Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Date: November 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`
`IPR2018-01079
`Patent 8,213,970
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`ZADO, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`Paper 34
`Date: November 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`
`IPR2018-01079
`Patent 8,213,970
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`ZADO, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2018-01079
`Patent 8,213,970 B2
`
`I.
`INTRODUCTION
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
`Google LLC (“Petitioner”)1 has shown, by a preponderance of the evidence,
`that claims 1 and 3–9 (“challenged claims”) of U.S. Patent No. 8,213,970 B2
`(Ex. 1001, “the ’970 patent”) are unpatentable. See 35 U.S.C. § 316(e)
`(2012); 37 C.F.R. § 42.1(d) (2017).
`A. Procedural History
`Petitioner filed a Petition for inter partes review of claims 1 and 3–9
`of the ’970 patent. Paper 2 (“Pet.” or “Petition”). AGIS Software
`Development, LLC (“Patent Owner”)2 subsequently filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Petitioner field an authorized Reply
`to Patent Owner’s Preliminary Response. Paper 8. On November 20, 2018,
`the Board entered a decision instituting an inter partes review of all claims
`and all grounds presented in the Petition. Paper 9 (“Institution Decision” or
`“Inst. Dec.”).
`After institution, Patent Owner filed a Response to the Petition.
`Paper 17 (“Response” or “PO Resp.”). Petitioner thereafter filed a Reply to
`Patent Owner’s Response. Paper 22 (“Pet. Reply” or “Reply”). Patent
`Owner filed a Sur-reply to Petitioner’s Reply to Patent Owner’s Response.
`
`
`1 Pursuant to 37 C.F.R. § 42.8, Petitioner identifies as real parties-in-interest
`Google LLC, Huawei Device USA Inc., Huawei Device Co., Ltd., Huawei
`Device (Dongguan) Co., Ltd., Huawei Technologies USA Inc., Huawei
`Technologies Co., Ltd., and LG Electronics, Inc. Pet. 79.
`2 Pursuant to 37 C.F.R. § 42.8, Patent Owner identifies only itself as a real
`party-in-interest. Paper 5, 1.
`
`2
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`IPR2018-01079
`Patent 8,213,970 B2
`Paper 27 (“Sur-reply”). Patent Owner also filed a Request for Rehearing of
`the Institution Decision, Paper 12, which we denied, Paper 26.
`An oral hearing was held on Sept. 5, 2019. A transcript of the hearing
`is included in the record. Paper 33 (“Tr.”).
`B. Related Matters
`The parties advise that the ’970 patent has been asserted in AGIS
`Software Development LLC v. Huawei Device USA Inc. et al., No. 2:17-cv-
`00513 (E.D. Tex.); AGIS Software Development LLC v. HTC Corporation,
`No. 2:17-cv-00514 (E.D. Tex.); AGIS Software Development LLC v. LG
`Electronics, Inc., No. 2:17-cv-00515 (E.D. Tex.); AGIS Software
`Development LLC v. Apple Inc., No. 2:17-cv-00516-JRG (E.D. Tex.); AGIS
`Software Development LLC v. ZTE Corporation et al., No. 2:17-cv-00517
`(E.D. Tex.). Pet. 79–80; Paper 5, 3–4. Patent Owner further advises that the
`’970 patent and patents related to the ’970 patent are the subject of various
`filings requesting inter partes review. Paper 5, 2–3 (table identifying inter
`partes review case numbers)
`C. The ’970 Patent
`The ’970 patent generally discloses a specialized software application
`program on a personal computer (“PC”) or PDA/cell phone for creating and
`processing forced message alerts. Ex. 1001, code (57). The specification of
`the ’970 patent (“Specification”) discloses it is desirable for a PDA/cell
`phone user to be able to simultaneously send Digital Smart Message Service
`(“SMS”) or TCP/IP messages to a large group of PCs or cell phones using
`cellular technology (such as GSM or CDMA) or WiFi. Id. at 1:51–57. The
`Specification further discloses that in some situations it is additionally
`desirable to know which PCs and PDA/cell phones received the message,
`which PCs and PDA/cell phones did not receive the message, and the
`
`3
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`IPR2018-01079
`Patent 8,213,970 B2
`response of each recipient of the message. Id. at 1:57–61. “As a result,
