Trials@uspto.gov
`571-272-7822
`
` Paper 31
`
`
` Entered: September 19, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`MIRA ADVANCED TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01052
`Patent 8,848,892 B2
`____________
`
`
`
`Before MINN CHUNG, MICHELLE N. WORMMEESTER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`571-272-7822
`
` Paper 31
`
`
` Entered: September 19, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`MIRA ADVANCED TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01052
`Patent 8,848,892 B2
`____________
`
`
`
`Before MINN CHUNG, MICHELLE N. WORMMEESTER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2017-01052
`Patent 8,848,892 B2
`
`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Microsoft Corporation (“Petitioner”) challenges the patentability of claims
`1–10 (the “challenged claims”) of U.S. Patent No. 8,848,892 B2 (Ex. 1001,
`“the ’892 patent”), owned by Mira Advanced Technology Systems, Inc.
`(“Patent Owner”). The Board has jurisdiction under 35 U.S.C. § 6. This
`Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. With respect to the grounds of unpatentability asserted
`by Petitioner, we have considered the papers submitted by the parties and the
`evidence cited therein. For the reasons discussed below, we determine
`Petitioner has shown by a preponderance of the evidence that claims 1–10 of
`the ’892 patent are unpatentable.
`
`II. BACKGROUND
`A. Procedural History
`On March 9, 2017, Petitioner filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–10 of the ’892 patent. Patent
`Owner filed a Corrected Preliminary Response. Paper 9 (“Prelim. Resp.”).
`On September 22, 2017, we instituted an inter partes review of claims 1–10
`of the ’892 patent. Paper 11 (“Dec. on Inst.”), 33.
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 16, “PO Resp.”), to which Petitioner filed a Reply (Paper 19,
`“Pet. Reply”).1 An oral hearing was held on June 21, 2018. A transcript of
`the hearing is included in the record as Paper 30 (“Tr.”).
`
`1 With our permission, Patent Owner and Petitioner each filed an errata to
`their Patent Owner Response and Reply, respectively. Paper 29 (Errata to
`Patent Owner’s Response); Paper 27 (Errata to Petitioner’s Reply).
`2
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`B. Related Proceedings
`According to the parties, the ’892 patent is the subject of the
`following proceeding: Mira Advanced Tech. Sys., Inc. v. Microsoft Corp.,
`No. 2:16-cv-88 (N.D. W. Va.). Pet. 1; Paper 4, 2. Additionally, certain
`claims of U.S. Patent No. 9,531,657 B2, which is a continuation of the ’892
`patent, are at issue in IPR2017-01411.
`
`C. The ’892 Patent
`The ’892 patent describes a method for attaching memo data to a
`contact list entry and providing users reminders of conversation points.
`Ex. 1001, Abstract, 1:24–33. As background, the ’892 patent describes that,
`because users sometimes forget important conversation points with their
`contacts, a need exists for a contact list that allows entering memos into
`contact list entries and provides reminders of a memo when communication
`is initiated with the contact associated with the memo. Id. at 1:13–20.
`Figure 1 of the ’892 patent is reproduced below.
`
`
`Figure 1 shows the database structure of the contact list of the ’892 patent.
`Id. at 1:37–38. As shown in Figure 1, the contact list consists of multiple
`contact list entries. Id. at 2:1–2.
`Each contact list entry comprises data fields to input contact
`information details, such as contact name, address, phone number, and email
`address. Id. at 2:3–6. In addition, a data field is provided in each contact list
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`entry to input memo data associated with the contact entry. Id. at 2:6–8. In
`an exemplary embodiment, the data field for memo may be integrated with
`the contact list entry. Id. at 2:8–9. Alternatively, the memo data field can be
`stored in a separate database, and the memo and the corresponding contact
`list entry can be related by a link. Id. at 2:9–12.
