IN THE UNITED STATES PATENT & TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. GOOGLE INC., Petitioner,

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1 NO: US IN THE UNITED STATES PATENT & TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GOOGLE INC., Petitioner, v. MobileStar Technologies LLC, Patent Owner. Case IPR2015- Patent U.S. 6,333,973 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,333,973 UNDER 35 U.S.C. 312 AND 37 C.F.R Mail Stop PATENT BOARD Patent Trial and Appeal Board Commissioner for Patents P.O. Box 1450 Alexandria, Virginia

2 TABLE OF CONTENTS I. MANDATORY NOTICES PURSUANT TO 37 C.F.R II. CERTIFICATION OF GROUNDS FOR STANDING... 2 III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED... 2 A. Prior Art Patents and Printed Publications... 2 B. Grounds for Challenge... 4 IV. BACKGROUND OF THE 973 PATENT... 4 A. B. C. D. Unified Messaging Before Different Bandwidths for Different Data Connections or Different Messages... 5 Overview of the 973 Patent... 8 Prosecution History of the 973 Patent V. CLAIM CONSTRUCTION A. Pending messages B. The notification messages are received from an interface with independent connections with different bandwidths for different types of pending messages C. The Means Plus Function Limitations VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 973 PATENT IS UNPATENTABLE A. Claims are anticipated by Keyworth B. Claims are rendered obvious by Boaz in view of Krebs Statement of Non-redundancy Boaz ii

3 3. Krebs The combination of Boaz in view of Krebs C. Claims are rendered obvious by Greco in view of Krebs Statement of Non-redundancy The combination of Greco in view of Krebs VII. CONCLUSION iii

4 I. MANDATORY NOTICES PURSUANT TO 37 C.F.R Real Party-in-Interest: Google Inc. ( Petitioner ) Related Matters: (the 973 patent ) is asserted in consolidated case Rockstar Consortium US LP et al v. ASUSTeK Computer, Inc. et al., Consolidated Case No. 2:13-cv (E.D. Tex.), which consolidated six different cases filed by Rockstar Consortium US LP. The 973 patent is also asserted in Google Inc. v. Rockstar Consortium US LP et al., Case No. 4:13-cv CW (N.D. Cal.). In that case, Google requested a declaration of noninfringement on the 973 patent; Rockstar counterclaimed for infringement of the 973 patent; and Google then pled the affirmative defense of invalidity with respect to the 973 Patent. Google s affirmative defense does not trigger the statutory bar against filing an inter partes review petition. 35 U.S.C. 315(a)(3). There are no patents or applications that claim the benefit of the filing date of the 973 patent. Petitioner is also filing petitions for inter partes review challenging claims 1-13 and 33 of the 973 patent. Petitioner recommends assigning all proceedings to the same panel. Counsel: Lead Counsel: Scott A. McKeown (Reg. No. 42,866) Backup Counsel: Greg Gardella (Reg. No. 46,045) Service Information: CPDocketMcKeown@oblon.com CPDocketGardella@oblon.com Post: Oblon Spivak, 1940 Duke St., Alexandria, VA

5 Telephone: Facsimile: II. CERTIFICATION OF GROUNDS FOR STANDING Petitioner certifies pursuant to Rule (a) that the patent for which review is sought is available for inter partes review and that Petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in this Petition. III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED Pursuant to Rules 42.22(a)(1) and (b)(1) (2) Petitioner challenges claims of the 973 patent. The 973 patent claim priority to U.S. Patent Application No. 08/842,020, which was filed on April 23, 1997 ( the priority date ). (Ex. 1201, the 973 patent.) A. Prior Art Patents and Printed Publications Petitioner relies upon the following patents and printed publications: Exhibit 1208 U.S. Patent No. 5,579,472 to Keyworth, II et al. ( Keyworth ) issued on November 26, 1996, prior to the earliest filing date claimed by the 973 patent (April 23, 1997), and is therefore available as prior art under pre-aia 35 U.S.C. 102(a). The PCT application corresponding to Keyworth, published as WO96/15490 was made of record, but not relied upon, during the original prosecution of the 973 patent. Petitioner presents new supporting evidence and an explanation of Keyworth that has never been considered by the Office. 2

6 Exhibit 1211 U.S. Patent No. 5,333,266 to Boaz et al. ( Boaz ) issued on July 26, 1994, which is more than one year prior to the earliest filing date claimed by the 973 patent (April 23, 1997), and is therefore available as prior art under pre-aia 35 U.S.C. 102(b). Boaz was not considered during the original prosecution of the 973 patent and is not cumulative of any prior art considered by the Office. Exhibit 1212 U.S. Patent No. 5,448,759 to Krebs et al. ( Krebs ) issued on September 5, 1995, which is more than one year prior to the earliest filing date claimed by the 973 patent (April 23, 1997), and is therefore available as prior art under pre-aia 35 U.S.C. 102(b). Krebs was not considered during the original prosecution of the 973 patent and is not cumulative of any prior art considered by the Office. Exhibit 1209 U.S. Patent No. 5,568,540 to Greco et al. ( Greco ) issued on October 22, 1996, which is prior to the earliest filing date claimed by the 973 patent (April 23, 1997), and is therefore available as prior art under pre-aia 35 U.S.C. 102(a). Greco was relied upon by the Examiner during prosecution and was found by the Examiner to disclose all limitations of the independent claims except where the notification messages are received from an interface with independent connections with different bandwidths for the different types of 3

7 pending messages. Petitioner presents new supporting evidence and a combination of Greco and Krebs that was never before considered by the Office. B. Grounds for Challenge Petitioner requests cancellation of challenged claims under the following statutory grounds: i. Claims are anticipated by Keyworth; ii. Claims are rendered obvious by Boaz in view of Krebs; iii. Claims are rendered obvious by Greco in view of Krebs; Section VI demonstrates, for each of the statutory grounds, that there is a reasonable likelihood that the Petitioner will prevail. See 35 U.S.C. 314(a). Additional explanation and support for each ground of the rejection is set forth in the Expert Declaration of Professor Nader Mir, Ph.D. (Ex. 1207). IV. BACKGROUND OF THE 973 PATENT A. Unified Messaging Before 1997 As explained in the detail by Prof. Mir in his declaration, so-called unified messaging the presentation of multiple types of messages ( , fax, voic , etc.) in a single message list was already well-known by Many messaging systems already offered unified inboxes collecting paging messages, voic s, facsimiles, and s. (Ex. 1207, 37.) For example, AT&T s Unified Messaging Service ( UMS ) offered unified messaging since at least

8 (Ex ) AT&T s UMS system included a unified mailbox that is the one access point for all messages regardless of their type or the sender s system, (id. at 30), including and voic . (Id. at Fig. 2.) This unified messaging approach was a common-sense approach to market trends: By 1997, it was common for people and businesses to receive many different types of messages, such as phone, fax, , pager, and the like. (Ex. 1207, 42.) Integrated messaging systems were a natural way to inform a user of an incoming message in any one of these categories. (Id. at 42.) As explained by Prof. Mir, these integrated messaging systems generally included a notification feature to notify the user of incoming messages. (Id. at 42.) B. Different Bandwidths for Different Data Connections or Different Messages It was also common by 1997 to use different connections for different messaging systems, such as paging, voice, or facsimile, as those distinct messaging systems often used different messaging protocols. Additionally, it was also common by 1997 for communication networks to connect and interface various connections that had different bandwidths. For example, well before 1997, Global System for Mobile (GSM) was a well-known standard for mobile communications. By 1992, the European Telecommunications Standard Institute had released some 5200 pages of technical specifications for implementing GSM (Ex. 1213, p. 8), and major commercial GSM networks were already adhering to these specifications in 5

9 Europe. (Id. at p. 29.) Before the 973 patent was filed, it was already standard practice on GSM networks to support fully integrated personal communicators, where voice, data, fax and messaging are integrated into a single mobile terminal. (Ex. 1204, p. 26.) As the GSM standards explained, this integration was achieved using a network interface that supported multiple channels of varying bandwidths. (Ex. 1207, 58.) In March 1996, the GSM specification included provisions for speech transmission, short message service transmissions, and facsimile transmissions. (Ex. 1214, p. 10.) A Public Land Mobile Network (PLMN) built according to the GSM Specifications provided these services through use of access to other existing networks (fixed telephone networks, data networks and Integrated Services Digital Network). (Ex. 1215, p. 16.) The GSM network elements included the user s mobile device or mobile station (MS), and base station equipment that includes the Base Station System (BSS), which provided radio coverage, and the Mobile Services Switching Center (MSC), which performed all switching and signaling for users mobile devices and interfaced the radio system with the fixed networks through interworking functions (IWFs). (Id. at pp ) 6

