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

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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

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Although

537

re

well

ignore the understanding

and unknown meaning thereto

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the art would

1976

the art as a term of art

interpretation

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in

each word of every claim must be given weight

have of the terminology

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F3d 1353 1358

skill

OF HOST SERVER MAILBOX CLAIM 1

Proper Patentable Weight

Wilson 424 F2d 1382 1385

interpretation

of ordinary

Friend

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A

those

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PROPER INTERPRETATION

II

Cortright 165

re

the

so

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F2d 545 548

USPQ

190

Royka 490 F2d 981 984 180 USPQ 580 58283

1974
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is

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and as supported by declaration

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systems The current Office

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the art in view of the specification

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§103 must be withdrawn

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as their terms reasonably

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893

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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

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and

evidence concerning relevant

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the remainder of the specification

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the scope

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scientific

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in

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to

in

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and the terms
claims must conform to the invention
as set forth in the remainder of the specification
application
the

the description

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37

CFR

that

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meaning

No

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90009286

26

Office Action of September

to

meaning

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this interpretation

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90009286

of

prosecution

26

Action of September

Office

this

2009

reexamination and present the outstanding

issues

in

the best form for any

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subsequent

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Patent

that

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of

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entered and considered

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Accordingly

26

the

2009

`899 Patent

would understand the claim term mailbox

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and prosecution

specification

broadest reasonable sense to define a location of a server

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in

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As

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in fact

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claims

14

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in

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office

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with a

upon an email
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of a host server mailbox as

broad

inconsistent

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of dependency

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of the `899 Patent

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Documents

the interpretation

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term mailbox as used in the context

and the term mailbox

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in

of the `899 Patent4

described specification

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memory

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remotely from a mobile client by a user associated

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as

memory

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because

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with such an interpretation

art5

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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

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eg

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A

and

Figures 3 steps

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through

321 324

col

11

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12

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3667

A4

The merits of claims 14 15 and 18

are

not discussed

in

14

distinctions

presented

for

base

claim

1