Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`all relevant, analogous prior art, and the obviousness analysis may take into account the
`
`inferences and creative steps that a POSA would employ.
`
`27.
`
`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.
`
`28.
`
`I further understand that whether there is a reasonable expectation of 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 a 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 which may prompt variations 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
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`U.S. Patent No. 8,213,970
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`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`•
`
`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.
`
`29.
`
`I understand that whether a prior art reference renders a claim unpatentable as
`
`obvious is determined from the perspective of a POSA. I have also been told that, while there is
`
`no requirement for the prior art to contain an express suggestion to combine known elements to
`
`achieve the claimed invention, a suggestion to combine known elements to achieve the claimed
`
`invention may come from the prior art as a whole or individually, as filtered through the
`
`knowledge of one skilled in the art. In addition, I have been told that the inferences and creative
`
`steps a POSA would employ are also relevant to the determination of obviousness.
`
`30.
`
`I also understand that when a work is available in one field, design alternatives
`
`and other market forces can prompt variations of it, either in the same field or in another. I have
`
`also been told that if a POSA can implement a predictable variation and would see the benefit of
`
`doing so, that variation is likely to be obvious. I have been told that in many fields, there may be
`
`little discussion of obvious combinations, and in these fields market demand-not scientific
`
`literature-may drive design trends. I have been told that, when there is a design need or market
`
`pressure and there are a finite number of predictable solutions, a POSA has good reason to
`
`pursue those known options.
`
`31.
`
`I have been told there is no rigid rule prescribing that a reference or combination
`
`of references must contain a "teaching, suggestion, or motivation" to combine references. But I
`
`also have been told that the "teaching, suggestion, or motivation" test can be a useful guide in
`
`establishing a rationale for combining elements of the prior art. I have been told this test poses
`
`the question as to whether there is an express or implied teaching, suggestion, or motivation to
`
`combine prior art elements in a way that realizes the claimed invention, and that it seeks to
`
`counter impermissible hindsight analysis.
`
`32.
`
`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
`
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`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`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.
`
`VI.
`
`Level of Ordinary Skill in the Art
`
`33.
`
`A POSA would have had knowledge of electronic communications and/or
`
`wireless/mobile communications and various related technologies, as of 2004.
`
`34.
`
`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.
`
`35.
`
`By equivalent field, I mean that the required levels of educational and industry
`
`experience are 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.
`
`VII. The Substantial New Questions (SNQs) herein each provide new and non(cid:173)
`cumulative references and arguments not previously considered by the Office.
`
`36.
`
`Reexamination of the '970 patent is requested because the allegedly patentable
`
`subject matter of the '970 patent is entirely taught by the combination of Kubala and Hammond,
`
`and the combination of Hammond, Johnson, and Pepe. I understand that the request for
`
`reexamination is requested of claims 2 and 10-13 of the '970 patent. These claims may be
`
`referred to individually, or collectively, as the "Requested Claims" or claims or the claims
`
`subject to reexamination. Each element of the claims for which reexamination has been
`
`requested is found in one or more of the new references provided, as described in detail below.
`
`Therefore, a substantial new question of patentability is raised by the combination of these new
`
`references.
`
`37.
`
`The table below summarizes the substantial new questions of patentability
`
`(SNQs) and the manner and pertinency of applying the cited prior art in the Request for
`
`reexamination.
`
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`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`SNQ# Statute
`
`Cited Prior Art
`
`Claims
`
`1
`
`2
`
`§103 Kubala and Hammond
`
`2 and 10-13
`
`§103 Hammond, Johnson, and Pepe
`
`2 and 10-13
`
`VIII. Overview of the'970 Patent
`
`A.
`
`The '970 patent describes sending and receiving responses to forced message
`alerts.
`
`38.
`
`At a high level, the '970 patent is directed to sending and receiving responses to
`
`"forced message alerts." ('970 patent, 1: 19-23.) The '970 patent explains, "[t]he heart of the
`
`invention lies in the forced message alert software application program provided in each PC or
`
`PDA/cell phone." (Id., 4:47-49; see also id., 7:8-16.) The '970 patent describes sending the
`
`forced-message alerts to a receiving device (see id., 7:43-8: 15, FIGS. 3A, 3B) and then
`
`receiving, acknowledging and responding to the forced-message alerts received from the sending
`
`device. (See id., 8:16-57, FIG. 4.) And, when the sending device receives no acknowledgment
`
`from the receiving device, the '970 patent explains that the sending device can continue to
`
`transmit the forced-message alert until acknowledged. (Id., 8:25-39.) Before describing the
`
`intrinsic record in detail, however, a brief overview of the '970 patent family is provided.
`
`39.
`
`The '970 patent is directed to a system and method for a personal computer (PC)
`
`or PDA/cell phone with a specialized software application that creates and sends a forced
`
`message alert, as well as receive a forced message alert. ('970 patent, Abstract.) A forced
`
`message alert is comprised of a text or voice message and a forced alert software packet. (Id.,
`
`2:9-13, 8:20-25.)
`
`40.
`
`The specification states that it is desirable for a user to be able to simultaneously
`
`send a message to cell phones or PCs using Digital Smart Message Service (SMS) and TCP/IP
`
`messages that are transmitted using cellular technology such as the vaious versions of GSM and
`
`CDMA or via a WiFi local area network. The specification indicates that what is needed is a
`
`method in which a sender of a text or voice mssage can force an automatic acknowledgement
`
`upon receipt from a recpient' s cell phone or PC, and a manual response from the recipient via the
`
`recipient's cell phone or PC. (Id., 1:4951-67.) The specification discloses that "[t]he heart of the
`
`- 11 -
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`