10 (Id. at Fig. 1 annotation added.) The base station equipment supported connections for different types of data, each with its own bandwidth requirement and specification. The GSM Specifications disclosed that the base station equipment may include a Transcoder/Rate Adapter Unit (TRAU) that could be located at the MSC site of the BSS (Ex. 1216, p. 9), and transcoded at 8000 sample/s for an average bit rate of 13 kbit/s for speech. (Ex. 1217, p. 6.) The GSM Specifications distinguish different types of Traffic Channels (TCHs) for different types of user information streams; in addition to a 13 kbit/s channel for full rate speech, it included a channel for 9.6 kbit/s user data such as fax and other data messages, and a 0.3 kbit/s slow control channel associated with a traffic channel (SACCH (with TCH)), which supported short message service (SMS). (Ex. 1218, pp. 7 9; Ex. 1219, p. 12; Ex. 1220, p. 11.) 7

11 (Ex. 1218, Table 1 annotation added.) Accordingly, the ground interface that included the TRAU allowed multiple channels or connection of varying bandwidths to connect to base stations and the mobile stations. Thus, the use of multiple channels or connections of varying bandwidths for different types of messages was well known in GSM and in the art before C. Overview of the 973 Patent The 973 patent is directed to presenting an integrated messaging center to a user, such that messages of different types are consolidated and graphically displayed in a searchable list to allow for easy graphical scanning, prioritizing, editing, selection, viewing, forwarding, playback and response by the user. (Ex. 1201, 1:19 24.) The 973 patent notes that, as of its filing, telephones have been designed with the capability to directly receive, or download, different types of messages, such as faxes, , and Short Messaging Services (SMS) messages. (Id. at 1:40 46.) Some prior art mobile phones (1) detected the message type, (2) stored the messages in a folder according to type, and (3) displayed a note indicating the quantity and type of messages received, for example You have: 2 8

12 unread faxes and 2 unread short messages. (Id. at 1:47 56.) These phones tended to store in their internal memory all received messages, which wastes precious memory space. (Id. at 2:7 12.) Accordingly, as further explained below, the 973 patent purportedly solved the problem by allowing the user to retrieve pending messages over the network as needed from a network services provider. (Id. at Fig. 1) The 973 patent discloses an integrated messaging center in a user s mobile phone As shown in Fig. 1, [t]he integrated message center is a logical entity that resides in mobile telephone 1100 and operates in conjunction with network services provider 1200 to inform the user of incoming and pending messages, such as fax, , voice mail, etc. (Id. at 3:50 54.) Message servers at network services provider 1200 store pending messages from various sources: [n]etwork service provider 1200 stores many of the messages awaiting retrieval by the user and notifies the user of the pending message. (Id. at 4:1 3.) Mobile telephone 1100 connects to the network services provider 1200 using a 9

13 communication network such as the GSM switching fabric (Id. at 4:5 7.) The network services provider 1200 is further illustrated in Fig. 5: (Id. at Fig. 5 annotation added.) Interface 5100, circled in red above, is the network services provider s interface to GSM switching fabric (Id. at 7:7 8, Fig. 1.) Interface 5100 depicts three separate connections of differing bandwidths 13 kb/s for voice, 0.3 kb/s for SMS, and 9.6 kb/s for data. (Id. at Fig. 5, 7:7 15.) Once an incoming message is received at the network services provider, an SMS notification alert is sent to the mobile telephone (Id. at 7:15 8:10.) More specifically, upon receipt of an inbound , fax, or voic at network services provider 1200, SMS server 5300 sends SMS notification messages to the user to indicate that a new fax mail, voice mail or message is pending and 1 This SMS notification is a network service provider alert especially created by the network for the purpose of populating a single list at the user device, and should not be confused with regular SMS messages exchanged between end-users. (Id. at 4:15 5:9, 7:15 8:10.) 10

14 available for retrieval from the network. (Id. at 4:15 5:9, 7:15 8:10.) When SMS notification messages are received at the mobile telephone 1100, those message are displayed in a single selectable list as shown in Figs. 7A and 7B below. (Id. at 2:18 50, 3:40 46.) (Id. at Figs. 7A and 7B.) The user can select a notification message from the list to retrieve a pending fax mail, voice mail or message from the network service provider. As the patent explains, [w]hen the user wants to retrieve the message after viewing the notification message, the user first selects the icon corresponding to the message from the message center display (FIGS. 7A and 7B), and then instructs mobile telephone 1100 to retrieve the message by pressing the View button. In response, mobile telephone 1100 establishes a connection with network services provider 1200 to download the message from server (Id. at 10:48 56.) D. Prosecution History of the 973 Patent As explained below, during prosecution the Examiner rejected the proposed 11

15 claims multiple times in view of numerous references disclosing unified message systems. After multiple amendments, the only limitation the Examiner concluded was not disclosed in the prior art was the use of different bandwidths for each connection in the claimed interface with independent connections with different bandwidths for the different types of pending messages an amendment made at the Examiner s suggestion, to reflect architectural concepts of the Applicant s invention. (Ex. 1202, Jan. 5, 2001 Interview Summary.) Application No. 08/842,020, which matured into the 973 patent, was filed on April 23, 1997 with 32 claims. (See generally Ex ) The first office action was mailed February 11, 1999 and rejected all 32 claims under 35 U.S.C. 102 as anticipated by U.S. Patent No. 5,608,786 to Gordon. (Id. at p. 96.) The examiner stated that Gordon disclosed an integrated message center for consolidating different types of messages. (Id.) In response, on May 13, 1999, the Applicants amended independent claims 1, 8, 14, 21, and 27 to require that notification messages are automatically transmitted and/or received. (Id. at pp ) On July 16, 1999, the examiner made the rejection final, again rejecting claims 1 28 and as anticipated by Gordon under the same reasoning. (Id. at pp ) On November 12, 1999, the Applicants again amended independent claims 1, 8, 17, and 27 to require that each of the notification messages is automatically 12

16 sent to the user when one of the pending messages is initially received by the integrated message center. (Id. at pp ) On December 10, 1999, the examiner maintained the previous rejections. (Id. at pp ) On December 21, 1999, the Applicant filed a Continued Prosecution Application. (Id. at pp ) On March 30, 2000, the examiner rejected claims 1 3, 6 8, 11 16, 18 23, 25 28, and as anticipated by U.S. Patent No. 5,742,905 to Pepe; claim 29 as unpatentable over Pepe in view of Kotzin; claim 17 as unpatentable over Pepe in view of U.S. Patent No. 5,794,142 to Vantilla; and claims 4-5, 9-10, and 24 as unpatentable over Pepe in view of U.S. Patent No. 5,568,540 to Greco. (Id. at pp ) In response, on June 29, 2000, the Applicants further amended claims 14 and 33 to require that the notification messages provide the user with a single selectable list and argued that Pepe taught away from the amended claims by using separate displays for voice and . (Id. at pp ) On September 11, 2000, the examiner again rejected claims 1 13, 21 26, and 33 as anticipated by Greco; claims 14 20, 27 28, and as unpatentable over Pepe in view of U.S. Patent No. 5,815,506 to Gokhale and further in view of Greco; and claim 29 as unpatentable over Pepe in view of Gokhale, Greco, and U.S. Patent No. 5,911,485 to Rossmann. (Id. at pp ) On January 5, 2001 the Applicants and examiner held an interview to discuss claims 1, 8, and 14. In 13

17 that interview the Examiner suggested to Applicants Representative Architectural Concepts (of applicants invention) for distinguishing over the prior art of record. (Id. at p. 219.) On February 12, 2001, the Applicants amended claims to specify a particular interface from which messages were received: claims 1, 8, 21 and 33 were limited to require wherein the notification messages are received from an interface with connections for each of the different types of pending messages, and claims 14 and 27 now required an interface with independent connections for each of the different types of received messages. (Id. at pp ) But on April 6, 2001, the examiner again rejected claims 1 13, 21 26, and 33 as unpatentable over Greco in view of Pepe, claims 14 20, 27 28, and as unpatentable over Pepe in view of Gokhale and Greco, and claim 29 as unpatentable over Pepe in view of Gokhale, Greco, and further in view of Rossmann. (Id. at pp ) With respect to claims 1 13, 21 26, and 33, the Examiner concluded that Greco disclosed all claim limitations except wherein the notification message are received from an interface with independent connections for the different types of pending messages but noted that this use of an interface with independent connections for the different types of pending messages was disclosed in Pepe. (Id. at pp. 245, ) The examiner then suggested that applicants further amend the claims to 14

