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RYSAVY DECLARATION Page 1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

DECLARATION BY PETER RYSAVY FOR

INTER PARTES REVIEW OF UNITED STATES PATENT NO. 9,531,657

Dated: May 8, 2017

anu

Text Box

MICROSOFT Exhibit 1002


TABLE OF CONTENTS

Page

I. INTRODUCTION ........................................................................................... 7

A. Educational And Professional Background .......................................... 7

B. Materials Considered ............................................................................. 9

II. LEGAL UNDERSTANDINGS .....................................................................10

III. THE ’657 PATENT .......................................................................................17

A. The Subject Matter Of The ’657 Patent ..............................................17

B. Person Of Ordinary Skill In The Art (“POSITA”) .............................24

C. Claims Of The ’657 Patent ..................................................................26

D. Meaning Of Different Claim Terms ....................................................29

IV. THE SONY, MATSUMOTO, SCOTT AND NEILSEN PRIOR ART ........32

A. Sony .....................................................................................................32

B. Matsumoto ...........................................................................................38

C. Scott .....................................................................................................48

D. Neilsen .................................................................................................51

V. GROUND 1: OBVIOUSNESS OF CLAIMS 1-4 AND 9-12 IN LIGHT OF SONY IN VIEW OF MATSUMOTO ................55

A. A method, performed by a communication device, for reminding a user of the communication device of a conversation point for a future communication (1.1) ..................55

B. the communication device having a processor and a display screen (1.2) ...................................................56

C. 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 (1.3) ........58

D. (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 (1.4) .................68

E. (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 (1.5) ..............................70

F. (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 (1.6) ...........71

G. (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 (1.7) ....72

H. 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 (2) .........................75

I. 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, 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 (3) ...........76


J. 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 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 (4) ..............78

K. The method of claim 1, wherein the first indication comprises contents of the at least one memo of the memo data (9) ...79

L. 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 (10) .........80

M. 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 (11) .....81

N. 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 (12) ..............82

VI. GROUNDS 2-3: OBVIOUSNESS OF CLAIMS 5-8 IN LIGHT OF MATSUMOTO IN VIEW OF EITHER SCOTT AND/OR NEILSEN .......84

A. A method, performed by a communication device, for reminding a user of the communication device of a conversation point for a future conversation (1.1) .............85

B. the communication device having a processor and a display screen (1.2) ..................................................85

C. 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 (1.3) .................88

D. (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 (1.4) ..................90

E. (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 (1.5) ................................91

F. (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 (1.6) ..................93

G. (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 (1.7)......95

H. 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 (5) ................98

I. 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 (6) ..............114


J. 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 (7) ........................116

K. 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 (8) ....116


I. INTRODUCTION

1. I have been retained as a technical expert by counsel on behalf of

Microsoft Corporation, to opine on U.S. Patent No. 9,531,657 (“’657 patent”) and

related technologies, in association with proceedings before the United States Patent

and Trademark Office (“USPTO”).

2. I reserve the right to modify or supplement my opinions, as well as the

basis for my opinions, based on the nature and content of the documentation, data,

proof and other evidence or testimony that the patent owner or its experts may

present, or based on any additional information provided to me or found by me in

this matter.

A. Educational And Professional Background

3. I graduated with BSEE and MSEE degrees from Stanford University in

1979.

4. From 1988 to 1993, I was vice president of engineering and technology

at Traveling Software (later renamed LapLink), at which projects included utilities

for personal digital assistants (PDAs), personal-information-management databases

including contact management, LapLink, LapLink Wireless, and productivity

solutions for a wide variety of mobile platforms. Prior to Traveling Software, I spent

seven years at Fluke Corporation, where I worked on data-acquisition products and

touch-screen-based computer terminals.


