Trials@uspto.gov Paper 5
`571-272-7822 Date: November 19, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SQUARE, INC.,
`Petitioner,
`
`v.
`
`SENDSIG, LLC,
`Patent Owner.
`_____________
`
`IPR2020-00930
`Patent 6,564,249 B2
`____________
`
`
`
`
`
`
`
`
`
`Before DAVID C. McKONE, JOHN P. PINKERTON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`PINKERTON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`Patent 6,564,249 B2
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`I. INTRODUCTION
`Square, Inc. (“Petitioner”) filed a petition for inter partes review of
`claims 1, 2, 4, 5, 11, 12, 14, and 15 of U.S. Patent No. 6,564,249 B2
`(Ex. 1001, “the ’249 patent”). Paper 2 (“Pet.”). SendSig, LLC (“Patent
`Owner”) did not file a preliminary response. On October 27, 2020, Patent
`Owner filed Patent Owner’s Mandatory Notices. Paper 4 (“PO Notices”).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`(2018); see 37 C.F.R. § 42.108. Upon consideration of the Petition, and the
`associated evidence, we conclude that the information presented shows there
`is a reasonable likelihood Petitioner would prevail in establishing the
`unpatentability of at least one challenged claim of the ’249 patent.
`
`A. Related Matters
`Petitioner identifies SendSig, LLC v. Square, Inc., No. 1:19-cv-03733-
`JPB (N.D. Ga.) (“the district court action”), in which Patent Owner asserted
`the ’249 patent, as a matter that may affect, or be affected by, a decision in
`this proceeding. Pet. 1; see 37 C.F.R. § 42.8(b)(2). Patent Owner states that
`the district court action “has been dismissed without prejudice” and “[t]here
`are no other judicial or administrative matters that would affect, or be
`affected by, a decision in this proceeding.” PO Notices 1.
`
`B. The ’249 Patent
`The ’249 patent is titled “Method and System for Creating and
`Sending Handwritten or Handdrawn Messages.” Ex. 1001, [54]. The ’249
`patent generally describes “[a] real-time electronic messaging system, and
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`related method” that “allow[s] a sender to input [and send] a handwritten or
`handdrawn message.” Ex. 1001, Abstract. Figure 1A of the ’249 patent is
`reproduced below.
`
`
`
`
`Figure 1A of the ’249 patent is a diagram illustrating the connection
`of client computers 110 and 111 with pen devices to email server computer
`120 on the Internet. Id. at 3:6–9. As shown in Figure 1A, a user creates a
`handwritten or handdrawn image on a pen device connected to first client
`computer 110, and the message is sent via the Internet to server computer
`120. Id. at 3:40–45. Server computer 120 then redirects the message to
`second client computer 111, where the message is displayed on the computer
`monitor or on the connected pen device. See id. at 4:46–49.
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`The ’249 patent describes six different “versions” or embodiments for
`enabling a handwriting messaging system, including two “real time”
`versions. The real time versions are Handwriting Java Client and Real Time
`ServerVersion (Fig. 4B); and Handwriting Client and Wireless Real Time
`Server Version (modified Fig. 6). Id. at 8:22–9:32; 10:55–12:35. Figure 4B
`of the ’249 patent is reproduced below.
`
`
`Figure 4B is a schematic illustration depicting client computer 410 (on
`the left) and client computer 430 (on the right), each of which is connected
`to server computer 420 (in the middle). Client computers 410 (sender) and
`430 (recipient) each include Real Time Handwriting Java Client 410a that
`operates as a Java applet on the client computers for communicating with
`Real Time Java Server component 420a of server computer 420. Id. at 8:23–
`29. The ’249 patent explains that Java applet 410a provides a drawing
`editor/viewer to compose and view handwritten messages. Id. at 8:27–28.