18 recite independent connections having different bandwidths for overcoming the prior art of record. (Id. at p. 257.) On May 29, 2001, the Applicants amended each of claims 1, 8, 14, 21, 27, and 33 to require that the notification messages were received from an interface with independent connections with different bandwidths for the different types of pending messages. (Id. at pp ) The claims were then allowed. (Id. at pp ) V. CLAIM CONSTRUCTION The 973 patent contains 33 claims. At issue in this petition are claims Independent claim 21 and claims depending therefrom, directed to user equipment for notifying a user of pending messages. In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable interpretation ( BRI ) in view of the specification in which they appear. 37 C.F.R (b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The USPTO uses BRI because, among other reasons, the patentee has the opportunity to amend its claims in this proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,764 (Aug. 14, 2012) ( Since patent owners have the opportunity to amend their claims during IPR, PGR, and CBM trials, unlike in district court proceedings, they are able to resolve ambiguities and overbreadth through this interpretive approach, producing clear and defensible patents at the lowest cost point in the 15

19 system. ). Thus, as required by the rules, this Petition uses the BRI standard. The BRI of claim terms here may be different from the construction that those same terms may receive following claim construction proceedings in district court. See, e.g., In re Trans Texas Holdings Corp., 498 F.3d 1290, 1297 (Fed. Cir. 2007). Thus the claim constructions presented in this Petition, including where Petitioner does not propose an express construction, do not necessarily reflect the claim constructions that Petitioner believes should be adopted by a district court under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). In presenting this Petition, unless otherwise stated, the grounds set forth herein are based on (1) the proposed claim construction offered by the Patent Owner in Google Inc. v. Rockstar Consortium US LP et al., Case No. 4:13-cv-5933-CW (N.D. Cal.) (Ex. 1206), or (2) for terms where Patent Owner has not explicitly offered a claim construction, on petitioner s understanding of Patent Owner s infringement contentions in Rockstar Consortium US LP et al. v. Samsung Electronics Co., Ltd. et al., Case No. 2:13-cv JRG (E.D. Tex.) (Ex. 1205). In presenting the grounds set forth in this Petition, petitioner does not concede that any claim constructions impliedly or expressly proposed by Patent Owner are appropriate for the district court litigation, where a different legal standard applies to the construction of the asserted claim terms. Petitioner does not believe that many of the Patent Owner s implied or express proposed constructions 16

20 are appropriate under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Instead, petitioner presents these proposed constructions to the Board for consideration in determining the BRI because Patent Owner considers these constructions correct under Phillips, and therefore necessarily also considers them within the appropriate scope of the BRI. Petitioner further submits these constructions under 35 U.S.C. 301(a)(2), which encourages submission of Patent Owners statements on claim scope, to prevent patentees from arguing broad constructions under Phillips but simultaneously using narrow constructions as BRI. A. Pending messages Claims and 25 recite pending messages. In the pending litigation, Patent Owner offered no explicit construction for this term. (Ex. 1206, Exhibit B.) In its infringement contentions, the Patent Owner claims that this term is broad enough to cover messages already received by the phone. Specifically, Patent Owner identifies local processes running on the accused Android handsets, includ[ing] at least BroadcastReceiver, ConnectivityService, ConnectivityManager, NotificationManager and NotificationBuilder classes, and claims that these local processes automatically send notification message to the user when one of the pending messages is initially received. (Ex. 1205, p. 148.) Accordingly, the Patent Owner s BRI for pending messages is messages that are downloaded or awaiting download. 17

21 B. The notification messages are received from an interface with independent connections with different bandwidths for different types of pending messages Claim 21 recites the phrase the notification messages are received from an interface with independent connections with different bandwidths for different types of pending messages. In the pending litigation, Patent Owner offered no explicit construction for this term. (Ex. 1206, Exhibit B.) In its infringement contentions, the Patent Owner claims that this term is broad enough to cover any user interface displaying messages received through different connections of different bandwidths. The Patent Owner states that a display of notifications to the user constitutes the claimed interface where the phone received some underlying messages via WiFi and received other messages via a cellular connection: (Ex. 1205, pp ) Thus, according to Patent Owner s infringement contentions, the accused Android handsets meet this claim limitation by (1) displaying notification messages, and (2) having multiple communication connections such as Wi-Fi, Mobile Data connection, WiMax, Bluetooth, voice, etc. 18

22 Accordingly, the Patent Owner s BRI for the notification messages are received from an interface with independent connections with different bandwidths for the different types of pending messages is the notification messages are displayed on a device having multiple communication connections of different bandwidths. C. The Means Plus Function Limitations As addressed below, claims of the 973 patent each recite meansplus-function limitations that recite the operative language means for to invoke 35 U.S.C. 112(f). See 37 C.F.R (a)(3) (requiring the corresponding structure for means-plus function limitations to be set forth in a petition for inter partes review). Furthermore, no structure is present in the claims that modify the means for terms, and as such, the claim limitations presumptively invoke 112(f). See, e.g., York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) ( [T]he use of the word means triggers a presumption that the inventor used this term advisedly to invoke the statutory mandates for means-plus-function clauses ); Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) ( The generic terms mechanism, means, element, and device, typically do not connote sufficiently definite structure ). 19

23 The specification discloses little to no structure for some means-plusfunction elements, raising questions regarding indefiniteness. There is no general flow chart of the disclosed software elements, let alone a specific algorithm, to support the recited functions. However, because indefiniteness challenges are not available in inter partes review proceedings, Petitioner sets forth below the structure identified by Patent Owner in the co-pending litigation that allegedly corresponds to each means-plus-function element (see Ex ) Limitation Function Structure means for associating a message type indicator with each of the received notification messages based on the message type of the corresponding pending message associating a message type indicator with each of the received notification messages based on the message type of the corresponding pending message Feature processor 3300, memory 3400, and message center 6100, including as recited and described in Figures 3, 6, 7A, and 7B, and equivalents 20

24 Limitation Function Structure means for displaying on the display screen an identification of the sender and the associated message type indicator for each of the received notification messages as entries in a single selectable list to allow the user to select one of the pending messages from the single selectable list for viewing displaying on the display screen an identification of the sender and the associated message type indicator for each of the received notification messages as entries in a single selectable list to allow the user to select one of the pending messages from the single selectable list for viewing Display 2400, feature processor 3300, memory 3400, display module 3700, and message center 6100, including as recited and described in Figures 2, 3, 6, 7A, and 7B, and equivalent 21

25 Limitation Function Structure means for directing the display screen to display detailed information about the sender of the selected pending message in response to selection by the user means for retrieving the selected pending message for viewing and manipulation by the user directing the display screen to display detailed information about the sender of the selected pending message in response to selection by the user retrieving the selected pending message for viewing and manipulation by the user Display 2400, feature processor 3300, memory 3400, display module 3700, and message center 6100, including as recited and described in Figures 2, 3, 6, 7A, and 7B, and equivalent GUI manager 4100 and message center 6100, including as recited and described in Figures 4, 6, 7A, and 7B, and equivalents 22

26 Limitation Function Structure means for displaying each of the sender identification and the associated graphical icons as separate entries in the single selectable list means for displaying the detailed sender information for the selected pending message only upon direction from the user displaying each of the sender identification and the associated graphical icons as separate entries in the single selectable list displaying the detailed sender information for the selected pending message only upon direction from the user Display 2400, feature processor 3300, memory 3400, display module 3700, and message center 6100, including as recited and described in Figures 2, 3, 6, 7A, and 7B, and equivalent Display 2400, feature processor 3300, memory 3400, display module 3700, and message center 6100, including as recited and described in Figures 2, 3, 6, 7A, and 7B, and equivalent 23

