Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: September 22, 2017
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`
`
`
`
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`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a)
`
`
`
`

`

`IPR2017-01052
`Patent 8,848,892 B2
`
`
`I. INTRODUCTION
`
`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`
`requesting an inter partes review of claims 1–10 (the “challenged claims”)
`
`of U.S. Patent No. 8,848,892 B2 (Ex. 1001, “the ’892 patent”). Mira
`
`Advanced Technology Systems, Inc. (“Patent Owner”) filed a Corrected
`
`Preliminary Response (Paper 9, “Prelim. Resp.”).
`
`Institution of an inter partes review is authorized by statute when “the
`
`information presented in the petition . . . and any response . . . shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
`
`see 37 C.F.R. §§ 42.4, 42.108. For the reasons described below, we
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`determine that Petitioner has established a reasonable likelihood of
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`prevailing in showing the unpatentability of at least one challenged claim.
`
`Accordingly, we institute an inter partes review of claims 1–10 of the ’892
`
`patent.
`
`II. BACKGROUND
`
`A. Related Proceedings
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`According to the parties, the ’892 patent is the subject of the
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`following proceeding: Mira Advanced Tech. Sys., Inc. v. Microsoft Corp.,
`
`No. 2:16-cv-88 (N.D. W. Va.). Pet. 1; Paper 4, 2.
`
`B. The ’892 Patent
`
`The ’892 patent describes a method for attaching memo data to a
`
`contact list entry. Ex. 1001, Abstract. As background, the ’892 patent
`
`describes that, because users sometimes forget important conversation points
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`with their contacts, a need exists for a contact list that allows entering memo
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`IPR2017-01052
`Patent 8,848,892 B2
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`into contact list entries and provides reminders of the 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
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`information details, such as contact name, address, phone number, and email
`
`address. Id. at 2:3–6. In an exemplary embodiment, a data field is added to
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`each contact list entry to input memo data associated with the contact entry.
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`Id. at 2:6–9. Alternatively, the memo data field can be stored in a separate
`
`database, and the memo and the corresponding contact list entry can be
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`related by a link. Id. at 2:9–12.
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`According to the ’892 patent, memo data is displayed when the
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`associated contact list entry is activated, such as when the contact list entry
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`is selected to initiate outgoing communication (e.g., the phone number of the
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`contact is dialed), or when incoming communication is received (e.g., an
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`incoming phone call from the contact is detected). Id. at 1:26–31, 2:17–24,
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`Abstract. The display of memo data serves as a reminder of the desired
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`topic of conversation or conversation points when communication is
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`initiated with the contact. Id. at 2:27–29, 32–35. Memo data may also be
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`IPR2017-01052
`Patent 8,848,892 B2
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`displayed at the end of a phone call, and the user has an option to erase,
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`save, or edit the memo data. Id. at 2:29–32.
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`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 6 are independent. Claim 1 is
`
`illustrative of the challenged claims and is reproduced below:
`
`A method, performed by a communication device, for
`1.
`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
`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
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`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.
`
`
`D. Asserted Prior Art and Grounds of Unpatentability
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`Petitioner cites the following references in its challenges to
`
`patentability.
`
`Reference and Relevant Date
`
`Designation Exhibit No.
`
`U.S. Patent No. 7,130,617 B2 (issued Oct. 31,
`2006)
`
`Matsumoto1 Ex. 1004
`
`European Patent Application Pub. No.
`EP 1739937 A1 (published Jan. 3, 2007)
`
`
`
`
`
`Sony
`
`Ex. 1005
`
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Claims Challenged
`
`Statutory Basis
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`Reference(s)
`
`1–4 and 6–9
`
`§ 103(a)
`
`Matsumoto
`
`1–10
`
`1–10
`
`§ 103(a)
`
`Sony
`
`§ 103(a)
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`Sony and Matsumoto2
`
`
`Petitioner also relies on the Declaration of Peter Rysavy (Ex. 1002).
`
`
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
`
`2 As discussed below, in the purported ground based on Sony and
`Matsumoto, Petitioner in fact argues two separate grounds in the
`alternative—namely, one based on Sony alone and another based on the
`combination of Sony and Matsumoto.