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`The ’249 patent also explains that client computer 410 includes a
`handwriting input device, which can be an ordinary mouse, a touchscreen, or
`a stylus pad. Id. at 4:20–32. Client component 410a of client computer 410
`is connected to the input device, captures the handwritten information as a
`graphical image in a data capture area or graphical image viewing area, and
`converts it into an appropriate format for digital transmission. Id. at 2:26–
`32, 10:50–52; Fig. 7A. Receiving Handwriting Java Client 410a on client
`computer 430 is notified when an email message for that user has been sent
`to Real Time Java Server 420 and retrieves the email message from server
`420. Id. at 8:29–32. According to the ’249 patent, “[i]n this way,
`communication can take place using the Hand-writing Java Client in near
`real-time.” Id. at 8:32–34. The ’249 patent further discloses that “the
`handwriting client allows the user to see other users that are currently on-
`line and to initiate a private, real time communication session with an on-
`line user.” Id. at 11:23–26.
`
`C. Illustrative Claim
`Among the challenged claims, claims 1 and 11 are independent.
`Claim 1 is illustrative of the subject matter of the challenged claims and
`provides as follows (with paragraph notations added consistent with those
`used by Petitioner):
`1.
`A real-time electronic messaging system comprising:
`(a) a server component operable on a server computer on
`a network with a real-time messaging server for receiving an
`electronic message sent from a sender and sending it to a
`recipient to whom it is addressed,
`(b) (i) a remote client device for the sender connectable
`to the server computer through an online data connection to the
`network, and (ii) a client component operable on the remote
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`client device for setting up a graphical data capture area in a
`visual interface of the remote client device, (iii) said client
`component including a graphical input device that is
`operatively coupled to the graphical data capture area for
`allowing the user to enter handwritten or handdrawn input
`through the graphical input device, and for capturing the
`handwritten or handdrawn input as graphical data and (iv)
`sending it as an electronic message to the server component via
`the network for sending to the recipient addressed, and
` (c) at least another remote client device for the recipient
`connectable to the server computer through an online data
`connection to the network, having a utility for receiving the
`electronic message sent to the recipient by the server
`component and viewing it as a handwritten or handdrawn
`message.
`Id. at 15:59–17:6.
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 2, 4, 5, 11, 12, 14, and 15 of the
`’249 patent are unpatentable based on the following grounds (Pet. 2–3):
`
`35 U.S.C. §
`Claims Challenged
`1, 2, 4, 5, 11, 12, 14, 15 103(a)
`1, 4, 5, 11, 14, 15
`103(a)
`
`References
`Busey,1 Blakeslee2
`Szymansky,3 Busey
`
`In its analysis, Petitioner relies on the declaration testimony of
`
`Narayan B. Mandayam, Ph.D. (Ex. 1002). See Pet. 22–79.
`
`
`1 U.S. Patent No. 5,764,916, filed Sept. 27, 1996, issued June 9, 1998 (Ex.
`1008).
`2 WO 1997/023992, filed Dec. 19, 1996, published July 3, 1997 (Ex. 1007).
`3 U.S. 2002/0099788 A1, filed June 28, 1999, published July 25, 2002 (Ex.
`1009).
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`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review based on a petition filed on or after
`November 13, 2018, we apply the same claim construction standard that
`would be used in a civil action under 35 U.S.C. § 282(b), following the
`standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc). 37 C.F.R. § 42.100(b) (2019); 83 Fed. Reg. 51,340,
`51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms
`are generally given their ordinary and customary meaning, as would be
`understood by a person of ordinary skill in the art, at the time of the
`invention and in the context of the entire patent disclosure. Phillips, 415
`F.3d at 1312–13. “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17).
`Petitioner states that in the parties’ briefing on Petitioner’s motion to
`dismiss in the district court action, the parties disagreed on whether the
`claims include all messaging sent to recipient’s personal email account,
`regardless of whether the sender and receiver are connected to the same real
`time server. Pet. 9 (citing Ex. 1016, 24; Ex. 2017 22). Petitioner, however,
`does not propose specific constructions for any term or phrase of the
`challenged claims. See id. at 8–13. We determine that no claim terms
`require express construction to determine whether to institute inter partes
`review.
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`B. Level of Ordinary Skill
`Petitioner states that the technical field of the ’249 patent is “computer
`software and hardware with applications for device-to-device messaging.”
`Pet. 21. Relying on the testimony of its declarant, Dr. Mandayam, Petitioner
`asserts the following:
` A person of ordinary skill in the art (POSITA) at the time of
`the earliest claimed effective filing date of the ’249 Patent
`(October 13, 1999)4 would have had 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 or higher degree) with a
`concentration in mobile computing and user interface design.
