Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 1 of 14 PageID #: 6467
`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 1 of 14 PageID #: 6467
`
`EXHIBIT J
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`

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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 2 of 14 PageID #: 6468
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
`
`Case IPR2018-01079
`Patent 8,213,970
`
`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,213,970
`
`MailStop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Google 1003
`U.S. Patent No. 8,213,970
`
`

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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 3 of 14 PageID #: 6469
`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 3 of 14 PageID #: 6469
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`TABLE OF CONTENTS
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`I.
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`Overview ...................................................................................................... 1
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`II.
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`List of Documents Considered in Formulating My Opinion .......................... 2
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`III. Qualifications ............................................................................................... 5
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`IV.
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`Legal Principles ............................................................................................ 7
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`A. My Understanding of Claim Construction .......................................... 7
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`B. My Understanding of Obviousness ..................................................... 8
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`V.
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`Level of Ordinary Skill in the Art ............................................................... 11
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`VI. Overview of the’970 Patent ........................................................................ 12
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`VII. Understanding of Certain Claim Terms ....................................................... 12
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`A.
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`“data transmission means” ................................................................ 13
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`B
`
`C.
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`D
`
`E.
`
`F.
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`“means for attaching .
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`. .” .................................................................. 13
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`“means for requiring .
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`. .” .................................................................. 13
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`“means for receiving and displaying a listing of which recipient
`PDNcell phones have automatically acknowledged .
`. .” .................. 14
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`“means for periodically resending .
`
`. .” ............................................. 14
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`“means for receiving and displaying a listing of which recipient
`PDNcell phones have transmitted .
`. .” ............................................. 15
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`VIII. Overview of the State of the Art at the Time of Filing ................................ 15
`
`A.
`
`B.
`
`Sending and Receiving Mandatory Responses in Electronic
`Messaging were Known .................................................................... 16
`
`Industry Trend: Applications on Cell Phones and/or Personal
`Communications Devices ................................................................. 18
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`

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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 4 of 14 PageID #: 6470
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`C.
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`D.
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`E.
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`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
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`X.
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`Ground of Unpatentability .......................................................................... 33
`
`A.
`
`Ground 1: Claims 1 and 3-9 are obvious over Kubala in View of
`
`Hammond ......................................................................................... 33
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`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Overview of Kubala ................................................................ 33
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`Overview of Hammond ........................................................... 37
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`Overview of the Combination of Kubala and Hammond ......... 39
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`Motivation to Combine Kubala and Hammond ....................... 40
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`Claims 1-13 are obvious over Kubala in View of
`
`Hammond ............................................................................... 44
`
`B.
`
`Ground 2: Claims 1 and 3-9 are obvious over Hammond in
`
`View of Johnson further in View of Pepe ........................................... 82
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Overview of Hammond ........................................................... 83
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`Overview of Johnson .............................................................. 86
`
`Overview of Pepe ................................................................... 86
`
`Overview of the Combination of Hammond, Johnson,
`and Pepe ................................................................................. 87
`
`Motivation to Combine Hammond, Johnson, and Pepe ........... 87
`
`Claims 1 and 3-9 are obvious over Hammond in View of
`
`Johnson further in View of Pepe .............................................. 89
`
`_ii_
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`

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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 5 of 14 PageID #: 6471
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`C.
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`Ground 3: Claims 1 and 3-9 are obvious over Hammond in
`
`View of Johnson, Pepe, and Banerjee .............................................. 115
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`XI.
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`Conclusion ................................................................................................ 1 16
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`-iii-
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`

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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 6 of 14 PageID #: 6472
`Case 2:17-cv-00513-J
`165-12 Filed 07/26/18 Page 6 of 14 PageID #: 6472
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`
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`134. Kubala in view of Hammond discloses and/or renders obvious each
`
`and every limitation recited in claim 6. Claim 6 is reproduced below. The claim
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`limitations have been labeled for ease of discussion.
