UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. MICROSOFT CORPORATION Petitioner

Transcription

1 Filed on behalf of Petitioners By: Richard D. Mc Leod (Reg. No. 46,921) Klarquist Sparkman LLP One World Trade Center, Suite S.W. Salmon Street Portland, Oregon Telephone: (503) Facsimile: (503) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MICROSOFT CORPORATION Petitioner v. MESSAGE NOTIFICATION TECHNOLOGIES, LLC. Patent Owner PETITION FOR INTER PARTES REVIEW

2 TABLE OF CONTENTS Page I. INTRODUCTION... 1 II. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED... 3 i A. Claims for which Relief is Requested... 3 B. Statutory Grounds of Challenge... 3 III. THE SUBJECT MATTER OF THE 786 PATENT... 3 A. The State of the Art... 3 B. Prosecution History of the 786 Patent... 5 C. The Person of Ordinary Skill In the Art... 8 IV. CLAIM CONSTRUCTION... 8 A. Computer... 8 B. Recipient Identifier... 9 C. Subscriber Identifier... 9 D. Recipient-Subscriber Correlator...10 E. Addressable Mail Box...10 F. Means-plus-function elements Means for sending and receiving Means for receiving from the network messages addressed to selected recipients Means for storing each of the messages in an addressable mail box aving a recipient identifier associated...13

3 4. Signal transmitting means for sending the voice mail notification signal to the telephone node corresponding to a subscriber identifier associated with the voice mail message Notification means for display means for displaying the message...15 V. GROUND 1: CLAIMS 1-3 AND 6-10 OF THE 786 PATENT ARE UNPATENTABLE UNDER 35 U.S.C ii A. Claim 1 is Anticipated by Cohen Claim 1: Preamble Claim 1: a network connecting the computers Claim 1: an server having means for receiving from the network messages addressed to selected recipients Claim 1: means for storing each of the messages in an addressable mail box having a recipient identifier associated therewith Claim 1: the telephone system, comprising a plurality of telephone nodes, each node having a respective subscriber identifier Claim 1: a voice messaging system having a voice mail notification signal generator for generating a voice mail notification signal in response to the receipt of a voice mail message Claim 1: signal transmitting means for sending the voice mail notification signal to the telephone node corresponding to a subscriber identifier associated with the voice mail message Claim 1: a voice messaging system having

4 a voice mail notification signal generator for generating a voice mail notification signal in response to the receipt of a voice mail message Claim 1: the notification system comprising...26 a) Claim 1: a recipient-subscriber correlator for correlating the recipient identifier of an message with a respective subscriber identifier...27 b) Claim 1: an notification signal generator responsive to the receipt of an message by the server for actuating the voice mail system to send an notification signal the telephone node corresponding to the respective subscriber identifier...28 c) Claim 1: notification means connected to each of the telephone nodes for notifying the recipient of the receipt of the by the server in response to receipt of the notification signal B. Claim 2 Is Anticipated by Cohen...30 C. Claim 3 Is Anticipated by Cohen...32 D. Claim 6 Is Anticipated by Cohen...33 E. Claim 7 Is Anticipated by Cohen...34 F. Claim 8 Is Anticipated by Cohen...35 G. Claim 9 Is Anticipated by Cohen...36 H. Claim 10 Is Anticipated by Cohen...39 VI. GROUND #2: CLAIMS 1-10 ARE OBVIOUS UNDER A. Claim 1 Is Obvious over Cohen, Penzias, and Garcia...42 B. Claim 4 Is Obvious Over Cohen, Penzias, and Garcia...46 iii C. Claim 5 Is Obvious over Cohen, Penzias and Garcia...47

5 D. Claims 2-3 and 6-10 Are Obvious over Cohen, Penzias and Garcia..50 VII. CLAIM 6 IS OBVIOUS OVER COHEN AND SCHULL...52 VIII. REAL PARTY-IN-INTEREST...54 IX. CERTIFICATION THAT THE PATENT IS SUBJECT TO INTER PARTES REVIEW...54 X. RELATED MATTERS...54 XI. FEE...55 XII. COUNSEL AND SERVICE INFORMATION...55 iv

6 Cases TABLE OF AUTHORITIES Page Aristocrat Techs. Australia v. Intern. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008)...11 In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)... 8 Interactive Gift Express Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001)... 49, 53 Statutes 35 U.S.C U.S.C. 112(f)... 11, U.S.C. 314(a) U.S.C. 324(a) U.S.C , 11, 16, U.S.C , 3, U.S.C Rules 37 C.F.R (3) C.F.R (b) C.F.R. 42.8(b)(1), C.F.R. 42.8(b)(2) C.F.R. 42.8(b)(3)...55 v

7 PETITIONER S CURRENT LIST OF EXHIBITS No. Description 1001 ( the 786 Patent ) 1002 File History of 1003 U.S. Patent No. 4,837,798 ( Cohen ) 1004 Excerpt from Microsoft Computer Dictionary, 2 nd ed U.S. Patent No. 5,475,738 ( Penzias ) 1006 U.S. Patent No. 5,802,166 ( Garcia ) 1007 U.S. Patent No. 5,521,964 ( Schull ) 1008 Declaration of Henry Houh ( Houh Decl. ) C.V. for Henry Houh 1010 U.S. Patent No. 5,363,431 vi