`Alternatively, a POSITA would have had a Bachelor’s Degree
`(or higher degree) in an academic area emphasizing electrical
`engineering, or computer engineering and having two or more
`years of experience in mobile computing and user interface
`design. Additional education in a relevant field, such as
`computer engineering, or electrical engineering, or industry
`experience may compensate for a deficit in any of the
`requirements stated above.
`Pet. 21–22 (citing Ex. 1002 ¶ 36).
`
`
`4 The ’249 patent issued from application serial no. 09/978,472, filed on
`October 15, 2001 (Ex. 1003), which is a continuation-in-part-application of
`serial no. 09/687,351, filed on October 11, 2000 (Ex. 1005), which claims
`priority to provisional application serial no. 60/159,636 (Ex. 1006, “the ’636
`provisional”), filed on October 13, 1999. Ex. 1001, (21), (63). Petitioner
`contends the ’249 patent is not entitled to claim priority to the filing date of
`the ’636 provisional. See Pet. 13–20. We do not address that issue,
`however, because as Petitioner argues, Busey and Blakeslee are prior art
`under 35 U.S.C. § 102(b) as having been filed or published more than one
`year before October 13, 1999, respectively, and Szymansky is prior art under
`35 U.S.C. § 102(e) as it was filed on June 28, 1999, prior to the filing date of
`the ’636 provisional. See Pet. 22, 54; Ex. 1007, (43); Ex. 1008, (22); Ex.
`1009, (22).
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`As stated, Patent Owner did not file a preliminary response and,
`therefore, has not taken a position on the level of ordinary skill in the art.
`We determine, on the current record, that the level of ordinary skill proposed
`by Petitioner is consistent with the challenged claims of the ’249 patent and
`the asserted prior art, and we, therefore, adopt that level for purposes of this
`decision.
`
`C. Asserted Obviousness Over Busey and Blakeslee
`Petitioner contends that claims 1, 2, 4, 5, 11, 12, 14, and 15 of the
`’249 patent are obvious under 35 U.S.C. § 103(a) in view of Busey in
`combination with Blakeslee and the knowledge of a person of skill in the art.
`Pet. 2, 21–52. Relying in part on the testimony of Dr. Mandayam, Petitioner
`explains how the references allegedly teach or suggest the claim limitations
`and provides reasoning for combining the teachings of the references. Id. at
`33–52.
`
`1. Overview of Busey
`Busey is a U.S. patent titled “Method and Apparatus for Real Time
`Communication over a Computer Network.” Ex. 1008, [54]. Busey
`discloses “real-time conferencing across the Internet.” Id. at 3:12–14; see
`also id. at 2:43–53. Busey explains that the process begins with a user
`launching a chat session on his or her computer “by running an application
`called a real time markup (‘RTM’) chat client.” Id. 3:14–17. The computer
`operating system causes a two-way TCP/IP connection to be established
`between the client computer and a host computer, while the RTM chat client
`“causes a real time full duplex connection to be established between the
`RTM chat client and a real time server on the host.” Id. at 3:17–22. Busey
`further explains that “[o]ther users join the chat session by establishing
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`TCP/IP connections and launching their own RTM chat clients.” Id. at
`3:22–24.
`Figure 3 of Busey is reproduced below.
`
`
`Figure 3 is a schematic diagram of how a hyperlink functions during a
`real time network chat. Id. at 3:6–8. Figure 3 shows client device 330
`(centered at the top) and client device 310 (centered at the bottom), both of
`which are connected to real time server 324 in host 320 (located between
`devices 330 and 310, and offset to the right) via RTM chat client 334 (in
`device 330) and RTM chat client 314 (in device 310). Id. at 5:40–53. Busey
`explains that the two way arrow (labeled A) between RTM chat client 314 in
`client 310 and real time server 324 in host 320 represents a bi-directional
`TCP/IP-real time protocol communications channel. Id. at 5:40–43.
