`
`Filed on behalf of Google LLC
`By:
`
`Jonathan Tuminaro, Reg. No. 61,327
`
`Robert E. Sokohl, Reg. No. 36,013
`
`Karen Wong-Chan, Reg. No. 69,235
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`1100 New York Avenue, NW
`
`
`Washington, D.C. 20005
`
`
`Tel: (202) 371-2600
`
`Fax: (202) 371-2540
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`)
`
`)
`
`)
`
`)
`
`
`
`
`
`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
`Communications
`
`
`FILED VIA E2E
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner
`
`
`
`Case IPR2018-01079
`Patent 8,213,970
`
`
`
`
`
`
`
`Apple Inc.
`Exhibit 1020
`Page 001
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,213,970
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`- ii -
`
`Apple Inc.
`Exhibit 1020
`Page 002
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`STANDING ..................................................................................................... 2
`II.
`III. TECHNICAL BACKGROUND ..................................................................... 3
`A. Overview of the ’970 patent (GoogleExhibit 1001) ............................ 3
`B.
`The concepts of the ’970 Patent were well known in the prior
`art ........................................................................................................... 3
`Summary of the prosecution history ..................................................... 6
`C.
`IV. CLAIM CONSTRUCTION ............................................................................ 8
`A.
`Relevant law and person of ordinary skill in the art ............................. 8
`B.
`“data transmission means” .................................................................. 10
`C.
`“means for attaching . . .” .................................................................... 10
`D.
`“means for requiring . . .” .................................................................... 10
`E.
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have automatically acknowledged . . .” .................. 11
`“means for periodically resending . . .” ............................................... 11
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have transmitted . . .” .............................................. 12
`IDENTIFICATION OF CHALLENGE ........................................................ 12
`A. Ground 1: Claims 1 and 3-9 are obvious over Kubala and
`Hammond—references that are prior art to the ’970 patent’s
`actual filing date (November 26, 2008). ............................................. 13
`1.
`Overview: Kubala discloses PDAs that send and receive
`mandatory-response messages, and Hammond tracks
`acknowledgements of and responses to such messages. .......... 18
`Independent claim 1 .................................................................. 23
`
`F.
`G.
`
`V.
`
`2.
`
`
`
`- i -
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`Apple Inc.
`Exhibit 1020
`Page 003
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`

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`Inter Partes Review of U.S. Patent No. 8,213,970
`
`3.
`Dependent claim 3 .................................................................... 40
`Dependent claim 4 .................................................................... 40
`4.
`Dependent claim 5 .................................................................... 41
`5.
`Independent claim 6 .................................................................. 42
`6.
`Dependent claim 7 .................................................................... 47
`7.
`Dependent claim 8 .................................................................... 50
`8.
`Dependent claim 9 .................................................................... 50
`9.
`Ground 2: Claims 1 and 3-9 are obvious over Hammond in
`view of Johnson and Pepe—references that are prior art to the
`’970 patent’s earliest effective filing date (September 21, 2004). ...... 51
`1.
`Overview: Hammond tracks acknowledgements of and
`responses to mandatory-response messages; Johnson
`prevents a user from closing a mandatory-response
`message that has not been responded to; and Pepe
`discloses PDAs that provide an on-screen menu of
`possible responses to an incoming message. ............................ 52
`Independent claim 1 .................................................................. 54
`2.
`Dependent claim 3 .................................................................... 66
`3.
`Dependent claim 4 .................................................................... 66
`4.
`Dependent claim 5 .................................................................... 67
`5.
`Independent claim 6 .................................................................. 68
`6.
`Dependent claim 7 .................................................................... 75
`7.
`Dependent claim 8 .................................................................... 76
`8.
`Dependent claim 9 .................................................................... 77
`9.
`Ground 3: Claims 1 and 3-9 are obvious over Hammond in
`view of Johnson, Pepe, and Banerjee. ................................................. 77
`
`B.
`
`C.
`
`
`
`- ii -
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`Apple Inc.
