Trials@uspto.gov
`571-272-7822
`
` Paper 37
`
`
` Entered: November 27, 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 IPR2017-01411
`Patent 9,531,657 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
`
`
`
`

`

`IPR2017-01411
`Patent 9,531,657 B2
`
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`
`Microsoft Corporation (“Petitioner”) challenges the patentability of claims
`
`1–12 (the “challenged claims”) of U.S. Patent No. 9,531,657 B2 (Ex. 1001,
`
`“the ’657 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 1–12 of
`
`the ’657 patent are unpatentable.
`
`II. BACKGROUND
`
`A. Procedural History
`
`On May 10, 2017, Petitioner filed a Petition (Paper 2, “Pet.”)
`
`requesting an inter partes review of claims 1–12 of the ’657 patent. Patent
`
`Owner filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On
`
`December 1, 2017, we instituted an inter partes review of all the challenged
`
`claims of the ’657 patent based on all the grounds presented in the Petition.
`
`Paper 8 (“Dec. on Inst.”), 40.
`
`After institution, Patent Owner filed a Patent Owner Response
`
`(Paper 24, “PO Resp.”), to which Petitioner filed a Reply (Paper 25,
`
`2
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`

`

`IPR2017-01411
`Patent 9,531,657 B2
`
`“Pet. Reply”).1 An oral hearing was held on June 21, 2018. A transcript of
`
`the hearing is included in the record as Paper 36 (“Tr.”).
`
`B. Related Proceeding
`
`According to the parties, the ’657 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 3, 1. Additionally, U.S. Patent
`
`No. 8,848,892 B2, which is a predecessor to the ’657 patent, is the subject of
`
`IPR2017-01052, in which we issued a final written decision finding all
`
`challenged claims unpatentable. See Microsoft Corp. v. Mira Advanced
`
`Tech. Sys., Inc., Case IPR2017-01052 (PTAB Sept. 19, 2018) (Paper 31).
`
`C. The ’657 Patent
`
`The ’657 patent describes a method for attaching memo data to a
`
`contact list entry. Ex. 1001, Abstract. As background, the ’657 patent
`
`describes that, because users sometimes forget important conversation points
`
`with their contacts, a need exists for a contact list that allows entering memo
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`data into contact list entries and provides reminders of the memo data when
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`communication is initiated with the contact associated with the memo data.
`
`Id. at 1:25–32.
`
`
`1 With our permission, Patent Owner and Petitioner each filed an errata to
`their Patent Owner Response and Reply, respectively. Paper 35 (Errata to
`Patent Owner’s Response); Paper 33 (Errata to Petitioner’s Reply).
`
`3
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`

`

`IPR2017-01411
`Patent 9,531,657 B2
`
`
`Figure 1 of the ’657 patent is reproduced below.
`
`
`
`Figure 1 shows the database structure of the contact list of the ’657 patent.
`
`Id. at 1:49–50. As shown in Figure 1, the contact list consists of multiple
`
`contact list entries. Id. at 2:14–15.
`
`Each contact list entry comprises data fields to input contact
`
`information details, such as contact name, address, phone number, and email
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`address. Id. at 2:16–17. In an exemplary embodiment, a data field is added
`
`to each contact list entry to input memo data associated with the contact
`
`entry. Id. at 2:20–21.
`
`According to the ’657 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 1:38–43, 2:27–31,
`
`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 2:37–39, 42–46. 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 2:39–42.
`
`4
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`

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`IPR2017-01411
`Patent 9,531,657 B2
`
`
`D. Illustrative Claim
`
`Of the challenged claims, claim 1 is the only independent claim.
`
`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 communication, the communication device
`having a processor and a display screen, the communication
`device having access to a memory storing a contact list having a
`list of contact list entries, each contact list entry of the contact
`list including a first field configured to retrieve a stored
`communication address 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 can be served to
`remind the user of a conversation point for a future
`communication between the user and the corresponding entity,
`the method comprising:
`
`(a) receiving, by the processor, a first input indicating a
`need to activate a first contact list entry of the contact list for the
`user to perform at least one of receiving and requesting a
`communication addressed to the stored communication address
`of the first contact list entry;
`
`(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 performs at least one of receiving, requesting, drafting and
`conducting the communication addressed to the communication
`address of the first contact list entry; 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
`
`5
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`IPR2017-01411
`Patent 9,531,657 B2
`
`
`step (b), by the processor, that there is memo data attached to the
`memo field of the first contact list entry.
`
`Ex. 1001, 3:5–40.
`
`E. Applied References and Declarations
`
`Petitioner relies upon the following references in its challenges:
`
`Reference
`
`Designation Exhibit No.
`
`U.S. Patent No. 7,130,617 B2 (issued Oct. 31,
`2006)
`
`Matsumoto2 Ex. 1004
`
`European Patent Application Pub. No.
`EP 1739937 A1 (published Jan. 3, 2007)
`
`Sony
`
`Ex. 1005
`
`U.S. Patent No. 7 ,822,434 B2 (filed May 9,
`2006; issued Oct. 26, 2010)
`
`Scott
`
`Ex. 1009
`
`U.S. Patent Application Pub. No. 2006/0195518
`Al (published Aug. 31, 2006)
`
`Neilsen
`
`Ex. 1010
`
`
`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.
`
`
`2 For clarity and ease of reference, we only list the first named inventor.
`
`6
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`

