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Petition for Inter Partes Review Patent No. 9,531,657

UNITED STATES PATENT AND TRADEMARK OFFICE

_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________

MICROSOFT CORPORATION Petitioner

v.

MIRA ADVANCED TECHNOLOGY SYSTEMS, INC. Patent Owner

_________________

IPR2017-01411 U.S. Patent No. 9,531,657

_________________

Issued: December 27, 2016 Application No.: 14/465,840

Filed: August 22, 2014 Named Inventor: Nitesh Ratnakar

Title: Contact List With Conversation Point Reminder _________________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,531,657


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TABLE OF CONTENTS Page(s)

I. INTRODUCTION ........................................................................................... 1 II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1

A. Real Party-In-Interest ............................................................................ 1 B. Related Matters ...................................................................................... 1 C. Counsel And Service Information ......................................................... 2

III. PAYMENT OF FEES ..................................................................................... 2 IV. GROUNDS FOR STANDING ........................................................................ 3 V. UNPATENTABILITY GROUNDS ................................................................ 3 VI. BACKGROUND ............................................................................................. 3

A. The ’657 Patent ..................................................................................... 3 B. Claims .................................................................................................... 7 C. The File Histories of the ’892 and ’657 Patents .................................... 8 D. Person Having Ordinary Skill In The Art ............................................. 9 E. The Prior Art ......................................................................................... 9

1. Sony........................................................................................... 10 2. Matsumoto ................................................................................ 12 3. Scott........................................................................................... 13 4. Neilsen....................................................................................... 14

VII. DETAILED EXPLANATION OF GROUNDS ............................................14 A. Ground 1: Claims 1-4 and 9-12 Are

Obvious In Light of Sony In View of Matsumoto .............................. 14 1. Claim 1 ...................................................................................... 15

a) Element 1.1: “A method, performed by a communication device, for reminding a user of the communication device of a conversation point for a future communication” ................................. 15

b) Element 1.2: “the communication device having a processor and a display screen” ....................... 16


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c) Element 1.3: the communication device having access to a memory storing a contact list having a list of contact list entries, each contact list entry of the contact list including a first field configured to retrieve a stored communication address of a corresponding entity of the respective contact list entry, a second field configured to retrieve a stored name identifying the corresponding entity, and a memo field configured to attach memo data inputted by the user and displayable to show at least one memo which can be served to remind the user of a conversation point for a future communication between the user and the corresponding entity, the method comprising .......... 16

d) Element 1.4: “(a) receiving, by the processor, a first input indicating a need to activate a first contact list entry of the contact list for the user to perform at least one of receiving and requesting a communication addressed to the stored communication address of the first contact list entry” ... 26

e) Element 1.5: “(b) checking, by the processor after step (a), whether there is memo data that is attached to the memo field of the first contact list entry” ............. 30

f) Element 1.6: “(c) activating, by the processor, the first contact list entry, such that during the activating of the first contact list entry, the user performs at least one of receiving, requesting, drafting and conducting the communication addressed to the communication address of the first contact list entry” ... 31

g) Element 1.7: “(d) causing, by the processor, a first indication indicating a presence of the at least one memo of the attached memo data, to be automatically displayed on the display screen during the activating of the first contact list entry, when it is detected in the step (b), by the processor, that there is memo data attached to the memo field of the first contact list entry” ............. 32

2. Claim 2 ...................................................................................... 35


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a) “The method of claim 1, wherein the stored communication address of the first contact list e ntry of the contact list is a phone number of the corresponding entity of the first contact list entry.” ....... 35

3. Claim 3 ...................................................................................... 35 a) “The method of claim 2, wherein the first

input indicates that an incoming phone call from the phone number of the first contact list entry of the contact list is received.” ........................ 35

b) “and during the activating of the first contact list entry, the user accepts the incoming phone call and conducts the incoming phone call with the corresponding entity of the first contact list entry using the communication device as a result of the user's accepting the incoming phone call.” .......... 36

4. Claim 4 ...................................................................................... 36 a) The method of claim 2, wherein the first input

indicates a request that the phone number of the first contact list entry of the contact list be dialed for an outgoing phone call, and ...................................... 36

b) during the activating of the first contact list entry, the phone number of the first contact list entry is dialed for the outgoing call and the user conducts the outgoing phone call with the corresponding entity of the first contact list entry using the communication device as a result of the outgoing phone call being received and accepted by the corresponding entity of the first contact list entry. ... 37

5. Claim 9 ...................................................................................... 37 a) “The method of claim 1, wherein the

first indication comprises contents of the at least one memo of the memo data.” ...................... 37

6. Claim 10 .................................................................................... 38 a) “The method of claim 1, the memo data

attached to the memo field of the first contact


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list entry comprises at least one of text, audio, image and video that is displayable or otherwise playable to show the at least one memo of the memo data.” ........ 38

7. Claim 11 .................................................................................... 38 a) “The method of claim 1, wherein the step (b) of

checking of whether there is memo data that is attached to the memo field of the first contact list entry is performed before or during the step (c) of activating the first contact list entry.” ................... 38

8. Claim 12 .................................................................................... 39 a) “The method of claim 1, the user is

provided by the communication device at least one option to erase, save or edit memo data attached to the memo field of the first contact list entry at the end of the communication.” .................. 39

B. Grounds 2 & 3: Claims 5-8 Are Obvious In Light Of Matsumoto In View of Either Scott And/Or Neilsen .................... 41 1. Claim 1 ...................................................................................... 42

a) Element 1.1: “A method, performed by a c ommunication device, for reminding a user of the communication device of a conversation point for a future conversation” ...................................... 42

b) Element 1.2: “the communication device having a processor and a display screen” ....................... 43

c) Element 1.3: “the communication device having access to a memory storing a contact list having a list of contact list entries, each contact list entry of the contact list including a first field configured to retrieve a stored communication address of a corresponding entity of the respective contact list entry, a second field configured to retrieve a stored name identifying the corresponding entity, and a memo field configured to attach memo data inputted by the user and displayable to show at least one memo which can be served to remind the user of a conversation point for a


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future communication between the user and the corresponding entity, the method comprising” .............. 44

d) Element 1.4: “(a) receiving, by the processor, a first input indicating a need to activate a first contact list entry of the contact list for the user to perform at least one of receiving and requesting a communication addressed to the stored communication address of the first contact list entry” ... 46

e) Element 1.5: “(b) checking, by the processor after step (a), whether there is memo data that is attached to the memo field of the first contact list entry” ............. 48

f) Element 1.6: “(c) activating, by the processor, the first contact list entry, such that during the activating of the first contact list entry, the user performs at least one of receiving, requesting, drafting and conducting the communication addressed to the communication address of the first contact list entry” ... 51

g) Element 1.7: “(d) causing, by the processor, a first indication indicating a presence of the at least one memo of the attached memo data, to be automatically displayed on the display screen during the activating of the first contact list entry, when it is detected in step (b), by the processor, that there is memo data attached to the memo field of the first contact list entry.” ............ 54

2. Claim 5 ...................................................................................... 57 a) “The method of claim 1, wherein the stored

communication address of the first contact list entry of the contact list is a messaging address of the corresponding entity of the first contact list entry.” . 57

3. Claim 6 ...................................................................................... 72 a) “The method of claim 5, wherein the first input indicates

a request that the messaging address of the first contact list entry be selected to send a message to the corresponding entity of the first contact list entry, and during the activating of the first contact list entry, the user operates a messaging client displayed on the display


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screen to compose and send the message to the corresponding entity of the first contact list entry.” ....... 72

4. Claim 7 ...................................................................................... 74 a) “The method of claim 5, wherein the stored

communication address of the first contact list entry of the contact list comprises an email address of the corresponding entity of the first contact list entry.” ....... 74

5. Claim 8 ...................................................................................... 74 a) “The method of claim 7, wherein the first input

indicates a request that the email address of the first contact list entry be selected to send a message to the corresponding entity of the first contact list entry, and during the activating of the first contact list entry, the user operates an email client displayed on the display screen to compose and send the email to the corresponding entity of the first contact list entry.” ....... 74

VIII. CONCLUSION ..............................................................................................75


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TABLE OF AUTHORITIES Page(s)

Cases Arendi S.A.R.L. v. Apple,

832 F.3d 1355 (Fed. Cir. 2016) ...........................................................................40 Constant v. Advanced Micro-Devices Inc.,

848 F.2d 1560 (Fed. Cir. 1988) ............................................................................. 6 In re Epstein,

32 F.3d 1559 (Fed. Cir. 1994)................................................................... 6, 25, 29 In re Fridolph,

134 F.2d 414 (C.C.P.A. 1943) .............................................................................70 KSR Int’l v. Teleflex,

550 U.S. 398 (2007) ..................................................................................... passim Perfect Web v. InfoUSA,

587 F.3d 1324 (Fed. Cir. 2009) ...........................................................................40 Ruiz v. AB Chance,

357 F.3d 1270 (Fed. Cir. 2004) ...........................................................................23 Transclean Corp. v. Bridgewood Servs.,

290 F.3d 1364 (Fed. Cir. 2002) ...........................................................................29 Statutes 35 U.S.C. § 102 ................................................................................................. 10, 42 35 U.S.C. § 103 ....................................................................................................3, 23 37 C.F.R. § 42.10 ....................................................................................................... 2


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LIST OF EXHIBITS

EX-No. Description

1001 U.S. Patent No. 9,531,657

1002 Declaration of Peter Rysavy

1003 Prosecution History of U.S. Patent No. 8,848,892 (excerpted)

1004 U.S. Patent No. 7,130,617 (“Matsumoto”)

1005 European Patent Publication 1739937 (“Sony”)

1006 Rick Greenwald et al., Professional Oracle Programming (Wiley Publishing 2005) (excerpted)

1007 Phil Race et al., 500 Computing Tips for Teachers and Lecturers (Stylus Publishing 2d ed. 1999) (excerpted)

1008 Chris Oxlade, The Inside & Out Guide to Inventions (David West Children’s Books 2006) (excerpted)

1009 U.S. Patent No. 7,822,434 (“Scott”)

1010 U.S. Patent Publication 2006/0195518 (“Neilsen”)

1011 U.S. Patent No. 8,848,892


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I. INTRODUCTION

Microsoft Corporation (“Petitioner”) requests inter partes review (“IPR”) of

claims 1-12 of U.S. Patent No. 9,531,657 (“the ’657 patent”), which, according to

PTO records, is assigned to Mira Advanced Technology Systems, Inc. The claims

should be found unpatentable and canceled.

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8

A. Real Party-In-Interest

Microsoft Corporation, located at One Microsoft Way, Redmond, WA 98052.

B. Related Matters

The ’657 patent is at issue in the following: Mira Advanced Technology

Systems, Inc. v. Microsoft Corporation, Case No. 2:16-cv-88 (N.D.W.V.). Pending

U.S. Patent Application 15/390,707, filed December 26, 2016, alleges priority to the

same application as the ’657 patent. A petition in IPR2017-01052, filed by Microsoft

on March 9, 2017, seeks review of U.S. Patent No. 8,848,892, to which the ’657 patent

claims priority.