`Exhibit 1020
`Page 004
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`

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`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`VI. THE CIRCUMSTANCES OF THIS PETITION CONTAINS NEW
`ARGUMENTS AND PRIOR ART NOT PREVIOUSLY
`PRESENTED TO THE OFFICEDO NOT JUSTIFY DENIAL
`UNDER § 314(a) OR § 325(d). ................................................................... 78
`VII. SECONDARY CONSIDERATIONS ........................................................... 79
`VIII. MANDATORY NOTICES ........................................................................... 79
`IX. CONCLUSION .............................................................................................. 81
`
`
`
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`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`EXHIBIT LIST
`
`
`Exhibit No. Description
`
`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
`application”)
`Prosecution History of U.S. Application No. 11/612,830 (“’830
`application”)
`McKinsey & Company, The McKinsey Report : FDNY 9/11
`Response (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com,
`https://en.wikipedia.org/wiki/History_of_mobile_phones (last
`visited May 10, 2018) (“Hist. Mobile Phones”)
`Apple Newton, Wikipedia.com,
`https://en.wikipedia.org/wiki/Apple_Newton (last visited May 10,
`2018) (“Apple”)
`
`
`
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`Exhibit 1020
`Page 006
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`

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`Exhibit No. Description
`
`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`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”)
`Computer-generated redline comparison between petition in
`IPR2018-01079 and instant Petition
`Computer-generated redline comparison between Williams
`Declaration (Google 1003) of IPR2018-01079 and Williams
`Declaration (Exhibit 1003) attached hereto.
`
`
`
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`Apple Inc.
`Exhibit 1020
`Page 007
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`

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`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`I.
`
`INTRODUCTION
`GoogleApple Inc. (“Apple”) petitions for inter partes review of claims 1
`
`and 3-9 of U. S. Patent No. 8,213,970 (“ʼ970 patent”) each of which recites a
`
`combination of limitations that existed in prior art.1 These claims are directed to
`
`sending “forced message alerts,” which are electronic messages that require a
`
`response, and tracking the receipt of those “forced message alerts” sent to the
`
`recipient device. IBM, Bellcore, and Micron Technology, however, taught or
`
`suggested all the claim limitations well before the date of invention for the ’970
`
`patent and, as such, each challenged claim should be canceled.
`
`In the early 1990s (well before the ’970 patent’s earliest effective filing
`
`date), Bellcore, for instance, disclosed personal digital assistants (PDAs) for
`
`sending and receiving electronic messages, such as, emails and voice mails. (See
`
`GoogleExhibit 1008, Pepe.) IBM and Micron Technology were also working on
`
`systems and methods for sending and receiving mandatory-response messages.
`
`(See GoogleExhibit 1007, Johnson; GoogleExhibit 1006, Hammond.) In fact,
`
`IBM applied its work with mandatory-response messages to PDAs with a
`
`
`1 Apple is concurrently filing a motion for joinder of this petition to
`
`IPR2018-01079. The evidence and grounds herein are identical to those in the
`
`-01079 IPR. See Motion for Joinder.
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`Exhibit 1020
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`touchscreen user interface and a stylus. (See GoogleExhibit 1005, Kubala; and
`
`GoogleExhibit 1009, Banerjee.) These disclosures from these companies illustrate
`
`that it was known or would have been obvious to use a PDA to send, receive, and
`
`track forced-message alerts, as recited in the claims of the ’970 patent.
`
`The Examiner, without considering such systems and methods, allowed
`
`those claims, but only after they were amended to recite the concept of providing a
`
`recipient with a list of possible responses to an incoming message. But even that
`
`concept was known and taught in the prior art. For example, Kubala discloses a
`
`system in which a PDA receives a mandatory-response message and displays a
`
`menu of possible responses that may be selected by a user “as a quick response to
`
`the original e-mail message . . . .” (Kubala, ¶0057.) Similarly, Pepe discloses a
`
`PDA that provides a menu of possible responses from which a user may choose in
`
`order to respond to an incoming electronic message. (Pepe, 36:16-20, 40-42, FIGS.
`
`42, 45.)