`

`invention lies in the forced message alert software application program provided in each PC or
`
`PDA/cell phone." (Id., 4:47-49.) The specialized software application provides the ability to:
`
`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`(a) allow an operator to create and transmit a forced message alert
`
`from a sender PDA/cell phone to one or more recipient PCs and
`
`PD A/cell phones within
`
`the communication network;
`
`(b)
`
`automatically transmit an acknowledgement of receipt to the
`
`sender PDA cell phone upon the receipt of the forced message
`
`alert; (c) periodically resend the message to the recipient PCs and
`
`PDA/cell phones that have not sent an acknowledgement; (d)
`
`provide an indication of which recipient PCs and PDA/cell phones
`
`have acknowledged the forced message alert; (e) provide a manual
`
`response list on the display of the recipient PC and PDA/cell
`
`phone's display that can only be cleared by manually transmitting
`
`a response; and (f) provide an indication on the sender PDA/cell
`
`phone of the status and content the manual responses.
`
`('970 patent, Abstract.)
`
`B.
`
`Prosecution History
`
`41.
`
`The application that led to the '970 patent was filed on November 26, 2008. The
`
`'970 Prosecution History is attached as Exhibit 1002. Unlike the previous applications in the
`
`priority chain, the application that led to the '970 patent was directed to "forced message
`
`alerts"-i.e., electronic messages that required the recipient to respond. The '970 patent explains
`
`that "[t]he heart of the invention lies in the forced message alert software application program
`
`provided in each PC or PDA/cell phone." ('970 patent, 4:47-49.) These forced message alerts
`
`"allow[ ] a participant to send a text or voice message to a group of people and force an
`
`automatic acknowledgment ofreceipt and a manual response." (Id., 3:22-28.)
`
`42.
`
`About two years after the application was filed, the Examiner issued a Non-final
`
`Office Action on September 20, 2010. In reply, the Applicant amended certain claims to require
`
`that "a manual response list" is displayed on "the recipient PC or PDA/cell phone" and that the
`
`received message "can only be cleared by manually selecting and transmitting a response to the
`
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`

`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`manual response list." ('970 Prosecution History, 81-92.) The Examiner then issued a new
`
`rejection in a Final Office Action on March 11, 2011.
`
`43.
`
`In response to the Final Office Action, the Applicant amended the independent
`
`claims to include "requiring a required manual response from the response list by the recipient in
`
`order to clear recipient's response list from recipient's cell phone display." (Id., 120-131.) After
`
`an Advisory Action mailed on October 7, 2011, the Applicant and the Examiner had an interview
`
`and the Examiner allowed after-final claim amendments. (Id., 142-145.) Thereafter, a Notice of
`
`Allowance was mailed on April 25, 2012 with an Examiner's amendment to remove "PC" from
`
`the claims.
`
`44.
`
`In the Notice of Allowance, the examiner included a statement of reasons for
`
`allowance for the allowed claims 2-14 which correspond to claims 1-13 of the '970 patent:
`
`The following is an examiner's statement of reasons for allowance:
`
`claims 2-14 have been found to be novel and the inventive
`
`because prior art record fails to show or teach means for
`
`attaching a forced message alert software packet to a voice or text
`
`message creating a forced message alert that is transmitted by
`
`said sender PDA/cell phone to the recipient PDA/cell phone, said
`
`forced message alert software packet containing a list of possible
`
`required responses and requiring the forced message alert
`
`software on said recipient PDA/cell phone to
`
`transmit an
`
`automatic acknowledgment to the sender PDA/cell phone as soon
`
`as said forced message alert is received by the recipient PDA/cell
`
`phone; means for requiring a required manual response from the
`
`response list by the recipient in order to clear recipient's response
`
`list from recipient's cell phone display; means for receiving and
`
`displaying 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.
`
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`

