Motorola Mobility, Inc. v. Apple, Inc.

Filing 93

Defendant's MOTION Defendant and Counterclaim-Plaintiff Apple Inc.'s Claim Construction Brief by Apple, Inc.. (Attachments: # 1 Declaration of Christine Saunders Haskett, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20)(Pace, Christopher)

EXHIBIT 4

Control No.
901010,891

6,101,531

Examiner

Art Unit

Deandra M. Hughes

Order Granting / Denying Request For
Ex Parte Reexamination

Patent Under Reexamination

3992

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--

The request for ex parte reexamination filed 07 March 2010 has been considered and a determination has
been made. An identification of the claims, the references relied upon, and the rationale supporting the
determination are attached.
Attachments: a)~ PTO-892,
1.

I:8J

b)D PTO/88/G8,

c)D Other: _ _

The request for ex parte reexamination is GRANTED.
RESPONSE TIMES ARE SET AS FOLLOWS:

For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
is permitted.
2.

0

The request for ex parte reexamination is DENIED.

This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR 1.181 ARE
AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
37 CFR 1.183.
In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:

0
b) 0
c) 0
a)

by Treasury check or,
by credit to Deposit Account No. _ _' or
by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).

/Deandra M Hughes/
Primary Examiner, Art Unit 3992

I

I

cc:Rel1uester ( if third oartv reauester)
U.S. Patent and Trademark Office

PTOL-471 (Rev. 08-06)

Office Action in Ex Parte Reexamination

Part of Paper No. 20100426

Application/Control Number: 90/010,891

Page 2

Art Unit: 3992
GRANT OF REQUEST FOR EX PARTE REEXAMINATION
1.

A substantial new question of patentability ("SNQ") affecting claims 1-3. 5-6. and

11 of USP 6,101,531

('''531 Patent") is alleged to be raised by the ex parte

reexamination request filed Mar. 07,2010 ("Request").

References Cited in this Action
2.

Smith et al. "Trials of Wireless Secure Electronic Mail". IEEE Personal
Communications. August 1995. ("Smith")

3.

USP 5.742,905 to Pepe et al. published Apr. 21, 1998 ("Pepe")

4.

USP 5,559,800 to Mousseau et al. published Sep. 24, 1996 ("Mousseau")

5.

USP 5,742,905 to Hamalainen et al. published Sep. 01, 1998 ("Hamalainen")

Proposed SNQs
6.

Third Party Requester ("3PR") allege that the following raise. SNQs affecting

claims 1-3, 5-6, and 11 of the '531 Patent (Request. pq. 5).
(A)

Claims 1. 5-6, and 11 are anticipated by Smith.

(8)

Claims 1, 5-6, and 11 would have been obvious over Pepe in view of
Hamalainen.

(C)

Claims 1, 5-6, and 11 would have been obvious over Pepe in view of
Mousseau.

(D)

Claims 2-3 would have been obvious over Smith in view of the general
knowledge in the field as described by the examiner of the '531 patent.

(E)

Claims 2-3 would have been obvious under 35 USC §103(a) based on
Pepe in view of Hamalainen and further in view of the general knowledge
in the field as described by the examiner of the '531 patent.

(F)

Claims 2-3 would have been obvious under 35 USC §103(a) based on
Pepe in view of Mousseau and further in view of the general knowledge in
the field as described by the examiner of the '531 patent.

Application/Control Number: 90/010,891

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Art Unit: 3992

Prosecution History
7.

The '531 patent is a system which includes a virtual session manager ('VSM") for

establishing and maintaining a virtual session, via a session-less communication path
st

with a 1 data processing device (e.g. mobile client) on the one hand and a session-

oriented communications path with a 2 nd data processing device (e.g. a host system) on
the other hand. (col. 2:55-67 to col. 3:1-13). The VSM and the 1st data processing
device (e.g. mobile client) are coupled via a tariffeQ network or connection. (/d.).
However, the virtual session, via a session-less oriented communication protocol
between the VSM and the mobile client, permits remote access to the host server
without the expense of a circuit switched connection on the tariffed network. (ld.)
The system also provides for the application of user-definable filter parameters
on data being transferred between the mobile client and the host server. (col. 3:5-8)
These user-definable filter parameters limit the data being transferred over the tariffed
networks between the mobile client and the host server, thereby controlling the use of
these expense-bearing networks. (col. 3: 15-20)
The '531 patent is a continuation of application 08/574,537 filed Dec. 19, 1995,
now abandoned. The Examiner issued a first action notice of allowance of application
09/060,686 which became the '531 patent. The Examiner stated the following reasons
for allowing independent claims 40, 44, and 55 (now claims 1, 5, and 11, respectively).
The prior art of record fails to teach or suggest individually or in combination:
(A)

preparing a set of plurality of user-selected criteria at a wireless client
communication unit; and

