`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
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`GOOGLE LLC
`Petitioner
`v.
`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
`Case IPR2018-01079
`Patent 8,213,970
`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,213,970
`
`Apple Inc.
`Exhibit 1021
`Page 001
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Apple Inc.
`Exhibit 1021
`Page 002
`
`
`
`TABLE OF CONTENTS
`Overview
`I.
`List of Documents Considered in Formulating My Opinion
`II.
`III. Qualifications
`IV.
`Legal Principles
`A. My Understanding of Claim Construction
`B. My Understanding of Obviousness
`V.
`Level of Ordinary Skill in the Art
`VI. Overview of the’970 Patent
`VII. Understanding of Certain Claim Terms
`A.
`“data transmission means”
`B.
`“means for attaching . . .”
`C.
`“means for requiring . . .”
`D.
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have automatically acknowledged . . .”
`E.
`“means for periodically resending . . .”
`F.
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have transmitted . . .”
`VIII.Overview of the State of the Art at the Time of Filing
`Sending and Receiving Mandatory Responses in Electronic
`A.
`Messaging were Known
`B.
`Industry Trend: Applications on Cell Phones and/or Personal
`Communications Devices
`- i -
`
`1
`2
`5
`7
`7
`8
`11
`12
`12
`13
`13
`13
`14
`14
`15
`15
`16
`18
`
`Apple Inc.
`Exhibit 1021
`Page 003
`
`
`
`Tracking Delivery and Responses of Electronic Messages was
`C.
`23
`Known
`Personal Digital Assistant (PDA) with Touchscreen and Stylus
`D.
`were Known
`25
`Sending Alerts to a Recipient of an Email Message with a
`E.
`Mandatory Response was Known
`25
`IX. Analysis of Disclosure in Earlier-Filed Applications
`29
`33
`Ground of Unpatentability
`X.
`Ground 1: Claims 1 and 3-9 are obvious over Kubala in view of
`A.
`Hammond
`33
`1.
`Overview of Kubala
`33
`37
`2.
`Overview of Hammond
`3.
`Overview of the Combination of Kubala and Hammond
`39
`40
`4.
`Motivation to Combine Kubala and Hammond
`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 -
`
`B.
`
`Apple Inc.
`Exhibit 1021
`Page 004
`
`
`
`Ground 3: Claims 1 and 3-9 are obvious over Hammond in view of
`C.
`Johnson, Pepe, and Banerjee
`115
`XI. Conclusion
`116
`
`- iii -
`
`Apple Inc.
`Exhibit 1021
`Page 005
`
`
`
`EXHIBIT LIST
`Exhibit No. Description
`U.S. Patent No. 8,213,970 B2 to Beyer (“ʼ970 patent”)
`1001
`Prosecution History of U.S. Patent No. 8,213,970 (Application
`1002
`No. 12/324,122) (“’970 Pros. Hist.”)
`Declaration of David H. Williams
`1003
`Curriculum Vitae of David H. Williams
`1004
`U.S. Patent Application Publication No. 2006/0218232 to Kubala
`1005
`et al. (“Kubala”)
`U.S. Patent No. 6,854,007 to Hammond (“Hammond”).
`1006
`U.S. Patent No. 5,325,310 to Johnson et al. (“Johnson”)
`1007
`U.S. Patent No. 5,742,905 to Pepe et al. (“Pepe”)
`1008
`U.S. Publication No. 2003/0128195 to Banerjee et al.
`1009
`(“Banerjee”)
`Simon Says “Here’s How!” Simon™ Mobile Communications
`1010
`Made Simple, Simon Users Manual, IBM Corp., 1994. (“Simon”)
`Prosecution History of U.S. Patent Application No. 10/711,490
`1011
`(“’490 application”)
`Prosecution History of U.S. Application No. 11/308,648 (“’648
`1012
`application”)
`Prosecution History of U.S. Application No. 11/612,830 (“’830
`1013
`application”)
`McKinsey & Company, The McKinsey Report : FDNY 9/11
`1014
`Response (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com,
`1015
`https://en.wikipedia.org/wiki/History_of_mobile_phones (last
`visited May 10, 2018) (“Hist. Mobile Phones”)
`https://en.wikipedia.org/wiki/Apple_Newton (last visited May
`Apple Newton, Wikipedia.com,
`1016
`10, 2018) (“Apple”)
`- iv -
`
`Apple Inc.