`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`('970 Prosecution. History, 158.) 1
`
`45.
`
`The Examiner did not cite or review any of the references relied on here. As will
`
`be seen, the references in combination meet the above claim limitations in the appropriate
`
`context.
`
`C.
`
`Patent Trial an Appeals Board (P.T.A.B.) History
`
`46.
`
`Google LLC filed a Petition for inter partes review of different claims than the
`
`Requested Claims, but with overlapping prior art cited in the reexamination request. The
`
`P.T.A.B. granted institution of the Petition for claims 1 and 3-9 of the '970 Patent (see Google,
`
`IPR2018-01079, Pet.) and ultimately issued a FWD concluding: "For the foregoing reasons,
`
`Petitioner has demonstrated, by a preponderance of the evidence, that claim 1 of the '970 patent
`
`is unpatentable under§ 103 as obvious over the combination of Kubala with Hammond." (Id.,
`
`FWD at 60.)
`
`4 7.
`
`The FWD included decisions with regard to the priority date of the '970 Patent,
`
`claim construction, and prior art analysis as described below.
`
`1.
`
`The FWD concluded that Kubala and Hammond are prior art to the
`the '970 Patent, thus Johnson and Pepe are also prior art to the '970
`Patent.
`
`48.
`
`I provided expert support for IPR2018-01079. In that proceeding, the P.T.A.B.
`
`determined in a Final Written Decision that claims 1 and 3-9 of the'970 patent are unpatentable
`
`in view of Kubala and Hammond. (Google, IPR2018-01079, FWD). Thus, the P.T.A.B.
`
`confirmed that Kubala and Hammond are prior art to the '970 patent that was filed on November
`
`26, 2008. My understanding is that since Johnson and Pepe issued before Kubala and Hammond
`
`were even filed, Johnson and Pepe are also prior art to the '970 patent.
`
`49.
`
`Kubala published on September 28, 2006-more than one year before the '970
`
`patent filing date of November 26, 2008. (See Kubala, (43).) Thus, Kubala is prior art under 35
`
`U.S.C. § 102(b). Hammond issued on February 8, 2005-more than one year before November
`
`26, 2008. (See Hammond, (45).) Thus, Hammond is also prior art under 35 U.S.C. § 102(b) with
`
`respect to the '970 patent's actual filing date. Johnson issued on June 28, 1994 (see Johnson,
`
`1 All emphasis is added, except where otherwise indicated.
`
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`

`

`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`(45)) and is, therefore, prior art under 35 U.S.C. § 102(b). Pepe issued on April 21, 1998 (see
`
`Pepe, (45)) and is, therefore, also prior art under 35 U.S.C. § 102(b).
`
`50.
`
`Accordingly, Kubala, Hammond, Johnson, and Pepe all pre-date the '970 patent's
`
`actual filing date and are prior art to the '970 patent.
`
`2.
`
`The FWD construed constructions for claim limitations 1.2 and 1.5-
`1.9.
`
`51.
`
`The FWD also issued claim constructions for claim limitations 1.2 and 1.5-1.9
`
`(Google, IPR2018-01079, FWD at 11-29) that are consistent with the claim constructions in
`
`Section VIII.F below.
`
`3.
`
`The FWD concluded that Kubala teaches the "take control"
`limitation.
`
`52.
`
`The Requested Claims are claims 2 and 10-13. The primary difference between
`
`previously unchallenged claim 2 and previously challenged claim 1 is a so-called "take control"
`
`limitation. (See Google, IPR2018-01079, FWD at 51-54.) This "take control" limitation also
`
`distinguishes previously unchallenged claim 10 from previously challenged claim 6. The Board
`
`noted, however, that Kubala teaches this "take control" limitation. (Id.) Thus, as set forth in more
`
`detail below, claims 2 and 10-13 are obvious in view of Kubala and Hammond.
`
`53.
`
`In addition, Hammond, Johnson, and Pepe also teach or suggest all of the
`
`limitations of claims 2 and 10-13, including the "take control" limitation. But, this combination
`
`was not considered by the P.T.A.B. in the FWD of IPR2018-01079 because, according to the
`
`Board, the Petition (id., Pet.) did not distinctly specify what portion of Hammond or Johnson
`
`discloses a "forced message alert software packet" as recited in independent claim 1 and a
`
`"forced message alert application software packet" as recited in independent claim 6. Even
`
`though Google explained, in the Petitioner's Reply (id., Pet. Reply at 19), how the Petition
`
`showed that Hammond and Johnson teach these claim limitations, the P.T.A.B. did not consider
`
`these teachings in issuing the FWD with regard to the combination of Hammond, Johnson, and
`
`Pepe. (See id., FWD at 71-75.) In the reexamination Request, however, the explanations of the
`
`portions of Hammond and Johnson that disclose a "forced message alert software packet" as
`
`recited in independent claim 1 and a "forced message alert application software packet" as
`
`recited in independent claim 10 are included. Thus, as shown below in more detail, claims 2 and
`
`10-13 are also obvious in view of Hammond, Johnson, and Pepe.
`
`- 15 -
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`