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`Patent 8,848,892 B2
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`
`III. ANALYSIS
`
`A claim is unpatentable under § 103(a) if the differences between the
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`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations,
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`including: (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art; and (4) where in evidence, so-called secondary considerations.
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`A. Level of Ordinary Skill in the Art
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`The person of ordinary skill in the art is a hypothetical person who is
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`presumed to have known the relevant art at the time of the invention. In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of
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`skill in the art, various factors may be considered, including the types of
`
`problems encountered in the art, prior art solutions to those problems, the
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`sophistication of the technology, rapidity with which innovations are made,
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`and educational level of active workers in the field. Id. In addition, we may
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`be guided by the level of skill in the art reflected by the prior art of record.
`
`See Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001).
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`Relying upon the declaration testimony of Mr. Rysavy, Petitioner
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`contends that a person of ordinary skill in the art as of the date of the
`
`invention would have had a Bachelor’s degree in computer science,
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`computer engineering, and/or electrical engineering or at least 4 years of
`
`designing and implementing software features for cellular phones or
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`smartphones. Pet. 9 (citing Ex. 1002 ¶ 46). Patent Owner does not oppose
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`Petitioner’s definition of the level of ordinary skill in the art at this
`
`preliminary stage.
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`Based on the present record, in the context of the ’892 patent and the
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`prior art of record, we agree with and adopt Petitioner’s definition of the
`
`level of ordinary skill in the art for purposes of this Decision.
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`B. 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
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`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard in inter partes reviews).
`
`Under the broadest reasonable interpretation (BRI) 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,
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`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).
`
`Petitioner does not propose any express construction for any claim
`
`term. Patent Owner proposes constructions for three claim terms, namely,
`
`“contact list,” “contact list entry,” and “activating” a contact list entry.
`
`Prelim. Resp. 7–15. Patent Owner makes similar, interrelated arguments
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`IPR2017-01052
`Patent 8,848,892 B2
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`regarding claim construction of these terms in that Patent Owner argues all
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`three terms should be construed to require certain graphical features
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`displayed on a device’s screen, such as user interfaces or a visual
`
`representation displayed on the screen. Id. For instance, Patent Owner
`
`contends that the term “contact list” should be construed to require “user
`
`interfaces to access capabilities for communications.” Id. at 7. Similarly,
`
`Patent Owner asserts that the term “contact list entry” should be interpreted
`
`to mean “a visually-recognizable, visually represented, visually-listed, and
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`activitable entry” of a contact list. Id. at 9. In a similar vein, Patent Owner
`
`argues that “activating” a contact list entry should be construed to require
`
`“displaying a visual representation, or opening up a visual representation of
`
`the contact information” of the contact list entry. Id. at 11.
`
`We are not persuaded by Patent Owner’s arguments because Patent
`
`Owner does not identify any disclosure in the ’892 patent of any “user
`
`interface” representing a contact list or any “visual representation” of a
`
`contact list entry. Nor does Patent Owner identify any disclosure in the
`
`Specification of “displaying a visual representation” of a contact list entry
`
`when the contact list entry is activated. Indeed, we do not discern any
`
`disclosure in the ’892 patent of any “user interfaces” or “visual
`
`representation” of a “contact list” or “contact list entry,” let alone a limiting
`
`disclosure requiring the claim terms to include the Patent-Owner-argued
`
`graphical display features.
`
`According to the ’892 patent, a contact list “comprises of multiple
`
`contact list entries.” Ex. 1001, 2:1–2. In addition, the ’892 patent describes
`
`a contact list by way of Figure 1 (reproduced above in our overview of the
`
`’892 patent). For example, the ’892 patent describes that “FIG. 1 shows
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`Patent 8,848,892 B2
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`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.” Thus, the disclosure of a contact
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`list in the ’892 patent is largely focused on the data or database aspect of the
`
`contact list and is not closely related to any “user interfaces” displayed on
`
`the screen.
`
`Furthermore, as set forth above, independent claims 1 and 6 expressly
`
`recite “a saved contact list having one or more contact list entries.”
`
`Although the Specification describes “[m]eans . . . to save information
`
`contained in contact list” (id. at 2:13–14 (emphases added)), we discern no
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`disclosure regarding “saving” any “user interfaces” in the ’892 patent.