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`6. A method of sending a forced message alert to one or more recipient
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`PDA/cell phones within a predetermined communication network, wherein
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`recipient PDA/cell phone is tracked, said method comprising the steps of:
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`the receipt and response to said forced message alert by each intended
`
`135. The combination of Kubala and Hammond discloses the preamble, to
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`the extent it is limiting. As set forth above, Kubala discloses a method for sending
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`a forced message alert to one or more recipient PDA/cell phones within a
`
`predetermined communication network. (See supra claims [1.1], [1.3]; Kubala,
`
`111l[0026]—[0027], FIG. 1A.) A POSA would have recognized that communication
`
`networks involving PDAs/cell phones were widespread, whether it was within a
`
`large carrier network, a group of users with a preexisting relationship (6. g.
`
`employees of a company), or a small, specific-function network such as a first
`
`responder incident management system. And as also set forth above, Hammond
`
`discloses the ability to track the receipt and response to forced message alerts. (See
`
`supra claim [1.7]; Hammond, Abstract, 2:11-18, 3:1-4:28, 5:20-35, 10:6-22, 6:56-
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`8245, FIG. 2.)
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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 7 of 14 PageID #: 6473
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`[6.1] accessing a forced message alert software application program on a
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`sender PDA/cell phone;
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`136. As set forth above, Kubala discloses an enhanced email application
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`that reads on this limitation. (See supra claim [1.4]; Kubala, 1Hl[0013], [0033]-
`
`[003 6], FIG. 2.) It would have been well known to a POSA at the time of the
`
`patent filing that PDAs and cell phones could run applications. A POSA would
`
`further recognize thatmessaging-related application would necessitate being
`
`accessed by a sender as part of a messaging transaction. A POSA would also
`
`recognize that there were numerous email programs in existing prior to the earliest
`
`possible ’970 priority date, and the POSA would recognize that such email
`
`programs could be readily enhanced by adding a forced message alert capability.
`
`attaching a voice or text message to a forced message alert application
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`[6.2] creating the forced message alert on said sender PDA/cell phone by
`
`software packet to said voice or text message;
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`137. As set forth above, Kubala teaches or suggests creating the forced
`
`message alert on said sender PDA/cell phone by attaching a forced message alert
`
`application software packet to said voice or text message—as required by this
`
`limitation. (See supra claim [1.5]; Kubala, 1l1[[0032]-[0036], [0037]—[004l], [0054]-
`
`[0061], FIGS. 1A, 1B, 2-4.) A POSA would have recognized that appending or
`
`attaching information (e. g. packets) to email messages was well known. For
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`example, a message could be designated as “Urgent” or sent with a
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`Delivery/Return Receipt request. A PO SA would have also recognized that voice-
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`messaging systems also attached packets or information to voice messages, with
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`“Urgent” and “Return Receipt requested” being examples.
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`[6.3] designating one or more recipient PDNcell phones in the
`
`communication network;
`
`138. As set forth above, Kubala teaches or suggests designating one or
`
`more recipient PDA/cell phones in the communication network—as required by
`
`this limitation. (See supra claim [1.5]; Kubala, 1l1l[0032]-[0036], [0037]—[0044],
`
`[0054]—[0061], FIGS. 1A, 1B, 2-5.) A POSA would recognize that any messaging
`
`application (besides a blanket broadcasting application) would necessitate
`
`designating one or more recipient PDA/cell phones in the communications
`
`network, to ensure both that the appropriate recipients received the message, and
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`inappropriate PDAs/cell phones did not receive the message.
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`[6.4] electronically transmitting the forced message alert to said recipient
`
`PDA/cell phones;
`
`139. As set forth above, Kubala teaches or suggests this claim feature. (See
`
`supra claim [1.5]; Kubala, flfl[0032]-[0036], [0037]—[0044], [0054]—[006l], FIGS.
`
`1A, 1B, 2—5.) As stated earlier, the ability to receive messages on PDA/cell phones
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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 9 of 14 PageID #: 6475
`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 9 of 14 PageID #: 6475
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`had been known in the art since at least as early as 1993 with the introduction of
`
`the IBM Simon.
