Motorola Mobility, Inc. v. Microsoft Corporation

Filing 125

NOTICE by Microsoft Corporation re 124 Defendant's MOTION Claim Construction of Filing Exhibits (Attachments: # 1 Appendix (Index to Exhibits), # 2 Exhibit 101, # 3 Exhibit 102, # 4 Exhibit 201, # 5 Exhibit 301, # 6 Exhibit 302, # 7 Exhibit 304, # 8 Exhibit 305, # 9 Exhibit 501, # 10 Exhibit 502, # 11 Exhibit 504, # 12 Exhibit 601, # 13 Exhibit 801 (Part 1), # 14 Exhibit 801 (Part 2), # 15 Exhibit 901, # 16 Exhibit 902, # 17 Exhibit 903, # 18 Exhibit 904, # 19 Exhibit 905, # 20 Exhibit 1101, # 21 Exhibit 1102, # 22 Exhibit 1105, # 23 Exhibit 1110, # 24 Exhibit 1114, # 25 Exhibit 1115, # 26 Exhibit 1116, # 27 Exhibit 1201, # 28 Exhibit 1301, # 29 Exhibit 1302, # 30 Exhibit 1303, # 31 Exhibit 1304, # 32 Exhibit 1305, # 33 Exhibit 1401, # 34 Exhibit 1402, # 35 Exhibit 1403, # 36 Exhibit 1404, # 37 Exhibit 1405, # 38 Exhibit 1406, # 39 Exhibit 1407, # 40 Exhibit 1408, # 41 Exhibit 1409)(Miner, Curtis)

Exhibit 904 No Host Server Mailbox Inconsistent with the Specification The Office has not considered the context of emailpost office of the term with the understanding Patent Mr John L It According evidence established that while the this the artisan would that claims their one those 464 466 CCPA PTO does not 49 CCPA from one herewith inconsistent of the `899 by the specification submitted skilled on the Mailbox to USPQ 494 165 mean 496 CCPA 1970 give claim language to that different USPQ PTO the its broadest can completely mailbox citing 1467 reach In re Further Fed Cir See In reasonable that obtained in light of the specification 1999 and In re Okuzawa See In Although 537 re well ignore the understanding and unknown meaning thereto 2d 1464 the art would 1976 the art as a term of art interpretation broadest reasonable interpretation this interpretation skilled in in each word of every claim must be given weight have of the terminology as to ascribe a completely F3d 1353 1358 skill OF HOST SERVER MAILBOX CLAIM 1 Proper Patentable Weight Wilson 424 F2d 1382 1385 interpretation of ordinary Friend well established is A those the art as evidenced PROPER INTERPRETATION II Cortright 165 re the so PTO must give must be consistent with the F2d 545 548 USPQ 190 Royka 490 F2d 981 984 180 USPQ 580 58283 1974 As is in and as supported by declaration relevant art to systems The current Office is in Mailbox conveys meaning context a term of art in an emailpost noted above interpreted accorded an no the different interpretation claim term mailbox has not been given patentable from store in light of Moreover the there specification 8 no indication that weight since it office the term mailbox that is Office has Interpreted it The 2009 is B 26 is Reply 90009286 Office Action of September to is Control mailbox has been consistent with an interpretation that Action of September skill in circumscribes claims alone the art would reach It one of 90009286 Office 26 is Reply No to to that which 2009 this the broadest linguistically is Control twopart process properly performed possible reasonable in ie based interpretation view of the technical that solely on the context of the submitted respectfully mailbox must be accorded that given to mailbox must be from the perspective the rejection of claim under 35 I in light Further USC in §103 patentable skill in the weight and the art in view of the Holder respectfully submits that improper interpretation of this feature detailed next from the the art in view of the specification the rejection of claim 1 §103 must be withdrawn Mailbox is B USC of the proper perspective of one of skill under 35 of one of has not been so interpreted Patent As mailbox specification is weight is It specification2 a Term of Art Used Consistently This means that the words plain meaning unless the plain meaning F2d 319 321 13 USPQ2d 1320 1322 is allow inconsistent Fed Such in the Specification claims must be interpreted During examination as well as reexamination as their terms reasonably as as broadly of the claim must be given with the specification their 893 In re Zletz Cir 1989 emphasis added The ordinary and customary meaning of a term may be evidenced by a variety of sources including the words of the claims themselves the prosecution 2 history The Patent and Trademark and evidence concerning relevant extrinsic Office PTO the remainder of the specification determines the scope of claims in