`
`In re Inter Partes Review of:
`U.S. Patent No. 8,213,970
`Issued: July 3, 2012
`Application No.: 12/324,122
`
`)
`)
`)
`)
`
`For: Method of Utilizing Forced Alerts for Interactive Remote Communica-
`tions
`
`FILED VIA E2E
`
`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,213,970
`
`Apple Inc.
`Exhibit 1003
`Page 001
`
`
`
`TABLE OF CONTENTS
`
`Overview..........................................................................................................1
`I.
`List of Documents Considered in Formulating My Opinion ..........................2
`II.
`III. Qualifications...................................................................................................5
`IV. Legal Principles ...............................................................................................7
`A. My Understanding of Claim Construction............................................7
`B. My Understanding of Obviousness.......................................................8
`Level of Ordinary Skill in the Art .................................................................11
`V.
`VI. Overview of the’970 Patent...........................................................................12
`VII. Understanding of Certain Claim Terms ........................................................12
`A.
`“data transmission means” ..................................................................13
`B.
`“means for attaching . . .”....................................................................13
`C.
`“means for requiring . . .”....................................................................13
`D.
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have automatically acknowledged . . .” ..................14
`“means for periodically resending . . .”...............................................14
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have transmitted . . .” ..............................................15
`VIII. Overview of the State of the Art at the Time of Filing .................................15
`A.
`Sending and Receiving Mandatory Responses in Electronic
`Messaging were Known ......................................................................16
`Industry Trend: Applications on Cell Phones and/or Personal
`Communications Devices....................................................................18
`
`E.
`F.
`
`B.
`
`- i -
`
`Apple Inc.
`Exhibit 1003
`Page 002
`
`
`
`E.
`
`B.
`
`C.
`
`D.
`
`Tracking Delivery and Responses of Electronic Messages was
`Known .................................................................................................23
`Personal Digital Assistant (PDA) with Touchscreen and Stylus
`were Known ........................................................................................25
`Sending Alerts to a Recipient of an Email Message with a
`Mandatory Response was Known.......................................................25
`IX. Analysis of Disclosure in Earlier-Filed Applications....................................29
`X. Ground of Unpatentability.............................................................................33
`A. Ground 1: Claims 1 and 3-9 are obvious over Kubala in view of
`Hammond ............................................................................................33
`1.
`Overview of Kubala..................................................................33
`2.
`Overview of Hammond.............................................................37
`3.
`Overview of the Combination of Kubala and Hammond.........39
`4. Motivation to Combine Kubala and Hammond........................40
`5.
`Claims 1-13 are obvious over Kubala in view of
`Hammond..................................................................................44
`Ground 2: Claims 1 and 3-9 are obvious over Hammond in
`view of Johnson further in view of Pepe.............................................82
`1.
`Overview of Hammond.............................................................83
`2.
`Overview of Johnson ................................................................86
`3.
`Overview of Pepe......................................................................86
`4.
`Overview of the Combination of Hammond, Johnson,
`and Pepe ....................................................................................87
`5. Motivation to Combine Hammond, Johnson, and Pepe ...........87
`6.
`Claims 1 and 3-9 are obvious over Hammond in view of
`Johnson further in view of Pepe ...............................................89
`
`- ii -
`
`Apple Inc.
`Exhibit 1003
`Page 003
`
`
`
`C.
`
`Ground 3: Claims 1 and 3-9 are obvious over Hammond in
`view of Johnson, Pepe, and Banerjee................................................115
`XI. Conclusion ...................................................................................................116
`
`- iii -
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`Apple Inc.
`Exhibit 1003
`Page 004
`
`
`
`Exhibit No. Description
`
`EXHIBIT LIST
`
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 8,213,970 B2 to Beyer (“ʼ970 patent”)
`
`Prosecution History of U.S. Patent No. 8,213,970 (Application No.
`12/324,122) (“’970 Pros. Hist.”)
`Declaration of David H. Williams
`
`Curriculum Vitae of David H. Williams
`
`U.S. Patent Application Publication No. 2006/0218232 to Kubala
`et al. (“Kubala”)
`U.S. Patent No. 6,854,007 to Hammond (“Hammond”).