5. I am the president of the consulting firm Rysavy Research LLC and

have worked as a consultant in the field of mobile computing since 1993. One of my

clients in 1994 was McCaw Cellular (which later became AT&T Wireless), the

leading U.S. cellular company at the time. I did multiple projects for McCaw

Cellular, helping me develop my expertise in mobile application architectures,

mobile computing platforms, and wireless technology.

6. Beginning in 1994, I began teaching public wireless courses, including

courses that I taught at Portland State University and the University of California in

Los Angeles. These courses covered mobile-application architectures, mobile

application development approaches, and wireless networking technologies.

7. Past projects have included evaluation and reports on mobile

computing platforms, mobile application architectures, mobile browsers, wireless

email systems, mobile social-networking applications, and wireless technology

capabilities. I have conducted strategic consultations, done system design, written

articles, taught courses, participated in webcasts, spoken at conferences as a keynote

speaker, measured network performance, written test reports, and have testified as

an expert witness in patent litigation cases. My past and current clients include more

than ninety-five organizations.

8. I have written more than one hundred and sixty articles, reports, and

papers, and have taught more than forty public courses and webcasts on mobile

computing topics.


9. From 2000 to 2016, as part of my consulting practice, I was the

executive director of the Portable Computer and Communications Association

(PCCA), which was incorporated in May of 1993. The PCCA currently operates as

the Wireless Technology Association (WTA). The PCCA's mission has been to

promote the interoperability of mobile computing platforms and wireless systems.

For details, see http://www.wirelesstechnologyassociation.org.

10. Further detail on my background and work experience, along with a list

of my publications and the cases in which I have given testimony in the past four

years, is contained in my CV in Appendix 1.

11. I am being compensated for my time expended in connection with this

case at the rate of $400 per hour, plus expenses. My compensation is for my time,

and is in no way dependent or based on the content of my opinions or testimony

offered in this matter, the outcome of any issues in this matter, or the timing of when

issues in this matter or this matter as a whole are resolved.

B. Materials Considered

12. In connection with my work on this matter, I have reviewed the

following materials and references in forming my opinions:

Nitesh Ratnakar, U.S. Patent No. 9,531,657, Contact List With Conversation Point Reminder, filed August 22, 2014, issued December 27, 2016 (“’657 patent”)

Nitesh Ratnakar, U.S. Patent No. 8,848,892, Contact List With Conversation Point Reminder, filed March 15, 2008, issued September 30, 2014 (“’892 patent”)


Fumiaki Matsumoto et al., U.S. Patent No. 7,130,617, filed February 28, 2001, issued October 31, 2006 (“Matsumoto”)

Sony Ericsson Mobile Communications AB, European Patent Publication No. EP 1739937 A1, filed June 29, 2005, published January 3, 2007 (“Sony”)

Sherryl Lee Lorraine Scott et al., U.S. Patent No. 7,822,434 B2, filed May 9, 2006, issued October 26, 2010 (“Scott”)

Peter Dam Neilsen, U.S. Patent Publication No. US 2006/0195518 A1, PCT filed April 17, 2003, published August 31, 2006 (“Neilsen”)

Rick Greenwald et al., Professional Oracle Programming, Chapter 15 (Wiley Publishing 2005) (excerpted)

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

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

Prosecution History of U.S. Patent No. 9,531,657 (excerpted)

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

13. I may also reference other background materials throughout this

declaration.

II. LEGAL UNDERSTANDINGS

14. In expressing my opinions and considering the subject matter of the

claims of the ’657 patent, I am relying upon certain basic legal principles that have

been explained to me.

15. I understand that for an invention claimed in a patent to be found

patentable, it must be, among other things, new and not obvious from what was

known before the invention was made. Thus, I understand that there are two ways


in which prior art may render a patent claim unpatentable. First, the prior art can be

shown to “anticipate” the claim. Second, the prior art can be shown to have made

the claim “obvious” to a person of ordinary skill in the relevant art.

16. Because my opinions only involve obviousness, my understanding of

that legal standard is set forth below.

