that is not inconsistent with the specification.” In re Smith Int'l,
`
`Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). Rather, “[i]t is an interpretation that
`
`corresponds with what and how the inventor describes his invention in the
`
`specification, i.e., an interpretation that is ‘consistent with the specification.’” Id.; see
`
`also Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359,
`
`1364 (Fed. Cir. 2016) (“[A] claim term may be clearly redefined without an explicit
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`statement of redefinition” and “[e]ven when guidance is not provided in explicit
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`definitional format, the specification may define claim terms by implication such that
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`the meaning may be found in or ascertained by a reading of the patent documents.”);
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`id. (“We have also found that a patent applicant need not expressly state ‘my invention
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`does not include X’ to indicate his exclusion of X from the scope of his patent because
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`the patentee's choice of preferred embodiments can shed light on the intended scope of
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`the claims.”).
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`A.
`“prompting”
`Independent claim 1 (and its dependent claims 2–18) recites, in part: “in
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`response to receiving the incoming call, prompting a user of the first computing device
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`to enter user input that instructs the first computing device to handle the incoming call
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`by composing, while not answering the incoming call, a message to a user of the second
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`computing device.” APPLE-1001 at 10:6–11 (emphasis added). Consistent with the
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`intrinsic record, “prompting” should be construed as “presenting reply options [to a
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`user].”
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`First, the specification teaches that a prompt is distinct from the “ring” that
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`accompanies a call and thus is not the ring itself:
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`The phone application 210, message response module 230, or some
`other component may prompt the user to message respond to a caller in
`response to receipt of call data 202. The prompt may occur shortly after
`the incoming call 204 is received, such as with or before the first “ring”
`generated on the computing device 200 for the incoming call. For
`example, the user may be able to elect message response as one option
`along with other options of answering or declining the incoming call 204.
`Id. at 5:26–34 (emphasis added).
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`Indeed, it is evident from the above passage that prompting a user of the first
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`computing device” entails presenting reply options to the user that the user can elect
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`from and input.
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`The specification further establishes that “prompting a user of the first computing
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`device” entails “present[ing] reply options to the user.” Specifically, referring to Fig.
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`4, the specification teaches that “[i]n step 410 [of Fig. 4], an incoming call is received,”
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`and in step 420, “caller information is identified on the recipient device.” Id. at 7:31–
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`35. Next, “reply options are provided to the user in step 430” as a prompt to enter user
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`input. Id. at 7:38–39 (emphasis added). “For example, the user may be provided the
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`options of answering the call, declining the call, or message responding to the call.” Id.
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`at 7:39–41 (emphasis added). Accordingly, neither the “ring” (or any other indication)
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`of the incoming call nor the identification of the “caller information” constitutes the
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`prompt.
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`Id. at Fig. 4.
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`Second, the prosecution history suggests that the Examiner understood
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`“prompting a user of the first computing device [to enter user input]”/“prompt a user of
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`the first computing device [to enter user input]” to entail presenting reply options to the
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`user of the first computing device. APPLE-1002 at 141–150. For instance, for the
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`“prompting” limitations, the Examiner cited to the following passage from Burg in an
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`office action:
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`When the telephony gateway notifies the called party of the incoming
`call, it also provides the called party with the options of accepting the
`call, declining to accept the call, or responding to the call by providing
`a response message to the calling party.
`Id. at 144 (January 26, 2010, non-final rejection); Ex. 2002 at 3:4–8.
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`In its “Detailed Description” section, Burg further explains that:
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`If the called party's computer is logged into the network service
`provider, as stated previously, the telephony gateway will notify the
`called party that they have received an incoming call and will provide
`the called party with options as to how they would like to respond to
`the incoming call. . . . When telephony gateway 156 informs the called
`party of an incoming phone call, gateway 156 downloads a Call
`Notification Page 200, as depicted in FIG. 2, to the called party's
`computer 100. Call Notification Page 200 is depicted as a “pop-up”
`window that appears on the monitor of the called party's computer 100
`and is overlaid on the particular file that the called party is currently
`viewing on the monitor. Call Notification Page 200 provides the called
`party with information that the called party has received an inc