`According to the ’892 patent, memo data is displayed when the
`associated contact list entry is activated, such as when the contact list entry
`is selected to initiate outgoing communication (e.g., the phone number of the
`contact is dialed), or when incoming communication is received (e.g., an
`incoming phone call from the contact is detected). Id. at 1:26–31, 2:17–24,
`Abstract. The display of memo data serves as a reminder of the desired
`topic of conversation or conversation points when communication is
`initiated with the contact. Id. at 2:27–29, 32–35. Memo data may also be
`displayed at the end of a phone call, and the user has an option to erase,
`save, or edit the memo data. Id. at 2:29–32.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1 and 6 are independent. Claim 1 is
`illustrative of the challenged claims and is reproduced below:
`1.
`A method, performed by a communication device, for
`reminding a user of the communication device of a conversation
`point for a future phone call, the communication device having a
`processor and a display screen, the communication device having
`access to a saved contact list having one or more contact list
`entries, each contact list entry of the contact list including a first
`field configured to retrieve a stored phone number of a
`corresponding entity of the respective contact list entry, a second
`field configured to retrieve a stored name identifying the
`corresponding entity, and a memo field configured to attach
`memo data inputted by the user and displayable to show at least
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`one memo which is served to remind the user of the conversation
`point for the future phone call between the user and the
`corresponding entity, the method comprising:
`(a) receiving, by the processor, a first input indicating that an
`incoming phone call from the stored phone number of a
`first contact list entry of the saved contact list is received;
`(b) checking, by the processor after step (a), whether there is
`memo data that is attached to the memo field of the first
`contact list entry;
`(c) activating, by the processor, the first contact list entry such
`that during the activating of the first contact list entry, the
`user accepts the incoming phone call and conducts the
`incoming phone call with the corresponding entity of the
`first contact list entry using the communication device as
`a result of the user’s accepting the incoming phone call;
`and
`(d) causing, by the processor, a first indication indicating a
`presence of the at least one memo of the attached memo
`data, to be automatically displayed on the display screen
`during the activating of the first contact list entry, when it
`is detected in the step (b), by the processor, that there is
`memo data attached to the memo field of the first contact
`list entry.
`Ex. 1001, 2:59–3:27.
`
`
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`E. Applied References and Declarations
`Petitioner relies upon the following references in its challenges:
`
`Designation
`
`Exhibit No.
`
`Matsumoto2
`
`Ex. 1004
`
`Reference
`U.S. Patent No. 7,130,617 B2 (issued Oct. 31,
`2006)
`European Patent Application Pub. No. EP
`1739937 A1 (published Jan. 3, 2007)
`
`Pet. 3. Petitioner also relies on the Declaration of Peter Rysavy (Ex. 1002)
`in support of its Petition. Patent Owner relies on the Declaration of Zaydoon
`Jawadi (Ex. 2001) in support of its Patent Owner Response.
`
`Sony
`
`Ex. 1005
`
`F. Instituted Grounds of Unpatentability
`We instituted inter partes review of the challenged claims based on
`the following specific grounds (Dec. on Inst. 33).
`
`Claims Challenged
`1–4 and 6–9
`1–10
`1–10
`
`
`Statutory Basis
`§ 103(a)3
`§ 103(a)
`§ 103(a)
`
`Reference(s)
`Matsumoto
`Sony
`Sony and Matsumoto
`
`
`2 For clarity and ease of reference, we only list the first named inventor.
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’892 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA version of § 103.
`6
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`III. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard as the claim construction
`standard to be applied in an inter partes review proceeding). Under the
`broadest reasonable interpretation standard, and absent any special
`definitions, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in view
`of the specification. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Any special definitions for claim terms or phrases must be set
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994). A particular embodiment appearing in
`the written description generally is not incorporated into a claim if the claim
`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993).
`In our Decision on Institution, we preliminarily interpreted three claim
`terms as follows.