`
`GoogleApple presents multiple grounds—one based on Kubala (which
`
`predates the ’970 patent’s actual filing date) and two based on Pepe (which
`
`predates the ’970 patent’s earliest effective filing date). Because these prior-art
`
`references are directed to or disclose precisely what the challenged claims recite,
`
`the Board should institute review and find those claims unpatentable.
`
`- 2 -
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`Exhibit 1020
`Page 009
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`

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`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`II.
`
`STANDING
`GoogleApple certifies that the ʼ970 patent is available for inter partes
`
`review. GoogleApple also certifies that it is not barred or estopped from requesting
`
`this inter partes review on the grounds identified herein because a motion for
`
`joinder was filed concurrently with this petition.
`
`III. TECHNICAL BACKGROUND
`A. Overview of the ’970 patent (GoogleExhibit 1001)
`The ’970 patent is directed to sending and receiving responses to “forced
`
`message alerts.” (GoogleExhibit 1001, ’970 patent, 1:19-23.) 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; see
`
`also id., 7:8-16.) The ’970 patent describes sending the forced-message alerts to a
`
`receiving device (see id., 7:43-8:15, FIGS. 3A, 3B) and then receiving,
`
`acknowledging and responding to the forced-message alerts received from the
`
`sending device (see id., 8:16-57, FIG. 4). And, when the sending device receives
`
`no acknowledgment from the receiving device, the ’970 patent explains that the
`
`sending device can continue to transmit the forced-message alert until
`
`acknowledged. (Id., 8:25-37.)
`
`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
`
`(GoogleExhibit 1011, the ’490 application), filed September 21, 2004. As
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`explained below, the ’970 patent is not entitled to this priority claim, because the
`
`’490 application does not provide written-description support for the claimed
`
`“forced message alert software application program.” (See infra Section V.A.)
`
`B.
`The concepts of the ’970 Patent were well known in the prior art
`Johnson, Pepe, Hammond, and Kubala teach or suggest all the features
`
`recited in the challenged claims of the ’970 patent.
`
`By 1994, Johnson improved upon well-known electronic-messaging systems
`
`by creating a mandatory-response email system that included “designating an
`
`electronic email object as requiring a specific response and then transmitting the
`
`electronic mail object to a recipient.” (See Johnson, 2:23-31; see also Williams,
`
`GoogleExhibit 1003, ¶¶41-48.) The recipient is prompted for a specific response
`
`and is prohibited from performing a selected action until the specific response has
`
`been entered. (See Johnson, 2:23-31; see also Williams, ¶¶41-48.)
`
`Later, in 1998, Pepe introduced software applications on mobile devices
`
`(e.g., cell phone or PDA) that managed services that were available on many
`
`devices as shown below in Figure 3. Pepe’s personal-communications applications
`
`were designed to facilitate electronic-message exchange. And, in that regard, it
`
`improved on Johnson’s mandatory-response email-messaging system because
`
`users could now send and receive email messages on PDAs and select pre-
`
`determined messages on their PDA display screen to respond to email messages
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`with mandatory responses. (See Williams, ¶¶49-51.)
`
`Then, also in 1998, Hammond improved Johnson’s mandatory-response
`
`email-messaging system by tracking the timing of delivery as well as the response
`
`of email messages with mandatory responses. The improved mandatory-response
`
`email-messaging system could also resend email messages with mandatory
`
`responses whose delivery and review is not confirmed. (See id., ¶¶53-56.)
`
`
`
`In the same 2005 timeframe as Hammond’s system, Banerjee developed
`
`systems and methods that enabled alternate input commands using a stylus with a
`
`PDA. Namely, by applying pressure to a pressure sensor on the stylus, an
`
`application on the PDA was invoked that interprets the input as a right mouse click
`
`on a computer. A POSA would understand that being able to make the equivalent
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`of a right mouse click using a stylus on the touchscreen of PDAs would improve
`
`application use and interactivity. An example of such an application would have
`
`been Johnson’s improved mandatory-response email-messaging application with
`
`Pepe’s list of predetermined messages, and Hammond’s tracking of delivery and
`
`responses. (See Williams, ¶¶55-56.)