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`Further, Patent Owner does not explain what “saved” or “saving” “user
`
`interfaces” entails. Hence, Patent Owner’s argument requiring “user
`
`interfaces” as a necessary feature of the claimed “contact list” appears to be
`
`unsupported by the Specification and at odds with the plain language of the
`
`claim, i.e., “a saved contact list.”
`
`Patent Owner’s proposed construction of the term “contact list entry”
`
`is similarly unsupported by the Specification. The ’892 patent discloses as
`
`follows:
`
`Each contact list entry comprises of data fields to input contact
`information details. Preferably data fields include entity name,
`address, phone, fax, email, and web site URL. Additionally, data
`field is provided in contact list entry to input memo pertaining to
`corresponding contact information.
`
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`Patent 8,848,892 B2
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`Id. at 2:3–8 (emphases added). The ’892 patent further discloses that
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`“[d]ata field for memo can be integrated within contact list entry;
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`alternatively data field for memo can be in a separate database and
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`memo and corresponding contact list entry can be related by means of
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`link for co-functionality.” Id. at 2:8–12 (emphases added). Hence,
`
`similar to “contact list,” the disclosure regarding a contact list entry in
`
`the ’892 patent is largely focused on the data or database aspect of the
`
`contact list entry—i.e., describing “contact list entry” in terms of
`
`“data fields” that can be stored in databases.
`
`Although displaying memo data is recited in the claims and described
`
`in the Specification, Patent Owner does not identify, nor do we discern, any
`
`disclosure of displaying any “visual representation” of a contact list entry in
`
`the ’892 patent. For instance, although Figure 2 “shows the method of
`
`display of memo in contact list entry of communication device when contact
`
`list entry is selected for outgoing communication” (id. at 1:39–41 (emphasis
`
`added)), and Figure 3 similarly “shows the method of display of memo in
`
`contact list entry of communication device when incoming communication
`
`is received from entity corresponding to contact list entry (id. at 1:42–44
`
`(emphasis added)), neither Figure 2 nor Figure 3 describes displaying any
`
`“visual representation” of a contact list entry. See id., Figs. 2, 3. Rather,
`
`Figures 2 and 3, as well as their accompanying text, describe in general
`
`terms accessing and displaying information contained in the contact list or
`
`contact list entry. See id. at 2:14–35. Patent Owner does not explain why
`
`the mere fact that information contained in the contact list or contact list
`
`entry is intended to be displayed requires including “user interfaces” and
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`“visual representations” in the definition of the claim terms “contact list”
`
`and “contact list entry.”
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`In view of the claim language and the disclosure in the Specification
`
`discussed above, for purposes of this Decision, we preliminarily construe the
`
`term “contact list” as “an electronic list comprising contact list entries” and
`
`the term “contact list entry” as “an item in a contact list comprising data
`
`fields to input contact information details.” See, e.g., id. at 2:1–5. The terms
`
`“contact list” and “contact list entry” neither exclude nor require “user
`
`interfaces” or “visual representations.”
`
`Patent Owner contends similarly that “activating” a contact list entry
`
`should be construed to require “displaying a visual representation, or
`
`opening up a visual representation of the contact information” of the contact
`
`list entry because the ’892 patent describes activating a contact list entry
`
`“when user opens contact information contained therein for viewing.”
`
`Prelim. Resp. 11–12 (quoting Ex. 1001, 2:17–24). Patent Owner argues,
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`therefore, a call-dialing or call-receiving function, when performed in a
`
`smart communication device equipped with a display, “always
`
`simultaneously displays a visual representation of the target contact list entry
`
`of the contact list feature.” Id. at 13 (first emphasis added). The Patent
`
`Owner cited portion of the ’892 patent describes, however, a contact list
`
`entry is also activated “when communication device detects incoming phone
`
`call from entity corresponding to contact list entry as shown in FIG. 3.”
`
`Ex. 1001, 2:21–24 (emphasis added). As described in Figure 3, when a
`
`contact list entry is activated upon detecting or receiving an incoming call,
`
`memo data is displayed only if there exists a memo attached to the contact
`
`list entry. Id., Fig. 3. Hence, according to the ’892 patent, activating a
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`Patent 8,848,892 B2
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`contact list entry is not always coextensive with displaying the contact
`
`information contained therein for viewing.
