`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC CORPORATION, HTC AMERICA, INC., AND ZTE (USA), INC.
`Petitioners
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`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner
`
`
`
`
`Case IPR2019-00485
`Patent 8,213,970
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`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,213,970
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`STANDING ..................................................................................................... 2
`II.
`III. TECHNICAL BACKGROUND ..................................................................... 3
`A. Overview of the ’970 patent (Petitioners 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.
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`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
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`B.
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`C.
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`VI. THIS PETITION CONTAINS NEW ARGUMENTS AND PRIOR
`ART NOT PREVIOUSLY PRESENTED TO THE OFFICE. .....................78
`VII. SECONDARY CONSIDERATIONS ...........................................................79
`VIII. MANDATORY NOTICES ...........................................................................79
`IX. CONCLUSION ..............................................................................................81
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`EXHIBIT LIST
`
`
`Exhibit No. Description
`
`1001
`
`1002
`
`1003
`
`1004
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`1005
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`1006
`
`1007
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`1008
`
`1009
`
`1010
`
`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`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”)
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`Exhibit No. Description
`
`Inter Partes Review of U.S. Patent No. 8,213,970
`
`
`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”)
`
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`INTRODUCTION
`
`HTC Corporation and HTC America, Inc. (respectively “HTC”) and ZTE
`
`I.
`
`
`(USA), INC. (“ZTE”) (collectively “Petitioners”) petition for inter partes review
`
`of claims 1 and 3-9 of U. S. Patent No. 8,213,970 (“ʼ970 patent”).
`
`This Petition is substantively the same as IPR2018-01079, which was
`
`instituted on November 20, 2018. This Petition is being filed concurrently with a
`
`motion for joinder with respect to that proceeding.
`
`The ’970 patent recites a combination of limitations that existed in prior art.
`
`These claims are directed to sending “forced message alerts,” which are electronic
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`messages that require a response, and tracking the receipt of those “forced message
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`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
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`canceled.
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`In the early 1990s (well before the ’970 patent’s earliest effective filing
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`date), Bellcore, for instance, disclosed personal digital assistants (PDAs) for
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`sending and receiving electronic messages, such as, emails and voice mails. (See
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`Petitioners 1008, Pepe.) IBM and Micron Technology were also working on
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`systems and methods for sending and receiving mandatory-response messages.
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`(See Petitioners 1007, Johnson; Petitioners 1006, Hammond.) In fact, IBM applied
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`its work with mandatory-response messages to PDAs with a touchscreen user
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`interface and a stylus. (See Petitioners 1005, Kubala; and Petitioners 1009,
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`Banerjee.) These disclosures from these companies illustrate that it was known or
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`would have been obvious to use a PDA to send, receive, and track forced-message
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`alerts, as recited in the claims of the ’970 patent.
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`The Examiner, without considering such systems and methods, allowed
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`those claims, but only after they were amended to recite the concept of providing a
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`recipient with a list of possible responses to an incoming message. But even that
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`concept was known and taught in the prior art. For example, Kubala discloses a
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`system in which a PDA receives a mandatory-response message and displays a
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`menu of possible responses that may be selected by a user “as a quick response to
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`the original e-mail message . . . .” (Kubala, ¶0057.) Similarly, Pepe discloses a
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`PDA that provides a menu of possible responses from which a user may choose in
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`order to respond to an incoming electronic message. (Pepe, 36:16-20, 40-42, FIGS.
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`42, 45.)
`
`Petitioners present multiple grounds—one based on Kubala (which predates
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`the ’970 patent’s actual filing date) and two based on Pepe (which predates the
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`’970 patent’s earliest effective filing date). Because these prior-art references are
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`directed to or disclose precisely what the challenged claims recite, the Board
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`should institute review and find those claims unpatentable.
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`II.
`
`STANDING
`Petitioners certify that the ʼ970 patent is available for inter partes review.
`
`Petitioners also certify that it is not barred or estopped from requesting this inter
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`partes review on the grounds identified herein.