27 Limitation Function Structure means for directing the display screen to display at least one of sender home telephone number data, sender business telephone number data, sender cellular telephone number data, sender e- mail address data, and sender fax number data means for accessing an external mail server directing the display screen to display at least one of sender home telephone number data, sender business telephone number data, sender cellular telephone number data, sender address data, and sender fax number data accessing an external mail server Display 2400, feature processor 3300, memory 3400, display module 3700, and message center 6100, including as recited and described in Figures 2, 3, 6, 7A, and 7B, and equivalent Mobile telephone 1100 and message center 6100, including as recited and described in Figures 2, 6, 7A, and 7B, and equivalents 24

28 Limitation Function Structure means for retrieving the selected pending message from the external mail server retrieving the selected pending message from the external mail server Mobile telephone 1100, antenna 2200 and 3100, and message center 6100, including as recited and described in Figures 2, 3, 6, 7A, and 7B, and equivalents VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE 973 PATENT IS UNPATENTABLE Pursuant to 37 C.F.R (b)(4), Petitioner provides in the following claim charts comparing the claimed subject matter and the prior art specifying where each element of the challenged claims is found in the prior art references. A. Claims are anticipated by Keyworth Keyworth discloses a Group-Oriented Communications User Interface that receives messages ( , voice mail, pager, and facsimile) both wirelessly and over telephone wireline, through a combination fax/modem and wireless receiver 26, and then displays the messages to the user. (Ex. 1208, Abstract, 3:50 54, Fig. 10.) 25

29 (Id. at Fig. 10, annotation added.) Keyworth displays messages in a selectable list (the New Messages queue), including the type of message, the message sender, and the date and time the message was received. (Id. at 8:25 34, Fig. 10.) The user can select an entry in the New Messages queue to display a text message, or play, rewind, pause, and stop voice messages. (Id. at 8:35 48, 7:24 29, 7:36 42, 6:38 47, Fig. 5.) These , voice mail, and facsimile messages are received over (1) a telephone wireline connection and (2) a wireless data connection, via a single hardware interface: combination fax/modem and wireless receiver 26. (Id. at Abstract, 3:50 54; Ex. 1207, ) To the extent Keyworth does not explicitly disclose that the different communication connections have different bandwidths, one of ordinary skill in the art would understand that, by the disclosure of at least the wireless pager connection and the telephone line, different bandwidths are inherently disclosed. As explained by Prof. Mir, one of ordinary skill would understand that different bandwidth is necessarily present in Keyworth. (Ex. 1207, 85.) 26

30 Claim 21 Keyworth (Ex. 1208) 21. User Ex at Fig. 10: equipment for notifying a user of pending messages, comprising: a. a display screen; b. an input device; c.1 a receiver for automatically receiving voice calls and notification messages corresponding to pending messages of different types, Ex at Abstract: A system and methods are provided for displaying and processing communications via a variety of communications media using a personal computer. Ex. 1208, 3:33-41: Apparatus 20 includes main processor 21 and data storage device 22, and may comprise a personal computer, either portable or desktop, or a personal digital assistant... Apparatus 20 further includes keyboard 23, pointing device 24 (e.g., mouse or track ball) and display screen 25. Ex. 1208, 3:39-44: Apparatus 20 further includes keyboard 23, pointing device 24 (e.g., mouse or track ball) and display screen 25. As is conventional, pointing device 24 has means for positioning the cursor of display 25, and one or more command keys for operating upon icons targeted by the cursor. Ex. 1208, Fig. 1 (showing pointing device 24 and keyboard 23) Keyworth discloses a receiver for automatically receiving voice calls and notification messages corresponding to pending messages of different types. Ex. 1208, 3:55-63: Data storage unit 22 (e.g., a hard disk drive) stores software that enables main processor 21 to send and receive facsimile messages and messages... If communications device 26 comprises a combination fax/modem and wireless receiver as described in the abovementioned application, then data storage unit 22 may also store software that enables main processor 21 to receive wireless pager or messages. Ex. 1208, 8:63 66: Voice Mail display 130, shown in FIGS. 27

31 Claim 21 Keyworth (Ex. 1208) 12 and 13, displays queue 131 of incoming voice mail messages, preferably in reverse chronological order, and command boxes 132 and 133. c.2 each of the notification messages indicating an identity of a sender and message type of the corresponding pending message, Ex. 1208, 8:22-33: The subscriber moves to the New Messages display by either operating on command box 51a or typing the letter N. Processor 21 then moves to block 41 by loading and executing programmed instructions to display New Messages display 110, illustrated in FIG. 10. Display 110 presents incoming message queue 111 and information window 112. Each message in incoming message queue 111 has its own line of information fields which include the type of message; the message number in the queue; the originator of the message; the date and time the message was received; the length of the message; and the status of the message (i.e., whether it experienced any transmission errors). Keyworth discloses the New Message queue includes the message sender and a message type of the received message. See Ex. 1208, Fig. 10: c.3 wherein the notification Ex. 1208, 8:27-35 (emphasis added): Display 110 presents incoming message queue 111 and information window 112. Each message in incoming message queue 111 has its own line of information fields which include the type of message; the message number in the queue; the originator of the message; the date and time the message was received; the length of the message; and the status of the message (i.e., whether it experienced any transmission errors). The type of message is indicated using icons as described hereinabove. Keyworth discloses that the notification messages are displayed on a device having multiple communication connections of 28

32 Claim 21 Keyworth (Ex. 1208) different bandwidths, such as voice, fax, or wireless pager. messages are received from an interface with independent connections with different bandwidths for different types of pending messages; Ex. 1208, 3:49-54: Communication device 26, which may also comprise a combination fax/modem and wireless receiver as described in copending and commonly assigned U.S. patent application Ser. No. 08/174,797, filed Dec. 29, 1993, connects to telephone line 27 using a conventional connector. Ex. 1208, Fig. 10: d. memory; and Ex. 1208, 3:33-39: Referring to FIG. 1, exemplary apparatus 20 suitable for use in implementing the present invention and methods is described. Apparatus 20 includes main processor 21 and data storage device 22, and may comprise a personal computer, either portable or desktop, or a personal digital assistant Ex. 1208, Fig. 1: (showing data storage device 22). e. a processor including f. means for associating a message type indicator with each of the received notification messages based Ex. 1208, 3:33-39: Referring to FIG. 1, exemplary apparatus 20 suitable for use in implementing the present invention and methods is described. Apparatus 20 includes main processor 21 and data storage device 22, and may comprise a personal computer, either portable or desktop, or a personal digital assistant Ex. 1208, Fig. 1: (showing main processor 21). Structure: Ex. 1208, Figs. 1, 2, 10, and 16 and software cited in description below. See also Ex. 1207, 112. Function: Keyworth discloses associating a message type indicator with each of the received notification messages based on the message type. Ex. 1208, Fig. 10: 29

33 Claim 21 Keyworth (Ex. 1208) on the message type of the corresponding pending message, g. means for displaying on the display screen an identification of the sender and the associated message type indicator for each of the received notification messages as entries in a single selectable list to allow the user to select one of the pending messages from the single selectable list for viewing, and See also 21(c.2). See also Ex. 1208, 8: Ex. 1208, 7:13-17: The type of message is indicated, for example, by display in the type information field of an image of an antenna for a wireless message, a telephone console to represent a voice mail message, and a facsimile machine to represent a facsimile message. Structure: Ex. 1208, Figs. 1, 2, and 10 and software cited in description below. See also Ex. 1207, 116. Function: Keyworth discloses displaying on the display portions of the received notification messages and the associated message type indicators as entries in a single selectable list: Ex. 1208, Fig. 10: See also 21(f). See also Ex. 1208, 8: Keyworth also discloses that the list is selectable. For example, Keyworth discloses the user using a cursor to select a message so as to retrieve the message: Ex. 1208, 8:35-40: Information window 112 displays either the text of the message or the path and filename for the message as described hereinabove with respect to FIGS Messages in 30