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`IPR2017-01411
`Patent 9,531,657 B2
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`
`F. Instituted Grounds of Unpatentability
`
`We instituted inter partes review of all the challenged claims based on
`
`all the grounds presented in the Petition, as follows3 (Dec. on Inst. 40).
`
`Claims Challenged
`
`Statutory Basis
`
`Reference(s)
`
`1–4 and 9–12
`
`1–4 and 9–12
`
`5–8
`
`5–8
`
`
`
`§ 103(a)4
`
`Sony
`
`§ 103(a)
`
`Sony and Matsumoto
`
`§ 103(a)
`
`Matsumoto and Scott
`
`§ 103(a)
`
`Matsumoto and Neilsen
`
`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
`
`
`3 In its summary of the asserted grounds, Petitioner identifies three grounds.
`Pet. 3. Under the first ground, Petitioner asserts that claims 1–4 and 9–12
`are unpatentable over Sony and Matsumoto. Id. Based on Petitioner’s
`substantive arguments (id. at 14–40), however, we treat the first ground as
`containing two separate grounds: obviousness over Sony as well as
`obviousness over Sony and Matsumoto. Dec. on Inst. 13–14, 40.
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’657 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.
`
`7
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`IPR2017-01411
`Patent 9,531,657 B2
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`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
`
`Construction
`
`“contact list”
`
`“an electronic list comprising contact list entries”
`
`“contact list entry”
`
`“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
`
`
`Dec. on Inst. 11, 13. 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. 8–13.
`
`8
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`