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C. Counsel And Service Information

Lead and back-up counsel (and service information):

Lead Counsel Andrew M. Mason, (Reg. No. 64,034) KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204 Telephone: (503) 595-5300 Facsimile: (503) 595-5301 [email protected]

Back-Up Counsel John D. Vandenberg (Reg. No. 31,312) KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204 Telephone: (503) 595-5300 Facsimile: (503) 595-5301 [email protected]

J. Christopher Carraway (pending pro hac vice admission) KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204 Telephone: (503) 595-5300 Facsimile: (503) 595-5301 [email protected]

Service on Microsoft may be made by mail or hand delivery to: Klarquist

Sparkman, LLP, 121 S.W. Salmon Street, Suite 1600, Portland, OR 97204. The fax

number for lead and back-up counsel is (503) 595-5301. Microsoft consents to service

via email at the above addresses. Pursuant to 37 C.F.R. § 42.10(b), a Power of

Attorney executed by Petitioner for appointing the above counsel is concurrently filed.

III. PAYMENT OF FEES

The required fees are submitted herewith. The PTO is authorized to charge any

additional fees due during this proceeding to Deposit Account No. 02-4550.

mailto:[email protected]




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IV. GROUNDS FOR STANDING

Petitioner certifies that the ’657 patent is available for IPR and Petitioner is not

barred or estopped from requesting IPR on the identified grounds.

V. UNPATENTABILITY GROUNDS

Claims 1-12 of the ’657 patent should be canceled as unpatentable on the

following grounds:

Ground 1: Claims 1-4 and 9-12 are obvious under § 103 in view of European

Patent Publication 1739937 (“Sony”) (EX-1005) and U.S. Patent No. 7,130,617

(“Matsumoto”) (EX-1004).

Ground 2: Claims 5-8 are obvious under § 103 in view of Matsumoto and U.S.

Patent No. 7,822,434 (“Scott”) (EX-1009).

Ground 3: Claims 5-8 are obvious under § 103 in view of Matsumoto and U.S.

Patent Publication 2006/0195518 (“Neilsen”) (EX-1010).

For each, the petition demonstrates at least a reasonable likelihood that each

challenged claim is unpatentable.

VI. BACKGROUND

A. The ’657 Patent

The ’657 patent claims priority to the application of U.S. Patent No. 8,848,892

(“the ’892 patent”) and incorporates by reference its disclosure. (’657 patent, 1:7-12).


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The ’657 patent claims a method for displaying a reminder to the user of a

communication device for a future communication with a contact. It focuses on two

features: storing a “memo” along with contact information, and displaying that memo

when, for example, the contact calls or is called by the user or when the user initiates

an email message with the contact. (Id., 1:36-45).

The first of these two features is memo storage. The ’657 patent admits that

contact lists in communication devices were already “common,” including those in

which users were “able to enter and save name, address, phone, fax, and email into a

contact list entry having multiple contact entries.” (Id., 1:18-25). The ’657 patent

adds a “memo” field to the existing contact list fields of name, number, email address,

etc. (Id., 2:14-22). An exemplary “contact list template” with the added “memo” field

is shown in the Figure 1:

This memo field is one column in a simple array having rows for contact list entries

and columns for information fields (such as name, phone, email, and memo).


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The parent ’892 patent, expressly incorporated into the ’657 patent by reference,

notes two alternative methodologies for storing memo data. First, “[d]ata field for

memo can be integrated within contact list entry.” (EX-1011, 2:8-9). That method is

illustrated in Figure 1 above, with memo data included as one field integrated within

the contact list along with other fields such as name and number. Second,

“alternatively data field for memo can be in a separate database and memo and

corresponding contact list entry can be related by means of link for co-functionality.”

(Id., 2:9-12). This second method would involve, for example, not having a memo

field in the Figure 1 table but, instead, having a separate table that included memo data

with a link (or key) for each memo to the contact entry to which it corresponds. Both

of these alternative methods were well know database structures at the time the ’892

patent’s application was filed. (EX-1002, ¶103).

The second aspect of the ’657 patent is the reminder feature. For both incoming

and outgoing communications with a contact, the communication device checks if the

memo field is populated for that contact and, if so, displays the memo. (’657 patent,

2:24-46, Figs. 2-4).

Beyond stating the idea of including a memo as an additional field of a contact

list and then displaying the associated memo in response to a communication with that

contact, the ’657 patent provides no technical details about how to implement such an

idea. Likewise, no technical details are provided in the specification about the generic


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“communication device” other than the functions it performs and that it has something

on which to “display” the memo. (Id., 2:24-46). The claims supplement that

description, but only by adding that the generic “communication device” has a

“processor” and a “memory.”

It is therefore to be presumed that a person having ordinary skill in the art prior

to the claimed priority date would have known—wholly apart from the specification—

at least the following:

• the admitted prior art, i.e., communication devices on which users could

enter and save name, phone, and email into a contact list having contact

entries (see Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560,

1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the

prior art is binding on the applicant and patentee for determinations of

anticipation and obviousness.”)); and

• the hardware to be used (a communication device having a processor and

display) and how to implement the claims with it, which is not disclosed

with any detail in the specification (see In re Epstein, 32 F.3d 1559, 1568

(Fed. Cir. 1994) (“[W]e find that the disclosure of appellant’s system fails

to provide the same detailed information concerning the claimed

invention. In the absence of such a specific description, we assume that

anyone desiring to carry out such computerized warehousing and


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inventory control systems would know of the equipment and techniques

to be used.”).1

B. Claims

The ’657 patent has a single independent claim, claim 1, which recites a method

“for reminding a user of the communication device of a conversation point for a future

communication.” Claim 1 also recites a “memory storing a contact list” with fields

for an entity’s “communication address” and “name,” and a field attaching “memo

data inputted by the user and displayable … to remind the user of a conversation point

for a future communication between the user and the corresponding entity.” Claim 1

also recites four general steps:

• (a) “receiving” an “input” indicating the need to perform at least one of

“receiving and requesting a communication addressed to the stored

communication address of the first contact list entry”;

• (b) “checking … after step (a), whether there is memo data that is attached

to the memo field of the first contact list entry”;

1 For example, because the ’657 patent specification never mentions a processor,

much less a processor carrying out the steps claimed to be carried out “by the

processor,” it would have been within the presumed prior knowledge of a person of

ordinary skill to carry out the claimed elements using a processor.


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• (c) “activating” the contact list entry so that “the user performs at least

one of receiving, requesting, drafting and conducting the communication

addressed to the communication address of the first contact list entry”;

and

• (d) “causing” the automatic display of an “indication indicating a

presence of the at least one memo of the attached memo data.”

Dependent claims 2-4 limit claim 1 to a phone number as the “communication

address” and an incoming or outgoing phone call with that phone number as the trigger

for the display of the memo indication. (See EX-1002, ¶52). Claims 5-6 limit claim

1 to a “messaging address” as the “communication address” and a user’s request to

send a message to that messaging address as the trigger for the display of the memo

indication. (Id., ¶53). Claims 7-8 further limit the method of claim 5 to an “email

address” as the “communication address” and a user’s request to send an email

message to that email address as the trigger for the display of the memo indication.

(Id., ¶53). Claims 9-12 provide other limitations on the method of claim 1. (Id., ¶¶55-

58).

C. The File Histories of the ’892 and ’657 Patents

The ’657 patent claims priority to U.S. Patent Application No. 12/049,326, filed

March 15, 2008, which issued as the ’892 patent. (’657 patent, 1:7-12). Claim 1 of

the ’657 patent is similar to independent claims 1 and 6 of the ’892 patent, with the


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same four general steps, except that ’657 patent claim 1 is broader by reciting any

“communication address” (not just a phone number) and claiming a trigger of a

reminder by either an incoming or outgoing communication.

In the parent application that issued as the ’892 patent, the Office rejected all

claims several times (e.g., EX-1003, pp.10, 33), and, in response, the applicant

amended the claims and made arguments distinguishing the prior art (e.g., id., pp.4,

19). A general distinction the applicant repeatedly made was that the cited art did not

disclose a memo being displayed automatically in response to a communication. (Id.,

pp.7, 26).

D. Person Having Ordinary Skill In The Art

In 2007-2008, a person having ordinary skill in the art (“POSITA”) would be

someone with a bachelor’s degree in computer science, computer engineering, and/or

electrical engineering or at least four years of designing and implementing software

features for cellular phones or smartphones.2 (EX-1002, ¶49).

E. The Prior Art

The prior art relied on in support of this Petition is listed in the chart below and

was not considered by the Patent Office during its examination.

2 Petitioner submits the declaration of Peter Rysavy, an expert in the field of the

’657 patent. (EX-1002, ¶¶3-11, 50).


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Each reference discloses storing a reminder in association with a contact and

automatically displaying that reminder in response to a communication with the

contact—the very feature that the applicant repeatedly cited as being missing from the

prior art of record during prosecution. All four disclose this functionality in

association with phone calls; Scott and Neilsen further disclose this functionality in

association with email messages.

1. Sony

Sony discloses a “wireless communication system” with a display, processor,

and input keys. (Sony, ¶0026). Sony’s system also includes storage for storing an

electronic “phonebook” with contact identification information, such as names, phone

numbers, and email addresses. (Id., ¶0027). The system also stores “reminders” that

can be input by the user through a series of menu options. (Id., ¶0030). “[E]ach

reminder is coupled to an identification information stored in the phonebook, which

may be a name, a phone number, an e-mail address or the like.” (Id., ¶0030). Sony

includes a flow chart showing the steps by which a reminder is displayed automatically

Exhibit No.

Short Name

(Effective) Filing Date

Issue/Publication Date

Prior Art Under 35 U.S.C. §

1004 Matsumoto Feb. 28, 2001 Oct. 31, 2006 102(b)

1005 Sony June 29, 2005 Jan. 3, 2007 102(b)

1009 Scott May 9, 2006 Oct. 26, 2010 102(e)

1010 Neilsen April 17, 2003 Aug. 31, 2006 102(b)


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when the system detects a communication with a contact for which there has been

stored a coupled reminder, as well as an exemplary display of a reminder:

(Id., Figs. 3-4).


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2. Matsumoto

Matsumoto discloses a “mobile phone” that stores a data “table … concerning

personal information,” including telephone number, name, email address, and “subject

of notes.” (Matsumoto, Fig. 3). If a call does not go through, Matsumoto discloses

that the user may “input … the subject of notes which should have been conveyed.”

(Id., 8:54-57). When an outgoing or incoming call is initiated with a contact in the

table, the system checks to see if notes are recorded for the number, and, if so,

automatically displays the notes before continuing with the call. (Id., Figs. 4-5). The

flow chart for the incoming call is shown below:


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(Id., Fig. 5).

