Trials@uspto.gov
`571-272-7822
`
`Paper 45
`Date: January 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`
`
`
`
`
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`Dismissing as Moot Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
`Paper 45
`Date: January 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`
`
`
`
`
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`Dismissing as Moot Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–14 and 16–181 of U.S. Patent No. 7,844,037 B2
`(Ex. 1001, “the ’037 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2
`(“Petition” or “Pet.”). Qualcomm Incorporated (“Patent Owner”) filed a
`Patent Owner Preliminary Response. Paper 10. We instituted an inter
`partes review of claims 1–14 and 16–18 on all grounds of unpatentability
`alleged in the Petition. Paper 11 (“Institution Decision” or “Inst. Dec.”).
`After institution of trial, Patent Owner filed a Response (Paper 23,
`“PO Resp.”), Petitioner filed a Reply (Paper 38, “Petitioner’s Reply” or “Pet.
`Reply”), and Patent Owner filed a Sur-reply (Paper 39, “PO Sur-reply”). In
`addition, Patent Owner filed a Contingent Motion to Amend (Paper 24,
`“Motion to Amend” or “Mot. Amend.”), Petitioner filed an Opposition to
`Patent Owner’s Contingent Motion to Amend (Paper 31, “Opp. Amend”),
`Patent Owner filed a Reply to Petitioner’s Opposition (Paper 38, “Reply
`Amend”), and Petitioner filed a Sur-Reply to Patent Owner’s Reply
`(Paper 41, “Sur-reply Amend”).
`Petitioner relies on the declaration testimony of Dr. Narayan
`Mandayam2 (Exs. 1003, 1018) and Patent Owner relies on the declaration
`testimony of Dr. Kevin Jeffay (Ex. 2004).
`
`
`1 The Petition also sought inter partes review of claims 19–25. See Inst.
`Dec. 6–7. However, because those claims were statutorily disclaimed by the
`Patent Owner, they are treated as if they were never part of the ’037 patent.
`Id.
`2 Due to a family emergency, Dr. Mandayam was unable to appear for a
`deposition regarding his Second Declaration (Ex. 1018). See Order
`Modifying Scheduling Order, Paper 33; Ex. 3002 (email from Petitioner).
`Pursuant to the agreement of the parties and our Order, Dr. Cooperstock
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`2
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`IPR2018-01279
`Patent 7,844,037 B2
`An oral hearing was held on November 20, 2019, and the record
`contains a transcript of this hearing. Paper 44 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has not shown by a preponderance of
`the evidence that claims 1–14 and 16–18 are unpatentable. Because we do
`not find any of the challenged claims unpatentable, we dismiss as moot
`Patent Owner’s Contingent Motion to Amend.
`BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies Apple, Inc. as the real party in interest. Pet. 63.
`Patent Owner identifies Qualcomm Incorporated as the real party in
`interest. Patent Owner’s Mandatory Notices, Paper 3, 2.
`B. Related Matters
`The parties identify the following dismissed patent litigation
`proceeding in which the ’037 patent was asserted: Qualcomm Inc. v. Apple
`Inc., Case No. 3:17-cv-02403 (S.D. Cal.). Pet. 63; Patent Owner’s
`Mandatory Notices, Paper 3, 2; Petitioner’s Updated Mandatory Notices,
`Paper 21, 1. Additionally, Patent Owner identifies a second request for inter
`partes review of the ’037 patent: Apple Inc. v. Qualcomm Inc., Case
`IPR2018–01280.3 Patent Owner’s Mandatory Notices, Paper 3, 2.
`
`
`adopted Dr. Mandayam’s Second Declaration and was made available for
`deposition. See Ex. 2025, 7:8–21, 9:8–17 (Cooperstock Dep.); Order
`Modifying Scheduling Order, Paper 33.
`3 We exercised our discretion to deny institution under 35 U.S.C. § 325(d).
`IPR2018-01280 Paper 11 (Decision Denying Institution); IPR2018-1280,
`Paper 13 (Decision Denying Request for Rehearing).