`what is needed is a method in which a sender of a text or voice message can
`force an automatic acknowledgement upon receipt from a recipient’s cell
`phone or PC and a manual response from the recipient via the recipient’s
`cell phone or PC.” Id. at 1:65–67. In addressing these issues, the
`Specification discloses “[t]he heart of the invention lies in [a] forced
`message alert software application program provided in each PC or
`PDA/cell phone.” Id. at 4:47–49. The software provides the ability to
`(a) allow an operator to create and transmit a forced message
`alert from a sender PDA/cell phone to one or more recipient PCs
`and PDA/cell phones within the communication network; (b)
`automatically transmit an acknowledgement of receipt to the
`sender PDA cell phone upon the receipt of the forced message
`alert; (c) periodically resend the message to the recipient PCs and
`PDA/cell phones that have not sent an acknowledgement; (d)
`provide an indication of which recipient PCs and PDA/cell
`phones have acknowledged the forced message alert; (e) provide
`a manual response list on the display of the recipient PC and
`PDA/cell phone's display that can only be cleared by manually
`transmitting a response; and (f) provide an indication on the
`sender PDA/cell phone of the status and content the manual
`responses.
`Id., code (57). The Specification explains that a forced message alert is
`comprised of a text or voice message and a forced message alert software
`packet. Id. at 2:11–13, 8:23–25
`D. Illustrative Claims
`Petitioner challenges claims 1 and 3–9 of the ’970 patent. Pet. 12.
`Claims 1 and 6 are independent. Claim 1, reproduced below, is illustrative.
`1. A communication system for transmitting,
`receiving, confirming receipt, and responding to an
`electronic message, comprising:
`
`4
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`IPR2018-01079
`Patent 8,213,970 B2
`[1.1] a predetermined network of participants,
`wherein each participant has a similarly equipped
`PDA/cell phone that includes a CPU and a touch
`screen display and a CPU memory;
`[1.2] a data transmission means that facilitates the
`transmission of electronic files between said
`PDA/cell phones in different locations;
`[1.3] a sender PDA/cell phone and at least one
`recipient PDA/cell phone for each electronic
`message;
`[1.4] a forced message alert software application
`program including a list of required possible
`responses to be selected by a participant recipient of
`a forced message response
`loaded on each
`participating PDA/cell phone;
`[1.5] means for attaching a forced message alert
`software packet to a voice or text message creating
`a forced message alert that is transmitted by said
`sender PDA/cell phone to the recipient PDA/cell
`phone, said forced message alert software packet
`containing a list of possible required responses and
`requiring the forced message alert software on said
`recipient PDA/cell phone to transmit an automatic
`acknowledgement to the sender PDA/cell phone as
`soon as said forced message alert is received by the
`recipient PDA/cell phone;
`[1.6] means for requiring a required manual
`response from the response list by the recipient in
`order to clear the recipient’s response list from
`recipient’s cell phone display;
`[1.7] means for receiving and displaying a listing of
`which
`recipient
`PDA/cell
`phones
`have
`automatically acknowledged the forced message
`alert and which recipient PDA/cell phones have not
`automatically acknowledged the forced message
`alert;
`
`5
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`IPR2018-01079
`Patent 8,213,970 B2
`[1.8] means for periodically resending said forced
`message alert to said recipient PDA/cell phones that
`have not automatically acknowledged the forced
`message alert; and
`[1.9] means for receiving and displaying a listing of
`which recipient PDA/cell phones have transmitted a
`manual response to said forced message alert and
`details the response from each recipient PDA/cell
`phone that responded.
`Ex. 1001, 8:65–9:39 (brackets and numbering added).
`Claim 6, reproduced below, also is illustrative.