3. Scott

Scott discloses a handheld communication device that includes an “address

book” for storing contact information including name, phone number, and email

address. (Scott, 4:20-21, 4:45-54, Fig. 3). Scott also allows a user to store in the

address book a memo reminder about the contact’s preferred language. (Id., 4:54-67,

Fig. 3). When a phone call occurs with that contact, the device checks the address

book to see if the contact has a preferred language, and if so, automatically reminds

the user by displaying the language in a “pop-up window.”


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(Id., 6:19-26, Fig. 1 (partial)). “As a result, the user will be reminded that he or she

should initiate or answer the phone call, whichever the case may be, in the preferred

language.” (Id., 6:28-31). Scott’s reminder system also works for email: when the

user selects an address for a new email message, the system checks to see if that contact

has a preferred language and, if so, automatically displays a “pop-up dialog box … to

remind the user” of that language to use in the email conversation. (Id., 5:10-40).

4. Neilsen

Neilsen discloses a system in which reminders can be associated with any

number of applications and an identifier within an application. (Neilsen, Abstract,

¶¶0004, 0006). Examples provided by Neilsen are reminders associated with a

contact’s phone number in a call handling application and with a contact’s email

address in an email application. (Id., ¶¶0007, 0009, 0012). A reminder display is then

triggered by a communication with the contact. (Id., ¶¶0006, 0007, 0009, 0056). Thus,

when the call handler application next detects a call with a phone number, the reminder

is displayed. (Id., ¶¶0009, 0045). Likewise, when the email address is present on an

email message, the reminder is displayed. (Id., ¶¶0006, 0007, 0012).

VII. DETAILED EXPLANATION OF GROUNDS

A. Ground 1: Claims 1-4 and 9-12 Are Obvious In Light of Sony In View of Matsumoto

Sony expressly discloses every element of claims 1-4 and 9-12, except for

potentially the specific storage format of the memo data recited in element 1.3, in


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which the memo data is stored in a field within the contact list along with name and

communication address information. (See §§A.1-A.8). While Sony suggests that its

memo data could be stored in the same storage as the name and phone number, Sony’s

preferred embodiment places the memo in a separate storage coupled to the name and

number. (See §A.1.c). The separate-but-coupled storage in Sony’s embodiment is at

the very least an obvious variation of the single storage recited in element 1.3. (See

§A.1.c). Furthermore, it would have also been obvious to combine the single-storage

teaching of Matsumoto with Sony’s disclosure of all other elements of claims 1-4 and

9-12. (See §A.1.c).

1. Claim 1

a) Element 1.1: “A method, performed by a communication device, for reminding a user of the communication device of a conversation point for a future communication”

Sony discloses “electronic equipment 1,” such as a cell phone, that “is able to

transmit and receive information in a wireless communication system.” (Sony, ¶0024,

0026). The equipment in Sony performs a method in which a user can input a textual

reminder. (Id., ¶¶0011, 0030, Fig. 2a; EX-1002, ¶94). When the user next calls or is

called by the number stored for that contact, the equipment displays the reminder

before connecting the call. (Id., ¶¶0032-0033, Figs. 3-4; EX-1002, ¶94).


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b) Element 1.2: “the communication device having a processor and a display screen”

Sony discloses a “central control unit 5, which can e.g. be embodied in a

microprocessor, central processing unit or the like. The central control unit 5 controls

the operation of the electronic equipment 1.” (Sony, ¶0026). Sony also discloses an

“output means 8,” which “corresponds to a display and/or loudspeakers.” (Id.).

c) Element 1.3: the communication device having access to a memory storing a contact list having a list of contact list entries, each contact list entry of the contact list including a first field configured to retrieve a stored communication address of a corresponding entity of the respective contact list entry, a second field configured to retrieve a stored name identifying the corresponding entity, and a memo field configured to attach memo data inputted by the user and displayable to show at least one memo which can be served to remind the user of a conversation point for a future communication between the user and the corresponding entity, the method comprising

Sony discloses, at the very least, nearly all of element 1.3 and an obvious

variation (i.e., a linked memo) of the remainder (i.e., a memo field). (EX-1002, ¶¶96-

111). Moreover, Matsumoto expressly discloses that remainder of element 1.3, and it

would have been obvious to a POSITA to combine the teachings of Sony and

Matsumoto. (EX-1002, ¶¶103-111, 152-154).

Sony’s contact list is “phonebook 2” (also called “storage 2”). (Sony, ¶027;

EX-1002, ¶96). The phonebook is “for storing identification information, e.g. phone


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numbers, e-mail addresses and the like and additional information relating to the

identity such as names, images and/or the like.” (Sony, ¶0027). “These identification

information serve for identifying a second electronic equipment. In a simple

embodiment in the phonebook 2 just pairs of phone numbers and names of

communication partners are stored.” (Id.). Phone numbers and e-mail addresses

constitute “communication addresses.” (EX-1002, ¶96).

Sony also discloses storing a memo field configured to attach memo data

inputted by the user and displayable to show at least one memo which is served to

remind the user of the conversation point for a future communication between the user

and the corresponding entity. (EX-1002, ¶97). Specifically, Sony describes “reminder

storage 3 for storing reminders, whereby these reminders serve for reminding the user

of a certain event.” (Sony, ¶0027).

Sony’s reminders are input by using “input means 7” through a series of “menu

options,” as shown in Figure 2a:

(Ex. 1005, Fig. 2a (annotated in red), ¶¶0026, 0030).


18

The menu options allow the user to “choose between editing a new reminder,

changing an already existing reminder or deleting and [sic] already existing reminder.”

(Sony, ¶0030). When creating a reminder, the user also inputs “identification

information” (e.g., phone number or email address) so the device can associate the

reminder in storage 3 with identification information in phonebook 2. (Id. (“each

reminder is coupled to an identification information stored in the phonebook which

may be a name, a phone number, an e-mail address or the like”). “[T]he user may

have the possibility to input a specific text for the reminder.” (Id.).

As discussed above, the phonebook storage 2 with contact information is linked

to the reminder storage 3 so that a reminder can be associated with a specific contact:

The method according to the present invention comprises

the steps of storing in a storage identification information for

identifying a second electronic equipment and storing in said

storage reminders for reminding the user of a certain event,

whereby each reminder is coupled to an identification

information …

(Sony, ¶¶0011; EX-1002, ¶100).

The main idea underlying the present invention is to couple

a reminder to an identification information stored in the

phonebook 2.

(Sony, ¶0029).


19

Obviousness Based on Sony Alone: Sony’s preferred embodiment does not

employ reminders maintained in the same storage as the contact names and

communication addresses. (EX-1002, ¶101). Sony suggests, however, that the contact

information and reminders could be stored together as fields in one contact list. (EX-

1002, ¶101). For example, Sony explains that the storage could store “any kind of

data and/or information” and, permissively, “may comprise several separated

storages.” (Sony, ¶ 0027 (emphasis added); EX-1002, ¶101). This suggests to a

POSITA that “several separated storages” is an option but is not necessarily required

and that one non-separated storage for all data, including the name, number, e-mail

address, and reminder data, is an alternative storage method. (EX-1002, ¶101).

Moreover, a POSITA understood in 2008 that if the design goal or need was to

store related information, there were a limited number of conventional alternatives,

including storing the related information together in the same database table or storing

it in separate database tables with links to associate the information in one table with

information in the other. (EX-1002, ¶103). For example, a POSITA would have had

the following knowledge of database design:

In this chapter, we cover some of the key technologies

used to link together distributed data and databases. For

example, distributed Oracle databases can be tied together

by establishing a database link from one database to

another. … An alternative to deploying distributed


20

databases used by many organizations is to instead

consolidate the data to a single database.

(EX-1006, p.315; see also EX-1007, p.38; EX-1002, ¶103). A POSITA understood

that the central concept in distributed database systems is a database link—a

connection between two physical database servers that allows a client to access them

as one logical database. (EX-1002, ¶103). A POSITA understood that these two

techniques (single database, or multiple databases with a link) were simple design

choices and known equivalents that could be substituted with rudimentary skill to

achieve the same straightforward result of storing information in a way that allowed

related information to be accessed. (Id.). See KSR Int’l v. Teleflex, 550 U.S. 398, 421

(2007) (“When there is a design need or market pressure to solve a problem and there

are a finite number of identified, predictable solutions, a person of ordinary skill has

good reason to pursue the known options within his or her technical grasp. If this leads

to the anticipated success, it is likely the product not of innovation but of ordinary skill

and common sense.”).

This conclusion is buttressed by the simple nature of the data required by claim

1, specifically, “a list of contact entries” (i.e., two or more) and just three fields of data

(name, communication address, and memo). (EX-1002, ¶103). This minimum contact

data required to be stored by claim 1 (three fields and two entries) is so small that a

POSITA would perceive no challenges to changing from one of these known database


21

alternatives to the other and would have had no doubt about success. (Id.). “[W]hen a

patent claims a structure already known in the prior art [such as a contact list with three

fields together] that is altered by the mere substitution of one element for another

known in the field [such as the two storages with linked data in Sony], the combination

must do more than yield a predictable result” to be non-obvious. KSR, 550 U.S. at

416. Here, claim 1 merely substitutes one known equivalent in the field for another

with a well-known and predictable result. Thus, a POSITA would have found this

element obvious in view of Sony alone.

Obviousness Based on Sony and Matsumoto: Even if storing memo data in the

same storage as the name and communication address was not obvious based on Sony

alone, a POSITA would have found it obvious to combine the teachings of Sony with

the Matsumoto’s disclosure of a single contact list containing all three fields. (EX-

1002, ¶¶106, 111). Matsumoto discloses a contact list with a field (labeled 201 in Fig.

3) configured to retrieve a stored phone number of a corresponding entity of the

respective contact list entry, fields (labeled 202 and 203) configured to retrieve a stored

communication address (phone number or email address) identifying the

corresponding entity, and a field (labeled 204) configured to attach memo data inputted

by the user and displayable to show at least one memo which is served to remind the

user of the conversation point for the future phone call between the user and the

corresponding entity.


22

(Matsumoto, Fig. 3 (annotated in red); see infra §B.1.c).

A POSITA would have been motivated to combine Matsumoto’s single-storage

technique with Sony’s separate-but-linked storage technique for a number of reasons.

(EX-1002, ¶106). For example, as stated above, a POSITA at the time understood that

the techniques of storing information together in the same database table and storing

information in separate database tables with links to associate the information of the

two tables were known equivalents in the art to achieving the common purpose of

storing and accessing related data, and that they amounted to at most a trivial change

with a predictable result. (EX-1002, ¶108). This knowledge of the POSITA of these

equivalent storage techniques would have motivated him or her to substitute

Matsumoto’s storage technique for the one in Sony’s embodiment. (Id.). See KSR,

550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation,

“Contact list entry”

Number field Name field Memo field Email field


23

§ 103 likely bars its patentability. For the same reason, if a technique has been used

to improve one device, and a person of ordinary skill in the art would recognize that it

would improve similar devices in the same way, using the technique is obvious unless

its actual application is beyond his or her skill.”); Ruiz v. AB Chance, 357 F.3d 1270,

1276 (Fed. Cir. 2004) (where prior art showed differing load-bearing members and

differing means of attaching the foundation to the member, it would have been obvious

to a POSITA to substitute the prior art’s metal bracket for the patent’s concrete haunch

for the predictable result of transferring the load).