`

`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`D.
`
`None of the earlier-filed applications provide sufficient written-description
`support for at least a forced-message alert software-application program, as
`required by each independent claim of the '970 patent.
`
`54.
`
`The Board previously agreed that the '970 patent is not entitled to priority to any
`
`earlier-filed applications, and is only entitled to a priority date of November 26, 2008-its actual
`
`filing date. (Google, IPR2018-01079, FWD and DI, at 6-8). The '970 patent claims priority to
`
`three earlier-filed applications: (i) U.S. Application No. 10/711,490 (EXlOll, '490 application),
`
`filed on September 21, 2004; (ii) U.S. Application No. 11/308,648 (EX1012, '648 application),
`
`filed on April 17, 2006; and (iii) U.S. Application No. 11/612,830 (EX1013, '830 application),
`
`filed on December 19, 2006. In my opinion, none of these earlier-filed applications disclose the
`
`concept of a forced message alert software application program, as required by each independent
`
`claim of the '970 patent.
`
`55.
`
`The following is a diagram illustrating the relationship of the three applications to
`
`the '970 patent:
`
`U.S. Appl. No. 10/711,490
`('490 application)
`Filed: Sept, 21, 2004
`
`iclP
`
`U.S. Appl. No. 11/308,648
`('648 application)
`Filed: April 17, 2006
`
`iclP
`
`U.S. Appl. No. 11/612,830
`('830 application)
`Filed: Dec. 19, 2006
`
`!c1P
`
`U.S. Patent No. 8,213,970
`('970 patent}
`Filed: Nov. 26, 2008
`
`56.
`
`First, the '490 application is directed to employing cellular telephone
`
`communications to monitor locations, initiate cellular calls and conference calls with other
`
`cellular telephones of a plurality of communications net participants by touching a display
`
`screen, and cause a remote cellular phone to annunciate audio announcements or call another
`
`phone number. (' 490 application, Abstract, 8-32.) The '490 application notes that each cellular
`
`phone can poll the other cell phones to transmit their location and status. But each of the cellular
`
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`

`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`phones that poll does not include a "forced message alert" in the poll, nor do they track the poll
`
`responses. (Id., 14, <[14.) And, in contrast with the '970 patent, the '490 application allows a
`
`sending PDA/cell phone to remotely control a recipient PDA/cell phone without action by the
`
`remote phone operator:
`
`In spite of the rapid advance in cellular phone technology, it would
`
`also be desirable to actuate a remote cellular phone to annunciate
`
`an audio message to alert the remote user that there is an
`
`emergency (or for another reason) ... and cause the remote phone
`
`to call another phone number (as an example, to automatically
`
`establish an 800 number conference call), to vibrate, or increase
`
`the loudness of an announcement without any action by the
`
`remote phone operator.
`
`(' 490 application, 9, <[4.) Thus, the '490 application performs steps for remotely controlling
`
`recipient phones without a manual response from the recipient remote phone operator. A POSA
`
`would not understand the '490 application to disclose a "forced message alert software
`
`application program" as described and claimed in the '970 patent.
`
`57.
`
`Second, the '648 application also does not disclose a forced message alert as
`
`required by the independent claims of the '970 patent. The '648 application is directed to
`
`automatically shifting from GPRS/EDGE/CDMA/lXEVDO to SMS when any cellular phone of
`
`a plurality of cellular phones of communication net participants makes or receives a voice call
`
`and shift back upon completion of the voice call. ('648 application, Abstract, 16-61.)
`
`Embodiments also include causing an alert ( audible voice alert, beep) to emanate from a user's
`
`display when an incoming message arrives, show a location of the sender of a message on the
`
`user's display, and cause an alert (verbal announcement, vibration, or text) when another
`
`participant of the communication net participants is within a predetermined distance. (Id., 42-44,
`
`<[<[69, 72, 74.) But nowhere does the '648 application disclose at least a "forced message alert,"
`
`let alone the "forced message alert software application program" as described and claimed in
`
`the '970 patent.
`
`58.
`
`Third, the '830 application also does not disclose a forced message alert as
`
`required by the independent claims of the '970 patent. The '830 application is directed to a
`
`plurality of cellular phone/PDA/GPS devices of communication net participants with advanced
`
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`