8 I. INTRODUCTION Pursuant to 35 U.S.C. 311 et seq., Petitioner Microsoft Corporation requests Inter Partes Review of claims 1-10 of United States Patent No. 5,944,786 (Exhibit 1001), purportedly assigned to Message Technologies, LLC. The 786 Patent is titled Automatic Notification of Receipt of Electronic Mail ( ) Via Telephone System without Requiring Log-On to Server. The 786 Patent discusses a number of prior art systems, including prior art systems for notifying a subscriber to a voice mail service that new voic messages have been received in a voic server. The user is notified that messages are waiting by illuminating a messages waiting lamp on a telephone, such that the user does not need to contact the voic service directly to know if voice mail is waiting. The 786 Patent applies this voic notification concept to electronic mail, such that a subscriber can receive a notification that new electronic mail messages have been received at a mail server without the user actually logging in to the electronic mail service to learn that new mail is waiting. After receiving the notification signal, the user can read/download the electronic mail messages. As explained herein, the claims of the 786 Patent were not novel. Rather, U.S. Patent No, 4,837,798, issued to Cohen, et al. (researchers at AT&T) on June 6, 1989 ( Cohen ), described a Unified Messaging System that 1

9 provided automatic notification to subscribers across multiple communication media, including telephonic systems and electronic mail systems. Cohen, Abstract, Fig. 1, electronic mail 110 and telephonic systems 101. In one embodiment, the user could configure his system, such that the wellknown message waiting light (commonly used for voic users prior to 1994) could also be used to signify that electronic mail had been received: [A]ssuming that the user had signified that the voice service was to be the recipient, then the lighted lamp, or other means, associated with the voice terminal would indicate that messages have arrived. The user then would attempt to retrieve the messages and would be told that some of the messages which are waiting are electronic messages available at the terminal. (Cohen 1:60-66) (emphasis added). Remote text messaging service can deliver to the voice messaging system either (1) entire message using conventional well-known text-to-voice translated information; (2) headers about the text information stored on the remote text system (e.g., text mail of 532 characters, from Tony Selemi, at 3:20 pm on 4/17, subject meeting cancellation ); or a notification message (e.g., You Have Text Mail ). As discussed above, when new message arrive at the voice messaging service, the associated switch is signaled to alert the end-user to new messages. (Cohen 6:54-64). As further detailed below, claims 1-10 of the 786 Patent are unpatentable under 35 U.S.C. 102 and/or 103. Accordingly, trial of all claims is appropriate. 35 U.S.C. 314(a). 2

10 II. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED A. Claims for which Relief is Requested Petitioner requests review and cancellation of claims 1-10 of the 786 Patent under 35 U.S.C B. Statutory Grounds of Challenge GROUND #1: Petitioner requests that claims 1-3 and 6-10 be cancelled under 102 as being anticipated by Cohen. GROUND #2: Petitioner requests that claims 1-10 be cancelled under 103 as being obvious over Cohen, Penzias and Garcia. GROUND #3: Petitioner requests that claim 6 be cancelled under 103 as being obvious over Cohen and Schull. Claim construction and the application of the prior art against the claims is detailed below. This Petition is supported by the testimony of Henry Houh, Ph.D., (Ex. 1008). III. THE SUBJECT MATTER OF THE 786 PATENT A. The State of the Art Electronic mail systems were well-known at the time of the filing of the 786 patent. The 786 patent states that [i]n recent years a system of sending electronic mail ( ) from a sending computer to a receiving computer has been established through the Internet. 786 patent at 1:

11 An electronic mail client application was typically used to retrieve electronic mail using a specific protocol, such as POP3 ( or IMAP ( Credentials would be provided to the server, but often these credentials were cached within a user s client program. The 786 patent discloses that many methods of receiving notification without logging into the server were available including use of pagers, faxes, and automated telephone calls to notify the recipient when the server has received patent at 1: The 786 patent also discloses that other messaging such as voice mail systems may activate lights associated with a telephone when a user receives a new message: In this case a special visual message waiting signaling unit sends a signal to a special electronic circuit within a telephone which activates an LED/Neon flashing lamp connected to the telephone, or sends a text message to a text display. A signal is sent when voice mail has been received to activate the light and/or display the text and is sent again when the voic has been deleted from the voic box to deactivate the light and/or the text. 786 patent at 2: Unified messaging systems were also known at the time of the filing of the 786 patent. Unified messaging systems provide[] for a single electronic mailbox for different types of messages. Ex (Cohen) at Abstract. For example, a 4