`

`IPR2017-01411
`Patent 9,531,657 B2
`
`
`A. “Contact List”
`
`During the trial, the parties’ claim construction dispute focused on the
`
`term “contact list” recited in claim 1. 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, 11–12. 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, ¶ 21), capabilities at least including:
`(1) inputting, saving and viewing contact information of
`an entity (such as a person) visually represented by a contact list
`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”
`in the case of phone communication) or opens for displaying the
`underlying contact information contained therein.
`
`PO Resp. 20–21. 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 21–33. Although Patent Owner also argues that a “contact list” is a
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`IPR2017-01411
`Patent 9,531,657 B2
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`“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
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`“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 claim 1, and
`
`divorced from the context of the claim as a whole, disregarding, for
`
`example, the plain language of the claim showing that the “contact list”
`
`recited in the claim is “stor[ed]” in a memory. As discussed below, we
`
`determine that the plain meaning interpretation of the “contact list”
`
`limitation based on the claim language “a memory storing a 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.
`
`10
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`Patent 9,531,657 B2
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`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 claim 1 provides a plain meaning definition of
`
`the term “contact list” recited in the claims.
`
`Addressing the claim language of independent claim 1, Petitioner
`
`notes that claim 1 recites a “communication device” “having access to a
`
`memory storing [a] contact list having a list of contact list entries.” Pet.
`
`Reply 5. Petitioner asserts that the claim further specifies that each contact
`
`list entry of the contact list includes three “fields” corresponding to a
`
`contact’s name, phone number, and memo data. Id. Petitioner argues that,
`
`consistent with our discussion in the Decision on Institution, this claim
`
`language defines the recited “contact list”—that is, a “memory storing a
`
`contact list” in a communication device, the contact list “having a list of
`
`contact list entries,” each entry with at least three fields: name, number, and
`
`memo data. Id. at 9. We agree with Petitioner’s argument.
`
`As Petitioner notes, claim 1 expressly recites a “memory storing a
`
`contact list”—that is, the recited “contact list” is “stor[ed]” in a “memory” of
`
`the communication device. In fact, the only “contact list” limitation recited
`
`in the claim is a “contact list” “stor[ed]” in a “memory.” In claim 1, the
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`11
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`IPR2017-01411
`Patent 9,531,657 B2
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`claim limitation “contact list” appears only three times. First, the limitation
`
`is introduced in the preamble, which recites that “the communication
`
`device” has “access” to “a memory storing a contact list” “having a list of
`
`contact list entries.” Ex. 1001, 3:8–10 (emphasis added). Next, in the
`
`immediately following recitation, the claim recites 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 3:10–
`
`16. The plain language “a memory storing a contact list having a list of
`
`contact list entries, each contact list entry of the contact list including . . .”
`
`indicates that “the contact list” refers to “a contact list” “stor[ed]” in a
`
`“memory” recited in the immediately preceding phrase. Lastly, in the claim
`
`body, the claim recites “(a) receiving, by the processor, a first input
`
`indicating a need to activate a first contact list entry of the contact list for the
`
`user to perform at least one of receiving and requesting a communication
`
`addressed to the stored communication address of the first contact list
`
`entry.” Id. at 3:20–24 (emphasis added).
`
`None of the dependent claims add recitations that include a distinct
`
`“contact list” limitation. Rather, dependent claims recite “the contact list,”
`
`referring to the “contact list” “stor[ed]” in a “memory” recited claim 1. See
`
`id. at 3:41–4:14 (claims 2–5); 4:23–26 (claim 7). Thus, it is evident from the
`
`plain language of the claims that the only “contact list” limitation recited in
`
`the challenged claims is a “contact list” “stor[ed]” in a “memory.” No other
`
`“contact list” is recited in the challenged 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. Claim 1 recites that “each
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`IPR2017-01411
`Patent 9,531,657 B2
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`contact list entry of the contact list” includes “a first field” for “a stored
`
`communication address” and “a second field” for “a stored name” of a
`
`contact. Ex. 1001, 3:10–15 (emphases added). In addition, the body of the
`
`claim recites steps, all performed by the processor of the communication
`
`device, to access and process the contact list entry of “the contact list”
`
`“stor[ed]” in the memory of the communication device. Id. at 3:20–40.
`
`Thus, when considering the plain language of the claim in their
`
`entirety, the characteristic of the “contact list” as a list “stored” in the
`
`memory of a communication device pervades throughout the claim.
`
`Therefore, in the context of the claim as a whole, the language of the claim
`
`defines the recited “contact list” as a list “stored” in a memory of a
`
`communication device. 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 ’657 patent. For example, the ’657 patent describes that
`
`contact information in a contact list is “saved in communication device.”
`
`Ex. 1001, 1:28–29 (emphasis added). In addition, referencing Figure 1, the
`
`’657 patent describes that “FIG. 1 shows contact list template for
`
`communication device” (id. at 2:15–16 (emphasis added)) and that “FIG. 1
`
`shows the database structure of contact list of present invention” (id. at
`
`1:49–50 (emphases added)). Hence, the ’657 patent describes that the table
`
`depicted in Figure 1 (reproduced above in Section II.C.) is the “database
`
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`Patent 9,531,657 B2
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`structure” of the “contact list” of the ’657 patent, and that such database
`
`structure is a “template” of the claimed “contact list.” In other words, the
`
`’652 patent describes a contact list as a database saved or stored in a
`
`communication device.
`
`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 stored in a memory of a communication device comprising contact
`
`list entries.”
`
`2. Whether the “Contact List” Limitation Requires a User Interface
`
`a. “Memory Storing a Contact List”
`
`Because the “contact list” limitation recited in claim 1 is a “contact
`
`list” “stor[ed]” in a “memory,” 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 “storing” “user interfaces” in a
`
`“memory” in the context of the ’657 patent. See Dec. on Inst. 10.
`
`Similar to our discussion in the Decision on Institution, we discern no
`
`disclosure regarding “storing” or “saving” any “user interfaces” in a memory
`
`of a communication device in the ’657 patent. See id. During the trial,
`
`Patent Owner did not identify any disclosure in the ’657 patent regarding
`
`“storing” or “saving” “user interfaces” in a communication device. 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 ’657 patent describes saving a user
`
`interface).
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`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 being ‘stored.’” PO Resp. 46 (citing Ex. 2001 ¶ 89). 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 being stored in a memory of the