`Similarly, Busey explains that two way arrow (labeled B) between RTM
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`chat client 334 in client 330 and real time server 324 in host 320 represents a
`bi-directional TCP/IP-real time protocol communications channel. Id. at
`5:43–46. Busey further describes how both clients are connected to the real-
`time server: “RTM chat client 314 (e.g., Sarah) creates a message that
`includes an embedded hyperlink, and sends that message through the real-
`time server 324 (action ‘A’) to the RTM chat client 334 (e.g., Sam) (action
`‘B’).” Id. at 5:54–57). Busey also states “that client 330 (e.g., Sam) then
`causes his Web browser 332 to access the URL associated with the
`hyperlink embedded in the chat message.” Id. 5:61–63.
`
`2. Overview of Blakeslee
`Blakeslee is PCT Publication No. WO 1997/023992 titled
`“Transferring Graphical Messages Between Mobile Telephones.” Ex. 1007,
`(54). Blakeslee relates generally to transmitting handwritten or handdrawn
`messages using then-existing mobile device messaging technology. Id. at
`1:1–4; 2:23–25; 12:36–13:1. Blakeslee discloses that handwritten messages
`are entered onto the touch-sensitive display of a sending client device, and
`the messages are converted to “image data,” which are then sent via a server
`to a receiving device, which is likewise equipped with a touch-sensitive
`display. Id. at (57), 14:5–16.
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`Figure 2 of Blakeslee is reproduced below.
`
`
`
`Figure 2 of Blakeslee shows pocket-sized mobile telephone device 10
`with its touch-sensitive display screen 12 as it appears for telephone voice
`calls and for incoming and outgoing handwritten graphical images. Id. at
`11:24–28. Screen display 12C shows an incoming handwritten message as
`received from another mobile device 10 and displayed on screen 12. Id. at
`13:1–3. Screen display 12D shows an outgoing handwritten message
`entered on screen 12 and ready to be sent to another mobile device 10. Id. at
`13:3–7.
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`Figure 4 of Blakeslee is reproduced below.
`
`
`
`
`
`Figure 4 shows the overall architecture of Blakelee’s communication
`system. Id. at 13:26–27. Figure 4 depicts mobile telephones (10 (MS-A), 10
`(MS-B)), which are connectable via digital cellular radio (GSM) network 40,
`and store and forward unit SF (“SF unit”) provided with network 40. Id. at
`(57), 13:26–14:3. Blakeslee explains that, when user of device 10 (MS-A)
`enters a handwritten graphical image destined for device 10 (MS-B), the
`image is converted into an image data message, which is then forwarded to
`network 40, and routed to SF unit. Id. at 14:7–25. Blakeslee also explains
`that the image message is stored in SF unit, and when SF unit is connected
`to destination mobile device 10 (MS-B), the image message is transmitted
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`from SF unit to mobile device 10 (MS-B). Id. at 14:23–32. Moreover,
`Blakeslee states that the use of SF unit enables non real time delivery of the
`handwritten message to the destined mobile device to be perceived by the
`user of the device “as receipt of the image to be real time.” Id. at 3:16–20.
`
`3. Analysis
`a. Independent Claim 1
`Petitioner argues Busey’s real-time messaging system teaches
`limitations 1(a), 1(b)(i) and (iv), and 1(c), and that a person of ordinary skill
`in the art “would have been motivated to simply replace Busey’s generic
`client devices with Blakeslee’s handwriting-capable mobile client devices,”
`to teach limitation 1(b)(ii) (reciting “a client component . . . for setting up a
`graphical data capture area”) and limitation 1(b)(iii) (reciting “said client
`component including a graphical input device . . . operatively coupled to the
`graphical data capture area for allowing the user to enter handwritten or
`handdrawn input”). Pet. 29–31, 33–48. As of this time, Patent Owner has
`not challenged Petitioner’s arguments.
`Having reviewed the record, for the reasons discussed below, we
`determine that the information presented establishes a reasonable likelihood
`that Petitioner would prevail in showing that claim 1 is unpatentable under
`35 U.S.C. § 103(a) as obvious over Busey and Blakeslee.
`
`The preamble of claim 1 recites “[a] realtime electronic messaging
`system.” Petitioner argues that, to the extent the preamble is limiting, Busey
`discloses a system for communicating electronic messages in real-time. Pet.
`33–34 (citing Ex. 1008 2:43–53). Based on Petitioner’s arguments and
`evidence, we determine Petitioner has sufficiently shown that Busey teaches
`or suggests the preamble of claim 1.