`
`Additionally, in 2006, Kubala improved the mandatory-response email-
`
`messaging systems, such as those described in Johnson as improved by Pepe and
`
`Hammond, by alerting a recipient that an action is required in response to the
`
`received electronic message transmitted by the sender. (See id., ¶¶58.)
`
`As set forth in more detail below (see infra Section V), the combination of
`
`Kubala and Hammond and the combination of Hammond, Johnson, and Pepe teach
`
`or suggest each and every feature of claims 1 and 3-9. (See id., ¶¶63-64.) The
`
`Board should institute review and find those claims unpatentable in view of these
`
`references, especially since the Examiner did not consider any of the references in
`
`any Office Action during prosecution of the ’970 patent.
`
`C.
`Summary of the prosecution history
`The prosecution history of the ’970 patent is brief.
`
`The application was filed on November 26, 2008. (GoogleExhibit 1002,
`
`’970 Pros. Hist., p. 44.) Unlike the previous applications in the priority chain, the
`
`application that led to the ’970 patent was directed to “forced message alerts”—
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`i.e., electronic messages that required the recipient to respond. The ’970 patent
`
`explains that “[t]he heart of the invention lies in the forced message alert software
`
`application program provided in each PC or PDA/cell phone.” (’970 patent, 4:47-
`
`49.) These forced message alerts “allow[ ] a participant to send a text or voice
`
`message to a group of people and force an automatic acknowledgement of receipt
`
`and a manual response.” (Id., 3:22-28.)
`
`About two years after the application was filed, the Examiner issued a Non-
`
`final Office Action. (’970 Pros. Hist., 55-68.) In reply, the Applicant amended
`
`certain claims to require that “a manual response list” is displayed on “a recipient
`
`PC or PDA/cell phone” and that the received message “can only be cleared by
`
`manually selecting and transmitting a response to the manual response list.” (Id.,
`
`81-92). The Examiner then issued a new rejection in a Final Office Action. (Id.,
`
`96-109.)
`
`In response to the Final Office Action, the Applicant amended the
`
`independent claims to include “requiring a required manual response from the
`
`response list by the recipient in order to clear recipient’s response list from
`
`recipient’s cell phone display.” (Id., 120-31.) After an Advisory Action, the
`
`Applicant and the Examiner had an interview and the Examiner allowed after-final
`
`claim amendments. (Id., 142-45.) Thereafter, a Notice of Allowance was mailed
`
`with an Examiner’s amendment to remove “PC” from the claims. (Id., 146-59.)
`
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`Exhibit 1020
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`The Examiner did not cite or review any of the references relied on here.
`
`IV. CLAIM CONSTRUCTION12
`A. Relevant law and person of ordinary skill in the art
`For an unexpired patent in an AIA proceeding, claim terms are given their
`
`“broadest reasonable construction” consistent with the specification. Cuozzo Speed
`
`Techs., LLC v Lee, 136 S.Ct. 2131, 2142 (2016). “Under the broadest reasonable
`
`interpretation, words of the claim must be given their plain meaning, unless such
`
`meaning is inconsistent with the specification and prosecution history.”
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`
`“[T]he ‘broadest reasonable interpretation’ that [the PTO] may give means-
`
`plus-function language is that statutorily mandated in paragraph six.” In re
`
`Donaldson Co., 16 F.3d 1189, 1194-95 (Fed. Cir. 1994) (en banc). Construing a
`
`means-plus-function limitation is a two-step process. Medtronic, Inc. v. Advanced
`
`Cardiovascular, Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The first step is to
`
`determine the function of the means-plus-function limitation. Id. (citation omitted).
`
`
`1 Google2 Apple proposes constructions for several means-plus-function
`
`terms to resolve the unpatentability issues here. On the record before the district
`
`court, GoogleApple reserves the right to argue alternative constructions and that
`
`certain terms are indefinite under 35 U.S.C. § 112.
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`The second step is to determine the corresponding structure described in the
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`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`specification and equivalents thereof. Id.
`
`For computer-implemented means-plus-function limitations, “the disclosed
`
`structure is not the general purpose computer, but rather the special purpose
`
`computer programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v.