34 Claim 21 Keyworth (Ex. 1208) queue 111 include not only those messages received from members of the VIP gallery, but also all other individuals sending messages to the subscriber. Keyworth discloses the user using a cursor to select a message so as to retrieve the message. Ex. 1208, Fig. 10: h. means for directing the display screen to display detailed information about the sender of the selected pending message in response to selection by the user. Structure: Ex. 1208, Figs. 1, 2, and 10 and software cited in description below. See also Ex. 1207, 120. Function: Keyworth discloses displaying detailed information about a sender including path and filename for the message sent by the sender, upon selection. Ex. 1208, 8:35-40: Information window 112 displays either the text of the message or the path and filename for the message as described hereinabove with respect to FIGS Messages in queue 111 include not only those messages received from members of the VIP gallery, but also all other individuals sending messages to the subscriber. Claim 22 Keyworth (Ex. 1208) 22. The user equipment of claim 21, wherein the processor See Claim 21(g), further includes means for retrieving the selected pending above. See also Ex. message for viewing and manipulation by the user. 1208, Figs. 1, 2, and 10, 8:27-40; Ex. 1207, 124. Claim 23 Keyworth (Ex. 1208) 23. The user equipment of claim 22, wherein the Structure: Ex. 1208, Fig. 1 (elements 21, 26, and 27) and software cited in description below. See also Ex. 1207, Function: Keyworth discloses retrieving messages, 31

35 Claim 23 Keyworth (Ex. 1208) retrieving means which are retrieved from external servers. includes means Ex. 1208, 3:45-63: Communications device 26, which may be, for accessing an for example, a modem, external facsimile card, or telephone line external mail interface, is coupled to computer 20 through a communications server, and port, such as an RS232 port or PCMCIA port. Communications means for device 26, which may also comprise a combination fax/modem retrieving the and wireless receiver as described in copending and commonly selected pending assigned U.S. patent application Ser. No. 08/174,797, filed Dec. message from the 29, 1993, connects to telephone line 27 using a conventional external mail connector. Data storage unit 22 (e.g., a hard disk drive) stores server. software that enables main processor 21 to send and receive facsimile messages and messages, and optionally, to serve as a digital telephone answering machine, as explained herein below. If communications device 26 comprises a combination fax/modem and wireless receiver as described in the above-mentioned application, then data storage unit 22 may also store software that enables main processor 21 to receive wireless pager or messages. Claim 24 Keyworth (Ex. 1208) 24. The user equipment of claim 21, wherein the message See Claims 21(f) and type indicator is a graphical icon, and wherein the 21(g), above. See displaying means includes means for displaying each of the also Ex. 1208, Figs. sender identification and the associated graphical icons as 1, 10, 8:27-40; 7:13- separate entries in the single selectable list. 17; Ex. 1207, 136. Claim 25 Keyworth (Ex. 1208) 25. The user equipment of claim 21, wherein the directing means includes means for displaying the detailed sender information for the selected pending message only upon direction from the user. Structure: Ex. 1208, Figs. 1, 2, and 10 and software cited in description below. See also Ex. 1207, 140. Function: Keyworth discloses displaying detailed information about a sender including path and filename for the message sent by the sender, upon selection. See 21(h). See also Ex. 1208, 8:

36 Claim 26 Keyworth (Ex. 1208) 26. The user equipment of claim 21, wherein the means for See Claims 21(g) and displaying the detailed sender information includes means 21(h), above. See for directing the display screen to display at least one of also Ex. 1208, Figs. sender home telephone number data, sender business 1, 2, and 10, 8:27-40; telephone number data, sender cellular telephone number Ex. 1207, 144. data, sender address data, and sender fax number data. B. Claims are rendered obvious by Boaz in view of Krebs 1. Statement of Non-redundancy The grounds raised in the below sections are meaningfully distinct from each other and rely upon fundamentally different combinations of the cited prior art. The grounds detailed in Section VI.A rely upon Keyworth as the primary reference. The grounds detailed in Section VI.B rely on Boaz as the primary reference, and Krebs for the wherein the notification messages are received from an interface... limitations. Whereas Keyworth discloses a unified messaging system where the user is notified of messages that have already been downloaded both wirelessly and over telephone wireline, Boaz and Krebs disclose a messaging system where the user is notified of messages that have not yet been downloaded via notification messages called pointers sent over wireless communication resources for different bandwidth messages. As Patent Owner may attempt to distinguish the challenged claims based on whether independent connections with different bandwidths are disclosed by the primary reference, Keyworth should be 33

37 included for trial. Additionally, in the pending litigation Patent Owner asserted that the 973 patent is entitled to a priority date earlier than April 23, Petitioner does not agree with the Patent Owner s claims of priority; however, if Patent Owner is successful in showing its alleged earlier conception date, demonstrating the requisite diligence for its alleged priority date, and showing it was first to invent the claimed subject matter, the ground raised below with respect to Boaz and Krebs would not be redundant of the grounds raised by Keyworth. As Patent Owner, despite its apparent claim construction in litigation, may attempt to distinguish the challenged claims based on whether the user is notified of pending messages that are stored at the network services provider and not yet downloaded, Boaz and Krebs should be included for trial. Patent Owner may also attempt to distinguish the challenged claims based on the disclosure of independent wireless connections to a mobile device, so all grounds should be included for trial. 2. Boaz Like the 973 Patent, Boaz discloses an Integrated Messaging System, accessed from a user s computer, that integrates messages of different types (e.g., text, voice, facsimile) for the user from different mail systems and displays them in a single selectable list the user s in-basket. (Ex. 1211, Abstract, Fig. 12.) 34

38 (Id. at Fig. 12, annotation added.) From this list, the user may collect, generate, and act upon a message of any media type. (Id. at Abstract, 2:34 44.) When a message for a user is received at the appropriate server for that media type, the server stores the actual message at the server, creates a pointer or header, and automatically sends that pointer or header to the Integrated Messaging System. (Id. at 2:34 3:10, 3:67 5:41, 11:54 12:12, 14:20 31, 16:15 19, 18:16 43, 18:53 55, Fig. 8.) As shown in Table 6 of Boaz, this header may include various information, including information about the sender, type, or subject of the message. (Id. at 43:15 44:44.) The system uses the header to determine a message type (id. at 14:20 22, 23:12 10) and denotes the type of message by an icon (id. at 19:24 34; see also id. Fig. 18). Boaz teaches that the user can open a pending message displayed in the inbasket by selecting an Open option, or display more header information (including sender, recipient, and comments) by selecting a Properties option. (Id. at 20:13 36.) The pointers allows for the retrieval of messages when the user selects the message for retrieval. (Id. at claim 1.) The user may also copy, move, 35

39 or forward mail items with text or voice comments by selecting other options. (Id at 19:62 20:12; 20:26 54.) 3. Krebs Krebs discloses a Method for Efficient Bandwidth Utilization When Transceiving Varying Bandwidth Messages. (Ex. 1212, Title.) Specifically, Krebs discloses notifications for messages of different types. (Id. at Abstract, 4:26 5:5.) In Krebs, a central processor receives messages from different types of communication connections, such as wireline and wireless communication systems. Specifically, Krebs discloses messages that fall into at least three different categories: first, second, and third bandwidth types. (Id. at Abstract, 3:62 66, 4:14 15.) Krebs discloses that second bandwidth messages may be a single page facsimile or a long data file, and the third bandwidth messages may be multiple data files or multiple-page facsimiles. (Id. at 4:3 9.) For each second bandwidth or third bandwidth message received at the central processor, Krebs stores the message in the central processor s memory and generates a notification message of a first bandwidth to be sent to the terminal unit, which includes the originator of the message, the date sent, the length, the priority, and the cost to retrieve the corresponding message resident on the processor s memory. (Id. at 4:26 5:2.) Krebs then transmits the first bandwidth notification message over the 36

40 set of communication resources for first bandwidth messages. (Id.) The notification messages are displayed to the user, and upon a request to review the message, the central processor transmits the message over the appropriate second or third bandwidth communication resource to the communication unit, whereupon the user may view or manipulate the message. (Id. at 5:3 64.) Krebs teaches that such a system is advantageous because wireless communications require resources with bandwidths appropriate for the type of communication. (Id. at 1:31 49.) Krebs addressed the problem of excessive bandwidth use over the network. According to Krebs, [t]he present invention provides a method for more efficient bandwidth utilization when transmitting variable bandwidth messages to a communication unit. With this invention, bandwidth in a communication system is conserved by allowing the user of the communication unit to control transmission of wide bandwidth (long) messages. (Id. at 6:39 45.) 4. The combination of Boaz in view of Krebs It would have been obvious to a person of ordinary skill in the art at the time of the 973 priority date to combine Boaz with Krebs. Many factors used as guidance for obviousness lead to a decision in favor of obviousness. There is explicit teaching, suggestion, and motivation, in Boaz and Krebs themselves to combine. Boaz teaches that sending and receiving notification messages of a single format corresponding to pending messages of different types 37