`
`communication device.” Ex. 2001 ¶ 89.
`
`Essentially, Mr. Jawadi states that a feature “resident (stored) in a
`
`communication device” is often referred to as a “stored” feature. But
`
`Mr. Jawadi does not explain adequately why a “user-interface-enabled”
`
`feature is synonymous or equivalent to a “stored” feature.
`
`Moreover, Mr. Jawadi does not cite any evidence in support of his
`
`testimony. See Ex. 2001 ¶ 89. Mr. Jawadi’s conclusory statement
`
`unsupported by evidence does not provide a satisfactory explanation of what
`
`“storing” “user interfaces” entails in the context of the ’657 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 Prods., 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 “memory storing a contact list.”
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`b. Whether the Claim Term “Memory Storing a Contact List” is Extrinsic
`Evidence
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`Patent Owner next asserts that claim 1’s recitation “a memory storing
`
`a contact list” should be given little significance in the construction of the
`
`term “contact list” because the claim terms surrounding “contact list” are
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`“not . . . intrinsic evidence” or “non-actual intrinsic evidence.” PO Resp. 40,
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`45–46. Patent Owner contends that this is so because the phrase “a memory
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`storing a contact list” recited in claim 1 is “NOT part of the specification,
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`and therefore is not part of intrinsic evidence.” Id. at 45–46.
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`Patent Owner further contends that our Decision on Institution erred
`
`in “incorrectly putting more emphasis on non-actual intrinsic evidence (e.g.,
`
`what is recited in claim 1 surrounding the term “contact list”) than on the
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`actual intrinsic evidence of the ‘657 patent” (id. at 40 (emphases added)) and
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`“NOT placing the HIGHEST emphasis on intrinsic evidence” (id. at 45
`
`(citing Phillips, 415 F.3d at 1317)).
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`Patent Owner is incorrect that an expressly recited claim limitation is
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`“NOT part of the specification, and therefore is not part of intrinsic
`
`evidence.” See id. at 45–46. Quite the contrary, all of claim 1 is part of the
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`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
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`emphasis on claim language as intrinsic evidence:
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`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
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`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). Thus,
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`Patent Owner’s assertion that the claim term “memory storing a contact list”
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`expressly recited in claim 1 is extrinsic evidence (or non-intrinsic evidence)
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`is erroneous.
`
`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
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`‘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 (emphasis added)
`
`(citation omitted). Indeed, “claim language must be construed in the context
`
`of the claim in which it appears” because “[e]xtracting a single word from a
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`claim divorced from the surrounding limitations can lead construction
`
`astray.” IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir.
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`2011) (emphasis added).
`
`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
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`recited claim limitation “memory storing a contact list” as informing the
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`scope of “contact list” recited in the claim. See Apple Computer, Inc. v.
`
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`Articulate Sys., Inc., 234 F.3d at 24–25 (rejecting the proposed construction
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`that ignores the limitation imposed by the word “help” in the claim term
`
`“help access window” because such a construction would read the qualifier
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`“help” out of the definition of “help access window”).
`
`Far from being extrinsic evidence, the surrounding claim terms in
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`“memory storing a contact list” plays an important role in determining the
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`correct construction of the “contact list” limitation because, as discussed
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`above, the only “contact list” limitation recited in the challenged claims is a
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`“contact list” “stor[ed]” in a “memory.”
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`c. “Entering and Saving Contact Information” Functions
`
`Patent Owner asserts that the Specification of the ’657 patent shows
`
`that a “user interface” is required in the recited “contact list,” quoting and
`
`relying on a passage of the ’657 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. 22–23 (quoting Ex. 1001, 1:18–26). 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. at 23 (citing Ex. 2001 ¶¶ 51–52). Patent Owner
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`further asserts that the quoted passage shows that a “contact list” has
`
`“common . . . functions,” such as “inputting and saving contact information
`
`into ‘contact list entries’ . . . and speed-dialing an underlying phone number
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`of a ‘contact list entry.’” Id. Patent Owner argues that a “contact list”
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`requires user interfaces because user interfaces are necessary for a user to
`
`perform the common functions of “entering and saving contact information
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`and speed-dialing [a phone number].” Id. at 23–24 (citing Ex. 2001 ¶ 52
`
`(“[T]here was no way for an ordinary user to perform those functions at the
`
`time of the claimed invention other than using user interfaces which a
`
`‘contact list’ provides.” (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, the challenged claims 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, claim 1 (the only independent claim of the ’657 patent)
`
`recites in its preamble a “method, performed by a communication device, for
`
`reminding a user of the communication device of a conversation point.”
`
`Ex. 1001, 3:5–7 (emphasis added). As discussed above, the claim further
`
`recites that “the communication device” has “access to a memory storing a
`
`contact list.” Id. at 3:8–10 (emphasis added). In other words, the plain
`
`language of the claim specifies that the recited “contact list” has already
`
`been “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 communication device after the contact information has been entered
`
`and saved into a contact list stored in the communication device—i.e., a
`
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`“method, performed by a communication device,” which has “access to a
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`memory storing a contact list.” Thus, Patent Owner’s argument that the
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`“contact list” recited in the claim requires a user interface because a user
`
`inter