`
`Further, Figure 3 and its accompanying text describe that an incoming
`
`phone call from an entity (or contact) is detected when the incoming
`
`communication ID is found “in Contact List,” which indicates that the
`
`relevant contact list entry is accessed and opened when the ID of the caller
`
`matches the information in the contact list entry. Id. at 2:21–24, Fig. 3. The
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`’892 patent also describes that “[m]emo is displayed on communication
`
`device when corresponding contact list entry is activated, such as when
`
`contact list entry is selected to initiate outgoing communication; and when
`
`incoming communication is received from entity corresponding to contact
`
`list entry.” Id. at 1:26–31 (SUMMARY), Abstract (emphases added).
`
`In view of the disclosure in the Specification discussed above, for
`
`purposes of this Decision, we preliminarily construe the term “activating” a
`
`contact list entry to mean “selecting or opening” a contact list entry. See id.
`
`at 1:26–31, 2:14–24, Abstract, Figs. 2, 3. Similar to the terms “contact list”
`
`and “contact list entry,” “activating” a contact list entry neither excludes nor
`
`requires “displaying a visual representation, or opening up a visual
`
`representation of the contact information” of the contact list entry.
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`For purposes of this Decision, we need not construe explicitly any
`
`other claim terms in order to determine whether there is a reasonable
`
`likelihood of Petitioner prevailing with respect to the challenged claims. See
`
`35 U.S.C. § 314(a); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”).
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`C. Claims 1–4 and 6–9 as Obvious Over Matsumoto
`
`Petitioner contends claims 1–4 and 6–9 are unpatentable as obvious
`
`under 35 U.S.C. § 103(a) over Matsumoto. Pet. 13–41. In support of its
`
`contentions, Petitioner submits the Declaration of Peter Rysavy (Ex. 1002).
`
`Id. For the reasons discussed below, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that it will prevail in its challenge to
`
`claims 1–4 and 6–9 as obvious over Matsumoto.
`
`1. Overview of Matsumoto (Ex. 1004)
`
`As background, Matsumoto describes that users may not remember
`
`the “subject,” i.e., the subject matter or topic, of a previous phone call when
`
`calling the number again or receiving a call from the number. Ex. 1004,
`
`1:12–21. To enable users to convey the intended information “without
`
`omission,” Matsumoto describes a telephone, such as a wireless mobile
`
`phone, that allows the user to input information regarding a phone call and
`
`notifies the user of the stored information when a call is received from the
`
`stored phone number or the user makes a call to the number. Id. at 2:3–35,
`
`Abstract. Figure 3 of Matsumoto is reproduced below.
`
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`Figure 3 shows table 200 illustrating information stored in the recording unit
`
`of Matsumoto’s phone. Id. at 8:2–5. As shown in Figure 3, table 200
`
`includes personal information of a party (i.e., a contact) entered by the user,
`
`such as the party’s name, telephone number, and e-mail address. Id. at 8:6–
`
`15. Table 200 also includes subject of notes section 204 for entering the
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`“subjects of notes.” Id. at 8:17–19. According to Matsumoto, the “subject
`
`of notes” means the “content[]” that is to be or was meant to be conveyed to
`
`the party. Id. at 6:66–7:2.
`
`Figure 5 of Matsumoto is reproduced below.
`
`Figure 5 is a flowchart showing the process of displaying the notes, i.e.,
`
`“notes display procedure,” when receiving an incoming call. Id. at 9:25–27.
`
`Figure 4 (not reproduced herein) illustrates a similar “notes display
`
`
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`procedure” when making a phone call (i.e., placing an outgoing call). Id. at
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`4:50–53.
`
`2. Discussion
`
`a. Claims 1 and 6
`
`Petitioner contends that Matsumoto discloses all limitations of
`
`independent claims 1 and 6 with the possible exception of the “by the
`
`processor” aspect of the recited steps. Pet. 13. Nonetheless, Petitioner
`
`asserts that Matsumoto, at a minimum, would have rendered the claims
`
`obvious. Id. at 13, 18–19, 20–21 n.3.