Application/Control Number: 90/010,891

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Art Unit: 3992
(8)

communicate the set of user-selected criteria to a communication server in
a virtual session;

(C)

for filtering subsequent data units transferred from a host device to said
wireless client communication unit. (NOA in 091060.686 dated Apr. 4.
2000; pq. 3. 1st

m

Accordingly, a prior art publication teaching the above elements would

for~

the

proper basis for a SNQ as to claims 1-3, 5-6, and 11 of the '531 Patent.

SNQs (A) and (D): Smith
8.

Smith is a report on the Department of Defense ("000") trials of wireless secure

e-mail via commercial wireless data networks. (pq. 28. col. 2. 2nd W. The report is
based on a broad-based trial in which multiple wireless services, email packages,
security packages, and mobile computers were selected and integrated into various
combinations. (pq. 28, col. 2. 3 d

,-p

Smith discloses a means by which mobile users who were concerned with
transmission costs associated with low priority messages could select filters on
incoming mail and specify which messages were downloaded to the mobile computer.
(pq. 30. col. 1.

2"d ID

In these DOD trials, RAM, ARDIS, and CDPD services were employed for the
wireless connection of the mobile unit to the mail server on the users Local Area
Network. (/d.) Note figures 1 and 2 of Smith which disclose a RAM or ARDIS network
connection from the mobile clients to the mail routers.
3PR argues that since RAM, ARDIS, and CDPD are identified as session-less
oriented networks in the '531 specification, the wireless system of Smith, which is

Application/Control Number: 90/010,891

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Art Unit: 3992
disclosed as RAM, ARDIS, or CDPD, are session-less oriented networks. As such,
these connections are necessarily virtual sessions because they are session-less.

(Request, pq. 38, /ast'D.
However, this argument rests on the assumption that communications
established via session-less oriented networks are necessarily virtual sessions. The
Examiner does not agree that communications established via session-less oriented
protocols are necessarily virtual sessions because of the following explanation in the
'531 patent.
"The session-oriented communication protocol with the host system
permits remote access to, e.g., LAN-based applications, while the virtual
session, via a session-less oriented communication protocol,
between the VSM and remote (i.e., coupled via a tariffed network or
connection) client permits this access to' be carried out without the
expense of a dedicated/circuit switched connection," (emphasis added:
col. 2:62-6l.)
Consequently, the '531 patent discloses that a virtual session is established via a
session-less oriented communication protocol. It does not disclose that all
communications established via a session-less oriented communication protocol are
virtual sessions.
As such, the teachings of Smith do not form the proper basis for an SNQ as to
claims 1, 5-6, and 11 because Smith does not containing a teaching of communicating
the set of user-selected criteria to a communication server in a virtual session, which a
reasonable Examiner would consider important in deciding whether claims 1, 5-6, and
11 are patentable. For at least this reason, the request for reexamination of claims 1, 56, and 11 over Smith is DENIED.

Application/Control Number: 901010,891

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Art Unit: 3992
As to SNQ (D), the Request for reexamination must be based on prior patents
and publications. 35 USC §302. Here, 3PR has presented an SNQ based on "the
general knowledge in the field as described by the examiner of the '531 patent."
(Requst. pg. 5). liThe general knowledge in the field as described by the examiner of

the '531 patent" is not a proper basis for an SNQ because it is not a prior patent or
publication. As such, the request for reexamination based on SNQ (D) is DENIED.

SNQs (B) and (E): Pepe in view of Hamalainen
9.