12 user has unified access to any messaging service such as, by way of example, electronic mail 110, voice mail 109, private data system 111, local area network 112, message coverage 113 or fax 114. Ex (Cohen) at 2: Unified messaging systems thus provided integration of electronic mail and voice mail messaging systems, with integrated features thereof. B. Prosecution History of the 786 Patent The original application contained twenty claims. (Ex. 1002, pp ). Claims 1-10 were method claims, whereas claims were directed to a system that performed steps recited in claims (Id.) In an Office action dated August 10, 1998, the Office rejected pending claims 1-20, over admitted prior art in the applicant s specification ( Admissions ), U.S. Patent No. 5,675,507 (Bobo), and U.S. Patent No. 5,748,884 (Royce). (Id. at 90). Subsequently, the applicant made numerous amendments to the claims in a response filed November 19, (Id. at ). Despite the amendments and arguments presented, the Office maintained the rejections against claims 1-10, specifically identifying certain Admissions that anticipated claims 1, 2 and 5 (as amended). (Id. at ). The Office also cited Penzias (Ex. 1005) and Garcia (Ex. 1006) against rejected claims. 5

13 The Office allowed claims without providing any explanation for allowing these specific claims over the cited art. (Id. at 100). That said, the applicant made specific concessions regarding the alleged invention: The invention is concerned with the provision of a system that allows an e- mail subscriber to determine, without logging on, whether or not is present on the system. Because the notification must be given independently of logging on, it requires a parallel system of notification communication. To achieve this, the applicant provides a system in which an received data signal is generated at an server when an e- mail message is received by the server. This received data signal is communicated from the server to an notification server. This is a second server that, in preferred embodiments, is incorporated into a telephone system. At the notification server, an received notification signal is generated and that notification signal is communicated through a telephone system to an addressable node of the telephone system, e.g. a subscriber's premise equipment. At the addressable node, a notification device, e.g. a signal light, is actuated when an received notification signal is delivered to the addressable node. At this point, without activating the communications link between the server and the recipient's computer, a clear notification is given to the recipient at the recipient's premises that has been received: The system and links for providing this notification are entirely independent of the link between the server and the recipient's computer. This is not found in the prior art. The heart of the applicant's invention is an notification system that is passive. It allows the recipient to check for new at any time and does not require the recipient to perform any additional task or to be 6

14 interrupted and inconvenienced and at any time. Many users receive a large number of messages a day, sometimes fifty or more. To have a pager beep this many times or a voice mailbox to fill up or a telephone to ring is not practical and solves nothing, particularly if the recipient is not present. The applicant's invention solves the notification problem by an activated/deactivated signal, nominally a light. (Ex at ) (emphasis added). In sum, it appears that the Examiner allowed these claims due to the physical layout of the system, and particularly due to the applicant s representation above as evidenced by the Examiner s amendment changing the title to Automatic Notification of Receipt of Electronic Mail ( ) Via Telephone System without Requiring Log-On to Server. (Ex at 128). However, Cohen was not considered by the Patent Office during prior prosecution. As explained below, Cohen specifically taught an automatic notification system in which a telephone subscriber could be notified of the presence of waiting electronic mail by activating a message waiting lamp typically found on telephone equipment (or more sophisticated voice capable computers). In other words, Cohen taught the passive system that applicant stated was the heart of his alleged invention. Moreover, Cohen clearly stated that its notifications were independent of any activity by the user. See e.g., Cohen claims 14, 15, and 28 ( providing, in response to messages directed to said voice or said 7

15 data terminal, notifications to said designated terminal independent of any request by said recipient. ) (Emphasis added). C. The Person of Ordinary Skill In the Art A person of ordinary skill in the art in the field of the 786 patent would have been someone with a good working knowledge of messaging systems, as well as computer systems (including servers) that support these protocols and techniques. The person also would be familiar with Internet standards related to communications, programming languages, database systems, and a variety of client-server systems and technologies. The person would have gained this knowledge either through education and training, several years of practical working experience, or through a combination of these. (Houh Decl., 48). IV. CLAIM CONSTRUCTION In this proceeding, claims are given the broadest reasonable interpretation in light of the specification ( BRI ). 37 C.F.R (b); see also In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984). This term should be given the BRI, which should be at least as broad as the specific examples discussed below. A. Computer According to the 786 Patent: The term computer used in the above is meant to be taken generally and includes any device which has a CPU for processing digital or analog information and which is capable of sending and receiving electronic mail. 786 Patent 11:

16 (Houh Decl., 60). B. Recipient Identifier Recipient identifier is not specifically defined in the 786 Patent. Rather, it appears in different contexts, e.g., recipient identifier code (7:49-51), recipient identifier number (Fig. 10, block 60). In electronic mail systems, a user has an electronic mail address. (Ex. 1004). The electronic mail address may be represented in a variety of formats depending on the specific transport protocol being used (e.g., SMTP, UUCP, and X.400, which were used on Internetconnected computers prior to the invention). See 2. Accordingly, the BRI for recipient identifier should be any string of characters (including numbers) that can be used to identify a recipient of electronic mail. (Houh Decl., 61-62). C. Subscriber Identifier According to claim 8, a subscriber identifier can comprise a subscriber telephone number. See also Fig. 10, blocks 62, 64. Telephone subscribers have been almost universally identified by telephone numbers since telephone networks were created. This is reflected in claim 1, in which there is a telephone node corresponding to a subscriber identifier. In private branch exchange systems, 9