`
`U.S. Patent No. 5,325,310 to Johnson et al. (“Johnson”)
`
`U.S. Patent No. 5,742,905 to Pepe et al. (“Pepe”)
`
`U.S. Publication No. 2003/0128195 to Banerjee et al. (“Banerjee”)
`
`Simon Says “Here’s How!” Simon™ Mobile Communications
`Made Simple, Simon Users Manual, IBM Corp., 1994. (“Simon”)
`Prosecution History of U.S. Patent Application No. 10/711,490
`(“’490 application”)
`Prosecution History of U.S. Application No. 11/308,648 (“’648 ap-
`plication”)
`Prosecution History of U.S. Application No. 11/612,830 (“’830 ap-
`plication”)
`McKinsey & Company, The McKinsey Report : FDNY 9/11 Re-
`sponse (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com,
`https://en.wikipedia.org/wiki/History_of_mobile_phones (last visit-
`ed May 10, 2018) (“Hist. Mobile Phones”)
`Apple Newton, Wikipedia.com,
`https://en.wikipedia.org/wiki/Apple_Newton (last visited May 10,
`2018) (“Apple”)
`
`- iv -
`
`Apple Inc.
`Exhibit 1003
`Page 005
`
`
`
`Exhibit No. Description
`
`1017
`
`1018
`
`1019
`
`Email, Wikipedia.com, https://en.wikipedia.org/wiki/Email (last
`visited May 10, 2018) (“Email”)
`From touch displays to the Surface: A brief history of touchscreen
`technology, Arstechnica.com
`https://arstechnica.com/gadgets/2013/04/from-touch-displays-to-
`the-surface-a-brief-history-of-touchscreen-technology/ (last visited
`May 10, 2018) (“Arstechnica”)
`Palm VII,Wikipedia.com, https://en.wikipedia.org/wiki/Palm_VII
`(last visited May 10, 2018) (“Palm”)
`
`- v -
`
`Apple Inc.
`Exhibit 1003
`Page 006
`
`
`
`I, David Hilliard Williams, declare as follows:
`
`I.
`
`Overview
`1.
`I have been retained on behalf of Apple Inc. for the above-captioned
`
`inter partes review proceeding. I understand that this proceeding involves U.S.
`
`Patent No. 8,213,970 (“the ’970 patent”) titled “Method of Utilizing Forced Alerts
`
`for Interactive Remote Communications” by Malcolm K. Beyer, and that the ’970
`
`patent is currently assigned to Agis Software Development, LLC.
`
`2.
`
`I have reviewed and am familiar with the specification of the ’970
`
`patent. I understand that the application that issued as the ’970 patent was filed on
`
`November 26, 2008, and claims priority to U.S. Patent Application No. 10/711,490
`
`(“’490 application”), filed September 21, 2004. I understand that the ’970 patent
`
`has been provided as Exhibit 1001, and that the ’490 application has been provided
`
`as Exhibit 1011.
`
`3.
`
`I have reviewed and am familiar with the file history of the ’970
`
`patent. I understand that the file history has been provided as Exhibit 1002.
`
`4.
`
`I understand that the ’970 patent has an actual filing date of November
`
`26, 2008. I also understand that the ’970 patent claims priority to three earlier-filed
`
`applications: (i) U.S. Application No. 10/711,490 (Exhibit 1011, ’490 application),
`
`filed on September 21, 2004; (ii) U.S. Application No. 11/308,648 (Exhibit 1012,
`
`’648 application), filed on April 17, 2006; and (iii) U.S. Application No.
`
`- 1 -
`
`Apple Inc.
`Exhibit 1003
`Page 007
`
`
`
`11/612,830 (Exhibit 1013, ’830 application), filed on December 19, 2006. I have
`
`been asked to provide my opinion as to whether these earlier-filed applications
`
`disclose the claimed “forced message alert software application program.” As
`
`explained in more detail below, it is my opinion that these earlier-filed applications
`
`do not disclose this claim limitation. Because support for the “forced message alert
`
`software application program” does not appear in any of the parent continuation-
`
`in-part applications either, I am informed that the priority date of the ’970 patent is
`
`the actual filing date of the ’970 patent, November 26, 2008. But, out of an
`
`abundance of caution, the opinions in this Declaration will address both the
`
`November 26, 2008 and September 21, 2004 priority dates. I understand that this
`
`Declaration has been provided as Exhibit 1003.
`
`II.
`
`List of Documents Considered in Formulating My Opinion
`5.