`
`Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). 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.’” Typhoon Touch Techs., Inc. v. Dell,
`
`Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) (quoting Finisar Corp. v. DirecTV Grp.,
`
`Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
`
`The claims, specification, and prosecution history are viewed from the
`
`perspective of a person of ordinary skill in the art (“POSA”). A POSA is
`
`“presumed to be aware of all the pertinent prior art.” Standard Oil Co. v. Am.
`
`Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). This hypothetical person “is
`
`also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 421 (2007).
`
`Here, a POSA would have had 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 the field of electronic communications; or (2) a Master of
`
`Science degree in Electrical Engineering or an equivalent field, with two to four
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`years of academic or industry experience in the same field. (See Williams, ¶¶29-
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`30.)
`
`B.
`“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, 8:65-9:39 (claim 1).) The corresponding structure is a
`
`server that communicates according to either (i) WiFi, WiMax, or other peer-to-
`
`peer communications or (ii) SMS, TCP/IP, or other messaging protocol. (See id.,
`
`4:1-36; see also Williams, ¶33.)
`
`C.
`“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., 8:65-9:39 (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; see also Williams, ¶34.)
`
`D.
`“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
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`recipient’s cell phone display. (See id., 8:65-9:39 (claim 1).) The corresponding
`
`structure is the forced-message alert software-application program on the recipient
`
`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; see also Williams, ¶35.)
`
`E.
`
`“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., 8:65-9:39 (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, FIG. 3A, 3B; see also Williams, ¶36.)
`
`F.
`“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., 8:65-9:39 (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
`
`- 11 -
`
`Apple Inc.
`Exhibit 1020
`Page 018
`
`

`

`that have [sic] not acknowledged receipt.” (Id., 8:6-9; see also id., FIG. 3A, 3B;
`
`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`see also Williams, ¶37.)
`
`G.
`
`“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.,
`
`8:65-9:39 (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, FIG. 3A, 3B; see also
`
`Williams, ¶38.)
`
`V.
`
` IDENTIFICATION OF CHALLENGE
`GoogleApple requests inter partes review of claims 1 and 3-9 of the ’970
`
`patent on three grounds:
`
`Ground ’970 Patent Claims Basis for Ground
`
`1 and 3-9
`
`1 and 3-9
`
`1 and 3-9
`
`1
`
`2
`
`3
`
`
`
`Kubala and Hammond
`
`Hammond, Johnson, and Pepe
`
`Hammond, Johnson, Pepe, and Banerjee
`
`- 12 -
`
`Apple Inc.
`Exhibit 1020
`Page 019
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`A. Ground 1: Claims 1 and 3-9 are obvious over Kubala and
`Hammond—references that are prior art to the ’970 patent’s
`actual filing date (November 26, 2008).
`Ground 1 is based on references that are prior art to the ’970 patent’s actual
`
`filing date (November 26, 2008), because that is the priority date to which the ’970
`
`patent is entitled. The ’970 patent states that “[t]he heart of the invention lies in
`
`the forced message alert software application program provided in each PC or
`
`PDA/cell phone.” (’970 patent, 4:47-49 (emphases added).) This “forced message
`
`alert software application program” is required by every single independent claim
`
`(see id., 8:65-9:39 (claim 1) and 10:7-41(claim 6)) and is also described throughout
`
`the specification (see id., 1:19-23, 1:57-67, 2:7-35, 2:49-55, 3:4-14, 3:22-28, 7:8-
`
`8:57). Similar disclosures are not contained in any of the applications to which the
`
`’970 patent claims priority.
`
`The ’970 patent claims priority to three earlier-filed applications: (i) U.S.
`
`Application No. 10/711,490 (’490 application, GoogleExhibit 1011), filed on
`
`September 21, 2004; (ii) U.S. Application No. 11/308,648 (’648 application,
`
`GoogleExhibit 1012), filed on April 17, 2006; and (iii) U.S. Application No.
`
`11/612,830 (’830 application, GoogleExhibit 1013), filed on December 19, 2006.
`
`None of these earlier-filed applications provide sufficient written-description
`
`support for at least a forced-message alert software-application program, as
`
`required by each independent claim of the ’970 patent.