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`IPR2018-01279
`Patent 7,844,037 B2
`C. The ’037 Patent
`The ’037 patent is titled “Method and Device for Enabling Message
`Responses to Incoming Phone Calls.” Ex. 1001, code (54). According to
`the ’037 patent, the claimed invention enables “message replies to be made
`to incoming calls.” Id. at 1:64–65. “For example, rather than pick up a
`phone call or forward the phone call to voicemail, the user may simply
`generate a text (or other form of) message to the caller.” Id. at 1:67–2:3.
`Thus, when using the claimed invention,
`[r]ather than answer the call or perform some other action like
`forwarding the call to voicemail, . . . the recipient computing
`device 110 issues a message response 122 to the calling
`device 120. In one embodiment, the message response 122 is
`an alternative to the user of the recipient device 110 having to
`decline or not answer the incoming call 112.
`Id. at 3:56–63.
`As another alternative, in one implementation, the
`message creation data 222 is generated in response to a trigger
`from a user 202. The phone application 210, message response
`module 230, or some other component may prompt the user to
`message respond to a caller in response to receipt of call data
`202. The prompt may occur shortly after the incoming call 204
`is received, such as with or before the first “ring” generated on
`the computing device 200 for the incoming call. For example,
`the user may be able to elect message response as one option
`along with other options of answering or declining the
`incoming call 204.
`Ex. 1001, 5:24–34. Figure 4 of the ’037 patent (not reproduced) “illustrates
`a message for handling incoming calls with message replies, under an
`embodiment of the invention.” Id. at 1:53–54.
`D. Illustrative Claims
`Claim 1 is independent, is illustrative of the subject matter of the
`challenged claims, and reads as follows:
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`IPR2018-01279
`Patent 7,844,037 B2
`1.
`A method for operating a first computing device,
`the method being implemented by one or more processors of
`the computing device and comprising:
`receiving, from a second computing device, an incoming
`call to initiate a voice-exchange session;
`in response to receiving the incoming call, determining a
`message identifier associated with the second computing
`device, wherein the message identifier is determined based at
`least in part on data provided with the incoming call;
`in response to receiving the incoming call, prompting a
`user of the first computing device to enter user input that
`instructs the first computing device to handle the incoming call
`by composing, while not answering the incoming call, a
`message to a user of the second computing device; and
`responsive to receiving the incoming call and the user
`entering the user input, automatically addressing the message to
`the second computing device using the message identifier
`determined from the incoming call.
`Ex. 1001, 9:63–10:15
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–14 and 16–20 would have been
`unpatentable on the following grounds:
`Claims Challenged
`35 U.S.C. §
`1–8, 12–14, 16–18
`103(a)
`7–11
`103(a)
`
`References
`Mäkelä,4 Moran5
`Mäkelä, Moran, Tsampalis6
`
`
`
`
`4 US 6,301,338 B1, issued Oct. 9, 2001 (Ex. 1004).
`5 US 2003/0104827 A1, published June 5, 2003 (Ex. 1006).
`6 US 2004/0203956 A1, published Oct. 14, 2004 (Ex. 1007).
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`Patent 7,844,037 B2
`
`ANALYSIS
`
`A. Legal Standard
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
`Supreme Court set out a framework for assessing obviousness under
`35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of
`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) “secondary considerations” of non-obviousness such as “commercial
`success, long-felt but unsolved needs, failure of others, etc.” Id. at 17–18.
`“While the sequence of these questions might be reordered in any particular
`case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the Federal
`Circuit has “repeatedly emphasized that an obviousness inquiry requires
`examination of all four Graham factors and that an obviousness
`determination can be made only after consideration of each factor.” Nike,
`Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016), overruled on other
`grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en
`banc). We note that, with respect to the fourth Graham factor, the parties
`have not presented argument or evidence directed to secondary
`considerations of nonobviousness. The analysis below addresses the first
`three Graham factors.