`I have also reviewed and am familiar with the following prior art used
`
`in the Petition for Inter Partes Review of the ’970 patent and/or in my declaration
`
`below:
`
`U.S. Patent Application Publication No. 2006/0218232 to Ku-
`bala et al., titled “Method and System for Accommodating Manda-
`tory Responses in Electronic Messaging” (“Kubala”). Kubala was
`published on September 28, 2006 and was filed on March 24,
`2005, and both dates are prior to the actual filing date of the ’970
`patent. I understand that Kubala has been provided as Exhibit
`1005.
`
`- 2 -
`
`Apple Inc.
`Exhibit 1003
`Page 008
`
`
`
`U.S. Patent No. 6,854,007 to Hammond, titled “Method and Sys-
`tem for Enhancing Reliability of Communication with Electronic
`Messages” (“Hammond”). Hammond issued as a patent on Febru-
`ary 8, 2005, more than one year before the actual filing date of the
`’970 patent. I understand that Hammond has been provided as Ex-
`hibit 1006.
`
`U.S. Patent No. 5,325,310 to Johnson et al., titled “Method and
`System for Persistant Electronic Mail Reply Processing” (“John-
`son”). Johnson issued on June 28, 1994, more than fourteen years
`before the actual filing date of the ’970 patent. Johnson was filed
`on June 26, 1992. I understand that Johnson has been provided as
`Exhibit 1007.
`
`U.S. Patent No. 5,742,905 to Pepe et al., titled “Personal Commu-
`nications Internetworking” (“Pepe”). Pepe issued on April 21,
`1998, over ten years prior to the actual filing date of the ’970 pa-
`tent. Pepe was filed on September 19, 1994. I understand that Pepe
`has been provided as Exhibit 1008.
`
`U.S. Patent Publication No. 2003/0128195 to Banerjee et al., ti-
`tled “Touchscreen User Interface: Bluetooth™ Stylus for Perform-
`ing Right Mouse Clicks”(“Banerjee”). Banerjee published on July
`10, 2003, and Banerjee issued as a patent on October 4, 2005, more
`than three years before the actual filing date of the ’970 patent.
`Banerjee was filed on January 8, 2002. I understand that Banerjee
`has been provided as Exhibit 1009.
`
`- 3 -
`
`Apple Inc.
`Exhibit 1003
`Page 009
`
`
`
`6.
`
`I have also reviewed and am familiar with the following other prior art
`
`documents:
`
`Simon Says “Here’s How!” Simon™ Mobile Communications
`Made Simple, Simon Users Manual, IBM Corp., 1994 (“Simon”). I
`understand that the Simon Users Manual has been provided as Ex-
`hibit 1010.
`
`7.
`
`The ’970 patent is directed to sending and receiving responses to
`
`“forced message alerts.” (’970 patent, 1:18-23.) The ’970 patent explains, “[t]he
`
`heart of the invention lies in the forced message alert software application program
`
`provided in each PC or PDA/cell phone.” (Id., 4:47-49.) This software application
`
`program is loaded on each PDA in a network. (Id., 7:8-16.) The ’970 patent
`
`describes the process for sending the forced message alerts (see id., 7:43-8:15,
`
`FIGS. 3A, 3B) and for responding to the forced message alerts (see id., 8:16-57,
`
`FIG. 4). I am familiar with the technology described in the ’970 patent as of its
`
`November 26, 2008 actual filing date as well as its September 21, 2004 earliest
`
`possible priority date.
`
`8.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the ’970 patent and the above-noted references that form
`
`the basis for the grounds of rejection set forth in the Petition for Inter Partes
`
`Review of the ’970 patent.
`
`- 4 -
`
`Apple Inc.
`Exhibit 1003
`Page 010
`
`
`
`III. Qualifications
`9.
`In formulating my opinions, I have relied upon my training,
`
`knowledge, and experience in the relevant art. A copy of my current curriculum
`
`vitae is provided as Exhibit 1004, and it provides a comprehensive description of
`
`my academic and employment history over the last thirty-plus years.
`
`10.