`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`communication software (ACS) application programs that can: poll other cell phone/PDA/GPS
`
`devices of the plurality for location, status, and identity; and remotely control one or more of the
`
`other cell phone/PDA/GPS devices of the plurality. ('830 application, 7-8 (specification pages
`
`3:6-4:2), 5-40.) At best, the '830 application generically mentions the ability of one phone to
`
`control certain functions on another phone:
`
`Each cell phone has
`
`the ability to remotely control from one cellular
`
`phone/PDA/GPS any of the other cellular phone/PDA/GPS systems phones
`
`including the ability to control remote cellular phones to make verbal prerecorded
`
`announcements, place return calls, place calls to another phone 15 number,
`
`vibrate, execute text to speech software, change sound intensity, remotely control
`
`software and functions resident on the remote phone and process and display
`
`information by touching the display screen at their location on the PDA display
`
`and selecting the appropriate 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 environments.
`
`(Id., 23 (spec. pages 19: 11-20); see also id., 6 (spec. pages 2: 14-18).) But nowhere does the '830
`
`application disclose the concepts of (i) a manual response list or (ii) requiring a manual response
`
`from such a response list in order to clear the response list from the recipient's phone-two
`
`concepts that were explicitly added during prosecution in order to gain allowance of the
`
`independent claims of the '970 patent. (See '970 Prosecution History, 120-131.)
`
`59.
`
`Because the '970 patent is not entitled to priority to any of the earlier-filed
`
`applications, it is entitled to a priority date of only November 26, 2008-its actual filing date.
`
`Kubala, Hammond, Johnson, and Pepe all pre-date the '970 patent's actual filing date and are
`
`prior art to the '970 patent.
`
`E.
`
`Independent Claims
`
`60.
`
`The '970 patent issued with three independent claims -
`
`claims 1, 6, and 10.
`
`Independent claim 1 has four dependent claims: claims 2-5. Independent claim 6 has three
`
`- 18 -
`
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`
`