scientific principles patent applications not in specification solely ofSci as it the basis of the claim language but upon giving claims their broadest reasonable construction would be interpreted by one of ordinary skill in the art In re Am Acad the light on of the Tech and phrases used of the terms in the in the claims claims may must find clear be ascertainable support or antecedent basis by reference 9 to in Ctr 367 F3d 1359 1364 70 USPQ2d 1827 Fed Cir 2004 Indeed the rules of the PTO require that and the terms claims must conform to the invention as set forth in the remainder of the specification application the the description description so 37 CFR that 175d1 the meaning No Reply 90009286 26 Office Action of September to meaning terms and of technical 1314 75 USPQ2d of Mr of mailbox proper interpretation in art the state of the Phillips v A WH Corp F3d 415 at 1327 at Next the declaration of the term 2009 John L Friend Exhibit The of interpretation Mr A to the Fried considers the consistent use and the well known meaning the specification discussed relative is Control the art at the time of filing of in the `899 Patent Exhibit by his A Mr evidence John L Submitted submitted Mr Patent pertains herewith Friend as described curriculum vitae Exhibit attached Friend an expert Under 37 in A5 in CFR one 1132 CFR under 37 fields 1132 further attached as supplemented the art to which skilled in the technical § and as the declaration is Declaration Evidence is Declaration is 1 the `899 of user data communications and interfaces and as Patent provides the meaning of mailbox to Holder respectfully is for entry Patent provided that of the `899 to refute same interpretation declarations of the previous response familiar to the Office The necessary showing hereafter pursuant to 37 this interpretation the submitted of the declarations requests that the Examiner enter Holder respectfully submits part by the inconsistent Holder Friend in the context time of the invention widely used in the art at the Friend on the record and consider the reasons Mr that CFR § the declaration evidence was of mailbox by the Office and the need with factual evidence to these declaration The entry of this evidentiary 10 Mr sufficient 1116e advance on claim meaning are coextensive As such of good and in necessitated for prosecution in the Patent is Patent A It Exhibit noted scope to the discussion and present issues already of record testimony will serve to advance the Control Reply No to 90009286 of prosecution 26 Action of September Office this 2009 reexamination and present the outstanding issues in the best form for any appeal subsequent Accordingly Holder respectfully submits Patent that the declaration of Mr Friend be entered and considered A The Host Server Mailbox location of a server As host server the 240 `899 Patent of the `899 Patent the context with a particular email address memory associated of Mr Friend the `899 Patent noted in the declaration method of exchanging in data between includes mailboxes reproduced below a mobile client 246 See to eg is 2 directed and a host server eg to post office3 house email data of users shown `899 Patent Figure a system and in Figure 2 of 2 SESSION MANAGER POST OFFICE HOST SERVER MAILBOXES CSO MANAGER SESMIOff MANAGER 255 HOSTS CONTROLLER BILLING ACTIVE MANAGER INACTIVE CLIENT CLIENT PROFILE CLIENT MAIL SAS INDEX PROFILE DB DS CLIENT DB GROUP MEMORY See eg `899 Patent Figures 12 col 1 11 227 5867 `228 PROFILE DB and col 11 3 11 315 A No to Reply 90009286 26 Office Action of September 2009 The architecture of the `899 Patent provides server 240 having from the communication a mailbox 246 The procedure chart of Figure See for eg col the host server of the `899 Patent 3 211 device `899 Patent accessing for The system supports multiple users each 6 317 11 eg below reproduced the remote access of the mailboxes of post office eg See is Control shown `899 Patent in the flow Figure 3 MECLIENT INSTANTIATION 301 HOSTSERVERIEG VSM POST OFFICE TIMERFRECEIVE REGISTRATION 302 INSTANTIATION 306 307 SEND REGISTRATION RECE VE REGFULLY QUALIFIED START VIRTUAL SESSION AC EsrABUSHEDr+SESSKaN ESTABLISHEDRECEIVE MAIL RECEIVE MAIL TO CLIENT ACKNOWLEDGE FORWARD 322 UPDATE POST OFFICE BOXEG MARKREAD 326 332 OTHER DATA EXCHANG OTHER DATA EXCHANG 330 OTHER DATA EXCHANG 333 UPDATE TIMER UPDATE TIMER 334 335 YES YES 336 ORE DATA MORE DATA FIG3 NO NO 337 336 