`
`I am currently the President and Founder of the company E911-LBS
`
`Consulting that began in 2002. As the President of E911-LBS Consulting, I
`
`provide services across the entire wireless value chain, particularly with respect to
`
`technology and business strategic planning and product design and development
`
`associated with Location Based Services (LBS), Global Positioning Satellite (GPS)
`
`systems, Wireless 911 (E911), Real-Time Location Systems (RTLS), Radio
`
`Frequency Identification (RFID), beacon, and other location determination and
`
`sensing technologies and services.
`
`11.
`
`I have very extensive expertise in all aspects of Location Based
`
`Service delivery across the wireless location ecosystem including enabling
`
`network, map data, geospatial platform, chipset, data management, device, and
`
`location determination infrastructure and integration providers. I am expert in all
`
`related aspects of LBS, including data privacy and security management.
`
`12.
`
`For example, I managed the development and launch of several
`
`consumer-oriented LBS applications including mobile social networking, family
`
`- 5 -
`
`Apple Inc.
`Exhibit 1003
`Page 011
`
`
`
`tracking and local search for a major wireless carrier. This work included the
`
`development of corporate-wide location data privacy policies and their systemic
`
`implementation for all LBS customers. My work in both data privacy and mobile
`
`social networking resulted in my co-inventing a patent in this field titled “Method
`
`and apparatus for providing mobile social networking privacy.” (U.S. Patent
`
`Number 8,613,109, issued on December 17, 2013).
`
`13.
`
`In another example, I developed the LBS product/technology strategy
`
`for a leading North American carrier. This work resulted in some of the earliest
`
`LBS applications into the U.S. market, and included extensive research into the
`
`potential use of presence technologies in providing location-based services.
`
`14.
`
`I have authored multiple books on wireless location, including:
`
`(cid:120) The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless
`
`Location-Based Services (2005 and 2009 versions);
`
`(cid:120) The Definitive Guide to Wireless E911; and
`
`(cid:120) The Definitive Guide to Mobile Positioning and Location
`
`Management (co-author).
`
`15.
`
`I received a B.S. degree, in Electrical Engineering, from Purdue
`
`University, in 1983. I received a MBA degree, in Information Systems
`
`Management, from University of Texas, Austin, in 1987.
`
`- 6 -
`
`Apple Inc.
`Exhibit 1003
`Page 012
`
`
`
`16. My curriculum vitae contains further details on my education,
`
`experience, publications, and other qualifications to render an expert option. My
`
`work on this case is being billed at a rate of $400 per hour. My compensation is not
`
`contingent upon the outcome of this inter partes review.
`
`IV. Legal Principles
`
`A. My Understanding of Claim Construction
`17.
`I understand that, during an inter partes review, claims are to be given
`
`their broadest reasonable construction in light of the specification as would be read
`
`by a person of ordinary skill in the art (“POSA”), which means that the words of
`
`the claims should be given their broadest possible meaning consistent with the
`
`specification of the ’970 patent.
`
`18.
`
`I understand that the broadest reasonable interpretation that the PTO
`
`may give means-plus-function language is that mandated by the statute. I
`
`understand that the construction of a means-plus-function limitation is a two-step
`
`process. The first step is to determine the function of the means-plus-function
`
`limitation. The second step is to determine the corresponding structure described in
`
`the specification and equivalents thereof.
`
`19.
`
`For computer-implemented means-plus-function limitations, I
`
`understand that the disclosed structure is not a general-purpose computer, but
`
`rather the special-purpose computer programmed to perform the disclosed
`
`- 7 -
`
`Apple Inc.
`Exhibit 1003
`Page 013
`
`
`
`algorithm. I understand that the algorithm may be disclosed as a mathematical
`
`formula, in prose, or as a flow chart, or in any other manner that provides sufficient
`
`structure.
`
`B. My Understanding of Obviousness
`20.
`I understand that a patent claim is invalid if the claimed invention
`
`would have been obvious to a person of ordinary skill in the field at the time the
`
`application was filed. This means that even if all of the requirements of the claim
`
`cannot be found expressly in a single prior-art reference that would anticipate the
`
`claim, the claim can still be invalid.
`
`21. As part of this inquiry, I have been asked to consider the level of
`
`ordinary skill in the field that someone would have had at the time the claimed
`
`invention was made. In deciding the level of ordinary skill, I considered the
`
`following:
`
`(cid:120) the levels of education and experience of persons working in the field;
`
`(cid:120) the types of problems encountered in the field; and
`
`(cid:120) the sophistication of the technology.