`B. Level of Ordinary Skill in the Art
`Factors pertinent to a determination of the level of ordinary skill in the
`art include (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
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`Patent 7,844,037 B2
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case. Id. Moreover, these factors are not exhaustive but are
`merely a guide to determining the level of ordinary skill in the art. Daiichi
`Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`Petitioner argues that a person having ordinary skill in the art would
`have had (1) “a Master of Science Degree in an academic area emphasizing
`electrical engineering, computer engineering, computer science, or an
`equivalent field (or a similar technical Master’s Degree, or higher degree)
`with a concentration in wireless communication and networking systems” or
`(2) “a Bachelor’s Degree (or higher degree) in an academic area
`emphasizing electrical engineering, computer engineering, or computer
`science and having two or more years of experience in wireless
`communication and networking systems.” Pet. 4 (citing Ex. 1003 ¶ 13).
`Additionally, Petitioner argues that “[a]dditional education in a relevant
`field, such as computer engineering, or electrical engineering, or industry
`experience may compensate for a deficit in one of the other aspects of the
`requirements stated above.” Id. (citing Ex. 1003 ¶ 13).
`In our Institution Decision, we adopted Petitioner’s formulation. Inst.
`Dec. 17. Patent Owner does not challenge Petitioner’s formulation. See PO
`Resp. 12–13; Ex. 2004 ¶ 57 (Jeffay Decl.) (“[F]or the purposes of this
`declaration, I have applied Petitioner’s proposed level of skill.”).
`Accordingly, we adopt Petitioner’s proposed level of ordinary skill,
`except that we delete the qualifier “or more” to eliminate vagueness as to the
`amount of practical experience. The qualifier expands the range indefinitely
`without an upper bound, and thus precludes a meaningful indication of the
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`Patent 7,844,037 B2
`level of ordinary skill in the art. Therefore, a person having ordinary skill in
`the art would have had either (1) a Master of Science Degree in an academic
`area emphasizing electrical engineering, computer engineering, computer
`science, or an equivalent field (or a similar technical Master’s Degree, or
`higher degree) with a concentration in wireless communication and
`networking systems or (2) a Bachelor’s Degree (or higher degree) in an
`academic area emphasizing electrical engineering, computer engineering, or
`computer science and having two years of experience in wireless
`communication and networking systems. Moreover, additional education in
`a relevant field, such as computer engineering, or electrical engineering, or
`industry experience may compensate for a deficit in one of the other aspects
`of the requirements stated above.
`C. Claim Construction
`In this inter partes review, we construe claim terms in this unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2018).7 “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). In addition, the Board may not “construe
`claims during [an inter partes review] so broadly that its constructions are
`
`
`7 The Board applies the Phillips claim construction standard to petitions
`filed on or after November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(codified at 37 C.F.R. § 42.100(b) (2019)). Because Petitioner filed its
`petition before November 13, 2018, we apply the broadest reasonable
`interpretation standard.
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`unreasonable under general claim construction principles.” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (emphasis
`omitted), overruled on other grounds by Aqua Prods., 872 F.3d 1290. An
`inventor may provide a meaning for a term that is different from its ordinary
`meaning by defining the term in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Additionally, “we need only construe those claim limitations ‘that are
`in controversy, and only to the extent necessary to resolve the controversy.’”
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner proposes claim constructions for six terms: “voice-
`exchange session,” “instant messages,” “programmatically,”
`“automatically,” “one or more communication components,” and “one or
`more wireless communication ports.” Pet. 5–9. Patent Owner does not
`contest Petitioner’s proposed constructions but proposes its own
`constructions of “prompting” and “composing.” PO Resp. 14–36.
`Based on the arguments presented during the trial regarding the
`patentability of the claims, we need only construe the term “composing.”
`1. Patent Owner’s Arguments
`According to Patent Owner, “[t]he plain and ordinary meaning of the
`term ‘composing [a message]’ is ‘manually providing content for [a
`message],’” and it is different than “manually providing message content
`prior to receiving the incoming call (i.e., a precomposed message).” PO
`Resp. 26–27 (citing Ex. 2004 ¶ 73; Ex. 2023). Patent Owner argues
`“Petitioner’s expert tacitly admitted that composing a message is different
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`Patent 7,844,037 B2
`from selecting a precomposed message.” Id. at 27; see also Ex. 2006,
`126:22–127:5, 129:13–130:9 (Mandayam Dep.).