41 rather than the messages themselves is an efficient way to achieve integrated messaging: The use of message pointers allows for disparate systems to merely reference a foreign message type through a predefined format, without having to directly store or interpret the foreign message body. (Id. at 14:66 15:2.) Thus, there is explicit teaching in Boaz to combine Boaz with foreign messages types, such as the three messages types of different bandwidths discloses in Krebs. One of ordinary skill in the art would be motivated by this explicit teaching in Boaz to combine Boaz and Krebs. (Ex. 1207, ) Further, Krebs explicitly teaches that its first bandwidth notification messages may be displayed in any alternative format, thus motivating a person having ordinary skill in the art to combine Krebs teachings with a system teaching a robust graphical user interface, such as Boaz. (Ex. 1211, Fig. 12; Ex. 1212, 5:11 12.) Combining Boaz and Krebs is a combination that only unites old elements with no change in their respective functions. First, because Boaz and Krebs were in the prior art, a combination of Boaz and Krebs, accordingly, is a combination of old elements. Second, a combination of Boaz and Krebs does not change the function of either Boaz or Krebs. Both Boaz and Krebs are directed to more efficiently notifying a user of different types of messages through an integrated messaging system. (Ex. 1211, Abstract, 1:12 39; Ex. 1212, Abstract, 1:25 67.) As explained above, Boaz discloses sending notification messages called 38

42 pointers to the integrated messaging system for messages of different types. (Ex. 1211, 16:14 22.) Likewise, Krebs discloses sending notifications messages that are first bandwidth messages for messages of second and third bandwidth. (Ex. 1212, 5:3 64.) A combination of Boaz and Krebs would create an integrated messaging system for messages coming from different communication connections of different bandwidths. There would be no change in either Boaz s or Krebs s function. (Ex. 1207, 97.) There is nothing unpredictable about the combination of Boaz and Krebs. Both Boaz and Krebs disclose a remote network server receiving pending messages of different types and varying bandwidths. (Ex. 1211, 2:34 44; 9:27 10:20; 15:49 16:22; Ex. 1212, 3:62 4:25.) And both Boaz and Krebs disclose sending lightweight notifications (called pointers or headers in Boaz) to the user terminal device while the messages are still pending on the server. (Ex. 1211, 3:67 5:41; Ex. 1212, 4:26 5:2.) One could easily combine Boaz and Krebs by using Krebs central processor and its algorithms for determining a bandwidth type and treating messages according to that type in the system of Boaz. In other words, Krebs central processor and its algorithms could, without much difficulty, be included in Boaz s servers to accomplish the differential treatment of messages as described in Krebs. (Ex. 1207, 98.) Such a combination would represent 39

43 nothing more than a simple combination of known prior art elements according to known methods to yield predictable results. (Id. at 98.) The following claim chart demonstrates, on a limitation-by-limitation basis, how claims of the 973 patent are rendered obvious by Boaz taken in combination with Krebs. (See also Ex. 1207, ) Claim 21 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) 21. User equipment Boaz discloses notifying a user of a pending messages. for notifying a user of pending Ex at Fig 12: messages, comprising: a. a display screen; Ex. 1211, 5:42-51: The servers 50, 52, 54 and 56 and the workstations 70, 71, 72, 73, 80 and 82 include well known components such as a keyboard, a mouse and a display. See also Ex. 1211, Fig. 1 b. an input device; Ex at 5:42-51: The servers 50, 52, 54 and 56 and the workstations 70, 71, 72, 73, 80 and include well known components such as a keyboard, a mouse and a display. See also Ex. 1211, Fig. 1 c1. a receiver for automatically receiving voice calls and notification messages corresponding to pending messages of different types, Boaz discloses a receiver for automatically receiving notification messages corresponding to pending messages of different types. Exhibit 1211, 11:54-12:12: Several examples will further explain the flow of messages through the IMS and the type of actions available to the user. The first example, an office user at workstation 70 creates, plays and sends a voice message. The voice message once completed is stored at the voice server in the voice message store and the office server 40

44 Claim 21 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) receives a pointer to the voice message. To send the message, the office server sends the voice pointer to the office inbasket of the intended recipient. Once the voice mail pointer is received at the office in-basket, the recipient s in-baskets at each of his other services are updated. Exhibit 1211, 14:63-15:14: When passing message pointers among text, voice, or other systems, the IMS acts as a conduit between the user s current system and any remote system from which the actual message may originate. The use of message pointers allows for disparate systems to merely reference a foreign message type through a pre-defined pointer format, without having to directly store or interpret the foreign message body.. As shown in FIG. 8, the IMS allows the office, voice, image, and facsimile messaging systems to share text mail pointers, i.e., items native to the office mail system, voice mail pointers, image mail pointers and facsimile mail pointers through the IMP to update the inbaskets at the mail servers. c2. each of the notification messages indicating an identity of a sender and message type of the corresponding pending message, See also Ex. 1211, 4:6 13, 18:14 28, Figs. 1 and 7 (showing communication links between the media servers and workstations, terminals, or telephones); id., Table 6 (including sample header information that is sent to the user s in-basket upon receipt of a message at the appropriate media server). Boaz discloses notification messages that include sender information and type of message. Ex at Fig. 12: 41

45 Claim 21 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) Ex. 1211, 19:24-38: The End User Interface for the IMS Inbasket window 700 as it would be presented on the display of the office workstations is shown in FIG. 12 , voice, image and facsimile mail are shown in the client area 702. Preferably, each type of mail is denoted by a different icon An message will have the sender s user id and node id 711 Alternatively, the sender s first and last name could appear instead of user id and node id after a table look-up. c3. wherein the notification messages are received from an interface with independent connections with different bandwidths for different types of pending messages; See also Ex. 1211, Table 6 (including sample header information that is sent to the user s in-basket upon receipt of a message at the appropriate media server, including fields such as USERID, NODE, and NAME for sender and DOCTYPE and STATUSTYPE). Boaz discloses wherein the notification messages are received from an interface with independent connections with different bandwidths for different types of pending messages. Boaz discloses the notification messages, or pointers, are displayed on a device having multiple communication connections of different bandwidths. Message pointers are generated at the server and sent to the user: Ex. 1211, 14:63-15:14: When passing message pointers among text, voice, or other systems, the IMS acts as a conduit between the user s current system and any remote system from which the actual message may originate. The use of message pointers allows for disparate systems to merely reference a foreign message type through a pre-defined pointer format, without having to directly store or interpret the foreign message body.. As shown in FIG. 8, the IMS allows the office, voice, image, and facsimile messaging systems to share text mail pointers, i.e., items native to the office mail system, voice mail pointers, image mail pointers and facsimile mail pointers through the IMP to update the inbaskets at the mail servers. See also Ex. 1211, Figs (Showing sending of voice and text mail notification headers to the user s IMS inbasket). 42

46 Claim 21 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) As noted above, Boaz receives message pointers for different types of messages awaiting download from a network. (e.g., Ex at 11:54-12:12.) Krebs discloses that the notification messages are displayed on a device having multiple communication connections of different bandwidths: Ex. 1212, 3:60-4:13: When a message is not received for the operable communication unit, the central processor continues to check for other received messages. When the message is received or generated by the central processor, the central processor determines whether the message is of a first bandwidth message type, a second bandwidth message type, or a third bandwidth message type 201. As briefly mentioned above with reference to FIG. 1, first bandwidth messages are short messages of at most 140 ASCII characters. Second bandwidth messages are longer messages than first bandwidth messages, but shorter than third bandwidth messages. For example, a first bandwidth message may be a phone number or a command entered from a computer keyboard, a second bandwidth message may be a single page facsimile or a long data file, and a third bandwidth message may be multiple data files or a multiple page facsimile. Thus, first bandwidth messages have narrower bandwidths than second bandwidth messages which, in turn, have narrower bandwidths than third bandwidth messages. In the most general case, the communication system only utilizes first and second bandwidth messages. d. memory; and Ex. 1211, 5:42-51: The servers 50, 52, 54 and 56 and the workstations 70, 71, 72, 73, 80 and 82 preferably belong to the IBM line of the IBM PS/2 family of personal computers running on IBM's OS/2 operating system software.they include well known components such as a system processor unit, ROM, RAM, hard and floppy disk drive storage... e. a processor including Ex :42-51: The servers 50, 52, 54 and 56 and the workstations 70, 71, 72, 73, 80 and 82 include well known components such as a system processor unit... 43