17 individual telephone nodes are often identified by an extension. However, the 786 Patent does not define the format of the subscriber identifier. Accordingly, the BRI for subscriber identifier includes a telephone number or any other code that can identify a telephone receiver, regardless of length or format. (Houh Decl., 63-64). D. Recipient-Subscriber Correlator This term is not part of the original specification, but was added during prosecution to replace: means for matching a voice messaging system subscriber identifier to the recipient identifier. 1 (Ex at 103). The 786 Patent provides an overview of matching software in Figure 6. No specific storage (e.g., flat file, keyed or indexed sequential search, indexed or relational DBMS) or search algorithm (e.g., binary, keyed, indexed, hash retrieval, SQL, etc.) is disclosed. Accordingly, the BRI for this term should be deemed to include any search algorithm that is used to map a recipient identifier (e.g., name or address) to a subscriber identifier (telephone number). (Houh Decl., 65-67). E. Addressable Mail Box 1 Petitioner does not admit that this change and the claims did not introduce new matter or otherwise comply with 35 U.S.C

18 The 786 Patent does not define addressable mail box. However, by definition, a mail box for electronic mail must be addressable such that electronic mail can be written to (and retrieved from) the storage device holding the mail file(s). See Ex. 1004, at 3 ( messages are stored in electronic mailboxes assigned to users ). (Houh Decl., 68). F. Means-plus-function elements Several elements of the 786 Patent claims are written in means-plusfunction form and are governed by 35 U.S.C. 112(f). The Federal Circuit has held that a general purpose computer does not satisfy 112(f), if not accompanied by a specific algorithm linked to the computer element. Aristocrat Techs. Australia v. Intern. Game Tech., 521 F.3d 1328 (Fed. Cir. 2008). Thus, while many of the software elements may be indefinite for failure to disclose a specific algorithm, the prior art cited herein discloses these elements in at least as much detail as the 786 Patent, which is all that is required under 102 and 103. Pursuant to 37 CFR (3), the corresponding structures (to the extent that any are disclosed or linked to the claim language) are discussed below. 1. Means for sending and receiving Claim 1 recites a plurality of computers each having a means for sending and receiving. The 786 Patent defines a computer as any device which has a CPU for processing digital or analog information and which is capable of sending 11

19 and receiving electronic mail. ( 786 Patent at 11:23-26). No specific software algorithm or protocol is disclosed by the Patent as the structure for the means for sending and receiving . At best, the 786 Patent states (at 5:54-57): Generally, system interface software is also resident on the sending and receiving computers 16 and 18 which allows the computers 16 and 18 to send and receive over the computer network. This is nothing more than a functional statement that the computer has software that sends and receives electronic mail without defining what means is being claimed. As mentioned above, scores of protocols and algorithms existed for sending and receiving text messages (electronic mail) routed to identified recipients, including but not limited to X.400, sendmail, SMTP, POP3, and IMAP, prior to (Houh Decl., 70-71). Although this claim element may be indefinite using the claim construction standards of the courts, it is proposed that the term is understood to include any software/hardware component of a computer that can be used to send and receive electronic mail. (Houh Decl., 72). 2. Means for receiving from the network messages addressed to selected recipients This is a sub-element of the server in claim 1. As such, the server cannot be the structure for this element. There is no specific text linking the function of this element to specific hardware or a software algorithm. As with the 12

20 means for sending and receiving above, this term should be interpreted to include any software/hardware that received electronic mail/text messages that were addressed to specific users via a network. (Houh Decl., 73). 3. Means for storing each of the messages in an addressable mail box having a recipient identifier associated This element is also a sub-element of the e- server. The 786 Patent does not link any specific software or hardware to this element. At best, the Patent suggests that mail messages are stored in an addressable mailbox on a server. Here again, no specific storage algorithm is described. For example, in some systems, electronic mail messages for each user are stored as separate files in a named directory. Messages for a specific user may be stored in a single file. In yet others, messages for many users may be stored in an indexed database, and retrieved by user name when needed. Since the Patent does not specify which type of electronic mail storage architecture the means is intended to cover, the term should be interpreted to cover any multi-user electronic mail service. (Houh Decl., 74). 4. Signal transmitting means for sending the voice mail notification signal to the telephone node corresponding to a subscriber identifier associated with the voice mail message The 786 Patent does not specifically use signal transmitting means, rather this term was added during prosecution. The patent states that: 13