`6. A method of sending a forced message alert to
`one or more recipient PD A/cell phones within a
`predetermined communication network, wherein
`the receipt and response to said forced message alert
`by each intended recipient PDA/cell phone is
`tracked, said method comprising the steps of:
`[6.1] accessing a forced message alert software
`application program on a sender PDA/cell phone;
`[6.2] creating the forced message alert on said
`sender PDA/cell phone by attaching a voice or text
`message to a forced message alert application
`software packet to said voice or text message;
`[6.3] designating one or more recipient PDA/cell
`phones in the communication network;
`[6.4] electronically transmitting the forced message
`alert to said recipient PDA/cell phones;
`[6.5] receiving automatic acknowledgements from
`the recipient PDA/cell phones that received the
`message and displaying a listing of which recipient
`PDA/cell phones have acknowledged receipt of the
`forced message alert and which recipient PDA/cell
`phones have not acknowledged receipt of the forced
`message alert;
`
`6
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`IPR2018-01079
`Patent 8,213,970 B2
`[6.6] periodically resending the forced message
`alert to the recipient PDA/cell phones that have not
`acknowledged receipt;
`[6.7] receiving responses to the forced message alert
`from the recipient PDA/cell phones and displaying
`the response from each recipient PDA/cell phone;
`and
`[6.8] providing a manual response list on the display
`of the recipient PDA/cell phone that can only be
`cleared by the recipient providing a required
`response from the list;
`[6.9] clearing the recipient’s display screen or
`causing the repeating voice alert to cease upon
`recipient selecting a response from the response list
`required that can only be cleared by manually
`selecting and transmitting a response to the manual
`response list.
`Ex, 1001, 10:7–41 (brackets and numbering added).
`E. Prior Art and Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1 and 3–9 would have been unpatentable
`on the following grounds (Pet. 12):
`
`7
`
`
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`IPR2018-01079
`Patent 8,213,970 B2
`Claim(s) Challenged
`1, 3–9
`1, 3–9
`1, 3–9
`
`Petitioner relies on the declaration of David Hilliard Williams,
`Ex. 1003 (“Williams Declaration”), and the supplemental declaration of Mr.
`Williams, Ex. 1023 (“Williams Supplemental Declaration”), to support its
`contentions.
`
`Reference(s)/Basis
`Kubala,3 Hammond4
`Hammond, Johnson,5 Pepe6
`Hammond, Johnson, Pepe,
`Banerjee7
`
`II. ANALYSIS
`A. Legal Principles
`A claim is unpatentable under § 103(a) if the differences between the
`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 said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`
`3 U.S. Patent Publication 2006/0218232 A1, filed March 24, 2005 and
`published September 29, 2006. Ex. 1005 (“Kubala”).
`4 U.S. Patent 6,854,007 B1, filed September 17, 1998 and issued Febuary 8,
`2005. Ex. 1006 (“Hammond”).
`5 U.S. Patent 5,325,310, filed June 26, 1992 and issued June 28, 1994.
`Ex. 1007 (“Johnson”).
`6 U.S. Patent 5,742,905, filed September 19, 1994 and issued April 21, 1998.
`Ex. 1008 (“Pepe”).
`7 U.S. Patent Publication 2003/0128195 A1, filed January 8, 2002 and
`published July 10, 2003. Ex. 1009 (“Banerjee”).
`
`8
`
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`IPR2018-01079
`Patent 8,213,970 B2
`(i.e., secondary considerations).8 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner
`cannot employ mere conclusory statements. The petitioner must instead
`articulate specific reasoning, based on evidence of record, to support the
`legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829
`F.3d 1364, 1380 (Fed. Cir. 2016).
`B. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art in the field
`of the ’970 patent would have had either (1) a Bachelor of Science degree in
`electrical engineering or an equivalent field, with three to five years of
`academic or industry experience in the field of electronic communications,
`or (2) a Master of Science degree in electrical engineering or an equivalent
`field, with two to four years of academic experience in the same field.
`Pet. 9–10 (citing Ex. 1003 ¶¶ 29–30).
`Patent Owner asserts that a person of ordinary skill in the art would
`have had at least a bachelor’s degree in computer science, computer
`engineering, or equivalent with one to two years of experience in the field of
`computer programming with a focus on building systems such as GPS-based
`localization and network transmission. PO Resp. 7 (citing Ex. 2005 ¶¶ 18–
`20). Patent Owner further asserts that extensive experience and technical
`training might substitute for educational requirements, while advanced
`degrees might substitute for experience. Id. (citing Ex. 2005 ¶¶ 18–20).