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`Limitation 1(a) recites “a server component operable on a server
`
`computer on a network with a real-time messaging server for receiving an
`electronic message sent from a sender and sending it to a recipient to whom
`it is addressed.” Petitioner argues that Busey discloses a server component
`(e.g., real-time server 324) operable on a server computer (e.g., host 320)
`with a real-time messaging server (e.g., real-time server 324) that receives
`electronic messages from a sender and sends them to a desired recipient. Id.
`at 34–36 (citing Ex. 1008, Fig. 3, 2:33–36; Ex. 1002 ¶ 166). Petitioner also
`argues that, as shown in Figure 3, Busey describes bi-directional
`communication between real-time server 324 in host 320 and each of the
`client devices (RTM chat client 314 in client 310, and RTM chat client 334
`in client 330), so that real-time server 324 is able to receive messages from
`either client device when such device operates as a sender, and also send
`messages to either client device when such device operates as a receiver. Id.
`at 35–36 (citing Ex. 1008 5:41–47, 5:54–57). On this record, based on
`Petitioner’s arguments and evidence as summarized above, we determine
`Petitioner has sufficiently shown that Busey teaches or suggests limitation
`1(a).
`Petitioner argues that Busey teaches limitation 1(b)(i), which recites
`
`“a remote client device for the sender connectable to the server computer
`through an online data connection to the network.” Pet. 37–38. In
`particular, Petitioner argues that, for example, Busey shows bi-directional
`communication between client device 330 and server 320 via TCP/IP real-
`time protocol communications channel B to a network (e.g., the Internet).
`Id. at 37–38 (citing Ex. 1008 Fig. 3, 3:12–22, 5:41–47). Petitioner also
`argues that, “[a]s demonstrated by the bi-directional communication arrow
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`[B], the client device is operable as either a sender or a receiver.” Id. at 37.
`Based on Petitioner’s arguments and evidence, we determine Petitioner has
`sufficiently shown that Busey teaches or suggests limitation 1(b)(i).
`
`Limitation 1(b)(ii) recites “a client component operable on the remote
`client device for setting up a graphical data capture area in a visual interface
`of the remote client device.” Limitation 1(b)(iii) recites “said client
`component including a graphical input device that is operatively coupled to
`the graphical data capture area for allowing the user to enter handwritten or
`handdrawn input through the graphical input device, and for capturing the
`handwritten or handdrawn input as graphical data.” Petitioner argues that
`Blakeslee teaches or suggests these limitations. Pet. 39–43.
`
`First, Petitioner argues that Blakeslee teaches “a client component
`operable on the mobile device for setting up a graphical data capture area,”
`as recited in limitation 1(b)(ii), because Blakeslee’s Figure 2 discloses using
`“pocket sized mobile telephone devices” with a touch-sensitive display 12
`and display screen 12D (e.g., graphical data capture area in a visual
`interface) for capturing handdrawn graphics and converting them to image
`data for transmission over a network. Id. at 40–41 (citing Ex. 1007, Fig. 2,
`12:26–13:7, 14:5–12; Ex. 1002 ¶¶ 126, 166). Second, in regard to limitation
`1(b)(iii), Petitioner argues that Blakeslee teaches client device (e.g. pocket-
`sized mobile telephone) includes a graphical input device (e.g., touch-screen
`12 and/or stylus), allowing the user to enter handwritten or handdrawn input,
`and for capturing the input as graphical data. Id. at 41–42 (citing Ex. 1007,
`Fig. 2, 2:32–3:3, 12:36–13:7). Third, Petitioner argues that a person of
`ordinary skill in the art would have been motivated to substitute the
`computing client devices of Busey with the mobile client devices of
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`Blakeslee. Id. at 29–33, 39. In that regard, Petitioner argues that Busey and
`Blakeslee “both relate to client/server architectures for enabling real-time or
`perceived real-time communication between two client devices in a
`communication system via a server.” Id. at 30 (citing Ex. 1007, 3:16–20;
`Ex. 1008, 2:43–53; Ex. 1002 ¶¶ 131–132). According to Petitioner, a person
`of ordinary skill seeking to enhance the real-time communication system of
`Busey by incorporating handwriting functionality or messaging between
`mobile devices “would have turned to Blakeslee for its teachings regarding
`handwriting input and viewing of handwritten messages on mobile client
`devices, relying on known protocols (e.g., GPRS) to enable mobile Internet
`transmission.” Id. at 33 (citing Ex. 1002 ¶ 139). In addition, Petitioner
`argues that this combination “would have been consistent with the then-
`prevailing technological and market-driven goals of enhancing mobile
`Internet communication capabilities” and “would have yielded the
`predictable result of providing a system for transmission of handwritten
`messages in real-time.” Id. at 30–31, 33.