`Patent Owner further argues that the ’037 patent “makes it clear that
`composing a message is different from inserting or selecting a pre-
`formulated or precomposed message content.” PO Resp. 28 (citing Ex. 2004
`¶ 75); see also id. at 28–29 (citing Ex. 1001, 4:1–3, 6:65–7:11; Ex. 2004
`¶ 75); PO Sur-reply 13–14. Patent Owner also draws a distinction between
`the language in claim 1 and the language recited in claims 15, 19, and 22.
`PO Resp. 29–30 (citing Ex. 2004 ¶¶ 76, 77; Ex. 1001, 11:6–8, 11:17–34).
`Patent Owner further argues that its proposed claim construction is
`consistent with the prosecution history of U.S. Patent No. 8,737,578 (“the
`’578 patent”), which is a continuation of U.S. Patent No. 8,311,189, which
`in turn is a continuation of the ’037 patent. See PO Resp. 31–32. According
`to Patent Owner, “each of the independent claims of the ’578 Patent requires
`‘enabling the user to select a pre-formulated or precomposed message
`content for the message or compose a message content for the message.’”
`Id. at 32 (quoting Ex. 2007, 10:11–12:25); see also PO Sur-reply 14. Patent
`Owner further argues that the Examiner relied on the difference between
`pre-formulated message content and composing a message when allowing
`the claims. PO Resp. 32 (citing Ex. 2008). According to Patent Owner, the
`prosecution history of the related patent “reinforces the understanding that
`‘composing’ does not mean rote insertion of pre-formulated or precomposed
`message content.” Id. at 31 (citations omitted).
`Patent Owner also relies on the prosecution history of the ’037 patent
`as further support for its proposed construction. See PO Resp. 32–36.
`Patent Owner further argues that “Petitioner’s rebuttal . . . fails to take
`into account the precise nature of the action that the user input instructs the
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`Patent 7,844,037 B2
`computer to perform—i.e., the claim language only requires the user input to
`instruct the computer to handle the call.” PO Sur-reply 12–13.
`2. Petitioner’s Arguments
`Petitioner argues that Patent Owner’s proposed construction is
`“unjustified” and “inconsistent with the plain language of claim 1.” Pet.
`Reply. 11; see also id. at 11–13. Specifically, Petitioner argues that the
`language recited in claim 1 “clearly recites that the user’s input ‘instructs’
`the first computing device to perform an action, namely to handle the
`incoming call by composing . . . a message.” Id. at 11 (citing Ex. 1001,
`cl. 1; Ex. 1018 ¶ 50); see also id. at 11–12 (“Notably, the claim does not
`recite that the user composes the message, or that the first computing device
`enables the user to compose the message.” (citing Ex. 1001, cl. 1; Ex. 1018
`¶ 50)). According to Petitioner, “[t]he plain language of claim 1 simply
`cannot be interpreted to require that the user manually provide content for
`the message unless it is reframed to switch the actor that ‘handle[s] the
`incoming call by composing’ from the first computing device to the user.”
`Id. at 12 (citing Ex. 1001, cl. 1). Although Petitioner disputes the inclusion
`of the term manually, Petitioner does not object to the remaining portion of
`Patent Owner’s proposed construction. See Tr. 11–12.
`3. Our Analysis
`We agree with Patent Owner that “composing . . . a message” as
`recited in claim 1 means generating a message and does not encompass
`using pre-composed messages. That construction is consistent with the
`language recited in the claims, the ’037 patent, and the use of “composing”
`in a related patent.
`We begin with the words of claim 1. Claim 1 recites “in response to
`receiving an incoming call, prompting a user of the first computing device to
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`Patent 7,844,037 B2
`enter user input that instructs the first computing device to handle the
`incoming call by composing, while not answering the incoming call, a
`message to a user of the second computing device.” Ex. 1001, 10:7–11.