`
`III. TECHNICAL BACKGROUND
`A. Overview of the ’970 patent (Petitioners 1001)
`The ’970 patent is directed to sending and receiving responses to “forced
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`message alerts.” (Petitioners 1001, ’970 patent, 1:19-23.) The ’970 patent explains,
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`“[t]he heart of the invention lies in the forced message alert software application
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`program provided in each PC or PDA/cell phone.” (Id., 4:47-49; see also id., 7:8-
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`16.) The ’970 patent describes sending the forced-message alerts to a receiving
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`device (see id., 7:43-8:15, FIGS. 3A, 3B) and then receiving, acknowledging and
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`responding to the forced-message alerts received from the sending device (see id.,
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`8:16-57, FIG. 4). And, when the sending device receives no acknowledgment from
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`the receiving device, the ’970 patent explains that the sending device can continue
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`to transmit the forced-message alert until acknowledged. (Id., 8:25-37.)
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`The application that issued as the ’970 patent was filed on November 26,
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`2008, and claims priority to U.S. Patent Application No. 10/711,490 (Petitioners
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`1011, the ’490 application), filed September 21, 2004. As explained below, the
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`’970 patent is not entitled to this priority claim, because the ’490 application does
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`not provide written-description support for the claimed “forced message alert
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`software application program.” (See infra Section V.A.)
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`The concepts of the ’970 Patent were well known in the prior art
`B.
`Johnson, Pepe, Hammond, and Kubala teach or suggest all the features
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`recited in the challenged claims of the ’970 patent.
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`By 1994, Johnson improved upon well-known electronic-messaging systems
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`by creating a mandatory-response email system that 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.” (See Johnson, 2:23-31; see also Williams,
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`Petitioners 1003, ¶¶41-48.) The recipient is prompted for a specific response and is
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`prohibited from performing a selected action until the specific response has been
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`entered. (See Johnson, 2:23-31; see also Williams, ¶¶41-48.)
`
`Later, in 1998, Pepe introduced software applications on mobile devices
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`(e.g., cell phone or PDA) that managed services that were available on many
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`devices as shown below in Figure 3. Pepe’s personal-communications applications
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`were designed to facilitate electronic-message exchange. And, in that regard, it
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`improved on Johnson’s mandatory-response email-messaging system because
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`users could now send and receive email messages on PDAs and select pre-
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`determined messages on their PDA display screen to respond to email messages
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`with mandatory responses. (See Williams, ¶¶49-51.)
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`Then, also in 1998, Hammond improved Johnson’s mandatory-response
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`email-messaging system by tracking the timing of delivery as well as the response
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`of email messages with mandatory responses. The improved mandatory-response
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`email-messaging system could also resend email messages with mandatory
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`responses whose delivery and review is not confirmed. (See id., ¶¶53-56.)
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`
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`In the same 2005 timeframe as Hammond’s system, Banerjee developed
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`systems and methods that enabled alternate input commands using a stylus with a
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`PDA. Namely, by applying pressure to a pressure sensor on the stylus, an
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`application on the PDA was invoked that interprets the input as a right mouse click
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`on a computer. A POSA would understand that being able to make the equivalent
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`of a right mouse click using a stylus on the touchscreen of PDAs would improve
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`application use and interactivity. An example of such an application would have
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`been Johnson’s improved mandatory-response email-messaging application with
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`Pepe’s list of predetermined messages, and Hammond’s tracking of delivery and
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`responses. (See Williams, ¶¶55-56.)
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`Additionally, in 2006, Kubala improved the mandatory-response email-
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`messaging systems, such as those described in Johnson as improved by Pepe and
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`Hammond, by alerting a recipient that an action is required in response to the
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`received electronic message transmitted by the sender. (See id., ¶¶58.)