`
`Based on Petitioner’s arguments and evidence as summarized above,
`we determine Petitioner has sufficiently shown that Blakeslee teaches or
`suggests limitations 1(b)(ii) and 1(b)(iii). On the current record, we also
`determine that Petitioner provides sufficient reasoning with rational
`underpinning for combining the teachings of Busey and Blakeslee with a
`reasonable expectation of success. See KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 418–19 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (requiring “articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness”)).
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`Petitioner argues that the combination of Busey and Blakeslee teaches
`
`or suggests limitation 1(c), which recites “at least another remote client
`device for the recipient connectable to the server computer through an online
`data connection to the network, having a utility for receiving the electronic
`message sent to the recipient by the server component and viewing it as a
`handwritten or handdrawn message. Pet. 46–48. Petitioner argues that, as
`discussed with respect to limitation 1(b)(i), Busey discloses a system in
`which both client devices can operate as a sender or a receiver and are
`connectable to the server through an online data connection (e.g., two-way
`TCP/IP connection between the client computer and a host computer) to a
`network (e.g., Internet). Id. at 46 (citing Ex. 1008, Fig. 3, 5:41–47, 3:12–
`22). As discussed with respect to limitations 1(b)(ii) and (iii), Petitioner also
`argues that a person of ordinary skill would have been motivated to use the
`real-time messaging framework of Busey with the mobile devices of
`Blakeslee to permit real-time messaging of handwritten and handdrawn
`messages. Id. (citing Ex. 1002 ¶¶ 131–140). Petitioner further argues that
`“Blakeslee discloses a receiving client device (e.g., Mobile Entry System
`Receiver 10 (MS-B)) that connects to the server computer (store and forward
`unit SF) over a network 40 and includes an interface [12] (e.g., utility) for
`receiving image data” and “showing the received handwritten message on
`the touch-screen 12C.” Id. (citing Ex. 1007, (57), Figs. 2, 4; 12:36–13:3).
`Based on Petitioner’s arguments and evidence as discussed above, we
`determine Petitioner has sufficiently shown that the combination of Busey
`and Blakeslee teaches or suggests limitation 1(c).
`
`For the reasons discussed above, Petitioner has sufficiently shown that
`the combination of Busey and Blakeslee teaches or suggests the subject
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`IPR2020-00930
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`matter of claim 1 and has provided sufficient reasoning with rational
`underpinning for combining these references in the manner claimed with a
`reasonable expectation of success.
`b. Dependent Claims 2, 4, and 5
`Claim 2 depends from claim 1 and further recites “wherein the client
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`component is operable for also setting up a graphical data viewing area for
`viewing electronic messages with graphical data sent by the server
`component.” Claim 4 also depends from claim 1 and further recites
`“wherein the remote client device is an always-on type of wireless Internet
`messaging device.” And, claim 5 depends from claim 1 and further recites
`“wherein the remote client device is a mobile phone having an always-on
`type of wireless Internet messaging component.”
`On the current record, Petitioner sufficiently shows that the
`combination of Busey and Blakeslee teaches or suggests the subject matter
`of claims 2, 4, and 5. See Pet. 48–52. For example, with respect to claim 2,
`Petitioner sufficiently shows that Busey teaches the sending client of claim 1
`can also be operable as the receiving client. Id. at 48–49 (citing Ex. 1008
`Fig. 3, 5:41–47). Petitioner also sufficiently shows that Blakeslee teaches
`“the sending client can also be equipped to receive electronic messages from
`the serve[r]” and, as discussed regarding limitation 1(b)(i), Petitioner also
`sufficiently shows Blakeslee teaches ‘“a client component’ operable on the
`mobile device for setting up a graphical data capture area.” Id. at 49 (citing
`Ex. 1007 Fig. 2, 12:36–13:7, 14:7–12).