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`[6.5] receiving automatic acknowledgements from the recipient PDA/cell
`
`receipt of the forced message alert;
`
`phones that received the message and displaying a listing of which
`
`recipient PDA/cell phones have acknowledged receipt of the forced
`
`message alert and which recipient PDA/cell phones have not acknowledged
`
`140. As set forth above, the combination of Kubala and Hammond teaches
`
`or suggests the features in this limitation. (See supra claims [1.5] and [1.7];
`
`Kubala, 111l[0032]—[0036], [0037]—[0044], [0054]—[006l], FIGS. 1A, 1B, 2—5;
`
`Hammond, Abstract, 2:11-18, 3:1-4:28, 5:20-35, 1026-22, 6:56-8:45, FIG. 2.) A
`
`POSA would have recognized that keeping track of which recipient PDA/cell
`
`phones had or had not acknowledged receipt of the forced message would be a
`
`simple database table update that would list the phone numbers the forced message
`
`were sent, and updating that table when a receipt was received (with a “Yes”,
`
`and/or time stamp for example). It could easily also track when the forced message
`
`had been sent, and thus easily determine how long it had been since the sending so
`
`as to potentially resend the message if a certain period of time had elapsed.
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`-72-
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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 10 of 14 PageID #: 6476
`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 10 of 14 PageID #: 6476
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`[6.6] periodically resending the forced message alert to the recipient
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`PDA/cell phones that have not acknowledged receipt;
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`141. As set forth above, the combination of Kubala and Hammond teaches
`
`or suggests the features in this limitation. (See supra claim [1.8]; Kubala, 1]][0033]-
`
`[0036], FIG. 2; Hammond, 2:47-50; see also id., Abstract, 2:1-8, 4:21-28, 5:5-6219,
`
`6266-7 :63, 10:48-63, FIGS. 2, 3A, 3B, 4, 5A, 5B.) Periodic sending of alerts was
`
`well known in the art well before the ’970 patent filing date, either through a
`
`scheduling process (e. g. 3:30pm, 3:45pm, 4:00pm), or a repeating time interval
`
`(e. g. every 15 minutes) until a goal (e.g. message receipt), deadline (e.g. 4:30pm),
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`or number of repeats (e. g. 5) was reached.
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`[6.7] receiving responses to the forced message alert from the recipient
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`PDA/cell phones and displaying the response from each recipient PDA/cell
`
`phone; and
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`142. Kubala discloses this limitation. For example, Kubala’s Figure 2
`
`illustrates that a sending PDA (e. g., computing device 202) may receive an email
`
`message 218 from a recipient PDA (e.g., computing device 204) in response to an
`
`email message 214 with a mandatory response flag 216. (See Kubala, 1]][0033]
`
`[0036])
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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 11 of 14 PageID #: 6477
`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 11 of 14 PageID #: 6477
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`CCIMPUTING DEVICE at};
`
`EMAIL MESSAGE fl
`
`ENHANEED EIMIIL
`AF'FLIGATHJN 2m
`
`RESPONSE FLAG- m
`_
`
`EMAIL MESSAGE 2111
`l__________________________
`MAN DATORY-
`E
`RESPONSE
`é
`RESPONSE GUIDE 5
`
`2.12
`
`CUMPUTIMG DEVICE 2E
`‘
`
`ENHANCED- EMAIL
`APPLICATICIN ELLE
`
`mmomow
`RESPID MSE
`FUNCTIONAL UNIT
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`143. The received email would have been displayed on computing device
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`202. (See Kubala, 1]][0028]-[0036], [0041], FIGS. 1A, 1B, 2.) The ability to send
`
`and receive (and also display) email via a PDA/cell phone has been in place since
`
`at least 1993 with the IBM Simon. (Google 1015, Hist. Mobile Phones, p. 7.)
`
`[6.8] providing a manual response list on the display of the recipient
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`PDA/cell phone that can only be cleared by the recipient providing a
`
`required response from the list;
`
`144. As set forth above, Kubala teaches or suggests the features in this
`
`limitation. (See supra claims [1.5] and [1.6]; Kubala, 1]][0009], [0033]-[0036],
`
`[0040], [0041], [0047], [0054]-[0060], FIGS. 2, 8, 10, 11A, 11C.) The ability to
`
`display a list on a PDA/cell phone is one of the earliest features of FDA, such as
`
`the “list View” using a “list manager” on the Apple Newton in 1993. (Google 1016,
`
`Apple, p. 5.) By the time of the ’970 patent, a POSA would readily expect such list
`
`manager-type capabilities to be available on any PDA/cell phone.
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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 12 of 14 PageID #: 6478
`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 12 of 14 PageID #: 6478
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`[6.9] clearing the recipient’s display screen or causing the repeating voice
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`alert to cease upon recipient selecting a response from the response list
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`transmitting a response to the manual response list.