21 The activation and deactivation signals are standardized signals In North America the Bellcore Message Waiting On and Off signals are used as activation and deactivation signals respectively. ( 786 Patent, 7:36-41). While the Patent elsewhere states that a non-standard signal may be used (8:48-50), it provides no guidance on what constituted this non-standard signal. There is no disclosure enabling this non-standard signal, nor any exemplar showing that the patentee possessed a non-standard signal meeting this function. Therefore, this is not a valid structure that meets 112(f). Accordingly, this element corresponds to a network using the standardized Bellcore Message Waiting On and Off electrical signals and equivalents. (See 786 Patent, 7:36-41). (Houh Decl., 75-77). 5. Notification means for Claim 1 recites a notification means connected to each of the telephone nodes for notifying the recipient of the receipt of the by the server in response to receipt of the notification signal. According to the 786 Patent: The notification means 24 comprise an electronic circuit 92 arranged in a device connected to the telephone node 33 which is accessed by the subscriber's phone number 34. The notification means 24 separate from the telephone 32 or integrated into the telephone 32. The circuit 92 recognizes the notification means activation and deactivation signals and turns a voice message waiting light indicator either on or off in response to the notification signal 26. The indicator 50 is an LED light which turns on in 14

22 response to 50 an activation signal and is turned off in response to a deactivation signal. Thus an individual checking for merely has to check the light 50. If the light 50 is on he has . If the light 50 is off then there is no . ( 786 Patent, 7:42-54) During prosecution, the applicant emphasized that the heart of the invention was passive, nominally a light. The applicant distinguished active systems of notification, specifically discounting audio alerts, such as beeping a pager or ringing a phone. (See Section III(A) above). Accordingly, the structure for notification means corresponds to an electronic circuit having a passive LED or lamp that is accessed through a subscriber s phone number. (Houh Decl., 78-80). Notably, the 786 Patent admits that a message waiting light for alerting a subscriber to waiting voice mail messages is known prior art. (2:12-34). (See generally Schull). 6. display means for displaying the message Claim 10 recites display means for displaying the message. It further requires that this is part of the notification means. The 786 Patent discloses a LCD screen as the only exemplar structure for this element. (10:22-37). However, the Patent also excludes potential devices by using negative language in the specification. For example, the Patent excludes display devices that are integral to a user s computer, such as a laptop or 15

23 smartphone, because the display screen on those devices is inoperable when the computer is off: This system also allows for to be forwarded from the server over the telephone system and then be displayed on a display screen connected to the recipient's telephone or on a display screen connected to a notification device thus allowing an individual to view deposited on the server without turning on his/her computer. ( 786 Patent, 4:41-46) (emphasis added). Accordingly, the BRI for this term refers to LCD displays and equivalents that are integral to a telephone node or integral to a notification means connected to a telephone node, but excludes displays that are not operable when the user s computer equipment is turned off, e.g., laptops, smartphones, tablet devices, etc.). (Houh Decl., 81-83). V. GROUND 1: CLAIMS 1-3 AND 6-10 OF THE 786 PATENT ARE UNPATENTABLE UNDER 35 U.S.C. 102 Claims 1-3 and 6-10 are unpatentable because they are anticipated by U.S. Patent No. 4,837,798 issued to Cohen et al. on June 6, (Ex. 1003, hereafter Cohen ). Cohen describes a Unified Messaging System that allows a user to obtain various types of messages, including both voice mail and electronic mail through a chosen interface. Cohen further explains that the message waiting notification operates independently of any other action taken by the user. (Cohen claims 14, 15, 28). As explained below, Cohen further discloses that notification 16

24 messages that activate the light when messages are received and deactivate the light when the user retrieves the last waiting message. Thus, Cohen directly addresses the heart of the applicant s invention that allegedly was not taught by the art considered during prosecution. See Section III(A). (Houh Decl., 97-99). A. Claim 1 is Anticipated by Cohen As detailed below, Cohen discloses all of the elements of claim 1 exactly as arranged in the claim. Cohen specifically discloses the user configuration that corresponds to the alleged heart of the invention. (Houh Decl., 100). 1. Claim 1: Preamble A claim preamble does not necessarily limit claim scope. While a claim is potentially broader if the preamble is not limiting, Petitioner treats the preamble as a limitation for the purpose of this petition. Claim 1 begins: An automatic electronic mail ( ) notification system for use with a computer based communications system and a telephone system. Cohen discloses an automatic electronic mail notification system, specifically the Unified Messaging System 10 that is used in conjunction with a computer based communications system (electronic mail systems 110/112) and a telephone system (e.g., PBX system 11). (Cohen, Fig. 1; 2:23 3:36). 17

25 Cohen discloses that there is a plurality of computers (e.g., a sender and a receiver) that can exchange electronic mail messages between each other. As data terminals have become more popular, people have begun to communicate over the data network by sending mail messages to one another. (Cohen 1:16-18). Cohen discloses that a user can select any messaging service (such as telephone/voic ) to be the central contact for a variety of other messaging services (including electronic mail). (Cohen, 1:59-65; 2:47-54). As a result, the user receives a notification via a telephone that electronic mail has been received. (Id.) The form of notification can be as simple as switching on a message waiting lamp (Fig. 2, 4:24-31) or a voic message (e.g., You Have Text Mail ) (Cohen 6:51-64). 105). Accordingly, Cohen teaches the preamble of claim 1. (Houh Decl., Claim 1: a network connecting the computers Claim 1 recites a network connecting the computers, the network including. Cohen discloses that there is a data network connecting the computers. As data terminals become popular, people have begun to communicate over the data network by sending 'mail' messages to one another. (Cohen 1:16-18). The 18