`
`The parties agree that independent claims 1 and 6 are substantially
`
`similar except that claim 1 recites steps for processing incoming calls
`
`whereas claim 6 recites steps for outgoing calls. Pet. 7; Prelim. Resp. 15.
`
`Hence, in what follows our discussion will primarily focus on claim 1.
`
`i. Preamble of Claim 1
`
`As set forth above, the preamble of claim 1 recites “[a] method,
`
`performed by a communication device, for reminding a user of the
`
`communication device of a conversation point for a future phone call” and
`
`“the communication device having a processor and a display screen.” The
`
`preamble further recites that the communication device has access to “a
`
`saved contact list having one or more contact list entries” and that “each
`
`contact list entry” includes
`
`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
`one memo which is served to remind the user of the conversation
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`point for the future phone call between the user and the
`corresponding entity.
`
`Addressing the preamble of claim 1, Petitioner contends that
`
`Matsumoto discloses “a method, performed by a communication device, for
`
`reminding a user of the communication device of a conversation point for a
`
`future phone call,” as recited in claim 1, because Matsumoto discloses a
`
`mobile phone, i.e., a communication device, having the function of notifying
`
`the user of stored information when the user makes a call to the telephone
`
`number of the party associated with the stored information. Pet. 14 (citing
`
`Ex. 1004, 2:16–38, 5:4–8, 37–40, Figs. 1, 2). Petitioner also cites the
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`testimony of Mr. Rysavy in support of its contention. Id. (citing Ex. 1002
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`¶ 80).
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`Referencing Figure 2 (not reproduced herein) of Matsumoto,
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`Petitioner maps the claimed “processor” to Matsumoto’s “general control
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`unit 104,” which “includes a Digital Signal Processor (DSP) for controlling
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`general procedures of the wireless phone,” and the claimed “display screen”
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`to “display unit 108,” which “is a liquid crystal display (LCD), which
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`displays texts and images according to the signals received from the general
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`control unit 104 and the notepad control unit 113.” Id. at 15 (citing
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`Ex. 1004, 5:37–40, 6:33–36, Fig. 2; Ex. 1002 ¶ 81). Petitioner argues that
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`Matsumoto’s processor “control[s] general procedures of the wireless
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`phone.” Id. (citing Ex. 1004, 5:37–39; Ex. 1002 ¶ 81).
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`Referencing Figure 3 (reproduced above) and related text, Petitioner
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`points to various portions of Matsumoto (including various fields of table
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`200 and related disclosure) where the claimed “saved contact list having one
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`or more contact list entries” and the claimed
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`
`contact list entry . . . 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 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
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`are disclosed. Id. at 16–18 (citing Ex. 1004, 8:3–22, 32–42, 54–59, 8:62–
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`9:3, Figs. 3, 4). To summarize, Petitioner asserts that table 200 of
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`Matsumoto discloses the claimed “contact list” and that each row of the
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`table entries corresponds to the claimed “contact list entry,” including field
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`201, i.e., a first field for a phone number, and field 202, i.e., a second field
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`for a stored name identifying the contact. Id. at 16–17. Petitioner further
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`argues that subject of notes field 204 of table 200 constitutes the claimed
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`“memo field configured to attach memo data inputted by the user.” Id. at 17.
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`Petitioner asserts that table 200 is saved in recording unit 109 of
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`Matsumoto’s mobile phone, and that the phone accesses the saved table to
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`determine if a number calling or being called is stored in the table, to
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`determine if there are notes stored in the table associated with the called or
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`calling number, and to retrieve such notes for display to the user. Id. at 17–
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`18 (citing Ex. 1004, 8:3–5, 32–42, 8:62–9:3). Petitioner also relies on the
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`Declaration of Mr. Rysavy. Id. 16–18 (citing Ex. 1002 ¶¶ 82–85).
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`Patent Owner asserts that Matsumoto does not disclose a “contact list
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`entry” as claimed because table 200 of Matsumoto does not include any
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`“user-interface-enabled feature” and the table entries are not “visually
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`represented and activitable” entries. Prelim. Resp. 20–21. Patent Owner’s
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`argument turns on its claim construction of the terms “contact list” and
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`“contact list entry,” and is, therefore, unpersuasive for the same reasons
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`discussed in Section III.B (Claim Construction) above.