`The parties agree that an ordinarily skilled artisan in the field of the
`’970 patent would have had a bachelor’s degree in the pertinent technical
`
`
`8 Neither party presents arguments or evidence of secondary considerations,
`which therefore do not constitute part of our analysis.
`
`9
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`IPR2018-01079
`Patent 8,213,970 B2
`field, and a few years of experience and/or more advanced education in the
`pertinent field. Therefore, we determine a person of ordinary skill in the art
`would have had a bachelor’s degree in electrical engineering, computer
`science, or computer engineering, or equivalent, and two to four years of
`additional experience, either work or educational, in the field of electrical
`communications. We do not adopt Patent Owner’s assessment that a skilled
`artisan would have focused on building systems such as GPS-based
`localization and network transmission. PO Resp. 7. Patent Owner fails to
`explain how this is pertinent to the field of the ’970 patent, which relates to
`providing computers and/or PDA/cell phones with forced message alert
`software that enables users to create and send message alerts.
`We note that the level of skill in the art also may be reflected in the
`prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`C. Claim Construction
`1. Introduction
`In an inter partes review filed before November 13, 2018, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent.9 Consistent with that standard, we
`assign claim terms their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art at the time of the invention, in
`
`
`9 This standard applies to inter parties reviews filed before November 13,
`2018. 77 Fed. Reg. 48727 (Aug. 14, 2012) (codified at 37 C.F.R.
`§ 42.100(b)), as amended at 81 Fed. Reg. 18766 (Apr. 1, 2016); see also 83
`Fed. Reg. 51340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
`
`10
`
`
`
`IPR2018-01079
`Patent 8,213,970 B2
`the context of the entire patent disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`We note that the district court issued an order construing terms of the
`’970 patent in AGIS Software Development LLC v. Huawei Device USA Inc.
`et al., No. 2:17-cv-00513 (E.D. Tex.) on October 10, 2018. Ex. 3001, 9–29
`(“District Court Claim Construction Order”). We have considered the
`district court’s constructions.
`2. Terms to be Construed Expressly
`Petitioner proposes that we construe as means-plus-function under 35
`U.S.C. § 112, ¶ 6, the terms in claim 1 that include the word “means,” i.e.,
`limitations 1.2 and 1.5 to 1.9. Pet. 10–12. Patent Owner agrees these terms
`should be construed as means-plus-function, and further argues we should
`adopt the constructions entered in the district court proceeding for the
`purposes of consistency across proceedings. Prelim. Resp. 9–14.10
`We agree these terms should be construed under § 112, ¶ 6. A claim
`limitation is presumed to invoke § 112, ¶ 6, when it uses the term “means”
`in combination with functional language, as is the case here. Signtech USA,
`Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999). Having
`determined limitations 1.2 and 1.5 to 1.9 are to be construed under § 112,
`¶ 6, below we set forth identification of the function recited in each
`
`
`10 We note that prior to institution, Patent Owner did not provide any
`proposal regarding construction of limitations 1.2 and 1.5 to 1.9, see
`generally Prelim. Resp., and we adopted preliminary constructions based on
`Petitioner’s proposals, as well as the evidence in the record at the time, Inst.
`Dec. 9–16. After institution, Patent Owner proposed that we construe the
`limitations in accordance with the district court’s constructions, but did not
`provide any argument or evidence to support its proposal other than to argue
`that the Board’s constructions should be consistent with that of the district
`court. PO Resp. 9–14.
`
`11
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`
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`IPR2018-01079
`Patent 8,213,970 B2
`limitation and the corresponding structure in the written description of the
`Specification that performs each function. See Asyst Techs, Inc. v. Empak,
`Inc., 268 F.3d 1364, 1369 (Fed. Cir. 2001) (“The first step in construing a
`means-plus function limitation is to identify the function explicitly recited in
`the claim. The next step is to identify the corresponding structure set forth
`in the written description that performs the particular function set forth in the
`claim.”) (citations omitted).