`
`Term
`“contact list”
`“contact list entry”
`
`Construction
`“an electronic list comprising contact list entries”
`“an item in a contact list comprising data fields to
`input contact information details”
`
`“activating” a contact
`list entry
`
`
`“selecting or opening” a contact list entry
`
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`Dec. on Inst. 11–12. Although Petitioner did not propose any express
`construction for any claim term, Patent Owner in its Preliminary Response
`argued that the three claim terms listed above should be construed to require
`certain graphical features displayed on a device’s screen, such as user
`interfaces or a visual representation displayed on the screen.
`Prelim. Resp. 7–15. We were unpersuaded by Patent Owner’s arguments
`and preliminarily construed the terms as set forth above. Dec. on Inst. 7–12.
`
`A. “Contact List”
`During the trial, the parties’ claim construction dispute focused on the
`term “contact list” recited in independent claims 1 and 6. As discussed
`below, the main claim construction dispute with respect to the term “contact
`list” centers on whether the recited “contact list” must necessarily include a
`“user interface.”
`Petitioner agrees with our preliminary construction of the term set
`forth above. Pet. Reply 3. In particular, Petitioner asserts that the “contact
`list” limitation recited in the challenged claims does not require a “user
`interface.” Id. at 9, 12. Patent Owner disagrees and asserts that the term
`“contact list” should be construed as follows:
`a feature commonly and already available on a smart
`communication device, a feature which includes entries (namely,
`“contact
`list entries”) each
`including
`fields of contact
`information that are known and familiar to ordinary users such
`as name, phone number, address, or email. In particular, a
`contact list as claimed is a feature which includes user interfaces
`to access well-known capabilities relating to communication (see
`Ex. 2001, ¶ 36), capabilities at least including:
`(1) inputting, saving and viewing contact information of
`an entity (such as a person) visually represented by a contact list
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`entry of the contact list which is visually-represented, selectable,
`and activatable by a user, and
`(2) selecting and activating a “contact list entry” by a user
`so as to initiate a well-known common function such as speed-
`dialing an underlying phone number of the contact list entry) or
`opens for displaying
`the underlying contact
`information
`contained therein.
`PO Resp. 18–19. Similar to its arguments in the Preliminary Response, the
`thrust of Patent Owner’s argument in the Patent Owner Response is that a
`“contact list,” as claimed, must necessarily include a “user interface.” See
`id. at 18–31. Although Patent Owner also argues that a “contact list” is a
`“commonly and already available feature” of a communication device and
`must include “common functions” relating to communication, those
`arguments are largely focused on or predicated upon Patent Owner’s
`assertion that the recited “contact list” must include a “user interface.” See
`id.
`
`For the reasons explained below, we disagree with Patent Owner’s
`argument and Patent Owner’s proposed construction. Given the focus of the
`parties’ dispute, our discussion below focuses on the issue of whether the
`“contact list” limitation recited in the challenged claims requires a “user
`interface.” We then address the remaining issues relating to the purported
`“commonly and already available feature.”
`To overview, the basic problem with Patent Owner’s claim
`construction approach is that Patent Owner focuses on the word “contact
`list” in isolation from the surrounding claim limitations of claims 1 and 6,
`and divorced from the context of the claims as a whole, disregarding, for
`example, the plain language of the claims showing that the “contact list”
`recited in the claims is a “saved contact list.” As discussed below, we
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`determine that the plain meaning interpretation of the “contact list”
`limitation based on the claim language “saved contact list” controls in this
`case.
`
`1. Plain Meaning
`In determining the broadest reasonable construction of a claim
`limitation, we begin with the language of the claim itself. In re Power
`Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (“[C]laim
`construction must begin with the words of the claims themselves.” (quoting
`Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir.
`2006))); In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (“As with
`any claim construction analysis, we begin with the claim language.” (citing
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc))).
`“Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016) (citing Straight Path IP Grp., Inc. v. Sipnet
`EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir. 2015)). A plain meaning
`interpretation is particularly appropriate in this case because, as Petitioner
`argues, the plain language of claims 1 and 6 provides a plain meaning
`definition of the term “contact list” recited in the claims.