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`As discussed above, for purposes of this Decision, we preliminarily
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`construe the term “contact list” as “an electronic list comprising contact list
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`entries” and the term “contact list entry” as “an item in a contact list
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`comprising data fields to input contact information details.” Based on the
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`information presented in the Petition, we are persuaded that table 200 and
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`table entries of Matsumoto disclose the claimed “contact list” and “contact
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`list entry” under these constructions. Therefore, based on the present record,
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`we are persuaded that Petitioner has shown sufficiently that Matsumoto
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`discloses the preamble of claim 1.
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`ii. Elements (a), (b), (c), and (d) of Claim 1
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`Petitioner next points to Figure 5 (reproduced above) and related
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`disclosure of Matsumoto and argues that Matsumoto discloses the numbered
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`elements (a), (b), (c), and (d) recited in the body of claim 1. Pet. 18–28.
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`Petitioner provides detailed explanations and specific citations to Matsumoto
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`indicating where in the reference the claimed features are disclosed. Id. In
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`addition, Petitioner relies upon the testimony of Mr. Rysavy. Id.
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`As discussed above, Figure 5 is a flowchart showing the “notes
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`display procedure,” i.e., the process of displaying the notes (the claimed
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`“memo data”) stored in the subject of notes field when receiving an
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`incoming call. Ex. 1004, 9:25–27. Petitioner points to various steps
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`described in Figure 5 and argues that they disclose the steps recited in
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`elements (a), (b), (c), and (d) of claim 1. Pet. 18–28. To summarize,
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`Petitioner asserts that steps S201 (“RECEIVE A SIGNAL”) and S202
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`(“RECOGNIZE TELEPHONE NUMBER OF THE SENDER”) disclose the
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`“receiving” step of element (a), and step S203 (“IS THE NOTES
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`RECORDED?”) discloses the “checking” step recited in element (b) of
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`claim 1. Id. at 18–23. Petitioner further asserts that steps S204 (“DISPLAY
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`THE NOTES”) and S205 (“INCOMING PROCEDURE”) disclose the
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`“activating” step recited in element (c) because Matsumoto describes that,
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`after notes for the claimed “first contact list entry” are displayed in step
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`S204, the phone goes forward with the “incoming procedure” of step S205.
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`Id. at 23–24. Petitioner argues that Matsumoto’s “incoming procedure”
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`means that “[w]hen the user receives a call from the party, the general
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`control unit 104 also performs a procedure for establishing communication
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`(hereafter called ‘incoming procedure’).” Id. at 24 (citing Ex. 1004, 5:57–
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`59). Although Petitioner does not propose an express construction for the
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`term “activating,” Petitioner argues that the ’892 patent explains that
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`“activating” a contact list entry includes “when user opens contact
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`information contained therein for viewing”; “when phone number contained
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`therein is dialed using speed dial feature”; and “when communication device
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`detects incoming phone call from entity corresponding to contact list entry.”
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`Id. at 24–25 n.4 (citing Ex. 1001, 2:17–24). In other words, Petitioner
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`appears to argue that steps S204 and S205 of Matsumoto disclose the
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`claimed “activating” step because Matsumoto discloses opening contact
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`information and detecting incoming phone call.
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`Petitioner further argues that Matsumoto discloses “(d) causing, by the
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`processor, a first indication indicating a presence of the at least one memo of
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`the attached memo data, to be automatically displayed on the display screen
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`during the activating of the first contact list entry, when it is detected in the
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`step (b), by the processor, that there is memo data attached to the memo field
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`of the first contact list entry,” as recited in claim 1, because Matsumoto
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`discloses displaying the notes that are stored in the “subject of notes” field of
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`the table 200 associated with the contact number that is calling, as shown in
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`step S204 of Figure 5. Id. at 26–28. Petitioner argues that displaying the
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`notes, i.e., the actual content of the memo, satisfies displaying an indication
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`of a presence of a memo, as recited in claim 1, because claim 2, which
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`depends from claim 1, recites that the “indication” of claim 1 “comprises
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`content of the at lea