A POSITA would also have been motivated to combine the disclosures of

Matsumoto and Sony because the two references:

• both address the same need to provide a device user a reminder about a

specific contact in a subsequent communication between the contact and

the user (EX-1002, ¶108); and

• both address that need on a phone using the same general solution in

which, when a call is received or dialed, checking to see if there is a

note associated with the contact and, if so, displaying the note to the

user before the call is connected. (Id.).

Indeed, the expressly disclosed storage format of their embodiments is essentially the

only distinction between how Sony and Matsumoto apply to claim 1 of the ’657 patent.

Matsumoto discloses every element of claim 1 (see infra §§B.1.a-B.1.g), while Sony


24

expressly discloses every element of claim 1 except for potentially the specific single-

storage format of the memo data recited in element 1.3 (see supra §§A.1.a-A.a.g),

although, as discussed above, Sony at the very least suggests to a POSITA that a single

data storage may be used. Because Matsumoto and Sony are so similar, both on their

own and in their application to claim 1, a POSITA would have been motivated to look

to one of them for any modifications to the other, including the database format. (EX-

1002, ¶109).

Moreover, there is nothing in Sony that would have been viewed by a POSITA

as technically incompatible with employing the single-storage format of Matsumoto

in place of Sony’s coupled-storage embodiment, or vice-versa. (EX-1002, ¶110).

Indeed, Sony at the very least suggests this single-storage alternative by explaining

that its storage could store “any kind of data and/or information” and (permissively)

“may comprise several separated storages.” (Sony, ¶0027; EX-1002, ¶¶101, 110). In

fact, a POSITA would have been affirmatively motivated to switch from the multiple,

linked storages of the Sony embodiment to Matsumoto’s single storage in part because

it would have been a simpler database format and thus easier to code. (EX-1002,

¶110).

Finally, the ’657 patent itself illustrates how these were known alternatives for

storing information by 2008. (EX-1002, ¶102). Specifically, the ’657 patent expressly

incorporates by reference its parent ’892 patent, which states:


25

Data field for memo can be integrated within contact list

entry; alternatively data field for memo can be in a

separate database and memo and corresponding contact

list entry can be related by means of link for co-

functionality.

(EX-1011, 2:8-12). While disclosing both alternatives, the ’657 patent claims only the

former, single-storage embodiment. (EX-1002, ¶102). Thus, the ’657 patent

recognizes the separate-but-coupled storage of information as an alternative to having

all information in a single table, further showing the motivation to combine the

disclosures of Sony and Matsumoto. (Id.). Because the ’657 patent does not disclose

any implementation details regarding how one would create the alternative separate-

but-linked database nor how one would convert a single contact list to the linked-

database alternative, it must be presumed that the linked database and conversion to

that from a single contact list were within the skill of a POSITA. (Id.). In re Epstein,

32 F.3d at 1568 (“In the absence of such a specific description, we assume that anyone

desiring to carry out such computerized warehousing and inventory control systems

would know of the equipment and techniques to be used.”).3

3 Given this motivation to combine the teachings of Matsumoto and Sony, the

nearly identicial overlap between Matsumoto and Sony, and the fact that Matsumoto


26

d) Element 1.4: “(a) receiving, by the processor, a first input indicating a need to activate a first contact list entry of the contact list for the user to perform at least one of receiving and requesting a communication addressed to the stored communication address of the first contact list entry”

In Sony, the receiving function for an incoming or outgoing communication is

illustrated as Steps S2-S4 in Figure 3:

discloses every element of claim 1 (see §§B.1.a-B.1.g), a POSITA would have been

motivated to look to Matsumoto to supply any other elements of claim 1 that Patent

Owner might argue are expressly missing in Sony. (EX-1002, ¶109).


27

(Sony, Fig. 3 (annotated in red)). At step S2, the system determines “if the

communication means 6 is establishing a communication to the second electronic

equipment, i.e. sending/receiving information via the wireless communication

system.” (Sony, ¶0032; EX-1002, ¶112). The “first input” of the receiving step would

be an indication that the device is receiving a communication from another device or


28

that the user is trying to initiate a communication with another device. (EX-1002,

¶112). If the system is sending or receiving information, “then in step S3 the detection

means will detect the identification information [e.g., number] of the second electronic

equipment to which the communication means 6 is sending information or from which

the communication means 6 is receiving information and in a further step S4 the

detection means checks if the identification information [e.g., number] of the second

electronic equipment corresponds to a stored identification information” in the

phonebook. (Sony, ¶0032; EX-1002, ¶112).

These steps, as well as all other functions of the Sony device, are performed by

the “central control unit” (“a microprocessor”), which “controls the operation of the

electronic equipment 1.” (Sony, ¶0026; EX-1002, ¶94). Thus, a POSITA would have

understood that Steps S2-S4 of Sony includes the receiving step of element 1.4 and

that the procedure is performed by the processor. (EX-1002, ¶¶112-113).4

4 To the extent Patent Owner may argue that Sony does not expressly disclose that

its processor (“central control unit”) performs each of the steps of the claims, that

functionality is inherent or obvious. (EX-1002, ¶94; Sony, ¶0026). In light of Sony’s

express disclosure that the “central control unit” “controls the operation of the

electronic equipment 1” (Sony, ¶0026) and the understanding of a POSITA regarding


29

how a device such as that disclosed in Sony functions, a POSITA would have

understood that the processor in Sony necessarily performs the functions for storing a

reminder, handling incoming and outgoing calling function, checking for notes, and

displaying notes. (EX-1002, ¶94; EX-1008, p.20). Transclean Corp. v. Bridgewood

Servs., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (anticipation by inherency exists “when

the reference discloses prior art that must necessarily include the unstated limitation”).

In any event, given the same disclosure stated above, at the very least, a POSITA

would have found it obvious to use Sony’s processor to perform those device functions

expressly disclosed in Sony. (EX-1002, ¶94). A POSITA, given a processor in a

communication device, such as the phone in Sony, would have been motivated to use

that processor to execute instructions for any device functions. (Id.; EX-1008, p.20).

The inherency or obviousness of the processor performing these steps is further

supported by the fact that the ’657 patent’s specification (and the original claims of its

priority application) do not even mention a processor, much less a processor

performing the claimed steps. (EX-1002, ¶94; EX-1003, pp.60-71). See In re Epstein,

32 F.3d at 1568.


30

e) Element 1.5: “(b) checking, by the processor after step (a), whether there is memo data that is attached to the memo field of the first contact list entry”

Figure 3 in Sony illustrates the checking process for both incoming and outgoing

phone calls. (Sony, Fig. 3; EX-1002, ¶¶114-116). As discussed above for the

receiving process, when the Sony communication means detects that a number is

calling or being called, the system checks to see if the number is in the stored contact

list. (See supra §A.1.d; EX-1002, ¶115). If not, then the call is just “normally

processed” at Step S7. (Sony, ¶0032; EX-1002, ¶115). If, however, the called or

calling number matches one “stored in the phonebook 2 of the electronic equipment 1,

then in the next step S5 it is checked if a reminder is coupled to this identification

information.” (Sony, ¶0032; EX-1002, ¶115).

A POSITA would have understood that the procedure discussed and shown in

Sony includes element 1.5 and is performed by the processor. (EX-1002, ¶115; Sony,

¶0026). Even if the disclosure of the processor performing this step were not express,

it is inherent or at the very least obvious that Sony’s processor would perform this

function. (EX-1002, ¶115; see supra footnote 4).


31

f) Element 1.6: “(c) activating, by the processor, the first contact list entry, such that during the activating of the first contact list entry, the user performs at least one of receiving, requesting, drafting and conducting the communication addressed to the communication address of the first contact list entry”

Claim 1’s step (c) involves the user receiving, requesting, drafting, or

conducting a communication “during the activating of the first contact list entry” by

the processor. (EX-1002, ¶117). The ’657 patent explains that “activating” a contact

list entry includes, for example, “when user opens contact information contained

therein for viewing”; “when phone number contained therein is dialed using speed dial

feature”; and “when communication device detects incoming phone call from entity

corresponding to contact list entry.” (’657 patent, 2:27-34; EX-1002, ¶117). Because

claim 1 recites that the user receives, requests, drafts, or conducts a communication

during activation of the contact list entry, “activation,” when read in conjunction with

the patent specification, must include a time period that begins with receiving an

incoming communication from or requesting or drafting an outgoing communication

to a communication address stored in the contact list and extends through the time of

conducting the communication with that contact. (EX-1002, ¶117).

For both incoming and outgoing calls (i.e., communications requested or

received), after a reminder is displayed in Step S6 (or after determining in Step S4 that

the number does not correspond to a stored contact, or after determining at Step S5

that there is no reminder coupled to the contact), Sony’s mobile phone goes forward


32

with the “process call” procedure in Step S7. (Sony, Fig. 3, ¶0032; EX-1002, ¶118).

It is clear that the “process call” step involves connecting the user and the

calling/called party and allowing them to conduct the communication, because the next

step (S8) includes “ending the call.” (Sony, ¶0032; EX-1002, ¶118).


Sony includes element 1.6 and is performed by the processor. (EX-1002, ¶119; Sony,

¶0026). Even if the disclosure of the processor performing this step were not express,

it is inherent or at the very least obvious that Sony’s processor would perform this

function. (EX-1002, ¶119; see supra footnote 4).

g) Element 1.7: “(d) causing, by the processor, a first indication indicating a presence of the at least one memo of the attached memo data, to be automatically displayed on the display screen during the activating of the first contact list entry, when it is detected in the step (b), by the processor, that there is memo data attached to the memo field of the first contact list entry”

Dependent claim 9 specifies that the “indication” of the presence of memo data

attached to the memo field recited in claim 1 “comprises contents of the at least one

memo of the memo data.” Thus, under claim 1, read in light of claim 9, displaying

actual contents of the memo necessarily satisfies the requirement to display an

“indication” of the presence of a memo. (EX-1002, ¶120).

Sony discloses this element for both incoming and outgoing call procedures

because it displays the contents of the stored reminder when there is a communication


33

with the associated contact. (EX-1002, ¶121). The display procedure is illustrated as

Step S6 (“output reminder”) in Figure 3 of Sony. (Sony, Fig. 3). As further explained,

“if in step S5 is detected that a reminder is coupled to the identification information

then the respective reminder is output to the user by the output means 8.” (Sony,

¶0032). Sony discloses that output means can be a display. (Sony, ¶ 0026; EX-1002,

¶121). Figure 4 of Sony illustrates “an example of outputting a reminder to the user”

on the display:

(Sony, Fig. 4, ¶0033).