`Addressing the claim language of independent claims 1 and 6,
`Petitioner asserts that claims 1 and 6 each recite a “communication device”
`“having access to a saved contact list having one or more contact list
`entries.” Pet. Reply 5. Petitioner further argues that the claims further
`specify that each contact list entry of the contact list includes three “fields”
`corresponding to a contact’s name, phone number, and memo data. Id.
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`Petitioner asserts that, consistent with our discussion in the Decision on
`Institution, this claim language defines the recited “contact list”—that is, a
`list “saved” in a communication device, the list including “one or more
`contact list entries,” each entry with at least three fields: name, number, and
`memo data. Id. at 8–9. We agree with Petitioner’s argument.
`In particular, we agree with Petitioner that the plain language of the
`claims shows that the “contact list” recited in the claims is a “saved contact
`list.” In fact, the only “contact list” limitation recited in the claims is a
`“saved contact list.” In each of claims 1 and 6, the claim limitation “contact
`list” appears only three times. First, the limitation is introduced as “a saved
`contact list” in the preamble, which recites that “the communication device”
`has “access” to “a saved contact list” “having one or more contact list
`entries.” Ex. 1001, 2:62–64 (claim 1); 3:47–48 (claim 6). Next, in the
`immediately following recitation, the claims recite that “each contact list
`entry” of “the contact list” includes a first field for a phone number, a second
`field for a contact name, and a memo field to attach memo data. Id. at 2:64–
`3:2 (claim 1); 3:48–4:5 (claim 6). The plain language “a saved contact list
`having one or more contact list entries, each contact list entry of the contact
`list including . . .” indicates that “the contact list” refers to “a saved contact
`list” recited in the immediately preceding phrase. Lastly, in the claim body,
`the claims recite “the saved contact list” in step (a) of the claims as follows:
`“(a) receiving, by the processor, a first input indicating that an incoming
`phone call from the stored phone number of a first contact list entry of the
`saved contact list is received” (id. at 3:7–10 (claim 1) (emphasis added));
`“(a) receiving, by the processor, a first input indicating a request that the
`stored phone number of a first contact list entry of the saved contact list be
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`dialed for an outgoing phone call” (id. at 4:10–13 (claim 6) (emphasis
`added)). None of the dependent claims add recitations that include a distinct
`“contact list” limitation. See id. at 3:28–42 (claims 2–5); 4:33–47 (claims 7–
`10).
`
`Hence, it is evident from the plain language of the claims that the only
`“contact list” limitation recited in the challenged claims is a “saved contact
`list.” No other “contact list” is recited in the claims.
`Under the broadest reasonable interpretation standard, we must also
`consider the context of the surrounding claim limitations of the “contact list”
`limitation. See Trivascular, 812 F.3d at 1062. Petitioner asserts that the
`claim language, “the communication device having access to a saved contact
`list” defines the recited “contact list” as a list “‘saved’ in a communication
`device,” such as a list “stored in a database.” Pet. Reply 5, 8. We agree
`with Petitioner’s argument. Further, the claims recite that “each contact list
`entry of the [saved] contact list” includes “a first field” for “a stored phone
`number” and “a second field” for “a stored name” of a saved contact.
`Ex. 1001, 2:63–3:1 (claim 1 (emphasis added)), 3:47–4:4 (claim 6 (emphasis
`added)). In addition, the body of the claims recite steps, all performed by
`the processor of the communication device, to access and process the contact
`list entry of the “saved contact list.” Id. at 3:7–27 (claim 1); 4:10–32 (claim
`6).
`
`Thus, when considering the plain language of the claims in their
`entirety, the characteristic of the “contact list” as a list “saved” or “stored” in
`a communication device pervades throughout the claims. Therefore, in the
`context of the claims as a whole, the language of the claims defines the
`recited “contact list” as a list “saved” or “stored” in a communication device.