`Based on the ordinary meaning of the claim language, the claim requires
`prompting a user to enter user input and that the entered user input “instructs
`the first computing device to handle the incoming call by composing . . . a
`message.” See id. That is, it is the user input—which itself is in response to
`an incoming call—which causes the composing to take place. Thus, the
`language of the claim requires that the composing takes place after the
`incoming call is received and the user input is entered. Therefore, the
`language of the claim precludes using content composed prior to the call and
`user input, i.e., a precomposed message. See Ex. 2004 ¶ 73 (Jeffay Decl.).
`This construction is also consistent with the written description of the
`’037 patent. The ’037 patent describes two different ways of generating
`messages. First, the ’037 patent describes how a device may be configured
`to respond to all incoming calls with a precomposed message, such as “on
`vacation.” Ex. 1001, 5:18–23. However, claim 1 was amended during
`prosecution to exclude automatically responding with a precomposed
`message, thus excluding that embodiment from the scope of claim 1. See
`Ex. 1002, 157 (amendment to claim 1), 165–68 (prosecution history of the
`’037 patent) (distinguishing prior art references which automatically
`responded with a precomposed message); see also Ex. 2004 ¶ 70 (Jeffay
`Decl.) (“Accordingly, the Applicant amended the claims to distinguish over
`Brown and clearly disclaimed claim scope corresponding to the
`embodiments in which an incoming call is automatically responded to with a
`message.” (citing Ex. 1002, 166–68)).
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`In the second embodiment, a responsive message is created in
`response to a trigger—user input—from the user. See Ex. 1001, 5:24–54,
`7:52–8:2, Fig. 4 (step 470 (“address message body”) is after steps 410
`(“receive incoming call”) and 435 (“message response?”)). Because the
`message is generated in response to the user input, it does not exist prior to
`user input being entered. That is, a precomposed message is not being used.
`This construction is also consistent with the use of compose in a
`related patent. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335,
`1342-43 (Fed. Cir. 2015) (Statements made in the prosecution of related
`patents “are legally relevant to the meaning one of skill in the art would
`attribute to the identical term in the [challenged] patent.”); NTP, Inc. v.
`Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005), abrogation
`on other grounds recognized by Zontek Corp. v. United States, 672 F.3d
`1309, 1323 (Fed. Cir. 2012) (Where “patents all derive from the same parent
`application and share many common terms, we must interpret the claims
`consistently across all asserted patents.” (citing Microsoft Corp. v. Multi–
`Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004))).
`In a continuation of the ’037 patent, the independent claims each
`recite “in response to receiving the user input, enabling the user to select a
`pre-formulated message content for the message or compose a message
`content for the message.” Ex. 2007, 10:25–27, 10:64–67, 12:16–18 (the
`’578 patent) (emphasis added). By indicating that a user can select either
`pre-formulated message content or compose a message, the related
`’578 patent makes a clear distinction between composing a message and
`using a precomposed message. See Ex. 2004 ¶ 78 (Jaffey Decl.) (“As such,
`having considered the prosecution history of the patent family of the ’037
`Patent, a POSITA would have understood the Applicant to have interpreted
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`‘composing’ a message to require manually providing the content for the
`message (and not selecting a pre-formulated message content).”).
`The parties also dispute whether the composing is done manually by
`the user (Patent Owner’s position) or by the first computing device
`(Petitioner’s position). Compare PO Resp. 26–27, with Pet. Reply 11–13.
`However, because we construe claims “only to the extent necessary to
`resolve the controversy,” we do not resolve that dispute. See Nidec, 868
`F.3d at 1017 (quoting Vivid, 200 F.3d at 803).
`Accordingly, “composing . . . a message” means generating a message
`and does not encompass using precomposed messages.
