UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`HTC CORPORATION, HTC AMERICA, INC., AND ZTE (USA), INC.
`Petitioners
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner
`
`
`
`
`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
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Petitioners Exhibit 1003 - Page 1
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`

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`TABLE OF CONTENTS
`
`I.
`Overview .......................................................................................................... 1
`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.
`
`Petitioners Exhibit 1003 - Page 2
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`

`

`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
`
`Petitioners Exhibit 1003 - Page 3
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`

`

`C.
`
`Ground 3: Claims 1 and 3-9 are obvious over Hammond in
`view of Johnson, Pepe, and Banerjee ................................................ 115
`XI. Conclusion ................................................................................................... 116
`
`
`Petitioners Exhibit 1003 - Page 4
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`

`

`Exhibit No. Description
`
`EXHIBIT LIST
`
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`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 Re-
`sponse (2002) (“The McKinsey Report”)
`History of Mobile Phones, Wikipedia.com, https://en.wikipe-
`dia.org/wiki/History_of_mobile_phones (last visited May 10,
`2018) (“Hist. Mobile Phones”)
`Apple Newton, Wikipedia.com, https://en.wikipedia.org/wiki/Ap-
`ple_Newton (last visited May 10, 2018) (“Apple”)
`Email, Wikipedia.com, https://en.wikipedia.org/wiki/Email (last
`visited May 10, 2018) (“Email”)
`
`Petitioners Exhibit 1003 - Page 5
`
`

`

`Exhibit No. Description
`
`1018
`
`1019
`
`
`
`From touch displays to the Surface: A brief history of touchscreen
`technology, Arstechnica.com https://arstechnica.com/gadg-
`ets/2013/04/from-touch-displays-to-the-surface-a-brief-history-
`of-touchscreen-technology/ (last visited May 10, 2018) (“Ar-
`stechnica”)
`Palm VII,Wikipedia.com, https://en.wikipedia.org/wiki/Palm_VII
`(last visited May 10, 2018) (“Palm”)
`
`
`
`Petitioners Exhibit 1003 - Page 6
`
`

`

`I, David Hilliard Williams, declare as follows:
`
`I.
`
`Overview
`I have been retained on behalf of ZTE (USA), INC. (“ZTE”), HTC
`1.
`
`CORPORATION and HTC AMERICA, INC. (respectively “HTC”) (collectively
`
`“Petitioners”) 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 Petitioners 1001, and that the ’490 application has been
`
`provided as Petitioners 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 Petitioners 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 (Petitioners 1011, ’490
`
`Petitioners Exhibit 1003 - Page 7
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`

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`application), filed on September 21, 2004; (ii) U.S. Application No. 11/308,648
`
`(Petitioners 1012, ’648 application), filed on April 17, 2006; and (iii) U.S.
`
`Application No. 11/612,830 (Petitioners 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 Petitioners
`
`1003.
`
`II. List of Documents Considered in Formulating My Opinion
`I have also reviewed and am familiar with the following prior art used
`5.
`
`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
`
`Petitioners Exhibit 1003 - Page 8
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`

`

`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 Petitioners 1005.
`
`U.S. Patent No. 6,854,007 to Hammond, titled “Method and System
`for Enhancing Reliability of Communication with Electronic Mes-
`sages” (“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 Petitioners
`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 Peti-
`tioners 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 patent. Pepe
`was filed on September 19, 1994. I understand that Pepe has been
`provided as Petitioners 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 ’970 patent. Banerjee
`
`Petitioners Exhibit 1003 - Page 9
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`

`

`was filed on January 8, 2002. I understand that Banerjee has been
`provided as Petitioners 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 Peti-
`tioners 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
`
`Petitioners Exhibit 1003 - Page 10
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`

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`the basis for the grounds of rejection set forth in the Petition for Inter Partes
`
`Review of the ’970 patent.
`
`III. Qualifications
`In formulating my opinions, I have relied upon my training,
`9.
`
`knowledge, and experience in the relevant art. A copy of my current curriculum
`
`vitae is provided as Petitioners 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.
`
`Petitioners Exhibit 1003 - Page 11
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`

`

`12. For example, I managed the development and launch of several
`
`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).
`
`Petitioners Exhibit 1003 - Page 12
`
`

`

`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.
`
`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
`I understand that, during an inter partes review, claims are to be given
`17.
`
`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.
`
`Petitioners Exhibit 1003 - Page 13
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`

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`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
`
`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
`I understand that a patent claim is invalid if the claimed invention
`20.
`
`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.
`
`Petitioners Exhibit 1003 - Page 14
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`

`

`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
`
`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.
`
`Petitioners Exhibit 1003 - Page 15
`
`

`

`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:
`
`• 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, pre-
`
`dictable 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 incen-
`
`tives or other market forces if the variations are predictable to one of
`
`ordinary skill in the art; or
`
`Petitioners Exhibit 1003 - Page 16
`
`