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`See Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356–1357
`(Fed. Cir. 2011) (interpreting a disputed limitation by reading it together
`with other limitations recited in the claim); Apple Computer, Inc. v.
`Articulate Sys., Inc., 234 F.3d 14, 25 (Fed. Cir. 2000) (“the claim must be
`viewed as a whole”).
`Turning to the written description, the plain meaning interpretation
`discussed above is also consistent with the written description in the
`Specification of the ’892 patent. For example, the ’892 patent describes that
`contact information in a contact list is “saved in communication device.”
`Ex. 1001, 1:16 (emphasis added). The Specification further describes that a
`contact list “comprises of multiple contact list entries.” Id. at 2:1–2. In
`addition, referencing Figure 1, the ’892 patent describes that “FIG. 1 shows
`contact list template for communication device” (id. at 2:2–3 (emphasis
`added)) and that “FIG. 1 shows the database structure of contact list of
`present invention” (id. at 1:37–38 (emphases added)). Hence, the ’892
`patent describes that the table depicted in Figure 1 is the “database structure”
`of the “contact list” of the ’892 patent, and that such database structure is a
`“template” of the claimed “contact list.” The ’892 patent further discloses
`that “[d]ata field for memo can be integrated within contact list entry [of a
`contact list]; alternatively data field for memo can be in a separate database
`and memo and corresponding contact list entry can be related by means of
`link for co-functionality.” Id. at 2:8–12 (emphases added). In other words,
`the ’892 patent describes a contact list as a database saved or stored in a
`communication device.
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`Therefore, the plain meaning of the “contact list” limitation, when
`read in the context of the claims as a whole and in view of the Specification,
`is “a list saved in a communication device comprising contact list entries.”
`
`2. Whether the “Contact List” Limitation Requires a User Interface
`
`a. “Saved Contact List”
`Because the “contact list” limitation recited in claims 1 and 6 is a
`“saved contact list,” Patent Owner’s proposed construction requiring “user
`interfaces” as a necessary feature of the claimed “contact list” raises the
`question of what is meant by a “saved user interface” in the context of the
`’892 patent. See Dec. on Inst. 9.
`Similar to our discussion in the Decision on Institution, we discern no
`disclosure regarding “saving” any “user interfaces” in the ’892 patent. Id.
`During the trial, Patent Owner did not identify any disclosure in the ’892
`patent regarding “saved” or “saving” “user interfaces.” See Tr. 18:4–10
`(Patent Owner stating “something saved doesn’t mean that the specification
`has to describe how to save it” in response to a question whether the
`Specification of the ’892 patent describes saving a user interface).
`Instead, Patent Owner relies upon the testimony of Mr. Jawadi to
`assert that “it is not uncommon to characterize a user-interface-enable[d]-
`feature as ‘saved.’” PO Resp. 41 (citing Ex. 2001 ¶ 75). In the cited
`paragraph, Mr. Jawadi opines that “it is NOT UNCOMMON to refer to a
`user-interface-enabled feature resident (stored) in a communication device
`(such as ‘contact list’) as a ‘saved’ feature (such as ‘saved contact list’).”
`Ex. 2001 ¶ 75.
`
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`Essentially, Mr. Jawadi states that a feature “resident (stored) in a
`communication device” is often referred to as a “saved” feature. But
`Mr. Jawadi does not explain adequately why a “user-interface-enabled”
`feature is synonymous or equivalent to a “saved” feature.
`Moreover, Mr. Jawadi does not cite any evidence in support of his
`testimony. See Ex. 2001 ¶ 75. Mr. Jawadi’s conclusory statement
`unsupported by evidence does not provide a satisfactory explanation of what
`a “saved user interface” entails in the context of the ’892 patent. Thus,
`Mr. Jawadi’s testimony is insufficient to justify Patent Owner’s proposed
`construction. See Prolitec, Inc. v. Scentair Techs., Inc., 807 F.3d 1353,
`1358–59 (Fed. Cir. 2015) (Prolitec’s expert cannot rewrite the intrinsic
`record of the patent to narrow the scope of the patent and the disputed claim
`element.), overruled on other grounds by Aqua Prod., Inc. v. Matal, 872
`F.3d 1290 (Fed. Cir. 2017); Phillips, 415 F.3d at 1318 (explaining that “a
`court should discount any expert testimony that is clearly at odds . . . with
`the written record of the patent”) (internal quotation marks omitted) (citation
`omitted).