17. I understand the information that is used to evaluate whether an

invention is new and not obvious is generally referred to as “prior art” and generally

includes patents and printed publications (e.g., books, journal publications, articles

on websites, product manuals, etc.).

18. I understand that in this proceeding Microsoft has the burden of proving

that the claims of the ’657 patent are invalid based on prior art by a preponderance

of the evidence. I understand that “a preponderance of the evidence” is evidence

sufficient to show that a fact is more likely true than it is not.

19. I understand that the claims must be given the broadest reasonable

construction consistent with the specification. The claims after being construed are

then to be compared to the information in the prior art.

20. I understand that in this proceeding, the information that may be

evaluated is limited to patents and printed publications. My analysis below compares

the claims to patents and printed publications that are prior art to the claims.

21. I have been informed that, under U.S. patent law as applicable to the

’657 patent, a claimed invention is not patentable if it would have been obvious to a


person of ordinary skill in the field of the invention at the time the invention was

made.

22. I have been informed that the obviousness standard is defined in the

patent statute (35 U.S.C. §103(a)) (in the form of that statute applicable to the ’657

patent) as follows:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.

23. I have been informed that the following standards govern the

determination of whether a claim in a patent is obvious. I have been instructed to

apply these standards in my evaluation of whether the asserted claims of the ’657

Patent would have been considered obvious on March 15, 2008.

24. I have been informed that to find a claim in a patent obvious, one must

make certain findings regarding the claimed invention and the prior art. Specifically,

I have been informed that the obviousness question requires consideration of four

factors (although not necessarily in the following order):

• The scope and content of the prior art;

• The differences between the prior art and the claims at issue;

• The knowledge of a person of ordinary skill in the pertinent art; and


• Whatever objective factors indicating obviousness or non-

obviousness may be present in any particular case.

25. In addition, I understand that the obviousness inquiry should not be

done in hindsight, but must be done using the perspective of a person of ordinary

skill in the relevant art at the time of the alleged invention.

26. I understand that it is acceptable to consider evidence other than the

information in a particular prior art document to determine if a feature is necessarily

present in or inherently described by that reference.

27. I have been informed that the objective factors indicating non-

obviousness may include: commercial success of products covered by the patent

claims; a long-felt need for the invention; failed attempts by others to make the

invention; copying of the invention by others in the field; unexpected results

achieved by the invention; praise of the invention by those in the field; the taking of

licenses under the patent by others; expressions of surprise by experts and those

skilled in the art at the making of the invention; and the patentee proceeded contrary

to the accepted wisdom of the prior art. I also understand that any of this evidence

must be specifically connected to the invention rather than being associated with the

prior art or with marketing or other efforts to promote an invention. I am not

presently aware of any evidence of “objective factors” suggesting the claimed

methods are not obvious, and reserve my right to address any such evidence if it is

identified in the future.


28. I understand the combination of familiar elements according to known

methods is likely to be obvious when it does no more than yield predictable results.

I also understand that an example of a solution in one field of endeavor may make

that solution obvious in another related field. I also understand that market demands

or design considerations may prompt variations of a prior art system or process,

either in the same field or a different one, and that these variations will ordinarily be

considered obvious variations of what has been described in the prior art.

29. I also have been informed that if a person of ordinary skill can

implement a predictable variation, that variation would have been considered

obvious. I understand that for similar reasons, 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 that technique to improve the

other device would have been obvious unless its actual application yields unexpected

results or challenges in implementation.

30. I understand that the obviousness analysis need not seek out precise

teachings directed to the specific subject matter of the challenged claim, but instead

can take account of the “ordinary innovation” and experimentation that does no more

than yield predictable results, which are inferences and creative steps that a person

of ordinary skill in the art would employ.