`
`As set forth in more detail below (see infra Section V), the combination of
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`Kubala and Hammond and the combination of Hammond, Johnson, and Pepe teach
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`or suggest each and every feature of claims 1 and 3-9. (See id., ¶¶63-64.) The
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`Board should institute review and find those claims unpatentable in view of these
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`references, especially since the Examiner did not consider any of the references in
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`any Office Action during prosecution of the ’970 patent.
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`Summary of the prosecution history
`C.
`The prosecution history of the ’970 patent is brief.
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`The application was filed on November 26, 2008. (Petitioners 1002, ’970
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`Pros. Hist., p. 44.) Unlike the previous applications in the priority chain, the
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`application that led to the ’970 patent was directed to “forced message alerts”—
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`i.e., electronic messages that required the recipient to respond. The ’970 patent
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`explains that “[t]he heart of the invention lies in the forced message alert software
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`application program provided in each PC or PDA/cell phone.” (’970 patent, 4:47-
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`49.) These forced message alerts “allow[ ] a participant to send a text or voice
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`message to a group of people and force an automatic acknowledgement of receipt
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`and a manual response.” (Id., 3:22-28.)
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`About two years after the application was filed, the Examiner issued a Non-
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`final Office Action. (’970 Pros. Hist., 55-68.) In reply, the Applicant amended
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`certain claims to require that “a manual response list” is displayed on “a recipient
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`PC or PDA/cell phone” and that the received message “can only be cleared by
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`manually selecting and transmitting a response to the manual response list.” (Id.,
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`81-92). The Examiner then issued a new rejection in a Final Office Action. (Id.,
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`96-109.)
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`In response to the Final Office Action, the Applicant amended the
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`independent claims to include “requiring a required manual response from the
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`response list by the recipient in order to clear recipient’s response list from
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`recipient’s cell phone display.” (Id., 120-31.) After an Advisory Action, the
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`Applicant and the Examiner had an interview and the Examiner allowed after-final
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`claim amendments. (Id., 142-45.) Thereafter, a Notice of Allowance was mailed
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`with an Examiner’s amendment to remove “PC” from the claims. (Id., 146-59.)
`
`The Examiner did not cite or review any of the references relied on here.
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`IV. CLAIM CONSTRUCTION1
`A. Relevant law and person of ordinary skill in the art
`For an unexpired patent in an AIA proceeding, claim terms are given their
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`“broadest reasonable construction” consistent with the specification. Cuozzo Speed
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`Techs., LLC v Lee, 136 S.Ct. 2131, 2142 (2016). “Under the broadest reasonable
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`interpretation, words of the claim must be given their plain meaning, unless such
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`meaning is inconsistent with the specification and prosecution history.”
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`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
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`“[T]he ‘broadest reasonable interpretation’ that [the PTO] may give means-
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`plus-function language is that statutorily mandated in paragraph six.” In re
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`Donaldson Co., 16 F.3d 1189, 1194-95 (Fed. Cir. 1994) (en banc). Construing a
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`means-plus-function limitation is a two-step process. Medtronic, Inc. v. Advanced
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`Cardiovascular, Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). The first step is to
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`determine the function of the means-plus-function limitation. Id. (citation omitted).
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`
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`1 Petitioners propose constructions for several means-plus-function terms to
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`resolve the unpatentability issues here. On the record before the district court,
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`Petitioners reserve the right to argue that certain terms are indefinite under 35
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`U.S.C. § 112.
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`The second step is to determine the corresponding structure described in the
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`specification and equivalents thereof. Id.
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`For computer-implemented means-plus-function limitations, “the disclosed
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`structure is not the general purpose computer, but rather the special purpose
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`computer programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v.
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`Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The algorithm may be
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`disclosed “as a mathematical formula, in prose, or as a flow chart, or in any other
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`manner that provides sufficient structure.’” Typhoon Touch Techs., Inc. v. Dell,
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`Inc., 659 F.3d 1376, 1385 (Fed. Cir. 2011) (quoting Finisar Corp. v. DirecTV Grp.,
`
`Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
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`The claims, specification, and prosecution history are viewed from the
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`perspective of a person of ordinary skill in the art (“POSA”). A POSA is
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`“presumed to be aware of all the pertinent prior art.” Standard Oil Co. v. Am.