47 Claim 21 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) f. means for Structure: Ex. 1211, Fig. 6, 9:27-55 and software cited in associating a description below. See also Ex. 1207, 113. message type Function: Ex at Fig. 12: indicator with each of the received notification messages based on the message type of the corresponding pending message, g. means for displaying on the display screen an identification of the sender and the associated message type indicator for each of the received notification messages as entries in a single selectable list to allow the user to select one of the pending messages from the single selectable list for viewing, and Structure: Ex. 1211, Fig. 6, 9:27-55 and software cited in description below. See also Ex. 1207, 117. Function: Boaz discloses displaying on the display screen an identification of the sender and the associated message type indicator for the received notification messages as entries in a single selectable list. Ex. 1211,19:29-43: Preferably, each type of mail is denoted by a different icon. Envelope icon 704 represents electronic mail, the voice mail 706 is depicted as a telephone receiver over envelope. The facsimile icon 708 is a lightning bolt over an envelope and the image mail icon 710 is an eye over an envelope. An message will have the sender s user id and node id 711 and date and time 712 after the icon 704. Alternatively, the sender s first and last name could appear instead of user id and node id after a table look-up. If desired, the sender may attach a short description 713. If the voice message is created at a workstation, the user and node id appear after the telephone/envelope icon 715. The voice mail sender may also type a short description 716 of the message at the workstation keyboard. Ex. 1211, Fig. 12: 44

48 Claim 21 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) Ex. 1211, 19:62-20:20: The End User Interface for the IMS In-basket window 700 as it would be presented on the display of the office workstations is shown in FIG. 12.The action bar 724 contains the actions File, View and Help from which pull-down menus containing subactions can be generated The file pull-down has the following options: open, properties, move, copy, discard, print, send and dial. The send option has subactions; send text, voice, send facsimile, send image. Open will open the item selected; Properties will display the header information for the mail item selected such as sender, recipients, comments, etc.; Dial will autodial the sender of the mail item. h. means for directing the display screen to display detailed information about the sender of the selected pending message in response to selection by the user. Boaz disclose action bar 724 which has menu options that the user can select, including an option to open or retrieve the pending message. Structure: Ex. 1211, Fig. 6, 9:27-55 and software cited in description below. See also Ex. 1207, 121. Function: Ex. 1211, 19:62-20:19 (emphasis added): The End User Interface for the IMS In-basket window 700 as it would be presented on the display of the office workstations is shown in FIG. 12. The file pull-down has the following options: open, properties, move, copy, discard, print, send and dial. Properties will display the header information for the mail item selected such as sender, recipients, comments, etc. Claim 22 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) 22. The user equipment of claim 21, wherein the See claim 21(g), above. See 45

49 Claim 22 processor further includes means for retrieving the selected pending message for viewing and manipulation by the user. Boaz (Ex. 1211) in view of Krebs (Ex. 1212) also Ex. 1211, Fig. 6, 9:27-55, 19:29-43, Fig. 12, 19:62-20:20; Ex. 1207, 125. Claim 23 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) 23. The user Structure: Ex. 1211, Fig. 6, 9:27-55 and software cited in equipment of claim description below. See also Ex. 1207, , wherein the Function: Boaz discloses an external media server that retrieving means includes external mail servers. includes means for Ex. 1211, 2:34-51: These and other objects are accomplished accessing an by an Integrated Messaging System (IMS) which integrates external mail mail from a plurality of mail servers handling messages such server, and as electronic mail and voice mail as well as media such as facsimile, video and image. The IMS maintains synchronicity between all in-baskets for all mail systems, eliminating the need to collect and voice mail separately. In its most preferred embodiment, any terminal interface, telephone or computer workstation, can be used to generate, manipulate or receive a message of any media type. Although the capabilities of the terminal device may limit the user's ability to handle certain types of media, e.g., video. Thus, from the preferred system terminal, the user can access messaging services from any mail server in the IMS to collect, create, and act upon messages of any media type. The IMS includes a variety traditional and voice mail functions which can be used for any message. means for retrieving the selected pending message from the external mail server. Structure: Ex. 1211, Fig. 6, 9:27-55 and software cited in description below. See also Ex. 1207, 133. Function: See Ex. 1211, 2:34-51, above; see also: Ex. 1211, 14:63-15:14: When passing message pointers among text, voice, or other systems, the IMS acts as a conduit between the user s current system and any remote system from which the actual message may originate. The use of message pointers allows for disparate systems to merely reference a foreign message type through a predefined pointer format, without having to directly store or interpret the foreign message body.. As shown in FIG. 8, the IMS allows the office, voice, image, and facsimile 46

50 Claim 23 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) messaging systems to share text mail pointers, i.e., items native to the office mail system, voice mail pointers, image mail pointers and facsimile mail pointers through the IMP to update the in-baskets at the mail servers. Claim The user equipment of claim 21, wherein the message type indicator is a graphical icon, and wherein the displaying means includes means for displaying each of the sender identification and the associated graphical icons as separate entries in the single selectable list. 47 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) See Claims 21(f) and 21(g), above. See also Ex. 1211, Fig. 6, 9:27-55, 19:29-43, Fig. 12, 19:62-20:20; Ex. 1207, 137. Claim 25 Boaz (Ex. 1211) in view of Krebs (Ex. 1212) 25. The user Structure: Ex. 1211, Fig. 6, 9:27-55 and software cited in equipment of claim description below. See also Ex. 1207, , wherein the Function: Boaz discloses a Properties option that allows directing means the user to see detailed information about the sender. includes means for Ex. 1211, 19:62-20:20: The End User Interface for the IMS displaying the In-basket window 700 as it would be presented on the detailed sender display of the office workstations is shown in FIG. 12.The information for the action bar 724 contains the actions File, View and selected pending Help from which pull-down menus containing subactions message only upon can be generated The file pull-down has the following direction from the options: open, properties, move, copy, discard, print, send user. and dial. The send option has subactions; send text, voice, send facsimile, send image. Open will open the item selected; Properties will display the header information for the mail item selected such as sender, recipients, comments, etc.; Dial will autodial the sender of the mail item. Claim The user equipment of claim 21, wherein the means for displaying the detailed sender information includes means for directing the display screen to display at least one of sender home telephone number data, sender Boaz (Ex. 1211) in view of Krebs (Ex. 1212) See Claims 21(g) and 21(h), above. See also Ex. 1211, Fig. 6, 9:27-55, 19:29-43, Fig. 12,

51 Claim 26 business telephone number data, sender cellular telephone number data, sender address data, and sender fax number data. Boaz (Ex. 1211) in view of Krebs (Ex. 1212) 19:62-20:20; Ex. 1207, 145. C. Claims are rendered obvious by Greco in view of Krebs 1. Statement of Non-redundancy The grounds raised in the above sections are meaningfully distinct from each other and rely upon fundamentally different combinations of the cited prior art. The grounds detailed in Sections VI.A rely upon Keyworth as the primary reference. The grounds detailed in Section VI.B rely upon Boaz as the primary reference. Whereas Keyworth discloses a system and method for processing communications received both wirelessly and over telephone wireline, and Boaz combined with Krebs discloses a system and method for processing notifications and communications received wirelessly, Greco describes a system and a graphical user interface for voice and other messages in wireline systems. (Ex. 1209, 1:58 60, 3:32 37, Fig. 1; Ex. 1208, Abstract.) The patent owner may attempt to distinguish elements of the challenged claims based on whether the primary reference has wireless functionality. For these reasons, all grounds should be included for trial. 2. The combination of Greco in view of Krebs Greco discloses a graphical user interface for the display of voic 48

52 messages, messages, and fax messages merged into a single selectable list for the user, with a distinctive icon identifying each type of message. (Ex. 1209, Abstract, 2:18 24, Fig. 2.) (Id. at Fig. 2 (annotation added).) From this list, the user can select a message in the list and view or manipulate it by clicking various buttons, including Open, Send, Connect, Reply, Redirect, Archive, and Delete. (Id. at 5:1 30.) As detailed below, Greco explicitly teaches every element of claims 1 7 and of the 973 Patent. The Examiner agreed; as noted above on April 6, 2001 the Examiner concluded that Greco disclosed all claim limitations except and wherein the notification messages are received from an interface with independent connections for the different types of pending messages. (Ex. 1202, pp ) However, the Examiner further stated that this limitation was disclosed in Pepe. (See supra, p. 14.) The examiner then suggested that applicants further amend the claims to recite independent connections having different bandwidths for overcoming the prior art of record. (Ex. 1202, p. 257, emphasis added.) Therefore, during prosecution the only limitation that was found to be not 49