`In addition, although neither party proposes a construction for the
`term “forced message alert,” Patent Owner’s arguments regarding claim
`limitation 1.5 raise an issue regarding the construction of this term. PO
`Resp. 14–18. Therefore, we also address Patent Owner’s interpretation of
`the term “forced message alert.”
`We determine that no other claim terms require express construction.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`3. (limitation 1.2) “data transmission means that facilitates the
`transmission of electronic files between said PDA/cell phones in
`different locations”
`We construe the term “data transmission means” under 35 U.S.C.
`§ 112, ¶ 6. The parties agree that the function is to “facilitate the
`transmission of electronic files between said PDA/cell phones in different
`locations,” as recited in limitation 1.2. Pet. 10; PO Resp. 10. We agree that
`this is the recited function.
`Petitioner asserts that the corresponding structure is a server that
`communicates according to either (1) Wifi, WiMax, or other peer-to-peer
`communications or (2) SMS, TCP/IP, or other messaging protocols. Pet. 10
`
`12
`
`
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`IPR2018-01079
`Patent 8,213,970 B2
`(citing Ex. 1001, 4:1–36). Patent Owner proposes we adopt the district
`court’s determination that the corresponding structure is a “communications
`network server; and equivalents thereof.” PO Resp. 10; Ex. 3001, 10. In
`pertinent part, both parties assert the corresponding structure is a server.
`Neither party, however, explains why the corresponding structure is a
`server. Petitioner provides a bare assertion, without any explanation as to
`why its construction is correct, and cites to Mr. William’s declaration which
`likewise includes a bare assertion without any explanation. Pet. 10 (citing
`Ex. 1003 ¶ 33). Patent Owner does not explain why we should adopt its
`construction, other than we should do so “for the purposes of consistency”
`with the district court’s construction. PO Resp. 10.
`Although Petitioner does not provide any explanation, Petitioner cites
`to a description of a communication server that forwards data addressed
`from one network participant to another, “thus permitting the transmission of
`forced message alerts, other text and voice messages, photographs, video, E-
`mail, and URL data” between network participants. Pet. 10 (citing Ex. 1001,
`4:1–6). Notably, the Specification does not refer to a server as a
`transmission means. Neither party addresses other descriptions in the
`Specification that refer explicitly to two types of transmission means. The
`Specification refers to the Internet as a transmission means: “[t]o operate on
`the network, obviously the PC must be on and have an active connection to
`the Internet or other digital transmission means.” Ex. 1001, 3:43–45
`(emphasis added). The Specification also refers to communications
`protocols, such as TCP/IP, as digital transmission means: “[a] plurality of
`PCs and PDA/cell phones each having forced alert software installed
`providing a communication network . . . with the ability to: 1) allow an
`operator to create and transmit (via TCP/IP or another digital transmission
`
`13
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`IPR2018-01079
`Patent 8,213,970 B2
`means) a forced voice alert.” Id. at 2:7–11 (emphasis added). Nor do the
`parties address claim 2, which depends directly from claim 1, and recites
`“wherein said data transmission means is TCP/IP or another
`communications protocol.” Id. at 9:40–63.
`Based on our review of claim 2 and the above-noted disclosure in the
`Specification, we determine the corresponding structure for a “data
`transmission means” is “a PDA/cell phone programmed to implement
`transmission of a forced message alert using TCP/IP or another
`communications protocol, and equivalents thereof.”
`We note that the district court’s claim construction order does not
`provide analysis as to why a server is the corresponding structure for a “data
`transmission means,” instead stating that the construction was agreed upon
`by the parties. Ex. 3001, 10. Furthermore, there is no indication in the
`district court’s claim construction order that the court considered the
`language of claim 2, or the portions of the Specification we discuss above
`about the network and communications protocols being transmission means.
`Id.
`
`4. “means for . . .” (limitations 1.5 to 1.9)
`a) Introduction
`As we discussed above, we construe limitations 1.5 to 1.9 under 35
`U.S.C. § 112, ¶ 6. Supra Sec. III.C.2. For each of limitations 1.5 to 1.9, the
`parties agree that the recited function is the respective recitation following
`the words “means for” (except for limitation 1.5, for which Petitioner asserts
`the function is less than the entire recitation after “means for,” discussed
`below). Pet. 10–12; PO Resp. 10–14. As set forth below, for each of
`limitations 1.5 to 1.9, we determine that the recited function is the entire
`recitation of the respective limitation following the words “means for.”