In the example of Fig. 4, a display of the electronic

equipment is shown in case that e.g. a person for which

identification information is stored in the phone book 2 is

calling. In the example of Fig. 4 a person stored as “Thomas”

is calling. In case that for this identification information a

reminder is stored then this reminder will also be output on

the display. If the user in addition has inserted a text as was

explained above, this text may also be shown on the display.


34

This way the user when he looks at the display to see which

person is calling, will automatically see the reminder he set

for that specific person or identification information.

(Sony, ¶0033). This same procedure applies to both incoming and outgoing calls.

(Sony, Fig. 3, ¶0033; EX-1002, ¶121).

A POSITA would have understood that the procedure in Sony for displaying the

stored reminder associated with a contact if such a reminder exists is “automatic” when

a communication with the communication address occurs. (EX-1002, ¶122). For

example, the flow chart in Figure 3 shows the display occurring if the conditions are

met. (Id.). The associated text of the specification discloses the same, and specifically

notes that the user “will automatically see the reminder he set for that specific person

or identification information.” (Sony, ¶0033; EX-1002, ¶122).


Sony includes the display step of element 1.7 and is performed by the processor. (EX-

1002, ¶123; Sony, ¶0026). Even if the disclosure of the processor performing this step

were not express, it is inherent or at the very least obvious that Sony’s processor would

perform this function. (EX-1002, ¶123; see supra footnote 4).


35

2. Claim 2

a) “The method of claim 1, wherein the stored communication address of the first contact list entry of the contact list is a phone number of the corresponding entity of the first contact list entry.”

Sony discloses this additional element of claim 2. (EX-1002, ¶¶124-126). As

discussed above in section A.1.c, the contact list in Sony is found in “phonebook 2”

(also called “storage 2” by Sony). (See supra §A.1.c.; Sony, ¶0027). The phonebook

stores several different types of communication addresses, including “phone numbers”

relating to a contact. (Sony, ¶0027 (“In a simple embodiment in the phonebook 2 just

pairs of phone numbers and names of communication partners are stored.”)).

3. Claim 3

a) “The method of claim 2, wherein the first input indicates that an incoming phone call from the phone number of the first contact list entry of the contact list is received.”

As set forth above for element 1.4, Sony discloses receiving a first input

indicating that an incoming phone call from the stored phone number of a first contact

list entry of the saved contact list is received. (See supra §A.1.d; EX-1002, ¶¶93-122,

127). The receiving-an-input function is illustrated as Steps S2-S4 in Sony’s Figure

3. (Sony, Fig. 3. ¶0032; see supra §A.1.d; EX-1002, ¶128).


36

b) “and during the activating of the first contact list entry, the user accepts the incoming phone call and conducts the incoming phone call with the corresponding entity of the first contact list entry using the communication device as a result of the user's accepting the incoming phone call.”

As set forth above for element 1.6, Sony discloses this element for an incoming

phone call. (See supra §A.1.f; EX-1002, ¶¶129-130).

Specifically, Sony discloses that for both incoming and outgoing calls, after a

reminder is displayed in Step S6 (or after determining in Step S4 that the number does

not correspond to a stored contact, or after determining at Step S5 that there is no

reminder coupled to the contact), the mobile phone goes forward with the “process

call” procedure in Step S7. (Sony, Fig. 3, ¶0032; EX-1002, ¶129). It is clear that the

“process call” step involves connecting the user and the caller/called party and

allowing them to conduct the communication because the next step (S8) includes

“ending the call.” (Sony, ¶0032; EX-1002, ¶¶129-130).

4. Claim 4

a) The method of claim 2, wherein the first input indicates a request that the phone number of the first contact list entry of the contact list be dialed for an outgoing phone call, and

As set forth above for element 1.4, Sony discloses receiving a first input

indicating a request that a phone number of the contact list entry be dialed for an

outgoing phone call. (See supra §A.1.d). The receiving-an-input function is


37

illustrated as Steps S2-S4 in Sony’s Figure 3. (Sony, Fig. 3. ¶0032; see supra

§A.1.d; EX-1002, ¶¶ 93-122, 131-132).

b) during the activating of the first contact list entry, the phone number of the first contact list entry is dialed for the outgoing call and the user conducts the outgoing phone call with the corresponding entity of the first contact list entry using the communication device as a result of the outgoing phone call being received and accepted by the corresponding entity of the first contact list entry.

As set forth above in sections A.1.f and A.3.b, Sony discloses this element for

an outgoing phone call as well. (See supra §§A.1.f, A.3.b; Sony, Fig. 3, ¶0032; EX-

1002, ¶¶133-134).

5. Claim 9

a) “The method of claim 1, wherein the first indication comprises contents of the at least one memo of the memo data.”

As discussed above, Sony discloses displaying the contents of the notes stored

in the contact list entry when the associated contact calls the user. (See supra §A.1.g;

EX-1002, ¶¶119-122). For the same reasons, Sony discloses the additional element in

claim 9. (EX-1002, ¶136).


38

6. Claim 10

a) “The method of claim 1, the memo data attached to the memo field of the first contact list entry comprises at least one of text, audio, image and video that is displayable or otherwise playable to show the at least one memo of the memo data.”

Sony discloses a textual reminder memo: “[T]he user may have the possibility

to input a specific text for the reminder.” (Sony, ¶0030; see also supra §A.1.c; EX-

1002, ¶138). Sony also discloses that this text is displayed: “If the user in addition

has inserted a text as was explained above, this text may also be output on the display.”

(Sony, ¶0033). Sony’s Figure 4 shows exemplary reminder text (“ask about dinner on

Monday”) displayed to the user. (Sony, Fig. 4).

7. Claim 11

a) “The method of claim 1, wherein the step (b) of checking of whether there is memo data that is attached to the memo field of the first contact list entry is performed before or during the step (c) of activating the first contact list entry.”

As discussed above, the activation of the contact list for claim 1 necessarily

includes the time during which the call is being conducted by the user. (See supra

§A.1.f.; EX-1002, ¶¶116-117, 141). In Sony, that “activation” process of connecting

and conducting the call is shown for both incoming and outgoing calls as Step S7 of

Figure 3. (See supra §A.1.f; EX-1002, ¶141). The step for checking for a stored

reminder (memo data) associated with the number is shown as the earlier Step S5 of


39

Figure 3. (See supra §A.1.e; EX-1002, ¶¶141). The supporting text of the

specification likewise supports checking for a reminder before the call is connected

and conducted. (Sony, ¶0032; EX-1002, ¶141).

8. Claim 12

a) “The method of claim 1, the user is provided by the communication device at least one option to erase, save or edit memo data attached to the memo field of the first contact list entry at the end of the communication.”

Sony expressly discloses claim 12’s additional element, namely an option for

the user to delete the displayed reminder at the end of the communication:

The process then in any case continues with step S7 where

the call is normally processed. The whole process ends in

step S8 e.g. with switching off the electronic equipment 1,

with ending the call and/or with deleting the outputted

reminder.

(Sony, ¶0032; EX-1002, ¶145). A POSITA would have understood this disclosure in

Sony to mean that the user is provided by the device at least the option to erase memo

data attached to the memo field of the first contact list entry at the end of an incoming

or outgoing phone call on which the reminder was displayed. (EX-1002, ¶145).5

5 Moreover, Sony also discloses providing the user through menu options the ability

to create a new reminder, edit an existing reminder, and delete a reminder. (See §A.1.c;


40

Even if this element were not expressly disclosed by Sony, it would have been

obvious to a POSITA. (EX-1002, ¶147). The options to erase the memo after its

purpose has been served (e.g., the conversation point was covered during the call),

saving the memo if the reminder is still needed (e.g., the conversation point of the

memo was not mentioned, or was not exhausted, during the call) or editing the memo

if a revised reminder for a future call is desired (e.g., memo “ask about dinner on

Monday” revised to “remind about dinner on Monday” because the dinner invitation

was accepted) are all obvious even if based solely on a POSITA’s common sense.

(EX-1002, ¶147). Where, as here, the technology in question is unusually simple and

straightforward, common sense alone may supply a limitation (even if it were missing

from Sony – which it is not). Perfect Web v. InfoUSA, 587 F.3d 1324, 1328-32 (Fed.

Cir. 2009); see also Arendi S.A.R.L. v. Apple, 832 F.3d 1355, 1362 (Fed. Cir. 2016)

(explaining and distinguishing Perfect Web).

EX-1002, ¶¶146). A POSITA would have understood that Sony disclosed these

options for creating, editing, or deleting a reminder before or after an incoming or

outgoing call ends, which would necessarily allow the user an option to delete or edit

the reminder at the end of the call on which it was displayed. (EX-1002, ¶146).


41

B. Grounds 2 & 3: Claims 5-8 Are Obvious In Light Of Matsumoto In View of Either Scott And/Or Neilsen

Claims 5-8 depend, directly or indirectly, from claim 1, specifying that the

communication address in the contact list entry is a messaging (or specifically an

email) address and that the trigger of the reminder memo is a request to send a

message (or specifically an email message) to the associated contact. (EX-1002,

¶53). Matsumoto discloses to a POSITA all elements of independent claim 1 by

describing a phone in which a reminder associated with a contact’s communication

address (phone number) is automatically displayed when a call is initiated with that

contact. (EX-1002, ¶¶150-169). Matsumoto also discloses that its contact list

includes fields for both a contact’s phone number and email address. (EX-1002,

¶¶152, 171). While Matsumoto does not expressly disclose displaying the reminder

when an email message is initiated to the stored email address of the contact, both

Scott and Neilsen disclose this obvious variation of claims 5-8. (EX-1002, ¶¶174-

184)). Indeed, both Scott and Neilsen disclose providing reminders when phone

calls are made and when emails are initiated to a contact, illustrating the obviousness

of extending reminders from initiating a phone call to initiating an email message.

(EX-1002, ¶¶174, 180).

Petitioner proposes two separate grounds, Ground 2 using Scott as a secondary

reference and Ground 3 using Neilsen as a secondary reference. The reason for the

two similar grounds is partly because, while Scott includes a more complete


42

beginning-to-end embodiment in which a reminder is provided when composing an

email, it is § 102(e) prior art that Patent Owner might theoretically attempt to swear

behind. Neilsen discloses a beginning-to-end phone call reminder embodiment,

teaches that the same functionality would apply for composing an email, and is §

102(b) art. Because of these differences, Petitioner requests institution on both

Grounds 2 and 3.

1. Claim 1

a) Element 1.1: “A method, performed by a communication device, for reminding a user of the communication device of a conversation point for a future conversation”

Matsumoto discloses a communication device in the form of a mobile phone.