`Exhibit 1021
`Page 006
`
`
`
`Exhibit No. Description
`Email, Wikipedia.com, https://en.wikipedia.org/wiki/Email (last
`1017
`visited May 10, 2018) (“Email”)
`From touch displays to the Surface: A brief history of
`1018
`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
`1019
`(last visited May 10, 2018) (“Palm”)
`
`- v -
`
`Apple Inc.
`Exhibit 1021
`Page 007
`
`
`
`I, David Hilliard Williams, declare as follows:
`I.
`Overview
`1.
`I have been retained on behalf of Google LLCApple 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 GoogleExhibit 1001, and that the ’490 application has been
`provided as GoogleExhibit 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 GoogleExhibit 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 (GoogleExhibit
`1011, ’490 application), filed on September 21, 2004; (ii) U.S. Application No.
`11/308,648 (GoogleExhibit 1012, ’648 application), filed on April 17, 2006; and
`- 1 -
`
`Apple Inc.
`Exhibit 1021
`Page 008
`
`
`
`(iii) U.S. Application No. 11/612,830 (GoogleExhibit 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
`GoogleExhibit 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
`Kubala et al., titled “Method and System for Accommodating
`Mandatory 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
`- 2 -
`
`Apple Inc.
`Exhibit 1021
`Page 009
`
`
`
`of the ’970 patent. I understand that Kubala has been provided as
`GoogleExhibit 1005.
`U.S. Patent No. 6,854,007 to Hammond, titled “Method and
`System for Enhancing Reliability of Communication with
`Electronic Messages” (“Hammond”). Hammond issued as a patent
`on February 8, 2005, more than one year before the actual filing
`date of the ’970 patent. I understand that Hammond has been
`provided as GoogleExhibit 1006.
`U.S. Patent No. 5,325,310 to Johnson et al., titled “Method and
`System
`for Persistant Electronic Mail Reply Processing”
`(“Johnson”). 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 GoogleExhibit 1007.
`U.S. Patent No. 5,742,905 to Pepe et al., titled “Personal
`Communications Internetworking” (“Pepe”). Pepe issued on April
`21, 1998, over ten years prior to the actual filing date of the ’970
`patent. Pepe was filed on September 19, 1994. I understand that
`Pepe has been provided as GoogleExhibit 1008.
`U.S. Patent Publication No. 2003/0128195 to Banerjee et al.,
`titled “Touchscreen User Interface: Bluetooth™ Stylus for
`Performing 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
`- 3 -
`
`Apple Inc.
`Exhibit 1021
`Page 010
`
`
`
`’970 patent. Banerjee was filed on January 8, 2002. I understand
`that Banerjee has been provided as GoogleExhibit 1009.
`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
`GoogleExhibit 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
`- 4 -
`
`Apple Inc.
`Exhibit 1021
`Page 011
`
`
`
`the basis for the grounds of rejection set forth in the Petition for Inter Partes
`Review of the ’970 patent.
`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 GoogleExhibit 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.
`- 5 -
`
`Apple Inc.
`Exhibit 1021
`Page 012
`
`
`
`For example, I managed the development and launch of several
`12.
`consumer-oriented LBS applications including mobile social networking, family
`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:
` The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless
`Location-Based Services (2005 and 2009 versions);
` The Definitive Guide to Wireless E911; and
` The Definitive Guide to Mobile Positioning and Location
`Management (co-author).
`
`- 6 -
`
`Apple Inc.
`Exhibit 1021
`Page 013
`
`
`
`I received a B.S. degree, in Electrical Engineering, from Purdue
`15.
`University, in 1983. I received a MBA degree, in Information Systems
`Management, from University of Texas, Austin, in 1987.
`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 $350400 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.
`- 7 -
`
`Apple Inc.
`Exhibit 1021
`Page 014
`
`
`
`For computer-implemented means-plus-function limitations, I
`19.
`understand that the disclosed structure is not a general-purpose computer, but
`rather the special-purpose computer programmed to perform the disclosed
`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:
` the levels of education and experience of persons working in the field;
` the types of problems encountered in the field; and
` the sophistication of the technology.
`- 8 -
`
`Apple Inc.
`Exhibit 1021
`Page 015
`
`
`
`To obtain a patent, a claimed invention must have, as of the priority
`22.