`With respect to claim 4, Petitioner sufficiently shows that Busey
`teaches the client devices can be “always-on Internet messaging devices”
`because Busey teaches using a “continuously open connection protocol,”
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`which a person of ordinary skill would have understood to mean the client
`devices were “always on.” Id. at 50 (citing Ex. 1008 3:37–53; Ex. 1002
`¶ 141). In addition, Petitioner sufficiently shows that Blakeslee teaches the
`client devices can be “always-on wireless messaging devices” because
`Blakeslee teaches “the mobile device may be a mobile telephone which
`would have a constant wireless connection to a cellular network to be able to
`make and receive calls.” Id. at 50–51 (citing Ex. 1007 1:1–5, 12:33–13:1;
`Ex. 1002 ¶ 130). Similarly, with respect to claim 5, Petitioner sufficiently
`shows that “the remote client device is a mobile phone having an always-on
`type of wireless Internet messaging component” because Blakeslee teaches
`“a mobile phone which would have a constant connection to a cellular
`network.” Id. at 51–52 (citing Ex. 1007 1:1–5, Ex. 1002 ¶ 130).
`Petitioner also sufficiently shows, for the reasons explained with
`respect to limitations 1(b)(ii) and (iii), that a person of ordinary skill would
`“have been motivated to incorporate the handwritten and/or handdrawn
`messaging capabilities of Blakeslee’s mobile devices into the real-time
`Internet messaging system of Busey.” See id. at 49–51 (citing Ex. 1002
`¶¶ 131–140).
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`c. Claims 11, 12, 14, and 15
`Independent claim 11 is a method claim, but otherwise recites the
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`same limitations as claim 1. Similarly, claims 12, 14, and 15, which depend
`from claim 11, recite the same limitations as claims 2, 4, and 5, respectively,
`except for their recitation of a “method.” Relying on the testimony of Dr.
`Mandayam, Petitioner argues that because the limitations of claims 11, 12,
`14, and 15 are essentially the same as the limitations of claims 1, 2, 4, and 5,
`respectively, the same analysis as discussed above for claims 1, 2, 4, and 5
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`“applies equally” to claims 11, 12, 14, and 15, respectively. Pet. 52; Ex.
`1002 ¶ 141 (pages 86–89).
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`For purposes of this Decision, we agree with Petitioner. Thus, for the
`reasons discussed above in regard to claims 1, 2, 4, and 5, Petitioner has
`sufficiently shown that the combination of Busey and Blakeslee teaches or
`suggests the subject matter of claims 11, 12, 14, and 15, and has provided
`sufficient reasoning with rational underpinning for combining these
`references in the manner claimed with a reasonable expectation of success.
`d. Conclusion
`For the above reasons, we determine that the information presented
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`establishes a reasonable likelihood that Petitioner would prevail in showing
`that claims 1, 2, 4, 5, 11, 12, 14, and 15 of the ’249 patent are unpatentable
`over the combination of Busey and Blakeslee.
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`D. Asserted Obviousness Over Szymansky and Busey
`Petitioner contends that claims 1, 4, 5, 11, 14, and 15 of the ’249
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`patent would have been obvious under 35 U.S.C. § 103(a) in view of
`Szymansky in combination with Busey and the knowledge of a person of
`skill in the art. Pet. 2, 53–79. Relying in part on the testimony of Dr.
`Mandayam, Petitioner explains how the references allegedly teach or
`suggest the claim limitations and provides reasoning for combining the
`teachings of the references. Id. at 58–79.
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`1. Overview of Szymansky
`Szymansky is titled “System and Method for Distributing Messages,”
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`and generally relates to “distributing messages from mobile users over a
`communication network in real time.” Ex. 1009 (54), (57). Szymansky
`states that mobile users enter information in handwritten form on a touch-
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`sensitive screen using a stylus; the messages are converted into a graphics
`format, and then transmitted to a computer server connected to the local area
`network of the subscribing firm, which stores the files and also transmits
`them to subscribers. Id. (57), ¶ 12. Figure 1 of S