(Matsumoto, Figs. 1-2, 5:4-8, 5:37-40). The phone performs a method in which, if a

user of the phone is unable to reach a called party, the user is prompted to input

information that was to be conveyed on the failed call, with the information then

stored. (Matsumoto, 2:16-25; EX-1002, ¶150). When the user next “makes a call to

the party or receives a call from the party, [the phone] check[s] whether the

information associated with the telephone number of the party is stored in the storage

unit, and, if the associated information is stored therein, notif[ies] the user of the stored

information.” (Matsumoto, 2:25-30).


43

b) Element 1.2: “the communication device having a processor and a display screen”

Matsumoto discloses that its communication device includes both a processor

and display. (Matsumoto, Figs. 1-2; EX-1002, ¶151). Matsumoto’s processor is

“general control unit 104,” which “includes a Digital Signal Processor (DSP) for

controlling general procedures of the wireless phone.” (Matsumoto, 5:37-40). For a

display, Matsumoto discloses “display unit 108,” which “is a liquid crystal display

(LCD), which displays texts and images according to the signals received from the

general control unit 104 and the notepad control unit 113.” (Matsumoto, 6:33-36).

These elements are shown in Matsumoto Figure 2, labeled 104 and 108:

(Matsumoto, Fig. 2 (annotated in red)). The Matsumoto processor “control[s] general

procedures of the wireless phone.” (Matsumoto, 5:37-39).


44

c) Element 1.3: “the communication device having access to a memory storing a contact list having a list of contact list entries, each contact list entry of the contact list including a first field configured to retrieve a stored communication address of a corresponding entity of the respective contact list entry, a second field configured to retrieve a stored name identifying the corresponding entity, and a memo field configured to attach memo data inputted by the user and displayable to show at least one memo which can be served to remind the user of a conversation point for a future communication between the user and the corresponding entity, the method comprising”

Matsumoto discloses this element (EX-1002, ¶¶152-154), specifically “a table

200 concerning personal information stored in the recording unit 109.” (Matsumoto,

8:3-4). The contact list is shown below:

(Matsumoto, Fig. 3 (annotated in red)).

“Contact list entry”

Number field Name field Memo field Email field


45

Matsumoto’s contact list is a database containing rows of contact list entries and

columns that show fields of information about each contact, including “TELEPHONE

NUMBER” field 201, “NAME” field 202, “E-MAIL FIELD” 203, and “SUBJECT

OF NOTES” field 204. (Matsumoto, Fig. 3). As illustrated in Figure 3 above, these

four columns in the contact list table correspond to the fields of the claim, with the

phone number and email address fields each corresponding to a “communication

address.” (EX-1002, ¶152). Matsumoto explains that each of these fields can be input

by the user of the device, including the process by which a user inputs reminder notes

for a later call when the user fails to reach a contact. (Matsumoto, 8:6-22, 8:54-59;

Figure 4, steps S106-S109; EX-1002, ¶152). A POSITA would have understood that

this table 200 is a contact list with fields configured to retrieve a stored communication

address (phone number or e-mail address, labeled 201 or 203 in Fig. 3), a stored name

(labeled 202) of the corresponding entity, and a memo field (labeled 204) configured

to attach memo data inputted by the user and displayable to show a memo to remind

the user of the conversation point for a future conversation between the user and the

entity. (EX-1002, ¶152).

The table 200 is saved in recording unit 109. (Matsumoto, 8:3-5, 8:62-9:3; EX-

1002, ¶153). The communication device has access to that table, including to store

input, to determine if a number calling or being called is stored in the table, to

determine if there are notes stored in the table associated with that number, and to


46

retrieve such notes for display to the user. (Matsumoto, 8:62-9:3, 8:32-42; EX-1002,

¶153). Thus, Matsumoto discloses the contact list and all its claimed details recited in

element 1.3. (EX-1002, ¶¶152-154).

d) Element 1.4: “(a) receiving, by the processor, a first input indicating a need to activate a first contact list entry of the contact list for the user to perform at least one of receiving and requesting a communication addressed to the stored communication address of the first contact list entry”

Matsumoto discloses this element, for both requesting and receiving a

communication. (EX-1002, ¶155). Matsumoto’s procedure for an outgoing call to a

contact’s phone number (i.e., “requesting a communication”) is illustrated in its Figure

4. (Id.). At Step S101, the “input acceptance unit 101 accepts a calling telephone

number and outputs the same to the general control unit 104 and the notepad control

unit 113.” (Matsumoto, 8:29-31, Fig. 4).


47

(Matsumoto, Fig. 4 (annotated in red)). A POSITA would have understood that this

process in Step S101 of Matsumoto satisfies the receiving step of element 1.4. (EX-

1002, ¶155). A similar process occurs for an incoming call. (Matsumoto, 9:28-34,

7:43-53, Fig. 5 EX-1002, ¶156).


48

Furthermore, these steps are performed in Matsumoto by the processor. (EX-

1002, ¶¶151, 155-156). Specifically, the call procedures illustrated in Figures 4-5, as

with all general procedures of the Matsumoto phone, are performed by its processor.

(Matsumoto, 5:37-40 (“The general control unit 104 includes a Digital Signal

Processor (DSP) for controlling general procedures of the wireless phone.”); EX-1002,

¶¶151, 155-156).6

e) Element 1.5: “(b) checking, by the processor after step (a), whether there is memo data that is attached to the memo field of the first contact list entry”

For the outgoing call procedure, Matsumoto discloses this step of checking for

memo data associated with the contact in Steps S102 and S103. (Matsumoto, Fig. 4;

EX-1002, ¶158). For example:

The notepad control unit 113 refers to the received calling

telephone number and the table 200 recorded in the

recording unit 109 (Step S102) and judges whether the same

telephone number as the calling telephone number is

6 Should Patent Owner argue that Matsumoto does not expressly disclose that the

processor (“general control unit”) performs each of the steps of the claims, that

functionality is inherent or obvious. (EX-1002, ¶151; Matsumoto, 5:37-39 (processor

“control[s] general procedures of the wireless phone”), Fig. 2; EX-1008, p.20; see also

footnote 4).


49

included in the table (Step S103). If the same telephone

number is included in the table, the notepad control unit 113

reads out the personal information concerning the telephone

number (e.g., telephone number, name, e-mail address, and

subject of notes) and has the display unit 108 display the

read personal information (Step S104).

(Matsumoto, 8:33-42).


50

(Matsumoto, Fig. 4 (annotated in red)). Likewise, Figure 4 explains that in Step S101,

the phone accepts input of the telephone number, and in S102, it “refer[s] to the

recorded notes.” (Matsumoto, Fig. 4; EX-1002, ¶158). Moreover, a POSITA would

have understood that the system must inherently check for memo data in the memo

field of the table 200 if it is to display it as discussed in Matsumoto. (EX-1002, ¶158).


51

A similar procedure occurs for incoming calls. (Matsumoto, 9:31-37, Fig. 5 step S203;

EX-1002, ¶159).


Matsumoto includes element 1.5 and is performed by the processor. (EX-1002, ¶¶160,

151). Even if the disclosure of the processor performing this step were not express, it

is inherent or at the very least obvious that Matsumoto’s processor would perform this

function. (EX-1002, ¶151; see supra footnotes 4, 6).

f) Element 1.6: “(c) activating, by the processor, the first contact list entry, such that during the activating of the first contact list entry, the user performs at least one of receiving, requesting, drafting and conducting the communication addressed to the communication address of the first contact list entry”

Claim 1’s step (c) involves the user receiving, requesting, drafting or conducting

a communication with a contact “during the activating of the first contact list entry”

by the processor. (EX-1002, ¶161). Matsumoto discloses the step of “activating” the

“contact list entry” as recited in element 1.6. (EX-1002, ¶¶161-164).

As discussed above in section A.1.f, “activation” of a contact list entry, when

read in conjunction with the patent specification, must include a time period that

begins with receiving an incoming communication from or requesting or drafting an

outgoing communication to a communication address stored in the contact list entry

and extends through the time of conducting the communication with that contact. (See

supra §A.1.f; EX-1002, ¶¶116, 161).


52

For an outgoing call, after the notes are displayed in Step S104 (or after

determining in Step S103 that the number is not recorded in the phonebook),

Mastumoto’s mobile phone goes forward with the “calling procedure” of Step S105.

(Matsumoto, Fig. 4, 8:46-52; EX-1002, ¶162). Specifically:

[T]he general control unit 104 conducts a procedure for

calling the party with the received calling telephone number

to establish the communication (i.e., calling procedure)

(Step S105) and judges whether the calling is interrupted

before establishing the communication (Step S106). If the

communication can be established, this procedure is

completed.



53

(Matsumoto, Fig. 4 (annotated in red)). Thus, for an outgoing call, the user performs

at least “requesting” or “conducting” the communication during activation of the

contact list entry. (EX-1002, ¶162). For an incoming call, the user in Matsumoto

similarly performs at least “receiving” the communication during activation of the

contact list entry. (Matsumoto, 9:37-42, 5:57-59, Fig. 5 step S205, EX-1002, ¶ 163).


54

A POSITA would have understood that the processes discussed and shown in

Matsumoto include the processor carrying out the actions recited in Element 1.6. (EX-

1002, ¶¶164, 151). Even if the disclosure of the processor performing this step were

not express, it is inherent or at the very least obvious that Matsumoto’s processor

would perform this function. (EX-1002, ¶151; see supra footnotes 4, 6).

g) Element 1.7: “(d) causing, by the processor, a first indication indicating a presence of the at least one memo of the attached memo data, to be automatically displayed on the display screen during the activating of the first contact list entry, when it is detected in step (b), by the processor, that there is memo data attached to the memo field of the first contact list entry.”

Dependent claim 9 specifies that the “indication” of the presence of memo data

attached to the memo field recited in claim 1 “comprises contents of the at least one

memo of the memo data.” (EX-1002, ¶165). Thus, under claim 1, read in light of

claim 2, displaying actual contents of the memo must satisfy this element. (Id.).

For an outgoing call, Matsumoto discloses displaying the notes stored in the

“subject of notes” field of the table 200 associated with the contact number that is

being called, as shown in Step S104 (“DISPLAY THE NOTES”) of Figure 4:


55

(Matsumoto, Fig. 4 (annotated in red); EX-1002, ¶166). More specifically:

If the same telephone number is included in the table, the

notepad control unit 113 reads out the personal information

concerning the telephone number (e.g., telephone number,

name, e-mail address, and subject of notes) and has the


56

display unit 108 display the read personal information (Step

S104).

(Matsumoto, 8:37-42; EX-1002, ¶166). Matsumoto discloses a similar note display

function for an incoming call. (Matsumoto, Fig. 5 step S204, 7:43-53, 9:34-40; EX-

1002, ¶167).

A POSITA would have understood that Matsumoto discloses “automatically”

displaying any notes stored in table 200 associated with a contact, when a call to or

from a number associated with the contact occurs. (EX-1002, ¶168). For example,

the flow charts in Figures 4 and 5 show the display occurring if the conditions are met.