31. I understand that sometimes it will be necessary to look to interrelated

teachings of multiple patents; the effects of demands known to the design


community or present in the marketplace; and the background knowledge possessed

by a person having ordinary skill in the art. I understand that all these issues may be

considered to determine whether there was an apparent reason to combine the known

elements in the fashion claimed by the patent at issue.

32. I understand that the obviousness analysis cannot be confined by a

formalistic conception of the words “teaching, suggestion, and motivation.” I

understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.

Teleflex, Inc., 550 U.S. 398 (2007), in which the Court rejected the previous

requirement of a “teaching, suggestion, or motivation to combine” known elements

of prior art for purposes of an obviousness analysis as a precondition for finding

obviousness. I have been informed that KSR confirms that any motivation that

would have been known to a person of skill in the art, including common sense, or

derived from the nature of the problem to be solved, is sufficient to explain why

references would have been combined.

33. I have been informed that a person of ordinary skill attempting to solve

a problem will not be led only to those elements of prior art designed to solve the

same problem. I understand that under the KSR standard, steps suggested by

common sense are important and should be considered. Common sense teaches that

familiar items may have obvious uses beyond the particular application being

described in a reference, that if something can be done once it is obvious to do it

multiple times, and in many cases a person of ordinary skill will be able to fit the


teachings of multiple patents together like pieces of a puzzle. As such, the prior art

considered can be directed to any need or problem known in the field of endeavor as

of the effective filing date and can provide a reason for combining the elements of

the prior art in the manner claimed. In other words, the prior art does not need to be

directed towards solving the same problem that is addressed in the patent. Further,

the individual prior art references themselves need not all be directed towards

solving the same problem.

34. I have been informed that an invention that might be considered an

obvious variation or modification of the prior art may be considered non-obvious if

one or more prior art references discourages or lead away from the line of inquiry

disclosed in the reference(s). A reference does not “teach away” from an invention

simply because the reference suggests that another embodiment of the invention is

better or preferred. My understanding of the doctrine of teaching away requires a

clear indication that the combination should not be attempted (e.g., because it would

not work or explicit statements saying the combination should not be made).

35. I understand that a person of ordinary skill is also a person of ordinary

creativity.

36. I further understand that in many fields, it may be that there is little

discussion of obvious techniques or combination, and it often may be the case that

market demand, rather than scientific literature or knowledge, will drive design

trends. When there is such 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 their technical grasp. If

this leads to the anticipated success, it is likely the product not of innovation but of

ordinary skill and common sense. In that instance the fact that a combination was

obvious to try might show that it was obvious. The fact that a particular combination

of prior art elements was “obvious to try” may indicate that the combination was

obvious even if no one attempted the combination. If the combination was obvious

to try (regardless of whether it was actually tried) or leads to anticipated success,

then it is likely the result of ordinary skill and common sense rather than innovation.

III. THE ’657 PATENT

A. The Subject Matter Of The ’657 Patent

37. The ’657 patent claims priority to an earlier application, which issued

as U.S. Patent No. 8,848,892 (“the ’892 patent”). (’657 patent, 1:7-12). While the

disclosures of the ’892 patent and ’657 patent are mostly the same, the ’657 patent

expressly incorporates by reference the entirety of the ’892 patent’s disclosure.

(’657 patent, 1:10-12).

38. The challenged claims of the ’657 patent are generally directed to

methods for reminding a user of a communication device of a conversation point by

storing a “memo” in association with a contact, with the memo being displayed

automatically when the user later initiates a communication with or receives a

communication from that contact. The “Summary” of the patent states:


The present invention relates to contact list with means to attach memo to contact list entry. Memo comprises of one or more of data, voice, image, and video files. Memo is displayed on communication device when corresponding contact list entry is activated, such as when contact list entry is selected to initiate outgoing communication; and when incoming communication is received from entity corresponding to contact list entry. Present invention provides users means to remember desired conversation points when communication is initiated with an entity.