`
`14
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`IPR2018-01079
`Patent 8,213,970 B2
`With regard to the functions specified in limitations 1.5–1.9,
`Petitioner contends that the corresponding structure is a computer configured
`to implement or perform the algorithm recited in the function. Pet. 10–12.
`As to limitations 1.5, 1.6, and 1.8, Patent Owner essentially agrees with
`Petitioner, except that Patent Owner asserts the structure is a PC or PDA/cell
`phone configured to implement or perform the algorithm. PO Resp. 10–14.
`For limitations 1.7 and 1.9, Patent Owner asserts the corresponding structure
`is a hardware display and hardware transmitter. Id. at 12–14.
`For reasons discussed below, infra Sec. II.C.4.a.1, we determine the
`corresponding structure in limitations 1.5, 1.6, and 1.8 is a PDA/cell phone,
`programmed to carry out an algorithm that performs the recited function.
`For limitations 1.7 and 1.9, we determine that PDA/cell phone hardware
`including a display, such as display 16, and a wireless receiver and/or
`transceiver, and equivalents thereof, corresponds to the receiving function.
`Infra Sec. II.C.4.2.
`
`(1) Limitations 1.5, 1.6, and 1.8
`Limitations 1.5, 1.6, and 1.8 are computer-implemented means-plus-
`function limitations because the disclosed structure is a special purpose
`computer programmed to perform a disclosed algorithm. WMS Gaming, Inc.
`v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) (explaining that
`for computer-implemented means-plus-function limitations, “the disclosed
`structure is not the general purpose computer, but rather the special purpose
`computer programmed to perform the disclosed algorithm”). The
`Specification indicates that PCs and PDA/cell phones are computing devices
`that include special software—i.e., the forced message alert software
`application program—programmed to perform the functions recited in
`limitations 1.5, 1.6, and 1.9. Ex. 1001, 3:41–43 (“Each PC described herein
`
`15
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`IPR2018-01079
`Patent 8,213,970 B2
`is like any other contemporary PC, except that it has the forced message
`alert software application program installed on it.”); see also id. at 3:29–31
`(“Each PDA/cell phone described herein . . . can function just as any other
`cell phone . . . [i]n addition . . . it has the forced message alert software
`application program.”), 4:27, 4:36 (disclosing that the PDA/cell phone
`includes a CPU).
`Because the disclosed structure is a special purpose computer, the
`Specification must disclose an algorithm for performing the claimed
`function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312
`(Fed. Cir. 2012).
`For the foregoing reasons, we determine that the corresponding
`structure for the respective functions recited in each of limitations 1.5, 1.6,
`and 1.8 is a PDA/cell phone programmed to carry out an algorithm. Below
`we identify the algorithm disclosed for performing the claimed functions.
`Infra Sec. III.C.4.a.1.a–c.
`(a) (limitation 1.5) “means for attaching a forced message alert software
`packet to a voice or text message creating a forced message alert that is
`transmitted by said sender PDA/cell phone to the recipient PDA/cell
`phone, said forced message alert software packet containing a list of
`possible required responses and requiring the forced message alert
`software on said recipient PDA/cell phone to transmit an automatic
`acknowledgement to the sender PDA/cell phone as soon as said forced
`message alert is received by the recipient PDA/cell phone”
`For limitation 1.5, Petitioner asserts that the specified function is
`“attach a forced message alert software packet to a voice or text message
`creating a forced message alert that is transmitted by a sender PDA/cell
`phone to a recipient PDA/cell phone.” Pet. 10 (citing Ex. 1001, 8:65–9:39
`(claim 1)). Without explanation, Petitioner omits the remainder of
`limitation 1.5, which recites “said forced message alert software packet
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`Patent 8,213,970 B2
`containing a list of possible required responses and requiring the forced
`message alert software on said recipient PDA/cell phone to transmit an
`automatic acknowledgement to the sender PDA/cell phone as soon as said
`forced message alert is received by the recipient PDA/cell phone.”