`D. Obviousness over (1) Mäkelä in view of Moran or (2) Mäkelä and
`Moran in View of Tsampalis
`Petitioner argues the subject matter of claims 1–8, 12–14, and 16–18
`would have been obvious to a person of ordinary skill in the art at the time
`of the invention in light of the teachings of Mäkelä and Moran. Petitioner
`further argues claims 7–11 would have been obvious to a person of ordinary
`skill in the art at the time of the invention in light of the teachings of Mäkelä,
`Moran, and Tsampalis. For the reasons discussed below, Petitioner has not
`shown by a preponderance of the evidence that claims 1–14 and 16–18 are
`unpatentable.
` Summary of Mäkelä
`1.
`Mäkelä is titled “Activation of a Telephone’s Own Call Answering
`Equipment According to the Number of the Calling Party” and is directed
`“to message services between telephone devices and in particular to using
`the number of the calling party for transmitting a message in a situation that
`the receiving party is busy.” Ex. 1004, code (54), 1:1–10. Mäkelä
`“provide[s] a method and an apparatus, by means of which the telephone
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`answering function can be adapted to operate in different ways according to
`the number of the calling party and the use of which for the mentioned
`purpose is simple and flexible.” Id. at 3:10–14. One such device is
`a communication device characterized in that it comprises
`means for identifying the caller on the basis of an identification
`information included within the incoming call and for sending,
`according to a selection made by the user, a reply in response to
`the call, said reply being one of the following: a voice message,
`an e-mail message, a facsimile, an SMS message in the form of
`a character string.
`Id. at 3:39–46.
`2. Summary of Moran
`Moran is titled “Rerouting/Reformat[t]ing Wireless Messages for
`Cross Connectivity Between Service Providers” and is directed to “a method
`and system for rerouting and reformatting messages so that users can send
`messages to other users that use different wireless service providers.”
`Ex. 1006, code (54), ¶ 2. Specifically, Moran is directed “to provid[ing] a
`scheme that would provide a much higher degree of cross-compatibility for
`SMS messaging between users having different service providers [and
`which] may be implemented without requiring changes to the existing
`wireless services infrastructure.” Id. ¶ 8.
`3. Summary of Tsampalis
`Tsampalis is titled “Method and Apparatus for Providing Wireless
`Messaging” and is directed to a “mobile wireless communication device
`messaging format capabilities determinator circuitry” which can be used “to
`obtain second mobile wireless communication device messaging format
`capabilities information (110) of a second mobile wireless communication
`device (100)” along with circuity “operable to send a message (112) in a
`message format compatible with at least one of the formats identified in the
`
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`IPR2018-01279
`Patent 7,844,037 B2
`second mobile wireless communication device messaging format capabilities
`information (110).” Ex. 1007, codes (54), (57).
`4. Analysis of “Composing . . . a Message (Claim 1)
`Claim 1 recites “in response to receiving the incoming call, prompting
`a user of the first computing device to enter user input that instructs the first
`computing device to handle the incoming call by composing, while not
`answering the incoming call, a message to a user of the second computing
`device.” Ex. 1001, 10:6–11. Although the parties dispute various portions
`of this limitation, we focus on “composing . . . a message,” which is a
`dispositive issue.
`a) The Parties’ Arguments
`Petitioner argues Mäkelä teaches the prompting step, including
`“composing . . . a message.” Pet. 16–17. Specifically, Petitioner argues
`Mäkelä teaches that “in response to the incoming call, the communication
`device . . . sends a reply according to a selection made by the user[.]” Id.
`at 16 (quoting Ex. 1004:3:30–34). Petitioner further argues Mäkelä teaches
`transmitting an SMS message either automatically or in response to a user
`command and this can be performed either immediately or shortly after the
`call has come so that the user can select the appropriate function after seeing
`the telephone number of the calling party. Id. (citing Ex. 1004, 4:3–8;
`Ex. 1003 ¶ 62). Petitioner further argues Mäkelä teaches that the user is
`asked whether to send an SMS message in circumstances where the
`incoming call is not answered. Id. at 16–17 (citing Ex. 1003 ¶ 63; Ex. 1004,
`3:64–4:3, 5:32–33, 10:16–20 (claim 4), 12:4–22 (claim 27)).