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`required [sic] that can only be cleared by manually selecting and
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`145. As set forth above, Kubala teaches or suggests the features in this
`
`limitation. (Kubala, 1]][0033]-[0036], [0049], [0053], [0054], [0057], FIGS. 2, 8,
`
`10, 11C.) A POSA would have recognized that it would have been a
`
`straightforward matter of programming to cause a software process to clear a
`
`display screen and/or terminate (after beginning on a repeating schedule) a voice
`
`alert upon a certain condition (e. g. a response input from the recipient) being
`
`entered into the device (and not before). A POSA would have recognized that
`
`PDAs/cell phones would have had the ability to generate sound alerts by the time
`
`of the earliest possible priority date of the ’970 patent. These sound alerts would
`
`have included voice alerts.
`
`146. Specifically, Kubala discloses that a user can select a response from a
`
`menu of responses. (See Kubala, 1][0057], FIG. 11C (reproduced below).)
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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 13 of 14 PageID #: 6479
`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 13 of 14 PagelD #: 6479
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`Email application naming!
`
`The message that you are eurrerltlzir reviewing 5h nultl net be
`closed until you reply to the massage. Cl‘mse one of the
`epliene lrorn the menu to generate an INSTANT reply to this
`message or select "CANCEL" to close without sending a mply.
`
`1
`FIG' I IC
`
`1113@
`
`mo- BUST RIGHT How a
`meow
`
`REQUEST DEELINED
`
`1
`
`FlEF‘L‘Ir
`
`147. After selecting a response from menu 1120, a user presses the
`
`“INSTANT” button 1118, which closes window 1112, thus clearing the recipient’s
`
`cell phone display and generating a reply message. (Id, 1i[0057].) Kubala explains:
`
`INSTANT” button 1118 closes window 1112 and then creates a reply
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`e-mail message with an automatically generated reply message in
`
`which the message body is predetermined or pre-configured; in this
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`example, when “INSTANT” button 1118 is selected, the e-mail
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`application determines which menu item within menu 1120 has been
`
`selected by the user as a quick response to the original e-mail
`
`message, thereby fulfilling the sender’s request that the recipient is
`
`required to provide a mandatory response.
`
`(Id.) Although the specific embodiment illustrated in Figure 11C shows that a user
`
`can “select ‘CANCEL’ to close without sending a reply,” Kubala also explicitly
`
`teaches that “the recipient can be prevented from closing a review of the received
`
`e-mail message, from deleting the received e-mail message, and from exiting the e-
`
`mail application until the recipient has responded to the received email message.”
`
`(Id., 1l0009.) Thus, Kubala teaches or suggests this limitation. A POSA would have
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`-76-
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`Case 2:17-cv-00513-JRG Document 165-12 Filed 07/26/18 Page 14 of 14 PageID #: 6480
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`recognized that it would have been a straightforward matter of programming to
`
`prevent a software process from proceeding further unless a certain condition (e. g.
`
`a response input from the recipient) has been entered into the device.
`
`fl
`
`Dependent Claim 7
`
`148. Kubala discloses the limitation of dependent claim 7. The limitation
`
`of claim 7 is reproduced below.
`
`wherein each PDA/cell phone within a predetermined communication
`
`network is similarly equipped and has the forced message alert software
`
`application program loaded on it.
`
`149. As set forth above, Kubala teaches or suggests the features of this
`
`limitation. (See supra claims [1.1], [1.4]; Kubala, 1H][0026]—[0036], FIGS. 1A, 1B,
`
`2.) A POSA would have recognized that it was well known at the time of the filing
`
`that many types of PDA/cell phone applications would require a software program
`
`to be loaded on it in order to work (versus assuming it would have the application
`
`or specific set of capabilities designed into it at manufacture). Furthermore, a
`
`POSA would have recognized that there were numerous email programs in
`
`existence prior to the earliest possible priority date of the ’970 patent that would
`
`work on PDAs/cell phones, and thus serve as a platform for the forced message
`
`response application. (Google 1017, Email, p. 1) In particular, the predetermined
`
`network of participates is shown in Kubala’s Figure 1A (reproduced below), which
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`-77-
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