`Petitioner does not adequately explain, nor do we discern why, the
`remaining language recited in element 1.5 should not be construed as part of
`the specified function. Patent Owner asserts the recited function includes
`the entire recitation following “means for” in limitation 1.5. PO Resp. 10.
`We agree with Patent Owner, and determine the specified function includes
`the entire recitation following “means for” in limitation 1.5.
`For the structure corresponding to the specified function of
`limitation 1.5, Petitioner identifies the forced message alert software
`application program functionality described at Ex. 1001, 7:43–63 and
`Figure 3A. Pet. 10. Patent Owner asserts we should adopt “the algorithm
`disclosed . . . at 7:8–8:36; and equivalents thereof.” PO Resp. 11.
`We find that the disclosure identified by Petitioner describes the
`recited function because it discloses the steps of a process for sending a
`forced message alert, except that it does not expressly describe “attaching”
`the forced message alert software packet to a voice or text message.
`Ex. 1001, 7:43–63; Fig. 3A. However, it is implied that this step occurs
`because a user types a text or records a voice message, and a forced message
`alert is sent, id. at 7:43–63, and elsewhere the Specification explains that the
`software allows a user to create a forced message alert comprising a voice or
`text message and forced message alert software packet, id. at 2:9–13.
`The district court, and Patent Owner, also identify Ex. 1001, 7:8–42
`and 8:1–36 as disclosing the algorithm. PO Resp. 11; Ex. 3001, 15–18. We
`find the disclosure at Ex. 1001, 7:8–20 corresponds to the recited function
`
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`Patent 8,213,970 B2
`because it describes as part of the process that the forced message alert
`software packet contains a list of possible required responses (see, e.g.,
`limitation 1.5, “said forced message alert software packet containing a list of
`possible required responses”). We also find Ex. 1001, 8:25–30 corresponds
`to the recited function because it discloses transmitting an automatic
`acknowledgement receipt (see, e.g., limitation 1.5, “requiring the forced
`message alert software . . . to transmit an automatic acknowledgement
`receipt”).
`However, the district court and Patent Owner are over-inclusive in
`their citation to the ’970 patent disclosure. The district court and Patent
`Owner cite to continuous blocks of text that disclose not just the algorithm
`corresponding to the recited function, but also features not recited in the
`function. We do not incorporate into our construction features that do not
`perform the recited function. “Section 112 paragraph 6 does not ‘permit
`incorporation of structure from the written description beyond that necessary
`to perform the claimed function.’ Structural features that do not actually
`perform the recited function do not constitute corresponding structure and
`thus do not serve as claims limitations.” Asyst Techs, 268 F.3d at 1369–70
`(citations omitted).
`We find that the features disclosed at Ex. 1001, 7:21–42, 8:1–25 and
`8:31–36 are not part of the algorithm for performing the function recited in
`limitation 1.5. For example, Ex. 1001, 7:21–42 describes repeating a
`message at a defined rate until a user makes a selection from a required
`response list. The disclosure at Exhibit 1001, 8:1–25 and 8:31–36 describes
`features unrelated to the recited function including a sender PC or PDA/cell
`phone monitoring for manual responses, and a recipient PC or PDA/cell
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`IPR2018-01079
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`phone separating a forced message alert packet from a text or voice message.
`None of these features are part of the function specified in limitation 1.5.
`For the foregoing reasons, we determine that the corresponding
`structure is a PDA/cell phone programmed to carry out the algorithm
`disclosed at Ex. 1001, 2:11–13, 7:8–20, 7:43–63, 8:25–30, and Fig. 3A, and
`equivalents thereof.
`(b) (limitation 1.6) “means for requiring a required manual response from
`the response list by the recipient in order to clear recipient’s response
`list from recipient’s cell phone display”
`For the structure corresponding to the specified function of
`limitation 1.6, Petitioner identifies the forced message alert software
`application program functionality described at Ex. 1001, 8:39–46 and
`Figure 4. Pet. 11. Patent Owner asserts we should adopt “the algorithm
`disclosed . . . at 8:37–57; and equivalents thereof.” PO Resp. 12.
`We find that the disclosure identified by Petit
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