Pepe is a personal communications device with the ability to remotely control the

receipt and delivery of wireless and wireline voice and text messages.
Pepe discloses, inter alia:
(A)

profile management allows the user to modify wireless messaging and call
command services by updating certain elements in the user's service
profile. (col. 21:64-6l); and

(8)

the user edits the profile on a personal digital assistant ("pDA") and sends
an upload request to a server requesting permission to send the updated
profile elements (col. 22:37-39); and

(C)

the server checks the profile, filters messages by message length, and
communicates the filtered messages to the PDA (col. 6:5-10 and fig. 2).

However, Pepe does not teach communicating the set of user-selected criteria to a
communication server in a virtual session.
Hamalainen teaches creating a virtual channel where a mobile station and a
data service unit are provided with a number of stored parameters relating to each
other. (Abstract). When a mobile station wants to transmit or receive data packets
betwe~n

the mobile station and a data service unit, a packet data transfer channel is

Application/Control Number: 901010,891

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Art Unit: 3992
established making use of the parameters of the virtual channel and thereby using
substantially less signaling than the channel establishment signaling characteristic of
the network, one part thereof being a radio channel and the other part a time slot in the
digital trunk line. (IQ). On termination of data packet transfer, at least said radio channel
is disassembled but the virtual channel is maintained until the disconnection of the
mobile station from the data service. (IQ).
As such, the combination of Pepe in view of Hamalainen form the proper basis
for an SNQ as to claims 1, 5-6, and 11, which a reasonable Examiner would consider
important in deciding whether claims 1, 5-6, and 11 are patentable. The combination of

Pepe in view of Hamalainen was not before the Examiner in the prosecution of the
application which became the '531 patent. For this reason, the request for
reexamination of claims 1, 5-6, and 11 over Pepe in view of Hamalainen is GRANTED.
As to SNQ (E), the combination Pepe in view of Hamalainen alone forms the
proper basis of a SNQ as to claims 2-3. As such, the request for reexamination based
on SNQ (E) is GRANTED because the combination Pepe in view of Hamalainen,
without the alleged 'teaching' of the general knowledge of the Examiner in the '531
patent, forms the proper basis of a SNQ as to claims 2-3.

SNQ (C) and (F): Pepe in view of Mousseau
10.

Pepe does not teach communicating the set of user-selected criteria to a

communication server in a virtual session. 3PR provides Mousseau to teach
communication between a user device and a host server via a session-less oriented

Application/Control Number: 90/010,891

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Art Unit: 3992
protocol. (Request P9. 60). For the reasons set forth above, the Examiner does not
consider a teaching of a communication via a session-less oriented protocol to be a
teaching of a virtual session. As such, the combination of Pepe in view of Mousseau
does not form the proper basis of a SNQ and the request for reexamination of claims 1,
5-6, and 11 over Pepe in view of Mousseau is DENIED.
As to SNQ (F), the Request for reexamination must be based on prior patents
and publications. 35 USC §302. Here, 3PR has presented an SNQ based on "the
general knowledge in the field as described by the examiner of the '531 patent."
(Requst. pq. 5). "The general knowledge in the field as described by the examiner of

the '531 patent" is not a proper basis for an SNQ because it is not a prior patent or
publication. As such, the request for reexamination based on SNQ (F) is DENIED.
Conclusion

11.

For the reasons setJorth above, claims 1-3, 5-6. and 11 will be reexamined.

12.

All correspondence relating to this ex parte reexamination proceeding should be

directed:
By Mail to:

Mail Stop Ex Parte Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

By FAX to:

[phone]
Central Reexamination Unit

By hand:

Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314

Application/Control Number: 90/010,891

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Art Unit: 3992

13.

Registered users of EFS-Web may alternatively submit such correspondence via

the electronic filing system EFS-Web, at:

https://sportal. uspto. gov/authenticate/authenticateuserlocalepf. html.
.EFS-Web offers the benefit of quick submission to the particular area of the
Office that needs to act on the correspondence. Also, EFS-Web submissions are "soft
scanned" (i.e., electronically uploaded) directly into the official file for the reexamination
proceeding, which offers parties the opportunity to review the content of their
submissions after the "soft scanning" process is complete.
14.

Any inquiry concerning this communication or earlier communications from the

examiner, or as to the status of this proceeding, should be directed to the Central
. Reexamination Unit at telephone number [phone].
Signed:
/Deandra M. Hughes/
Deandra M. Hughes
Primary Examiner
Central Reexamination Unit 3992
[phone]
May 7,2010

Conferees:
/Christina Leung/

~7~