`

`• 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
`
`Petitioners Exhibit 1003 - Page 17
`
`

`

`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,
`
`Petitioners Exhibit 1003 - Page 18
`
`

`

`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.
`
`“data transmission means”
`A.
`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).
`
`“means for attaching . . .”
`B.
`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
`
`Petitioners Exhibit 1003 - Page 19
`
`

`

`be sent with the message, and then send the message to the recipients. (See id.,
`
`7:43-63; FIG. 3A.)
`
`“means for requiring . . .”
`C.
`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
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`acknowledgement receipts. (See id., 7:64-8:5, FIGS. 3A, 3B.)
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`Petitioners Exhibit 1003 - Page 20
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`“means for periodically resending . . .”
`E.
`37. The recited function is periodically resending a forced message alert
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`to a recipient PDA/cell phone that has not automatically acknowledged the forced
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`message alert. (See id., 9:32-34 (claim 1).) The corresponding structure is the
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`forced message alert software application program on the sender PDA/cell phone
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`that will “periodically resend the forced message alert to the PC or PDA/cell phone
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`that have [sic] not acknowledged receipt.” (Id., 8:6-8; see also id., FIG. 3A, 3B.)
`
`F.
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`“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
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`recipient PDA/cell phones have transmitted a manual response to a forced message
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`alert and details the response from each recipient PDA/cell phone that responded.
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`(See id., 9:35-39 (claim 1).) The corresponding structure is the forced message
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`alert software application program on the sender’s PDA/cell phone that monitors
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`for and receives electronic transmissions with manual responses and displays those
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`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
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`priority date of the ’970 patent. I am informed by Petitioners’ counsel that the ’970
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`patent has a correct priority date of November 26, 2008 despite claiming an earliest
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`possible priority date of September 21, 2004. I also understand that analyzing the
`
`Petitioners Exhibit 1003 - Page 21
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`state of electronic communications and/or wireless/mobile communications during
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`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
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`issue in the ’970 patent was broadly applied and well known by developers of
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`email and wireless/mobile communications. No individual elements of the ’970
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`claims were novel at the time of the alleged invention, and there was nothing novel
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`about the manner in which those elements were combined in the claims. Further,
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`there were no technological barriers to combining these elements to form the
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`claimed invention. Indeed, combining these elements would have yielded
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`predictable results. Thus, the topics of requiring a response to important emails and
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`tracking them have been well known prior to 2003, well before the actual filing
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`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
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`electronic mail system is a “system whereby messages, notes, and documents in
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`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
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`Petitioners Exhibit 1003 - Page 22
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`

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`may be transmitted to a user, such as, for example, voice or verbal messages, and
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`non- textual items like graphics or drawings that may be electronically
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`transmitted.” (Johnson, 1:21-29.)
`
`42. At that time, it was “often desirable in an electronic mail system to
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`distribute an electronic mail object to a number of users with the expectation of a
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`reply confirming the reception and reading of the electronic mail object.”
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`(Johnson, 1:48-51.)1 Available acknowledgement systems at the time could
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`“indicate that an electronic mail object has been sent and received by a recipient,
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`but do not provide a mechanism to ensure or compel a reply by the recipient. The
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`various forms of acknowledgement that are presently available do not ensure that
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`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
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`acknowledgement systems that acknowledged receipt (or delivery) of email
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`messages were known.
`
`43. To satisfy the “need for an electronic mail system having a
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`mechanism for ensuring that a recipient of an electronic mail object will read it
`
`carefully” (Johnson, 1:66-68), Johnson provided “an improved acknowledgement
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`system for electronic mail objects distributed within an electronic mail system
`
`1 All emphasis is added, except where otherwise indicated.
`
`Petitioners Exhibit 1003 - Page 23
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`

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`through ensuring that an electronic mail object has been carefully examined by a
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`recipient.” (Johnson, 2:10-15.) Johnson’s system included “designating an
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`electronic email object as requiring a specific response and then transmitting the
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`electronic mail object to a recipient. The recipient of the electronic mail object is
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`prompted for a specific response in response to the recipient opening the
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`electronic mail object and is prohibited from performing a selected action until
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`the specific response has been entered by the recipient.” (Johnson, 2:23-31.)
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`Thus, by 1994, sending and receiving mandatory responses in electronic messaging
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`were known.
`
`44. A POSA would have recognized that systems for sending and
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`receiving mandatory responses in electronic messaging were known prior to the
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`’970 patent.
`
`B.
`
`Industry Trend: Applications on Cell Phones and/or Personal
`Communications Devices
`45. As discussed above, by 1994 email messages with mandatory
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`responses were transmitted and received between and/or among computers or
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`workstations coupled to a local area network (LAN). (Johnson, 1:29-35.)
`
`46. By 1994, wireless personal commun