(Matsumoto, Fig. 4 steps S103-S104, Fig. 5 steps S203-S204; EX-1002, ¶168). The

text of the specification associated with these two figures also discloses this automatic

response. (Matsumoto, 8:32-42, 9:31-42; EX-1002, ¶168). Matsumoto also states that

notifying the user of the information in the contact table 200, such as notes, occurs

“simply by [the user] performing normal calling process” and “without the need for

extra operations,” further evidencing the automatic nature of the notes display.


A POSITA would have understood that the processes discussed and shown in

Matsumoto include the processor carrying out the actions recited in Element 1.7. (EX-

1002, ¶¶169, 151). Even if the disclosure of the processor performing this step were


57

not express, it is inherent or at the very least obvious that Matsumoto’s processor

would perform this function. (Id., ¶151; see supra footnotes 4, 6).

2. Claim 5

a) “The method of claim 1, wherein the stored communication address of the first contact list entry of the contact list is a messaging address of the corresponding entity of the first contact list entry.”

Claim 5 specifies that the stored communication address of claim 1 be a

“messaging address.” A POSITA would have understood that a “messaging address”

refers to a communication address for sending an electronic message, including an

email address. (EX-1002, ¶62). The ’657 patent confirms this because the only

potential “messaging address” the patent discloses is an email address. (Id.; ’657

patent, 2:47-60, Fig. 4). For claim 5 to have written description support under §112,

¶1, “messaging address” must encompass an email address. Moreover, claim 7

depends from claim 5, further specifying that the “communication address” of claim

1 be not only a “messaging address” but also an “email address.” An email address

must, therefore, be within the scope of “messaging address” of claim 5 when read in

light of claim 7. (EX-1002, ¶62).

In addition to disclosing all the elements of claim 1, (Id., ¶¶150-169),

Matsumoto discloses a contact list that includes an email address and a phone number

as communication addresses for the contact. (Matsumoto, Fig. 3; EX-1002, ¶171;


58

see supra §B.1.c). Matsumoto does not expressly disclose that the email address in

the contact list entry is used for the remaining steps in claim 1, including triggering

the reminder, instead disclosing a phone number for those steps. (EX-1002, ¶73).

However, both Scott and Neilsen disclose an email address that is used for the steps

of claim 1, thereby satisfying this additional element in claim 5. (Id., ¶¶174-184,

96). And, as discussed further below, a POSITA would have been motivated to

combine those teachings in Scott and Neilsen with those in Matsumoto to practice

the method in claims 5-8. (Id., ¶¶185-195).

Matsumoto: Matsumoto’s contact list includes an email address and a phone

number for a contact list entry. (Matsumoto, Fig. 3, 8:5-17; EX-1002, ¶¶171, 151-

153; see supra §B.1.c). Matsumoto discloses the device user sending a memo as an

email to the contact using an email client program. (Matsumoto, 5:19-21; EX-1002,

¶172). Specifically, as discussed above with respect to claim 1, when the user enters

a phone number to dial, the Matsumoto device follows the procedure illustrated in

Figure 4 of checking for a memo stored in the contact list in association with that

phone number and, if present, automatically displaying the memo as a reminder and

dialing the phone number. (Matsumoto, Fig. 4 steps S102-S104; EX-1002, ¶¶155-

169; see supra §§B.1.d-B.1.g). If the contact does not answer the call, however,

Matsumoto discloses that the device prompts the user if she wants to enter notes and

then if she wants to send those notes to the contact in an email. (Matsumoto, 8:54-


59

9:22, Fig. 4 steps S106-S111; EX-1002, ¶172. Matsumoto does not expressly

disclose displaying a memo reminder when the user next uses the email program to

send an email to the contact.

Scott: Scott supplies this element missing from Matsumoto by teaching not

only the contact list with phone numbers and email addresses for each contact but also

automatically displaying a stored reminder memo when the user either dials the phone

number or uses an email client to compose an email to the email address. (EX-1002,

¶174).

Scott discloses a handheld communication device, as shown below:

(Scott, Fig. 1). The Scott device includes a transmitter and receiver to allow “data and

voice communications,” processor, display, memory, and keyboard for inputting text.


60

(3:10-14, 3:27-38, 3:60-67, Figs. 1-2). The device also includes a number of typical

smartphone applications, including “a phone application 48, an address book

application 50 for storing information for a plurality of contacts, a messaging

application 52 which includes email, SMS and MMS applications.” (Id., 4:18-22, Fig.

1). The address book application includes a stored contact list containing entries for

each contact, with each entry including “data fields” storing the contact’s name, phone

number, and email address:

(Id., Fig. 3 (annotated in red), 4:45-54; EX-1002, ¶175).

As illustrated in Figure 3 above, Scott’s contact list also includes a data field

numbered 85 for a memo specifying the contact’s preferred language. (Scott, Fig. 3


61

(“Preferred Input Language”), 4:54-61; EX-1002, ¶176). “For example, if the contact

is French and prefers to communicate in the French language, a user of the handheld

electronic device 4 may store French as the preferred input language in a preferred

language data field.” (Scott, 4:57-61).

The preferred language field is a “memo” as used in the claims because it serves

to remind the user of a conversation point, namely which language the contact prefers

to use, for a future phone or email conversation between the user and the contact.

(EX-1002, ¶¶176-178). For a phone call:

when a user places a call to or receives a call from a contact

in the address book application, a determination is made as

to whether that contact has a preferred input language

specified. If the contact does have a preferred input

language, a pop-up window is provided on the display 12 of

the handheld electronic device 4 that specifies the preferred

language (see, for example, FIG. 1). … As a result, the user

will be reminded that he or she should initiate or answer the

phone call, whichever the case may be, in the preferred

language.

(Scott, 6:19-32). Figure 1 illustrates the pop-up window automatically displaying the

memo reminding the user of the preferred language when an incoming call is received:


62

(Id., Fig. 1 (partial)).7

For email communication, Scott uses the preferred language memo field for

two functions. First, when detecting that the user “has initiated the composition of a

new message, such as an email, SMS or MMS message, and has selected a particular

contact stored by the address book application 50 as the recipient of the message …

for example, by entering a contact’s name in the ‘To’ field of an email message,” the

7 While Scott’s “preferred language” reminder field would be understood by a

POSITA to be a “memo” as that term is used in claim 1 of the ’657 patent, the

obviousness of claims 5-8 does not depend on that. (EX-1002, ¶176 n.3). Scott is not

being applied here to provide a “memo” of any specific type because Matsumoto

already discloses claim 1’s memo field (note) that can be input by a user. Instead,

Scott provides the motivation for Matsumoto’s memo to be displayed automatically

when an email is being composed to the contact associated with the memo. (Id.) The

fact that Scott’s preferred language does, in fact, constitute a “memo” by providing

information useful for a future conversation with the contact simply provides further

support for that motivation. (Id.)


63

device checks to see “whether the selected contact has a preferred input language that

has been stored in the preferred language data field for that contact.” (Id., 5:10-20,

Fig. 4 steps 100, 105). If so, the device determines whether the contact’s preferred

language matches the default text input language of the device and, if different,

switches the device’s default input language to the preferred input language for the

selected contact and allows the user to compose the message. (Id., 5:22-35, Fig. 4

steps 110, 115, 120). The second use of the preferred language memo field for an

email is to automatically display a textual reminder of the current (at that point the

preferred) input language:

Next, at step 120, the user is allowed to compose the new

message. The user will at this point input text in the

appropriate language (optionally, a pop-up dialog box may

be provided on the display 12 to remind the user of the

current input language; other indications may also be

provided, such as a voice reminder).

(Scott, 5:35-40; EX-1002, ¶178).

Thus, Scott discloses to a POSITA a stored messaging address in a contact list

entry corresponding to the entity of that entry. (EX-1002, ¶¶174-179).

Neilsen: Neilsen also supplies the email reminder element missing from

Matsumoto by teaching a generic reminder system in which reminders can be

associated with any number of applications and with identifiers within an application.


64

(Neilsen, Abstract, ¶¶0004, 0006; EX-1002, ¶180). Examples provided by Neilsen

are reminders associated with a contact’s phone number in a call handling application

and with a contact’s email address in an email application. (Neilsen, ¶¶0007, 0009,

0012; EX-1002, ¶180).

Neilsen discloses a mobile phone adapted for communication via a cellular

network:

(Neilsen, Fig. 1, ¶0036). The phone includes a processor, display, memory, and

alphanumeric keypad for dialing numbers and entering text. (Id., ¶¶0036-0039). The

phone also includes a number of software applications, including a “call handling

application” and an “email application.” (Id., ¶0040). A “reminder controller” is

connected to each of the software applications so that it can generate reminders based

on events within any of those applications:


65

(Id., Fig. 2 (annotated in red), ¶0040; EX-1002, ¶181).

Neilsen’s “reminder controller 22 operates to allow the input of reminders, to

store the reminders in the working memory 26, and to determine when a reminder

should be announced, which depends on information contained within the reminder

itself.” (Neilsen, ¶0041). The user can create a reminder and store it in memory using


66

the process illustrated in Figure 4, including entering the text of the note, identifying

a software application to which the note will relate, and identifying an “application

specific parameter” that will indicate when the reminder note will be triggered.

(Neilsen, ¶¶0011-0016, 0042, 0045, Fig. 4 steps S4-S9; EX-1002, ¶182). Examples

of such parameters include device or resource addresses, e.g., “telephone numbers”

and “e-mail addresses.” (Neilsen, ¶¶0006-0008, 0012-0013; EX-1002, ¶182).

Neilsen discloses reminders being triggered when the specified parameter within the

application occurs, such as when the call handler application receives an input

indicating an incoming or outgoing phone call with that phone number. (Neilsen,

¶¶0009, 0045, 0047; EX-1002, ¶182). For example, when there is a phone call, the

phone checks whether the incoming or outgoing phone number matches the number

for a reminder stored in association with the call handling application and, if so, “the

reminder is announced.” (Neilsen, ¶¶0009, 0054, Fig.7; EX-1002, ¶182).

Announcement of reminders can be by a “display of text or a picture on the display,”

a “sound alert,” or a “combination of these.” (Neilsen, ¶0060).

Neilsen discloses that the reminder function has broad applicability and can be

used to generate reminders for any of the software applications, including when the

user composes an email message to a stored email address: “These features … can

allow for instance announcement to be dependent on … a particular e-mail address


67

being present on an incoming or outgoing e-mail …” (Id., ¶¶0007, 0012; EX-1002,

¶182).

As shown by the above discussion, Neilsen discloses to a POSITA that an email

address for a contact may be stored with a reminder such that when the email address

is present on an email, the reminder is displayed. (Neilsen, ¶¶0006-0009, 0012-0013,

0045-0047; EX-1002, ¶184).

The Motivation to Combine Scott and/or Neilsen with Matsumoto: A

POSITA would have been motivated (and found obvious) to use the email address

stored in Matsumoto’s contact list entry as the communication address for the

elements of claim 1, thereby meeting the requirements of claim 5, based on

Matsumoto alone or the express teachings of Scott and/or Neilsen to generate

reminders based on phone numbers or email addresses. (EX-1002, ¶¶185-195).