`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
`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.
`- 9 -
`
`Apple Inc.
`Exhibit 1021
`Page 016
`
`
`
`I further understand that whether there is a reasonable expectation of
`25.
`success from combining references in a particular way is also relevant to the
`analysis. I understand there may be a number of rationales that may support a
`conclusion of obviousness, including:
` Combining prior art elements according to known methods to yield
`predictable results;
` Substitution of one known element for another to obtain predictable
`results;
` Use of known technique to improve similar devices (methods, or
`products) in the same way;
` Applying a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
` "Obvious to try" – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
` 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
`incentives or other market forces if the variations are predictable to
`one of ordinary skill in the art; or
`- 10 -
`
`Apple Inc.
`Exhibit 1021
`Page 017
`
`
`
` 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
`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
`- 11 -
`
`Apple Inc.
`Exhibit 1021
`Page 018
`
`
`
`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 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,
`- 12 -
`
`Apple Inc.
`Exhibit 1021
`Page 019
`
`
`
`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.
`A.
`“data transmission means”
`33.
`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.
`“means for attaching . . .”
`34.
`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
`- 13 -
`
`Apple Inc.
`Exhibit 1021
`Page 020
`
`
`
`be sent with the message, and then send the message to the recipients. (See id.,
`7:43-63; FIG. 3A.)
`C.
`“means for requiring . . .”
`35.
`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
`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.
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have automatically acknowledged . . .”
`36.
`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.)
`- 14 -
`
`Apple Inc.
`Exhibit 1021
`Page 021
`
`
`
`“means for periodically resending . . .”
`E.
`The recited function is periodically resending a forced message alert
`37.
`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.)
`F.
`“means for receiving and displaying a listing of which recipient
`PDA/cell phones have transmitted . . .”
`38.
`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 Google’sApple’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
`- 15 -
`
`Apple Inc.
`Exhibit 1021
`Page 022
`
`
`
`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
`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
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`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.”
`(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
`1 All emphasis is added, except where otherwise indicated.
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`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
`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
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`communications device was IBM’s Simon™: “You now have total personal
`communications – including your cellular phone – in one small, hand-held, mobile
`device. Simon** has everything you need: cellular phone, fax, E-mail, pager,
`paperless notepad, address book, calendar, and calculator. And it’s wireless!”
`(Simon, p. 1.)
`
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`(Simon, 1994 p. 4.)
`47.
`The Simon Users Manual illustrated a Phone screen and a Mobile
`Office screen that was accessible via a touchscreen, and included a stylus:
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`(Simon, p. 11.)
`48.
`Thus, a POSA would understand that the industry’s introduction of
`wireless personal communications devices capable of running voice, email, fax,
`and other software applications (See the Mobile Office screen icons above) could
`readily be combined with Johnson’s mandatory response email software
`application. This is because Johnson’s mandatory response email software
`application is a type of email software application that could be substituted for the
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`email software application in the Simon Mobile Office. And, the substitution
`would yield predictable results. A POSA would realize that Johnson’s mandatory
`response email software application could be placed on cell phones and/or wireless
`communication devices, not just IBM’s Simon product.
`49. By 1998 when Pepe issued, the types of software applications
`available on cell phones and/or wireless personal communications devices, also
`called personal digital assistants (PDAs) (See Pepe, 1:33-35), expanded. For
`example, Pepe introduced software applications on a cell phone and/or PDA that
`managed the internetworking of services that were available on many devices as
`shown below in Figure 3.
`
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`(Pepe, FIG. 3.)
`50.
`Pepe’s personal communications internetworking applications
`“provide[s] a network subscriber with the ability to remotely control the receipt
`and delivery of wireless and wireline voice and text messages. . . . The subscriber
`may be provided with CallCommand service which provides real-time control of
`voice calls while using a wireless data terminal or PDA.” (Pepe, Abstract, 1:33-
`35.) For example, Pepe includes a software application on a PDA that allows a
`subscriber to select pre-determined messages from their PDA display screen to
`reply to an incoming caller. (Pepe, 34:9-14, 36:15-20, 36:37-42.)
`51. A POSA would recognize that Johnson and Pepe are directed to
`software applications on wireless communication devices that prompt a recipient
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`(e.g., e-mail recipient or incoming call recipient) for a specific response in
`response to receiving an e-mai