TIME OUT TIME NO OUT 341 YES 340 REMOVE YES REMOVE QUALIFICATION Figure 3 of the `899 Patent instantiation by mobile client Figure 3 step to way of illustrates a communication a mailbox of the post office 321 324 and col 7 11 QUALIFICATION LOGOFF LOGOFF CLIENT a post office server New associated 142 1 At 12 access via a user agent email is 339 obtained by connecting with the user the time of the See eg the `899 Patent `899 Patent filing and for at No See Exhibit RFC 918 RFC 1460 3 A1 steps 305 mailbox in Internet eg and 326 A2 authorization Exhibits A1 A4 involves of In through of A4 the this the its Version 1460 and and update with the to draft RFC 1225 eg See eg `899 Patent of the well established meaning of well in the art known in the `899 Patent consistent with The definition of email and the use RFC the art at least since Simple Mail Transfer Protocol from August SMTP its with the destination server using the protocol the target mailbox mail reaches mailbox 3 procedures 1982 821 there process for sending an email from one user to another users mailbox would add the email with Post Office of the `899 Patent term as used would receive the email and upon verifying destination RFC are evidence addressing the email appropriately When Office Protocol described throughout with email RFC 821 then communicating states A4 and update state and See state the art at the time of the invention of mailboxes in combination description of the Post Office Protocol Friends understanding Exhibit and IETF 12 Furthermore the term email Mr A2 Exhibits Post Task Force Engineering of the `899 Patent describes generic authorization consistent with the Exhibits A1 with a user of access email associated to client email from remote clients as early as post office accessing See Also 1225 pages Figure for mechanism by which a community was moving toward the telecommunication Indeed a protocol 1984 Protocol mailbox remotely access a post office standardizing was a known mail handling prior post office the client device October 2009 In the inserts host mail conventions 13 RFC 821 the target mailbox address that ultimate destination the receiverSMTP in users mailbox address RCPT section of 411 the forwardpath into the destination in The SMTP is could 26 and server was appropriate RFC 821 contains only a mailbox in a This it a decade device Action of September it least 90009286 Office is Reply to is Control accordance No 90009286 Office Action of September to art 1995 when In Accordingly 26 the 2009 `899 Patent would understand the claim term mailbox ie context as described in the `899 Patent was filed a person of ordinary and prosecution specification broadest reasonable sense to define a location of a server particular email address known 3 in the art and as consistently Morgan Describes As noted above correspond to embracing memory the Office 203 has interpreted of Morgan is in fact All of the rejections the Patent of record rely upon the above claims 14 15 and in the office the with a upon an email with the address in a Memory claimed mailbox to of a host server mailbox as broad inconsistent known term of mailbox As such Patent Holder respectfully requests of dependency Holders unreasonably of the `899 Patent a very well Documents the interpretation space of a workstation term mailbox as used in the context and the term mailbox Yet in of the `899 Patent4 described specification Annotated Groupware Storing memory general associated remotely from a mobile client by a user associated is as memory history email arriving at the server based way new is could be accessed address In this skill the context of the email exchangepost in This is Control Reply because the with such an interpretation art5 noted improper interpretation of that the rejection of claim 1 and by virtue 18 be withdrawn6 CONCLUSION If to this place Patent address the Examiner believes and additional in Patent condition for a Notice formal matters need to be addressed of Intent to issue a Reexamination Holder respectfully requests the Examiner contact the undersigned such matters consistent with the special dispatch accorded this in order Certificate by telephone to matter within the Office 4 5 6 See eg `899 Patent See Exhibits A and Figures 3 steps A1 through 321 324 col 11 1945 view of the 12 and col 1 11 3667 A4 The merits of claims 14 15 and 18 are not discussed in 14 distinctions presented for base claim 1