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`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
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`Electrical Engineering or an equivalent field, with three to five years of academic
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`or industry experience in the field of electronic communications; or (2) a Master of
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`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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`30.)
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`“data transmission means”
`B.
`The function of the “data transmission means” is to facilitate the
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`transmission of electronic files between said PDA/cell phones in different
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`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.,
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`4:1-36; see also Williams, ¶33.)
`
`“means for attaching . . .”
`C.
`The recited function is to attach a forced-message alert software packet to a
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`voice or text message creating a forced-message alert that is transmitted by a
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`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.)
`
`“means for requiring . . .”
`D.
`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
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`structure is the forced-message alert software-application program on the recipient
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`PDA/cellular phone that causes the message and manual response list to be
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`displayed on the screen of the recipient PDA/cellular phone and clears the forced
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`alert text data when a response is selected from the manual-response list. (See id.,
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`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-
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`message alert. (See id., 8:65-9:39 (claim 1).) The corresponding structure is forced-
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`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.)
`
`“means for periodically resending . . .”
`F.
`The recited function is periodically resending a forced-message alert to a
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`recipient PDA/cell phone that has not automatically acknowledged the forced-
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`message alert. (See id., 8:65-9:39 (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., 8:6-9; see also id., FIG. 3A, 3B;
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`see also Williams, ¶37.)
`
`G.
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`“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
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`details the response from each recipient PDA/cell phone that responded. (See id.,
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`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
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`responses on the sender’s PDA/cell phone. (See id., 8:9-15, FIG. 3A, 3B; see also
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`Williams, ¶38.)
`
`V.
`
`IDENTIFICATION OF CHALLENGE
`Petitioners 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
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`1 and 3-9
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`1
`
`2
`
`3
`
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`
`Kubala and Hammond
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`Hammond, Johnson, and Pepe
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`Hammond, Johnson, Pepe, and Banerjee
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`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
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`filing date (November 26, 2008), because that is the priority date to which the ’970
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`patent is entitled. The ’970 patent states that “[t]he heart of the invention lies in
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`the forced message alert software application program provided in each PC or
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`PDA/cell phone.” (’970 patent, 4:47-49 (emphases added).) This “forced message
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`alert software application program” is required by every single independent claim
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`(see id., 8:65-9:39 (claim 1) and 10:7-41(claim 6)) and is also described throughout
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`the specification (see id., 1:19-23, 1:57-67, 2:7-35, 2:49-55, 3:4-14, 3:22-28, 7:8-
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`8:57). Similar disclosures are not contained in any of the applications to which the
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`’970 patent claims priority.
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`The ’970 patent claims priority to three earlier-filed applications: (i) U.S.
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`Application No. 10/711,490 (’490 application, Petitioners 1011), filed on
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`September 21, 2004; (ii) U.S. Application No. 11/308,648 (’648 application,
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`Petitioners 1012), filed on April 17, 2006; and (iii) U.S. Application No.
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`11/612,830 (’830 application, Petitioners 1013), filed on December 19, 2006.
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`None of these earlier-filed applications provide sufficient written-description
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`support for at least a forced-message alert software-application program, as
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`required by each independent claim of the ’970 patent.
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`First, the ʼ490 application is directed to employing cellular telephone
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`communications to monitor locations, initiating cellular calls and conference calls
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`with other cellular telephones of a plurality of communications net participants by
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`touching a display screen, and causing a remote cellular phone to annunciate audio
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`announcements or call another phone number. (ʼ490 application, Abstract, 8-32.)
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`The ʼ490 application notes that each cellular phone can poll the other cell phones
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`to transmit their location and status. But each of the cellular phones that poll do not
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`include a “forced message alert” in the poll, nor do they track the poll responses.