`Accordingly, Patent Owner’s proposed construction is untenable as
`being incompatible with the claim language “saved contact list.”
`
`b. Whether the “Saved” Limitation is Extrinsic Evidence
`Patent Owner next asserts that the term “saved” qualifying “contact
`list” should be given little significance in the construction of the term
`“contact list” because the term “saved” is “extrinsic evidence.”
`PO Resp. 37. Patent Owner further contends that our Decision on Institution
`erred in “incorrectly putting more emphasis on extrinsic evidence (namely,
`what is recited before the term ‘contact list’ in the claim) than on the
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`intrinsic evidence of the ‘892 patent” (id. at 37 (emphasis added)) and “NOT
`placing the HIGHEST emphasis on intrinsic evidence” (id. at 41 (citing
`Phillips, 415 F.3d at 1317)).
`Patent Owner is incorrect that expressly recited claim limitations are
`“extrinsic evidence.” Rather, claims are part of the specification, which is
`intrinsic evidence. See Homeland Housewares, LLC v. Whirlpool Corp.,
`865 F.3d 1372, 1376 (Fed. Cir. 2017) (“Claims must also be read in view of
`the specification, of which they are a part.” (emphasis added) (citing
`Phillips, 415 F.3d at 1315)). Contrary to Patent Owner’s assertion, the
`Phillips case relied upon by Patent Owner placed emphasis on claim
`language as intrinsic evidence:
`Those sources [the court looks to interpret disputed claim
`language] include “the words of the claims themselves, the
`remainder of the specification, the prosecution history, and
`extrinsic evidence concerning relevant scientific principles, the
`meaning of technical terms, and the state of the art.” . . . “Quite
`apart from the written description and the prosecution history,
`the claims themselves provide substantial guidance as to the
`meaning of particular claim terms.” . . . To begin with, the
`context in which a term is used in the asserted claim can be highly
`instructive.
`Phillips, 415 F.3d at 1314 (emphases added) (citations omitted). Hence,
`Patent Owner’s assertion that the claim term “saved” expressly recited in the
`challenged claims is extrinsic evidence is erroneous.
`Patent Owner further asserts that the term “saved” qualifying “contact
`list” is not intrinsic evidence because the exact term “saved contact list” is
`“not part of the specification of the ‘892 patent and was never extensively
`discussed as an issue during the prosecution of the ‘892 patent.”
`PO Resp. 41. We disagree with Patent Owner’s argument because, as
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`discussed above, the challenged claims are a part of the Specification of the
`’892 patent. See Homeland Housewares, 865 F.3d at 1376; Phillips, 415
`F.3d at 1315. Patent Owner cannot erase the expressly recited claim term
`“saved” from the challenged claims or remove it from the intrinsic record of
`the ’892 patent merely because the exact term “saved contact list” is not
`used in the written description or was not discussed “extensively” during the
`prosecution of the patent. Cf. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
`1331, 1345 (Fed. Cir. 2016) (“[W]hen examining the written description for
`support for the claimed invention . . . the exact terms appearing in the claim
`‘need not be used in haec verba.’” (quoting Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565, 1572 (Fed. Cir. 1997))).
`Contrary to Patent Owner’s argument, under the broadest reasonable
`interpretation standard, “[c]onstruing individual words of a claim without
`considering the context in which those words appear is simply not
`‘reasonable.’” Trivascular, 812 F.3d at 1062 (emphasis added). Instead,
`“the context of the surrounding words [of the disputed terms] of the
`claim . . . must be considered in determining the ordinary and customary
`meaning of those terms.” Lexion Med., 641 F.3d at 1356 (citation omitted).