26 network concept includes internal local area network(s) and networks to remote locations: Users are able to retrieve messages from their chosen unified messaging mailbox using any of several terminal types, such as, for example, terminals , from any location, local or remote. Thus, a user has unified access to any messaging service such as, by way of example, electronic mail 110, voice mail 109, private data system 111, local area network 112, message coverage 113 or fax 114. (Cohen, 2:47-54). Accordingly, this element is disclosed by Cohen. (Houh Decl., ). 3. Claim 1: an server having means for receiving from the network messages addressed to selected recipients Claim 1 requires an server having means for receiving from the network messages addressed to selected recipients. Cohen discloses at least one electronic mail server that can receive electronic mail messages addressed to selected recipients. (Fig. 1, 110, also the UMS itself). Cohen states that [a]s data terminals have become more popular, people have begun to communicate over the data network by sending mail messages to one another. (Cohen 1:16-18). Cohen further states: Thus, a user has unified access to any messaging service such as, by way of example, electronic mail 110, voice mail 109, private data system 111, local area network 112, message coverage 113 or fax 114. (Cohen 2:50-54). 19

27 Message transport header 401 is the message envelope that contains information relevant to the transmission of the message: the origination and destination addresses, a time-stamp and various transport options (Cohen, 4:17-20). Cohen discloses that the electronic mail messages are formatted according to the international standard for exchanging (i.e., messages are addressed to individuals): It takes the message from the UA and creates the envelope for the message (FIG. 10, 1011, 1014).Once the envelope is constructed, the MHS.ASCII takes the necessary steps to assure accurate transmission of the message to the destination service. The architectural model underlying MHS.ASCII is derived from CCITT's Messaging Handling System (MHS), the international standard for exchanging electronic mail messages. (Cohen 5:13-21). Electronic mail messages are addressed to specific persons: As shown in FIG. 10, the user enters his or her mail service and requests to create a mail message (e.g. CREAT 1001). The service asks the user for the first recipient (TO 1002) and the user enters the recipient's name, Tom Smith. (Cohen, 7:11-15). See also Cohen 7:32-52 particularly: The recipients' names are mapped to a logical and a physical address for connecting to the recipient's receiving 20

28 application (i.e. the destination address). This could take the form of a device line number and a telephone number, block Furthermore, electronic mail messages are received by an server in the system. The server hosts the user s mailbox: First, UMS provides guidelines for a basic set of consistent service attributes such as unified messaging mailbox, unified messaging retrieval and unified messaging preparation. (Cohen 2:27-30). Accordingly, this element is disclosed by Cohen. (Houh Decl., ). 4. Claim 1: means for storing each of the messages in an addressable mail box having a recipient identifier associated therewith By definition, an electronic mail system, necessarily must be able to distinguish between messages that are intended for specific, different recipients. (Ex at 3). The 786 Patent does not identify whether mailboxes are logical data structures or physical data structures, or whether mailboxes are defined by specific physical media. Nevertheless, Cohen teaches this element. Cohen discloses that an server that conforms to an international CCITT Message Handling Service is standard for electronic mail. (Cohen 5:13-21). Cohen further discloses that electronic mail messages are stored in an addressable mailbox associated with a recipient identifier: Users are able to retrieve messages from their chosen unified messaging mailbox using any of several terminal types, such as, for 21

29 example, terminals , from any location, local or remote. Thus, a user has unified access to any messaging service such as, by way of example, electronic mail 110, voice mail 109, private data system 111, local area network 112, message coverage 113 or fax 114. (Cohen 2:47-54) (emphasis added). In each case, the sender simply creates the meeting notice, enters the names and addresses of the recipients in a consistent way and sends the mail without having to be aware of the recipients' retrieval services or retrieval devices. (Cohen 3:14-17). In other words, the electronic mail messages are addressed according to a known international standard, and ultimately transmitted to a specific addressable mailbox. Accordingly, this element is disclosed by Cohen. (Houh Decl., ). 5. Claim 1: the telephone system, comprising a plurality of telephone nodes, each node having a respective subscriber identifier Cohen discloses a telephone system (e.g., PBX system, Fig. 1) comprising a plurality of telephone nodes (Fig. 1, , 108), each having a respective subscriber identifier (e.g., device number / telephone number) correlated to a user: Each component of the message is formatted in a "keyword:value" structure. The recipients' names are mapped to a logical and a physical address for connecting to the recipient's receiving application (i.e. the destination address). This could take the form of a device line number and 22

30 a telephone number, block The software control to perform this function is now well-known. (Cohen, 7:34-41). PBX telephone systems commonly use a telephone and device line (extension) number to identify a specific telephone set. Accordingly, this element is disclosed by Cohen. (Houh Decl., ). 6. Claim 1: a voice messaging system having a voice mail notification signal generator for generating a voice mail notification signal in response to the receipt of a voice mail message Cohen discloses a voice messaging system (voic 109) having a voice mail notification signal generator for generating a voice mail notification signal in response to the receipt of a voice mail message. Messages are converted into a UMS format. Cohen discloses that a voic notification signal is created in response to receipt of a voice mail message: For example, assuming that the user has selected the data mail service as the recipient service, then a voice message which arrives via the voice service would cause a message to be displayed on the data terminal associated with the host computer serving the mail service indicating that a voice message has arrived. The user could then retrieve the voice message in the normal manner via the voice terminal or the user could view an abstract of the message on the terminal screen. (Cohen, 1:51-59). Whenever a user-designated receptor receives a new message, be it text, voice or facsimile, that user is alerted to that fact. Alerting is achieved, for example, by lighting message waiting lamp (MWL) 20 (FIG. 2) which is 23