53 disclosed by Greco was wherein the notification messages are received from an interface with independent connections with different bandwidths for the different types of pending messages. However, as explained above, Krebs discloses a messaging system where a user can receive notifications of messages of different bandwidths from a central processor, then retrieve and manipulate those messages. Thus, Krebs discloses an interface with independent connections with different bandwidths. There is an explicit teaching, suggestion, and motivation to in Greco and Krebs themselves to combine. Krebs explicitly teaches that its first bandwidth notification messages corresponding to second and third bandwidth messages may be displayed in any alternative format (Ex. 1212, 5:11 12), motivating a person having ordinary skill in the art to combine Krebs with a system teaching a graphical user interface for varying bandwidth messages, such as Greco s superior user interface for voice mail that includes merged into a single list, messages and fax messages. (Ex. 1209, Abstract, 1:42.) Further, the combination of Greco and Krebs is merely a combination of old elements, here elements disclosed in prior art patents, with no change in their respective functions. Greco and Krebs are both directed to notifying a user of different types of messages and allowing the user to retrieve the messages. (Ex. 1209, Abstract, 5:1 36; Ex. 1212, Abstract, 1:25 67, 5:22 64.) In a combined system, Greco would continue to 50

54 serve its function of providing a graphical user interface for different types of messages, and Krebs would continue to serve its purpose of efficiently notifying users of and transmitting varying bandwidth messages. (Ex. 1207, 108.) The combination would also have been a predictable variation of work in the same field easily implemented by a person having ordinary skill in the art. One could easily include the central processor and algorithms taught by Krebs to determine bandwidth types of messages and handle them accordingly in the call processor 38 taught by Greco, to provide notification and message retrieval in the user interface taught by Greco. (Ex. 1207, 108.) As the patent examiner recognized in rejecting the challenged claims over Greco in view of Pepe, it would have been obvious to a person of ordinary skill to combine Greco with systems that address the transmission and notification of different types of messages. (Ex. 1202, pp ) Pepe discloses a personal communication internetwork for sending and receiving wireless and wireline messages. (Ex. 1210, claim 1.) Krebs similarly discloses a messaging system where a user can receive messages of different bandwidths and corresponding notifications. Thus, like Pepe, it would have been obvious to combine Greco with Krebs. (Ex. 1207, 108.) The following claim chart demonstrates, on a limitation-by-limitation basis, how claims of the 973 patent are obvious in light of Greco and Krebs. (See also Ex. 1207, ) 51

55 Claim 21 Greco (Ex. 1209) in view of Krebs (Ex. 1212) 21. User Greco discloses user equipment for notifying a user of equipment for pending messages. notifying a user of pending Ex. 1209, Fig. 2: messages, comprising: a. a display screen; Ex. 1209, 2:61-3:5: The programmed personal computer 14 also includes a display 20 b. an input device; Ex. 1209, 2:61-3:5: The programmed personal computer 14 also includes a display 20, a keyboard 22, a speaker 23 and a pointing device 24, such as a mouse. c.1 a receiver for automatically receiving voice calls and notification messages corresponding to pending messages of different types, c2. each of the notification messages indicating an identity of a sender and message type of the corresponding pending message, Greco discloses a receiver for automatically receiving voice calls and notification messages corresponding to pending messages of different types. Ex. 1209, Abstract: A graphical user interface for the display of voice mail message information and playing voice mail messages through a computer speaker... The display also includes, merged into a single list, messages and fax messages for the user. Greco discloses each of the notification messages indicate the identity of the message sender and the message type of the received message. Ex at Fig. 2: c3. wherein the Greco discloses that the notification messages are displayed on 52

56 Claim 21 Greco (Ex. 1209) in view of Krebs (Ex. 1212) notification a device having multiple communication connections of messages are different bandwidths such as voice, fax, or . received from an interface with For example as shown in Ex at Fig. 2: independent connections with different bandwidths for different types of pending messages; Krebs discloses a device having multiple communication connections of different bandwidths. Ex. 1212, 3:60-4:13: When a message is not received for the operable communication unit, the central processor continues to check for other received messages. When the message is received or generated by the central processor, the central processor determines whether the message is of a first bandwidth message type, a second bandwidth message type, or a third bandwidth message type 201. As briefly mentioned above with reference to FIG. 1, first bandwidth messages are short messages of at most 140 ASCII characters. Second bandwidth messages are longer messages than first bandwidth messages, but shorter than third bandwidth messages. For example, a first bandwidth message may be a phone number or a command entered from a computer keyboard, a second bandwidth message may be a single page facsimile or a long data file, and a third bandwidth message may be multiple data files or a multiple page facsimile. Thus, first bandwidth messages have narrower bandwidths than second bandwidth messages which, in turn, have narrower bandwidths than third bandwidth messages. In the most general case, the communication system only utilizes first and second bandwidth messages. d. memory; and Ex. 1209, 2:61-3:3: The housing 16 also encloses one or more disk drives, including a floppy disk drive 18 and a hard disk drive (not shown) that contains the client program which the 53

57 Claim 21 Greco (Ex. 1209) in view of Krebs (Ex. 1212) microprocessor is executing as well as data which the program requires while it is executing. Ex. 1209,7:55: A method, in a telephone switching system with a voice mail box for a called party with an extension, which system includes a memory Ex. 1209, 8:39-40: A method, in a telephone switching system with a voice mail box for a called party with an extension, which system includes a first memory for the voice mail box and a data path to a second memory, for the system e. a processor including f. means for associating a message type indicator with each of the received notification messages based on the message type of the corresponding pending message, g. means for displaying on the display screen an identification of the sender and the associated message type indicator for each of the received notification messages as entries in a single Ex. 1209, Fig. 1 Ex at 2:61-65: The programmed personal computer 14 includes a housing 16 that encloses a conventional microprocessor (such as an Intel 486 microprocessor, not shown) and other conventional electronic circuitry associated with the microprocessor. Structure: Ex. 1209, Fig. 1(element 14), 2:57-3:7 and software cited in the description below. See also Ex. 1207, 114. Function: Greco discloses that the system determines the message type and associates a distinctive icon. Ex. 1209, 2:23-24: Each type of message is associated with a distinctive icon to identify the type of message. Ex. 1209, 4:57-60: The fifth column specifies whether the message is a voice mail message 181, 182, 188, 183, 186, a fax message 184, or an message 187. Ex. 1209, Fig. 2. See claim 21(f). See also Ex. 1209, Fig. 1, 2:57-3:7, 2:23-24, 4:57-60, Fig. 2; Ex. 1207, 118. Greco discloses receiving a selection of one of the pending messages from the entries in the single selectable list. Ex. 1209, Fig. 2: 54

58 Claim 21 Greco (Ex. 1209) in view of Krebs (Ex. 1212) selectable list to allow the user to select one of the pending messages from the single selectable list for viewing, and Ex. 1209, 5:1-8 (emphasis added): Above the message information field 180 is a tool bar 189 with a button for each of the commands that a user can execute with respect to a message or a group of messages. To execute one of the commands, the user highlights one or more of the messages as shown in line 188 and then selects one of the command buttons The Open command 190 plays a voice mail h. means for directing the display screen to display detailed information about the sender of the selected pending message in response to selection by the user. message or displays a fax or message. Structure: Ex. 1209, Fig. 1, 2:57-3:7 and software cited in the description below. See also Ex. 1207, 122. Function: Greco discloses that the user can select a voic message, which causes the system to display detailed information about a sender of the selected pending message as shown in Fig. 3. Ex. 1209, 5:37-40: When the user is listening to a voice mail message, the screen display of FIG. 3 appears on the user s computer screen. The first line of information 152 shows who the message is from Claim 22 Greco (Ex. 1209) in view of Krebs (Ex. 1212) 22. The user Ex. 1209, 5:1-26 (emphasis added): Above the message equipment of information field 180 is a tool bar 189 with a button for each of 55