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`(Id., 14, ¶14.) And, in contrast to the ʼ970 patent, the ʼ490 application allows a
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`sending PDA/cell phone to remotely control a recipient PDA/cell phone without
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`action by the remote phone operator:
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`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.
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`(Id., 9 ¶4 (emphasis added).) Thus, the ʼ490 application performs steps for
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`remotely controlling recipient phones without a manual response from the recipient
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`remote phone operator. The ʼ490 application does not teach or suggest a “forced
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`message alert software application program” as described and claimed in the ’970
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`patent. Accordingly, the ʼ970 patent is not entitled to the priority date of the ʼ490
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`application, September 21, 2004. (See Williams, ¶66.)
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`Second, the ’648 application also does not disclose a forced-message alert as
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`required by the independent claims of the ’970 patent. The ʼ648 application is
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`directed to automatically shifting from GPRS/EDGE/CDMA/1XEVDO to SMS
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`when any cellular phone of a plurality of cellular phones of communication net
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`participants makes or receives a voice call and shift back upon completion of the
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`voice call. (ʼ648 application, Abstract, 16-61.) Embodiments also cause an alert
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`(audible voice alert, beep) to emanate from a user’s device when an incoming
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`message arrives, show a location of the sender of a message on the user’s display,
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`and cause an alert (verbal announcement, vibration, or text) when another
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`participant of the communication net participants is within a predetermined
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`distance. (Id., 42-44, ¶¶69, 72, 74.) But nowhere does the ʼ648 application teach or
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`suggest at least a “forced message alert” let alone the “forced message alert
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`software application program” as described and claimed in the ’970 patent.
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`Accordingly, the ʼ970 patent is not entitled to the priority date of the ʼ648
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`application, April 17, 2006. (See Williams, ¶67.)
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`Third, the ’830 application also does not disclose a forced-message alert as
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`required by the independent claims of the ’970 patent. The ʼ830 application is
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`directed to a plurality of cellular phone/PDA/GPS devices of communication net
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`participants with advanced communication software (ACS) application programs
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`that can: poll other cell phone/PDA/GPS devices of the plurality for location,
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`status, and identity; and remotely control one or more of the other cell
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`phone/PDA/GPS devices of the plurality. (ʼ830 application, 7-8 (specification
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`pages 3:6-4:2), 5-40.) At best, the ʼ830 application generically mentions the ability
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`of one phone to control certain functions on another phone:
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`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 an-
`other phone 15 number, vibrate, execute text to speech software, change
`sound intensity, remotely control software and functions resident on the
`remote phone and process and display information by touching the dis-
`play screen at their location on the PDA display and selecting the ap-
`propriate soft switch; the ability to layer a sufficient number of switches
`or buttons on the PDA display to perform the above functions without
`overlaying the map; and the ability to change the 20 nomenclature of a
`series of soft switches and symbology for different operating environ-
`ments.
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`Inter Partes Review of U.S. Patent No. 8,213,970
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`(Id., 23 (spec. pages 19:11-20); see also id., 6 (spec. pages 2:14-18).) But nowhere
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`does the ’830 application disclose the concepts of (i) a manual-response list or
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`(ii) requiring a manual response from such a response list to clear the response list
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`from the recipient’s phone—two concepts that were explicitly added during
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`prosecution to gain allowance of the independent claims of the ’970 patent. (See
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`’970 Pros. Hist., 120-31; see also supra Section III.C.) Accordingly, the ʼ970
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`patent is not entitled to the priority date of the ʼ830 application, December 19,
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`2006. (See Williams, ¶68.)
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`Because the ’970 patent is not entitled to priority to any of the earlier-filed
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`applications, it is entitled to a priority date of only November 26, 2008—its actual
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`filing date. Kubala and Hammond both pre-date the ’970 patent’s actual filing date.
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`First, Kubala published on September 28, 2006—more than one year before
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`November 26, 2008. (See Kubala, (43).) Thus, Kubala is prior art under 35 U.S.C.
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`§ 102(b). Second, Hammond issued on February 8, 2005—more than one y