31 part of face plate 201 of users' voice terminal 101 or 102 (FIG. 1). Alerting on data terminals is achieved by activating the terminal screen indicator on electronic terminals Users see the illuminated lamp or screen indicator and may then enter their receptor service in the prescribed manner to retrieve their messages Notification of new messages is done within the mailbox by icons or single-line entries on the screen. In cases where messages cannot be forwarded, these notifications tell the users where they have new messages on other services. (Cohen 3:22-36) (emphasis added). The Voice Message Notification can also be applied to text messages: FIG. 7 shows a switch based voice messaging service which receives voice messaging systems that support the MHS.ASCII protocol. Remote test messaging service can deliver to the voice messaging system either (1) entire message using conventional well-known text-to-voice translated information; (2) headers about the text information stored on the remote text system (e.g., text mail of 532 characters, from Tony Selemi, at 3:20 pm on 4/17, subject meeting cancellation ); or a notification message (e.g., You Have Text Mail ). As discussed above, when new message arrive at the voice messaging service, the associated switch is signaled to alert the end-user to new messages. (Cohen 6:51-64). Accordingly, this element is disclosed by Cohen. (Houh Decl., ). 7. Claim 1: signal transmitting means for sending the voice mail notification signal to the telephone node corresponding to a subscriber identifier associated with the voice mail message To the extent that this element can be understood, the 786 Patent admits that this is in the prior art. ( 786 Patent, col. 2:12-37). That is, the transmission of 24

32 Bellcore Message Waiting On and Off signals via the telephone network for voice mail notification was common. Unsurprisingly, Cohen (assigned to AT&T) discloses this well-known system as well. (Cohen, 1:10-15). It further states: Whenever a user-designated receptor receives a new message, be it text, voice or facsimile, that user is alerted to that fact. Alerting is achieved, for example, by lighting message waiting lamp (MWL) 20 (FIG. 2) which is part of face plate 201 of users' voice terminal 101 or 102 (FIG. 1). Alerting on data terminals is achieved by activating the terminal screen indicator on electronic terminals Users see the illuminated lamp or screen indicator and may then enter their receptor service in the prescribed manner to retrieve their messages Notification of new messages is done within the mailbox by icons or single-line entries on the screen. (Cohen 3:22-33). Cohen further discloses protocols for interrogating the mail service to determine if there are messages waiting to be retrieved, and for manipulating the message waiting lamp or other display on the telephone node to reflect the existence of waiting voic (or messages). As shown in FIG. 11, the user can retrieve messages from the unified mailbox via several different retrieval devices. This section details the retrieval process depending upon the retrieval device. In most of these cases, the user is retrieving the message because he/she has been alerted that there are new messages. This alerting could be accomplished through the illumination of a light on the voice or data terminal. Alerting for all messages, regardless of which service sent the message, is via a single service, called the receptor service, by the recipient user. (Cohen 8:1-11). 25

33 Accordingly, this element is disclosed by Cohen. (Houh Decl., ). 8. Claim 1: a voice messaging system having a voice mail notification signal generator for generating a voice mail notification signal in response to the receipt of a voice mail message Again, the 786 Patent acknowledges that this is prior art. ( 786 Patent, col. 2:12-37). Similarly, Cohen discloses this element. In one scenario, the user specifies the telephone data set as the primary receptor service. When a voic message is received, a signal to activate the MWL (Fig. 2) is generated and sent to the respective telephone set. See e.g., Fig. 7 and descriptive text at 6:51-64; also below Cohen 1:40-50: We have constructed a messaging system which allows a user (addressee) to specify one service as a central repository of messages which are delivered from/by any of the other services available to that user. For example, if a user has a voice mail service associated with a telephone station set and a data mail service available with a terminal (or PC), that use may specify either service as the recipient service. Thus, when a message arrives in either service, the notification of the arrival of that message is given only in the recipient service. Accordingly, this element is disclosed by Cohen. (Houh Decl., ). 9. Claim 1: the notification system comprising The sub-elements of the notification system are taught by Cohen as follows. The location of these sub-elements is not specified by claim 1. 26