`
`22.
`
`To obtain a patent, a claimed invention must have, as of the priority
`
`date, been nonobvious in view of the prior art in the field. I understand that an
`
`invention is obvious when the differences between the subject matter sought to be
`
`- 8 -
`
`Apple Inc.
`Exhibit 1003
`Page 014
`
`
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a POSA.
`
`23.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain how the prior-art references could have been combined in order to
`
`create the inventions claimed in the asserted claim.
`
`24.
`
`I also understand that prior-art references can be combined under
`
`several different circumstances. For example, it is my understanding that one such
`
`circumstance is when a proposed combination of prior-art references results in a
`
`system that represents a predictable variation, which is achieved using prior-art
`
`elements according to their established functions. It is also my understanding that
`
`prior art references can be combined when the combination could be performed
`
`using known techniques, and if the corresponding results would have been
`
`predictable to a POSA.
`
`25.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the analy-
`
`sis. I understand there may be a number of rationales that may support a conclusion
`
`of obviousness, including:
`
`- 9 -
`
`Apple Inc.
`Exhibit 1003
`Page 015
`
`
`
`(cid:120) Combining prior art elements according to known methods to yield
`
`predictable results;
`
`(cid:120) Substitution of one known element for another to obtain predictable
`
`results;
`
`(cid:120) Use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`(cid:120) Applying a known technique to a known device (method, or prod-
`
`uct) ready for improvement to yield predictable results;
`
`(cid:120)
`
`"Obvious to try" – choosing from a finite number of identified, pre-
`
`dictable solutions, with a reasonable expectation of success;
`
`(cid:120) Known work in one field of endeavor may prompt variations of it
`
`for use in either the same field or a different one based on design in-
`
`centives or other market forces if the variations are predictable to
`
`one of ordinary skill in the art; or
`
`(cid:120) Some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art teachings to arrive at the claimed invention.
`
`26.
`
`I understand that it is not proper to use hindsight to combine
`
`references or elements of references to reconstruct the invention using the claims
`
`- 10 -
`
`Apple Inc.
`Exhibit 1003
`Page 016
`
`
`
`as a guide. My analysis of the prior art is made as of the time the invention was
`
`made.
`
`27.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious or nonobvious. Such indicia include:
`
`commercial success of products covered by the patent claims; a long-felt need for
`
`the invention; failed attempts by others to make the invention; copying of the
`
`invention by others in the field; unexpected results achieved by the invention as
`
`compared to the closest prior art; praise of the invention by the infringer or others
`
`in the field; the taking of licenses under the patent by others; expressions of
`
`surprise by experts and those skilled in the art at the making of the invention; and
`
`the patentee proceeded contrary to the accepted wisdom of the prior art.
`
`V.
`
`Level of Ordinary Skill in the Art
`
`28.
`
`I understand that a POSA is one who is presumed to be aware of all
`
`pertinent art, thinks along conventional wisdom in the art, and is a person of
`
`ordinary creativity. A POSA would have had knowledge of electronic
`
`communications and/or wireless/mobile communications, and various related
`
`technologies as of 2004.
`
`29. Based on the disclosure of the ’970 patent, one of ordinary skill in the
`
`art would have either: (1) a Bachelor of Science degree in Electrical Engineering or
`
`an equivalent field, with three to five years of academic or industry experience in
`
`- 11 -
`
`Apple Inc.
`Exhibit 1003
`Page 017
`
`
`
`the field of electronic communications; or (2) a Master of Science degree in
`
`Electrical Engineering or an equivalent field, with two to four years of academic or
`
`industry experience in the same field.
`
`30. By equivalent field, I mean that the required levels of educational and
`
`industry experience is on a sliding scale relative to each other. For example, a
`
`person of ordinary skill could have a more advanced educational degree with less
`
`industry experience.
`
`VI. Overview of the ’970 Patent
`
`31.
`
`The ’970 patent is directed to sending and receiving responses to
`
`“forced message alerts.” (’970 patent, 1:18-23.) The ’970 patent explains, “[t]he
`
`heart of the invention lies in the forced message alert software application program
`
`provided in each PC or PDA/cell phone.” (Id., 4:47-49.) This software application
`
`program is loaded on each PDA in a network. (Id., 7:8-16.) The ’970 patent
`
`describes the process for sending the forced message alerts (see id., 7:43-8:15,
`
`FIGS. 3A, 3B) and for responding to the forced message alerts (see id., 8:16-57,
`
`FIG. 4).