`
`- 13 -
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`Apple Inc.
`Exhibit 1020
`Page 020
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`First, the ʼ490 application is directed to employing cellular telephone
`
`communications to monitor locations, initiating cellular calls and conference calls
`
`with other cellular telephones of a plurality of communications net participants by
`
`touching a display screen, and causing a remote cellular phone to annunciate audio
`
`announcements or call another phone number. (ʼ490 application, Abstract, 8-32.)
`
`The ʼ490 application notes that each cellular phone can poll the other cell phones
`
`to transmit their location and status. But each of the cellular phones that poll do not
`
`include a “forced message alert” in the poll, nor do they track the poll responses.
`
`(Id., 14, ¶14.) And, in contrast to the ʼ970 patent, the ʼ490 application allows a
`
`sending PDA/cell phone to remotely control a recipient PDA/cell phone without
`
`action by the remote phone operator:
`
`In spite of the rapid advance in cellular phone technology,
`it would also be desirable to actuate a remote cellular
`phone to annunciate an audio message to alert the remote
`user that there is an emergency (or for another reason) . . .
`and cause the remote phone to call another phone number
`(as an example, to automatically establish an 800 number
`conference call), to vibrate, or increase the loudness of an
`announcement without any action by the remote phone
`operator.
`
`(Id., 9 ¶4 (emphasis added).) Thus, the ʼ490 application performs steps for
`
`remotely controlling recipient phones without a manual response from the recipient
`
`- 14 -
`
`Apple Inc.
`Exhibit 1020
`Page 021
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`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`remote phone operator. The ʼ490 application does not teach or suggest a “forced
`
`message alert software application program” as described and claimed in the ’970
`
`patent. Accordingly, the ʼ970 patent is not entitled to the priority date of the ʼ490
`
`application, September 21, 2004. (See Williams, ¶66.)
`
`Second, the ’648 application also does not disclose a forced-message alert as
`
`required by the independent claims of the ’970 patent. The ʼ648 application is
`
`directed to automatically shifting from GPRS/EDGE/CDMA/1XEVDO to SMS
`
`when any cellular phone of a plurality of cellular phones of communication net
`
`participants makes or receives a voice call and shift back upon completion of the
`
`voice call. (ʼ648 application, Abstract, 16-61.) Embodiments also cause an alert
`
`(audible voice alert, beep) to emanate from a user’s device when an incoming
`
`message arrives, show a location of the sender of a message on the user’s display,
`
`and cause an alert (verbal announcement, vibration, or text) when another
`
`participant of the communication net participants is within a predetermined
`
`distance. (Id., 42-44, ¶¶69, 72, 74.) But nowhere does the ʼ648 application teach or
`
`suggest at least a “forced message alert” let alone the “forced message alert
`
`software application program” as described and claimed in the ’970 patent.
`
`Accordingly, the ʼ970 patent is not entitled to the priority date of the ʼ648
`
`application, April 17, 2006. (See Williams, ¶67.)
`
`- 15 -
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`Apple Inc.
`Exhibit 1020
`Page 022
`
`

`

`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`Third, the ’830 application also does not disclose a forced-message alert as
`
`required by the independent claims of the ’970 patent. The ʼ830 application is
`
`directed to a plurality of cellular phone/PDA/GPS devices of communication net
`
`participants with advanced communication software (ACS) application programs
`
`that can: poll other cell phone/PDA/GPS devices of the plurality for location,
`
`status, and identity; and remotely control one or more of the other cell
`
`phone/PDA/GPS devices of the plurality. (ʼ830 application, 7-8 (specification
`
`pages 3:6-4:2), 5-40.) At best, the ʼ830 application generically mentions the ability
`
`of one phone to control certain functions on another phone:
`
`Each cell phone has the ability to remotely control from one cellular
`phone/PDA/GPS any of the other cellular phone/PDA/GPS systems
`phones including the ability to control remote cellular phones to make
`verbal prerecorded announcements, place return calls, place calls to
`another phone 15 number, vibrate, execute text to speech software,
`change