`

`dependent claims: claims 7-9. Independent claim 10 has three dependent claims: claims 11-13.
`
`Request for Reexamination of
`U.S. Patent No. 8,213,970
`
`Independent claims 1 and 10 are discussed below.
`
`1.
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`Independent Claim 1
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`For ease of reference, claim 1 is reproduced below:
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`[l.P] A communication system for
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`transmitting,
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`rece1vmg,
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`confirming receipt, and responding to an electronic message,
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`comprising:
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`[ 1.1] a predetermined network of participants, wherein each
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`participant has a similarly equipped PDA/cell phone that includes a
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`CPU and a touch screen display a CPU [sic] and memory;
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`[1.2] a data transmission means that facilitates the transmission of
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`electronic files between said PDA/cell phones
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`in different
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`locations;
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`[1.3] a sender PDA/cell phone and at least one recipient PDA/cell
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`phone for each electronic message;
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`[1.4] a forced message alert software application program
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`including a list of required possible responses to be selected by a
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`participant recipient of a forced message response loaded on each
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`participating PDA/cell phone;
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`[1.5] means for attaching a forced message alert software packet to
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`a voice or text message creating a forced message alert that is
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`transmitted by said sender PDA/cell phone to the recipient
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`PDA/cell phone, said forced message alert software packet
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`containing a list of possible required responses and requiring the
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`forced message alert software on said recipient PDA/cell phone to
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`transmit an automatic acknowledgment to the sender PDA/cell
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`phone as soon as said forced message alert is received by the
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`recipient PDA/cell phone;
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`Request for Reexamination of
`U.S. Patent No. 8,213,970
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`[ 1.6] means for requiring a required manual response from the
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`response list by the recipient in order to clear recipient's response
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`list from recipient's cell phone display;
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`[1.7] means for receiving and displaying a listing of which
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`recipient PDA/cell phones have automatically acknowledged the
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`forced message alert and which recipient PDA/cell phones have
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`not automatically acknowledged the forced message alert;
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`[1.8] means for periodically resending said forced message alert to
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`said recipient PDA/cell phones
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`that have not automatically
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`acknowledged the forced message alert; and
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`[1.9] means for receiving and displaying a listing of which
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`recipient PDA/cell phones have transmitted a manual response to
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`said forced message alert and details the response from each
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`recipient PDA/cell phone that responded.
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`('970 patent, 8:65-9:39, brackets and numbering added.)
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`2.
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`Independent Claim 10
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`Claim 10 is a claim to a method for a recipient PD A/cell phone. For ease of reference,
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`claim 10 is reproduced below:
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`[10.] A method of receiving, acknowledging and responding to a
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`forced message alert from a sender PDA/cell phone to a recipient
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`PDA/cell phone, wherein
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`the receipt, acknowledgment, and
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`response to said forced message alert is forced by a forced message
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`alert software application program, said method comprising the
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`steps of:
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`[10.1] receiving an electronically transmitted electronic message;
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`identifying said electronic message as a forced message alert,
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`wherein said forced message alert comprises of a voice or text
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`Request for Reexamination of
`U.S. Patent No. 8,213,970
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`message and a forced message alert application software packet,
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`which triggers the activation of the forced message alert software
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`application program within the recipient PDA/cell phone;
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`[10.2] transmitting an automatic acknowledgment of receipt to the
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`sender PDA/cell phone, which triggers the forced message alert
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`software application program to take control of the recipient
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`PDA/cell phone and show the content of the text message and a
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`required response list on the display recipient PD A/cell phone or to
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`repeat audibly the content of the voice message on the speakers of
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`the recipient PDA/cell phone and show the required response list
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`on the display recipient PD A/cell phone; and
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`[10.3] transmitting a selected required response from the response
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`list in order to allow the message required response list to be
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`cleared from the recipient's cell phone display, whether said
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`selected response is a chosen option from the response list, causing
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`the forced message alert software to release control of the recipient
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`PDA/cell phone and stop showing the content of the text message
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`and a response list on the display recipient PDA/cell phone and or
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`stop repeating the content of the voice message on the speakers of
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`the recipient PDA/cell phone;
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`[10.4] displaying the response received from the PDA[/]cell phone
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`that transmitted the response on the sender of the forced alert
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`PDA/cell phone; and
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`[10.5] providing a list of the recipient PDA/cell phones [that] have
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`automatically acknowledged receipt of a forced alert message and
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`their response to the forced alert message.
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`('970 patent, 10:55-12:6, brackets and numbering added.)
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`Request for Reexamination of
`U.S. Patent No. 8,213,970
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`F.
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`61.
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`Understanding of Certain Claim Terms
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`For the purpose of my opinion, I have determined that the claim terms of the '970
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`patent should receive their ordinary and customer meanings, with the exception of the following
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`means-plus-function terms. Here, a POSA would have had either: (1) a Bachelor of Science
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`degree in Electrical Engineering or an equivalent field, with three to five years of academic or
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`industry experience in the field of electronic communications; or (2) a Master of Science degree
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`in Electrical Engineering or an equivalent field, with two to four years of academic or industry
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`experience in the same field.
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`1.
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`"data transmission means"
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`62.
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`The "data transmission means" is recited in independent claim 1. The function of
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`the "data transmission means" is to facilitate the transmission of electronic files between said
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`PDA/cell phones in different locations. (See '970 patent, 8:65-9:39 (claim 1), 9:64-65 (claim 3).)
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`The corresponding structure is a PDA/cell phone with forced alert software installed that
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`communicates a forced message alert using TCP/IP or another communications protocol. (See
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`id., 2:7-16, 3:43-45.) This construction is consistent with the FWD of Google, IPR2018-01079,
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`FWD at 14 and 28.
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`2.
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`"means for attaching ... "
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`63.
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`The "means for attaching ... " limitation is recited in independent claim 1. The
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`recited function is to attach a forced-message alert software packet to a voice or text message
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`creating a forced message alert that is transmitted by a sender PDA/cell phone to a recipient
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`PD A/cell phone, said forced message alert software packet containing a list of possible required
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`responses and requiring the forced message alert software on said recipient PD A/cell phone to
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`transmit an automatic acknowledgement to the sender PDA/cell phone as soon a