`
`VII. Understanding of Certain Claim Terms
`32.
`For the purpose of my opinion, I have determined that the claim terms
`
`of the ’970 patent should receive their ordinary and customer meanings, with the
`
`exception of the following means-plus-function terms.
`
`- 12 -
`
`Apple Inc.
`Exhibit 1003
`Page 018
`
`
`
`A.
`33.
`
`“data transmission means”
`The function of the “data transmission means” is to facilitate the
`
`transmission of electronic files between said PDA/cell phones in different
`
`locations. (See ’970 patent, 9:5-7 (claim 1).) The corresponding structure is a
`
`server that communicates according to either (i) WiFi, WiMax, or other peer-to-
`
`peer communications (see id., 4:7-8) or (ii) SMS, TCP/IP, or other messaging
`
`protocol (see id., 4:33-36).
`
`B.
`34.
`
`“means for attaching . . .”
`The recited function is to attach a forced message alert software
`
`packet to a voice or text message creating a forced message alert that is transmitted
`
`by a sender PDA/cell phone to a recipient PDA/cell phone. (See id., 9:14-17 (claim
`
`1).) The corresponding structure is a computer configured to perform a portion of
`
`the forced-message alert-software application program that allows a user to create
`
`a message, select recipients of that message, select a default or new response list to
`
`be sent with the message, and then send the message to the recipients. (See id.,
`
`7:43-63; FIG. 3A.)
`
`C.
`35.
`
`“means for requiring . . .”
`The recited function is to require a required manual response from the
`
`response list by the recipient in order to clear the recipient’s response list from the
`
`recipient’s cell phone display. (See id., 9:24-26 (claim 1).) The corresponding
`
`structure is the forced message alert software application program on the recipient
`
`- 13 -
`
`Apple Inc.
`Exhibit 1003
`Page 019
`
`
`
`PDA/cellular phone that causes the message and manual response list to be
`
`displayed on the screen of the recipient PDA/cellular phone and clears the forced
`
`alert text data when a response is selected from the manual response list. (See id.,
`
`8:39-46, FIG. 4.)
`
`D.
`
`36.
`
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have automatically acknowledged . . .”
`The recited function is to receive and display a listing of which
`
`recipient PDA/cell phones have automatically acknowledged the forced message
`
`alert and which recipient PDA/cell phones have not automatically acknowledged
`
`the forced message alert. (See id., 9:27-31 (claim 1).) The corresponding structure
`
`is forced message alert software application program on the sender’s PDA/cell
`
`phone that monitors for and receives electronic transmissions with
`
`acknowledgement receipts. (See id., 7:64-8:5, FIGS. 3A, 3B.)
`
`E.
`37.
`
`“means for periodically resending . . .”
`The recited function is periodically resending a forced message alert
`
`to a recipient PDA/cell phone that has not automatically acknowledged the forced
`
`message alert. (See id., 9:32-34 (claim 1).) The corresponding structure is the
`
`forced message alert software application program on the sender PDA/cell phone
`
`that will “periodically resend the forced message alert to the PC or PDA/cell phone
`
`that have [sic] not acknowledged receipt.” (Id., 8:6-8; see also id., FIG. 3A, 3B.)
`
`- 14 -
`
`Apple Inc.
`Exhibit 1003
`Page 020
`
`
`
`F.
`
`38.
`
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have transmitted . . .”
`The recited function is receiving and displaying a listing of which
`
`recipient PDA/cell phones have transmitted a manual response to a forced message
`
`alert and details the response from each recipient PDA/cell phone that responded.
`
`(See id., 9:35-39 (claim 1).) The corresponding structure is the forced message
`
`alert software application program on the sender’s PDA/cell phone that monitors
`
`for and receives electronic transmissions with manual responses and displays those
`
`responses on the sender’s PDA/cell phone. (See id., 8:9-15, FIGS. 3A, 3B.)