34 a) Claim 1: a recipient-subscriber correlator for correlating the recipient identifier of an message with a respective subscriber identifier Despite the lack of specific algorithm in the 786 Patent, Cohen discloses this element in similar or greater detail. Specifically, Cohen teaches that message recipients are entered by the message creator in a standardized format. (3:14-21). Subsequently, a message transport header is created by the system that maps the recipient identifier (e.g., TOM.SMITH ) to a machine address that may include a machine identifier/telephone number. (Cohen, Fig. 10, col. 7:32:49) (emphasis added): The information obtained by the service from the user's input is formatted according to the underlying architecture, as shown in FIGS. 3, 4 and 5. Each component of the message is formatted in a "keyword: value" structure. The recipients' names are mapped to a logical and a physical address for connecting to the recipient's receiving application (i.e. the destination address). This could take the form of a device line number and a telephone number, block The software control to perform this function is now well-known. A universal header is created, block 1011 (FIG. 4, message transport header 401), from the information supplied by the user, for instance, the user's name and address (logical and physical), the names and addresses of the recipients, the date and time the message 27

35 was created, deferred delivery information, and specific information about what follows such as the type of message. Accordingly, this element is disclosed by Cohen. (Houh Decl., ). b) Claim 1: an notification signal generator responsive to the receipt of an message by the server for actuating the voice mail system to send an notification signal the telephone node corresponding to the respective subscriber identifier According to the 786 Patent, the notification signal generator is exemplified by turning on a message waiting light a target recipient s telephone (the notification means discussed in a later element), when a message has been received, and off when it has been retrieved. Cohen teaches an automatic system that monitors messages from any source (including electronic mail) and notifies the recipient when messages are waiting to be read/heard by the user. In one example, the user can select a voice service as the primary recipient service. We have constructed a messaging system which allows a user (addressee) to specify one service as a central repository of messages which are delivered from/by any of the other services available to that user. For example, if a user has a voice mail service associated with a telephone station set and a data mail service available with a terminal (or PC), that use may specify either service as the recipient service. Thus, when a message arrives in either service, the notification of the arrival of that message is given only in the recipient service. (Cohen 1:40-50). 28

36 There is a detailed protocol for monitoring the presence of unread electronic mail, and alerting the user (e.g., by controlling the illumination of a MWL). (Cohen, Fig. 15; 9:63 10:6). Again, the recipient node may be a telephone node identified by a subscriber identifier (i.e., a telephone number). Accordingly, this element is disclosed by Cohen. (Houh Decl., ). c) Claim 1: notification means connected to each of the telephone nodes for notifying the recipient of the receipt of the by the server in response to receipt of the notification signal. According to the 786 Patent (7:49-54), notification means corresponds to a notification device 24 (e.g., a LED light ): The indicator 50 is an LED light which turns on in response to an activation signal and is turned off in response to a deactivation signal. Thus an individual checking for merely has to check the light 50. If the light 50 is on he has . If the light 50 is off then there is no . Again, the applicant expressly stated that the heart of the invention was the use of a passive notification device, such as a light, not an audio signal. (See Section III(A) above discussing the disclaimer of beeping pagers and ringing telephones). 29

37 Cohen similarly discloses the well-known use of a light on telephones to indicate that a text message is waiting for the user (Figs 2, 8): Whenever a user-designated receptor receives a new message, be it text, voice or facsimile, that user is alerted to that fact. Alerting is achieved, for example, by lighting message waiting lamp (MWL) 20 (FIG. 2) which is part of face plate 201 of users' voice terminal 101 or 102 (FIG. 1). Alerting on data terminals is achieved by activating the terminal screen indicator on electronic terminals Users see the illuminated lamp or screen indicator and may then enter their receptor service in the prescribed manner to retrieve their messages Notification of new messages is done within the mailbox by icons or single-line entries on the screen. (Cohen 3:22-33) (emphasis added). To the extent that alternative structures might be considered as potential notification means, Cohen discloses such an alternative (e.g., the terminal screen indicator) discussed above. (Houh Decl., ). B. Claim 2 Is Anticipated by Cohen Claim 2 depends from claim 1 and additionally recites: wherein the notification signal generator comprises an received signal generator for generating an received data signal in response to receipt of an message by the server and an retrieved data signal in response to retrieval of an message from the server. 30

38 In plain language, claim 2 specifies that there are received and retrieved signals. In the context of the 786 Patent, the received signal triggers the activation of the message waiting light. Conversely, when all waiting e- has been retrieved, there is a correspondence deactivation of the lamp. Lay persons would be familiar with this signaling in voice mail systems. Cohen used the same (common sense) signaling strategy. Specifically, it teaches that notification messages are transmitted between system components: Update messages include requests for update the alerting mechanism (e.g., turn the lamp on/off). Notifications are sent from the UMS to the mail service to notify the users of the presence of new messages in their other messaging services. (Cohen 4:32-45). Cohen s -to-telephone exemplar teaches that these notification messages can be used to notify a user that new electronic mail has been received. See e.g., Cohen at Fig 12, blocks proceeding through 1212 TURN ON [MESSAGE WAITING LIGHT], and described below: The text service can notify the voice-based prime message receptor that the user has new text messages. When the service with the voice-based prime message receptor receives both voice and text-to-speech converted messages, it first checks to make sure that the user is not forwarding messages to yet another service. If the user is, then all these messages get forwarded to that service. If not, then the service tells the switch (or the service actually controlling the terminal) to turn on the user's message 31