`Indeed, “claim language must be construed in the context of the claim in
`which it appears” because “extracting a single word from a claim divorced
`from the surrounding limitations can lead construction astray.” IGT v. Bally
`Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011).
`Thus, although we agree with Patent Owner that intrinsic evidence
`should be given more weight than extrinsic evidence in interpreting claims,
`there was no error in our Decision on Institution in considering the expressly
`recited claim limitation “saved” as informing the scope of “contact list” in
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`the limitation “saved contact list” recited in the claims. See Apple
`Computer, Inc. v. Articulate Sys., Inc., 234 F.3d at 24–25 (rejecting the
`proposed construction that ignores the limitation imposed by the word
`“help” in the claim term “help access window” because such a construction
`would read the qualifier “help” out of the definition of “help access
`window”).
`Far from being extrinsic evidence, the “saved” limitation qualifying
`“contact list” plays an important role in determining the correct construction
`of the “contact list” limitation because the only “contact list” limitation
`recited in the challenged claims is a “saved contact list.”
`
`c. “Entering and Saving Contact Information” Functions
`Patent Owner asserts that the Specification of the ’892 patent shows
`that a “user interface” is required in the recited “contact list,” quoting and
`relying on a passage of the ’892 patent as follows.
`Contact list is a common feature in most modern communication
`devices. It comprises of multiple contact list entries and enables
`users to enter and save contact information of entities. Users
`are able to enter and save name, address, phone, fax, and email
`into a contact list entry. Most communication devices also
`provide users means to speed dial a phone number container
`[sic] in contact list entry directly without having to dial phone
`number manually.
`PO Resp. 20 (quoting Ex. 1001, 1:1–13). Citing the testimony of
`Mr. Jawadi, Patent Owner argues that this passage shows that a “contact list”
`is a “common feature” or “common-and-already-available feature” of a
`communication device. Id. (citing Ex. 2001 ¶¶ 38–39). Patent Owner
`further asserts that the quoted passage shows that a “contact list” has
`“common functions,” such as “inputting and saving contact information into
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`‘contact list entries’ . . . and speed-dialing an underlying phone number of a
`‘contact list entry.’” Id. at 20–21. Patent Owner argues that a “contact list”
`requires user interfaces because user interfaces are necessary for a user to
`perform the common functions of “entering and saving contact information
`and speed-dialing [a phone number].” Id. (citing Ex. 2001 ¶ 40 (“[T]here
`was really no way for an ordinary user to perform those functions at the time
`of the invention other than using user interfaces of a ‘contact list.’”
`(emphasis added))).
`We disagree with Patent Owner’s argument. First and foremost,
`Patent Owner’s arguments do not comport with the plain language of the
`claims. To begin with, independent claims 1 and 6 do not recite a method
`performed by a user to enter or save contact information using a user
`interface. Instead, the claims recite a method performed by a
`communication device or its processor after contact information has been
`entered or saved into a contact list stored in the communication device.
`For instance, claims 1 and 6 each recite in their preamble a “method,
`performed by a communication device, for reminding a user of the
`communication device of a conversation point.” Ex. 1001, 2:59–61 (claim 1
`(emphasis added)); 3:43–45 (claim 6 (emphasis added)). As discussed
`above, the claims further recite that “the communication device” has “access
`to a saved contact list.” Id. at 2:62–63 (claim 1 (emphasis added)); 3:47–48
`(claim 6 (emphasis added)). In other words, the plain language of the claims
`specifies that the recited “contact list” has already been “saved” or “stored”
`in a communication device when the communication device accesses the
`“contact list.” That is, a user may have used a user interface to enter and
`save contact information, but the claims recite a method performed by a
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`communication device after the contact information has been entered and
`saved into a contact list stored in the communication device—i.e., a
`“method, performed by
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