39. (’657 patent, 1:36-45). In short, the ’657 patent involves two general

aspects: storing a memo along with other contact information such as name, number,

and email address, and then displaying that memo when, for example, a

communication (such as a phone call or email message) occurs with that contact.

40. The first of these two aspects is the storage of a memo related to a

contact. The ’657 patent admits that contact lists in communication devices were

already “common,” including contact lists having multiple contact entries, each with

fields for contact information such as name and phone number:

Contact list is a common feature in most modern communication devices. It comprises of multiple contact list entries and enables users to enter and save contact information of entities. Users are able to enter and save name, address, phone, fax, and email into a contact list entry. Most communication devices also provide users means to speed dial a phone number container in contact list entry directly without having to dial phone number manually.

(’657 patent, 1:18-25). The ’657 patent explains the process of storing a contact list

that includes memo data as follows:


Contact list for communication device is provided and comprises of multiple contact list entries. FIG. 1 shows contact list template for communication device. Each contact list entry comprises of data fields to input contact information details. Preferably data fields include entity name, address, phone, fax, email, and web site URL. Additionally, data field is provided in contact list entry to input memo pertaining to corresponding contact information.

(’657 patent, 2:14-22). Figure 1, referenced in the text above as illustrating the

“contact list template,” is shown below:

The memo field is shown in Figure 1 as one column of data in a simple data array

having rows for contact list entries and columns for the fields for contact information

such as name, address, phone, and memo.

41. The parent ’892 patent, which is 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.” (’892

patent, 2:8-9). That method is discussed above in paragraph 40 and illustrated in

Figure 1, with memo data included as one field integrated within the contact list


along with other fields such as name and number. “[A]lternatively 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.” (’892 patent, 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. This alternative

method was an alternative way of creating a database structure that was well known

at the time of the ’892 and ’657 patent applications. (See ¶ 103)

42. The ’657 patent states that the “memo” can be “one or [sic – of] data,

voice, image, or video files.” (’657 patent, 2:22). The patent also notes that

“[m]eans is provided in communication device to save information contained in

contact list” (’657 patent, 2:22-24), but the patent does not disclose any such means

or other technical details regarding how saving of information occurs.

43. The second aspect of the ’657 patent is the memo reminder feature.

Figures 2 and 3 provide flow charts illustrating this reminder feature as applied to

an outgoing call to a contact (Figure 2) and an incoming call from a contact (Figure

3). For the two examples, the ’657 patent states:

As shown in FIG. 2, means is provided in communication device to display memo recorded with contact list entry when corresponding contact information is activated by user. Contact list entry may be activated, for example, when user opens contact information contained therein for viewing. Alternatively, contact list entry is activated when phone number contained therein is dialed using speed dial


feature. Means is also provided to activate contact list entry when communication device detects incoming phone call from entity corresponding to contact list entry as shown in FIG. 3. Means is provided in communication device to display data and image memo; and replay audio and video memo when corresponding contact list entry is activated. Display of memo upon activation of corresponding contact list entry serves as reminder to user about desired topic of conversation. Preferably, memo is also displayed at the end of phone call with corresponding entity; at which time user is provided option to erase, save or edit memo. Display of memo serves as reminder of desired conversation points when communication is initiated with corresponding entity. This enables users to remember important conversation points during communication with entity.

(’657 patent, 2:24-46). The Figure 2 and Figure 3 flow charts are shown below:


(’657 patent, Figs, 2-3).

44. The ’657 patent also sets forth an example in which the reminder occurs

when the user of the device selects a contact for sending an email or when an email

message is received from a contact:

According to another aspect of the invention, means is provided to record memo into other types of contact lists; such as contact list provided with email clients such as hotmail, outlook, gmail etc. Memo can be one or more of data, audio, image and video file. As shown in FIG. 4, when contact list entry is selected by user to send an email, corresponding memo is displayed on the display monitor as reminder to the user. Preferably, means is also provided to display memo when incoming email from entity corresponding to contact list entry is received. Additionally means is provided to display memo when user responds to email received from entity in contact list. Memo reminds user of important conversation points while reviewing email relating to corresponding entity.