`
`VIII. Overview of the State of the Art at the Time of Filing
`39. As mentioned above, I understand that there is a discrepancy in the
`
`priority date of the ’970 patent. I am informed by Apple’s counsel that the ’970
`
`patent has a correct priority date of November 26, 2008 despite claiming an earliest
`
`possible priority date of September 21, 2004. I also understand that analyzing the
`
`state of electronic communications and/or wireless/mobile communications during
`
`the years prior to the earliest possible priority date of September 21, 2004 can
`
`provide valuable insight into what people of ordinary skill in the art were aware of
`
`at the time, and in what direction the industry was heading. Figure 1 below
`
`illustrates a timeline of key exhibits that are discussed below.
`
`40. Before the inventions claimed in the ’970 patent, all the technology at
`
`issue in the ’970 patent was broadly applied and well known by developers of
`
`- 15 -
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`Apple Inc.
`Exhibit 1003
`Page 021
`
`
`
`email and wireless/mobile communications. No individual elements of the ’970
`
`claims were novel at the time of the alleged invention, and there was nothing novel
`
`about the manner in which those elements were combined in the claims. Further,
`
`there were no technological barriers to combining these elements to form the
`
`claimed invention. Indeed, combining these elements would have yielded
`
`predictable results. Thus, the topics of requiring a response to important emails and
`
`tracking them have been well known prior to 2003, well before the actual filing
`
`date of the ’970 patent, November 26, 2008.
`
`A.
`
`Sending and Receiving Mandatory Responses in Electronic
`Messaging were Known
`41. By 1994, electronic mail or email systems were well known. An
`
`electronic mail system is a “system whereby messages, notes, and documents in
`
`the form of electronic mail objects may be sent and/or received between two
`
`computers or work stations. Electronic mail objects also include other items that
`
`may be transmitted to a user, such as, for example, voice or verbal messages, and
`
`non- textual items like graphics or drawings that may be electronically
`
`transmitted.” (Johnson, 1:21-29.)
`
`42. At that time, it was “often desirable in an electronic mail system to
`
`distribute an electronic mail object to a number of users with the expectation of a
`
`reply confirming the reception and reading of the electronic mail object.”
`
`- 16 -
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`Apple Inc.
`Exhibit 1003
`Page 022
`
`
`
`(Johnson, 1:48-51.)1 Available acknowledgement systems at the time could
`
`“indicate that an electronic mail object has been sent and received by a recipient,
`
`but do not provide a mechanism to ensure or compel a reply by the recipient. The
`
`various forms of acknowledgement that are presently available do not ensure that
`
`the recipient of the electronic mail object has read it, let alone read it carefully.”
`
`(Johnson, 1:57-65.) Thus, by 1994 when Johnson issued as a patent, email
`
`acknowledgement systems that acknowledged receipt (or delivery) of email
`
`messages were known.
`
`43.
`
`To satisfy the “need for an electronic mail system having a
`
`mechanism for ensuring that a recipient of an electronic mail object will read it
`
`carefully” (Johnson, 1:66-68), Johnson provided “an improved acknowledgement
`
`system for electronic mail objects distributed within an electronic mail system
`
`through ensuring that an electronic mail object has been carefully examined by a
`
`recipient.” (Johnson, 2:10-15.) Johnson’s system included “designating an
`
`electronic email object as requiring a specific response and then transmitting the
`
`electronic mail object to a recipient. The recipient of the electronic mail object is
`
`prompted for a specific response in response to the recipient opening the
`
`electronic mail object and is prohibited from performing a selected action until
`
`
`1 All emphasis is added, except where otherwise indicated.
`
`- 17 -
`
`Apple Inc.
`Exhibit 1003
`Page 023
`
`
`
`the specific response has been entered by the recipient.” (Johnson, 2:23-31.)
`
`Thus, by 1994, sending and receiving mandatory responses in electronic messaging
`
`were known.
`
`44. A POSA would have recognized that systems for sending and
`
`receiving mandatory responses in electronic messaging were known prior to the
`
`’970 patent.
`
`B.
`
`Industry Trend: Applications on Cell Phones and/or Personal
`Communications Devices
`45. As discussed above, by 1994 email messages with mandatory
`
`responses were transmitted and received between and/or among computers or
`
`workstations coupled to a local area network (LAN). (Johnson, 1:29-35.)
`
`46. By 1994, wireless personal communications devices with a
`
`touchscreen and stylus that provided cell phone service as well as email and
`
`voicemail applications were available. An example of a wireless personal
`
`communications device was IBM’s Simon™: “You now have total personal
`
`