First, the Matsumoto phone already includes a contact list entry with a field for

the contact’s phone number and email address as well as an email program for sending

an email message to a contact’s email address. (Matsumoto, Figs. 3-4, 8:5-17, 5:19-

21, 9:18-24; EX-1002, ¶186). Thus, Matsumoto already discloses the additional

elements necessary to perform the reminder method claimed in claim 5 for messaging.

(EX-1002, ¶186).

Second, because Matsumoto already discloses checking to see if a

communication is with one of the contact list fields (a phone number) to trigger the


68

display of a reminder when communications are sent to or received from that number,

a POSITA would have been motivated to use the same reminder technique for the

email address field so that reminders were displayed when the user composes an email

message to a contact. (Id., ¶187). There are only a handful of communication

methods on a typical mobile phone, including a phone call and a few types of

messaging, including email messaging, making it obvious to use Matsumoto’s

reminder method for phone calls on the other communication types, including email

messaging. (Id.).

The benefits a POSITA would have recognized of making such a modification

are already reflected in Matsumoto, which explains the difficulty some may have to

remember or find notes about something that needs to be conveyed when receiving a

phone call or writing an email. (Id.; Matsumoto, 1:12-34). Matsumoto already

teaches that its processor checks a field in the contact list for the phone number

involved in an incoming or outgoing communication, and a POSITA would

understand that the same function would be performed by the control unit if checking

for an email address. (EX-1002, ¶187). Making that substitution was within the

rudimentary skill to achieve the same straightforward result of displaying a reminder

when a next communication occurs with the contact. (Id.). See KSR, 550 U.S. at 421.

Thus, making the substitution of an email address for the phone number that triggers


69

the reminder was within the knowledge of a POSITA reading Matsumoto. (EX-1002,

¶187).

Third, both Scott and Neilsen also teach a POSITA to substitute an email

address for the phone number in Matsumoto’s reminder. (Id., ¶188). Scott teaches

that a reminder memo (the contact’s preferred language) stored as a field in the contact

list entry with phone number and email address fields is used to display the reminder

automatically when the user has a phone call with that contact or when the user

composes an email addressed to that contact. (Scott, 5:35-40, 6:19-34, Fig. 1; EX-

1002, ¶188). Likewise, Neilsen teaches a POSITA how to display reminders when

communications are initiated with a contact by phone or by email. (Neilsen, ¶¶0007,

0009, 0012, 0045, 0047, Fig.7; EX-1002, ¶189). Neilsen in fact provides a broader

motivation to a POSITA, instructing that reminders can be triggered by events

occurring within many mobile phone software applications, including initiation of a

phone or email communication with a contact:

Releasing reminders from specified times and dates can

provide more general applicability. This can increase the

utility of the device and thereby increase its appeal. … These

features can provide further functionality, and can allow for

instance announcement to be dependent on a particular

webpage being accessed, a particular e-mail address being

present on an incoming or outgoing e-mail, or a particular

game being started, for example.


70

(Neilsen, ¶¶0005, 0007; EX-1002, ¶189). The teachings by Scott and Neilsen to use

the same reminder functionality for both phone calls and emails each would have

instructed a POSITA how to extend Matsumoto’s phone call reminder functions to

email messages as well, and would have shown that the extension was both beneficial

and within the ordinary skill in the art. (EX-1002, ¶¶188-189). See KSR, 550 U.S. at

471 (“if a technique has been used to improve one device, and a person of ordinary

skill in the art would recognize that it would improve similar devices in the same way,

using the technique is obvious unless its actual application is beyond his or her skill”);

In re Fridolph, 134 F.2d 414, 416 (C.C.P.A. 1943) (“[I]n considering more than one

reference …, the question always is: does such art suggest doing the thing the

[inventor] has done?”).

A POSITA would also have been motivated to combine the disclosure of

Matsumoto with the disclosures of Sony and/or Neilsen because:

• all three address the same recognized need to provide a mobile phone

user a reminder about a specific contact when a communication is sent

to or received from a contact (EX-1002, ¶193);

• all three address that need on a mobile phone using the same general

solution in which, when a communication is sent or received, checking

to see if there is a reminder note or memo stored that is associated with


71

the communication address (e.g., phone number and/or email address)

and, if so, displaying the text of the note to the user (Id., ¶193); and

• Matsumoto discloses all of the elements of claim 1, and Scott and Neilsen

disclose all or nearly all of those elements, illustrating the closeness of

the art and, thus, why a POSITA would look to the other two when

determining possible changes to one of them (Id., ¶190-192).

Moreover, there is nothing in Scott or Neilsen that would have been viewed by

a POSITA as technically incompatible with adjusting Matsumoto’s reminder

functionality to look for a reminder stored in association with an email address when

the user is composing an email. (Id., ¶194). Indeed, Matsumoto already has the

“plumbing” for this adjustment because its device includes an email application and a

contact list with an email address in the same table as the reminder note. (Id.).

In sum, a POSITA, both using his or her own knowledge and common sense or

using the express motivations taught by Neilsen and/or Scott, would have found it

obvious to take the email program already within Matsumoto, check the contact list

for a note associated with email address in the email message being composed (just

as Matsumoto’s device already does for a phone number being dialed), and display

the note if one is found. (Id., ¶195).


72

3. Claim 6

a) “The method of claim 5, wherein the first input indicates a request that the messaging address of the first contact list entry be selected to send a message to the corresponding entity of the first contact list entry, and during the activating of the first contact list entry, the user operates a messaging client displayed on the display screen to compose and send the message to the corresponding entity of the first contact list entry.”

As discussed in sections B.1 and B.2.a above, Matsumoto discloses all the

elements in claim 1, and Matsumoto in combination with Scott and/or Neilsen renders

claim 5 obvious to a POSITA. (See supra §§ B.1, B.2.a). For the same reasons

discussed for claim 5, Matsumoto combined with Scott and/or Neilsen renders claim

6 obvious to a POSITA. (EX-1002, ¶¶ 196-199).

Matsumoto discloses element 1.4 of claim 1—receiving a first input indicating

a need to activate a first contact list entry of the contact list for the user to perform

receiving or requesting a phone communication to the stored phone number of the first

contact list entry. (See supra §B.1.d; EX-1002, ¶¶154-155). Both Scott and Neilsen

disclose an input from the user indicating a need to send an email message to a stored

email address of a contact and a reminder being triggered as a result of that input. (See

supra §B.2.a; EX-1002, ¶¶173-183, 197).

Matsumoto discloses that during activating of the first contact list entry, the user

operates a phone application to request a phone number stored in the contact list entry


73

be dialed. (See supra §B.1.f; EX-1002, ¶¶160-163, 198). Matsumoto also discloses

that its device includes an email messaging client that can send emails to an email

address stored in the contact list entry. (Matsumoto, 5:19-21, 8:54-9:22, Fig. 4 steps

S106-S111; EX-1002, ¶198). And, as discussed in section B.2.a above, both Scott and

Neilsen further disclose that during the activating of the first contact list entry, the user

operates an email messaging client displayed on the display screen to compose and

send the message to the corresponding entity of the first contact list entry. (See supra

§B.2.a; Sony, 5:10-35, Fig. 4; Neilsen, ¶¶0006-0008, 0012-0013, Fig.7; EX-1002,

¶¶173-183, 198).

Section B.2.a. above fully discusses the motivation to a POSITA to adjust the

telephone number reminder functionality of Matsumoto to work when composing an

email message to a contact’s email address given the teachings of Scott and/or Neilsen,

and that discussion applies equally to claim 6. (See supra §B.2.a). Thus, a POSITA

would have found the subject matter of claim 6 obvious as well. (EX-1002, ¶¶184-

194, 199).


74

4. Claim 7

a) “The method of claim 5, wherein the stored communication address of the first contact list entry of the contact list comprises an email address of the corresponding entity of the first contact list entry.”

While claim 5 requires that the stored communication address of the first contact

list entry of the contact list be a “messaging address,” claim 7 depends from claim 5

and specifies that the communication address be an “email address.” Because the

discussion of claim 5 already addresses an email address (see supra §B.2.a), claim 7

would have been obvious to a POSITA in light of Matsumoto in view of either Scott

and/or Neilsen for the same reasons discussed in that section. (EX-1002, ¶200).

5. Claim 8

a) “The method of claim 7, wherein the first input indicates a request that the email address of the first contact list entry be selected to send a message to the corresponding entity of the first contact list entry, and during the activating of the first contact list entry, the user operates an email client displayed on the display screen to compose and send the email to the corresponding entity of the first contact list entry.”

While claim 6 depends from claim 5 and involves a “messaging address,”

“messaging client,” and “message,” claim 8 depends from claim 7 and specifies an

“email address,” an “email client,” and an “email.” Because the discussion of claims

5-6 already address an email address, email client, and email (see supra §§B.2.a-

B.3.a), claim 8 would have been obvious to a POSITA in light of Matsumoto in view


75

of either Scott and/or Neilsen for the same reasons discussed in those sections. (EX-

1002, ¶201).

VIII. CONCLUSION

For the reasons given above, Petitioner requests institution of IPR for claims 1-

12 of the ’657 patent based on each of the grounds specified in this petition.

Respectfully submitted,

May 10, 2017 /Andrew M. Mason/ Andrew M. Mason, (Reg. No. 64,034) John D. Vandenberg (Reg. No. 31,312) KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204 Telephone: (503) 595-5300 Facsimile: (503) 595-5301 [email protected] [email protected] Counsel for Petitioner


1

CERTIFICATE OF COMPLIANCE WITH

TYPE-VOLUME LIMITATION PURSUANT TO 37 C.F.R. § 42.24

This brief complies with the type-volume limitation of 37 C.F.R. § 42.24.

The brief contains 13,819 words, excluding the parts of the brief exempted by

37 C.F.R. § 42.24(a).

The brief has been prepared in a proportionally spaced typeface using Microsoft

Word 2013 in a 14 point Times New Roman font.

May 10, 2017 /Andrew M. Mason/

Andrew M. Mason, (Reg. No. 64,034) KLARQUIST SPARKMAN, LLP One World Trade Center, Suite 1600 121 S.W. Salmon Street Portland, Oregon 97204 Telephone: (503) 595-5300 Facsimile: (503) 595-5301 [email protected] Counsel for Petitioner


1

CERTIFICATE OF SERVICE

I hereby certify that on May 10, 2017, I caused a true and correct copy of the

foregoing Petition for Inter Partes Review of U.S. Patent No. 9,531,657 and

supporting exhibits to be served via Federal Express on the Patent Owner at the

following correspondence address of record as listed on PAIR:

JDM Patent Law PLLC

6801 Kenilworth Ave, Suite 120 Riverdale Park, MD 20737

By /Andrew M. Mason/ Andrew M. Mason (Reg. No. 64,034) Counsel for Petitioner

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