`Petitioner also argues that Patent Owner’s “argument cannot be
`sustained because it is based on the unsustainable construction of
`‘composing.’” Pet. Reply 14.
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`IPR2018-01279
`Patent 7,844,037 B2
`During the Hearing, Petitioner further argued that Mäkelä’s claims 27
`and 28 show that the user composes the message as part of generating a
`response. Tr. 21, 56–59.
`Patent Owner argues Mäkelä does not teach or suggest composing a
`message in response to receiving the incoming call; instead, Patent Owner
`argues that “[Mäkelä] is directed exclusively to inserting pre-formulated,
`stored content for the message.” PO Resp. 43(citing Ex. 2004 ¶ 96); see
`also id. 41–51 (citations omitted). Patent Owner further argues that
`Dr. Mandayam “repeatedly admitted that [Mäkelä] only discloses the ability
`for the user receiving an incoming call to respond to the call by selecting a
`precomposed message that was created and stored in the device at some
`point prior to the incoming call.” Id. at 41–42; see also id. at 42–43 (citing
`Ex. 2006, 112:18–113:4, 128:8–130:9, 133:11–20).
`b) Our Analysis
`As a preliminary matter, we do not consider Petitioner’s arguments
`raised during the Hearing regarding the teaching of Mäkelä’s claim 28.
`Petitioner conceded that it did not address claim 28 in either the Petition or
`Petitioner’s Reply. Tr. 58; see also Pet. 16–17 (setting forth arguments on
`the prompting limitation); Pet. Reply 14 (relying on arguments set forth in
`the Petition). However, Petitioner argues that we should consider the
`arguments Petitioner made in Petitioner’s Opposition to the Contingent
`Motion to Amend. Tr. 58–59.
`Our rules require the Petition to include “[a] full statement of the
`reasons for the relief requested, including a detailed explanation of the
`significance of the evidence including material facts, and the governing law,
`rules, and precedent.” 37 C.F.R. § 42.22(a)(2) (2017). Additionally, the
`Petition “must identify . . . [h]ow the construed claim is unpatentable under
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`IPR2018-01279
`Patent 7,844,037 B2
`the statutory grounds [on which the petitioner challenges the claims], and
`must specify where each element of the claim is found in the prior art
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4)
`(2017). Our rules further provide for a petitioner to file a reply to respond to
`arguments made in the patent owner’s response. See 37 C.F.R. § 42.23(b)
`(2019). Petitioner choose neither option to set forth its arguments regarding
`Mäkelä’s claim 28.
`We decline Petitioner’s invitation to consider arguments presented in
`papers outside of the Petition and Petitioner’s Reply. We treat Petitioner’s
`request that we consider arguments only presented in the Opposition to the
`Motion to Amend as a request for incorporation by reference. However, our
`rules prohibit “incorporat[ion] by reference from one document into another
`document.” 37 C.F.R. § 42.6(a)(3) (2019); see also DeSilva v. DiLeonardi,
`181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation “by reference amounts
`to a self-help increase in the length of the [ ] brief[,]” and “is a pointless
`imposition on the court’s time. A brief must make all arguments accessible
`to the judges, rather than ask them to play archeologist with the record.”)).
`Petitioner has not persuasively argued why we should not apply Rule
`42.6(a)(3) in these circumstances. See 37 C.F.R. § 42.5(b) (2019) (“The
`Board may waive or suspend a requirement of parts 1, 41, and 42 and may
`place conditions on the waiver or suspension.”). Although Petitioner may
`have intended to make the argument in both Petitioner’s Reply and the
`Opposition to the Motion to Amend (Tr. 58–59), it did not do so.8
`
`
`8 We note that the Petitioner’s Reply was well under the word count limit.
`See Pet. Reply Certification Under 37 CFR § 42.24. Petitioner has offered
`no explanation as to why it could not have included the argument in its
`Reply.
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`Patent 7,844,037 B2
`And, with regard to argum
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