(’657 patent, 2:47-60).

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

of a contact list and then displaying the memo associated with a contact in response

to an incoming or outgoing communication with that contact, the few columns of the

’657 patent provide no technical details about how one might go about implementing

such an idea. No technical details are provided in the specification about the generic

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

something on which to “display” the memo. (’657 patent, 2:24-46). The claims

supplement that description, but only by adding that the generic “communication

device” has a “processor” and a “memory” (’657 patent, claim 1). Given the lack

of any details about the hardware, one can only presume that the idea is to be

implemented on any communication device having a display, processor, and

memory of some kind. In short, although the ’657 patent describes an idea to remind

someone of something by displaying a “memo” later when a communication occurs

with the contact associated with that memo, it describes no new approach for how

to perform this idea.

46. The claims of the ’657 patent’s parent application, which issued as the

’892 patent, were rejected multiple times and amended multiple times. On several

occasions the applicant explained what the cited prior art was missing compared to

the existing claims at that time. One running theme in these distinctions made by


the applicant was that the cited prior art did not disclose the memo being

automatically displayed in response to a communication.1 As discussed below, both

Matsumoto and Sony provide this feature that the applicant claimed to be missing

from the cited prior art.

B. Person Of Ordinary Skill In The Art (“POSITA”)

47. I understand that patent claims and prior art references should be

understood from the perspective of a person of ordinary skill in the art to which the

patent is related, based on the understanding of that skilled person at the time the

application (or any priority application) was filed. I understand that a person of

ordinary skill in the art is one who is presumed to be aware of all pertinent art,

possesses conventional wisdom in the art, and is a person of ordinary creativity. I

have applied this standard throughout my report.

1 E.g., ’892 patent file history, Amendment dated May 30, 2014, p. 4 (“This

is at least because Maes only discloses or suggests a user manually pressing a ‘call note’ in order to display any so-called call note, whereas by contrast the claimed method includes the contrast while more advantageous limitation of ‘causing, by the processor, the at least one memo of the attached memo data to be automatically displayed on the display screen as the target contact entry is being activated, when it is detected step (c), by the processor, that there is memo data attached to the memo field of the target contact entry’ …”) (emphasis original); ’892 patent file history, Response to Final Office Action dated November 5, 2012, p. 8 (“[T]he Grossman reference does not disclose displaying the communication history files in response to a received communication. … In contrast, as mentioned herein above, Applicant discloses and claims a system wherein the memo is displayed not by a user, but by virtue of a received communication.”).


48. I understand that there are several factors that may be used in

determining the level of ordinary skill in the art, including but not limited to (1) the

education level of the inventor, (2) the education level of active workers in the field,

(3) the types of problems encountered in the art, (4) the prior art solutions to these

problems, (5) the rapidity with which innovations are made, and (6) the

sophistication of the technology. I have further been informed that these factors may

not be present in every case and that certain factors may be more relevant in some

cases than others. For example, I understand that the named inventor of the ’657

patent is a cardiologist and may have no formal training in computer science or

electrical engineering. While this may explain the dearth of technical

implementation details contained in the ’657 patent, a review of other patents in the

field, including the prior art discussed in this declaration, shows that those actively

working in this field would be expected to have the technical education and/or

specific technical experience discussed below.

49. For the subject matter of the ’657 patent, as of March 2008 (the filing

month of the priority application that issued as the ’892 patent), it is my opinion that

a person of ordinary skill in the art (“POSITA”) would have had 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.


50. As reflected in my qualifications set forth above and in my CV, I was a

person of more than ordinary skill in the art as of March 2008. I am familiar with

how one of ordinary skill in the art would have understood the patent on that date.

Regardless of the tense I used (past or present), unless otherwise indicated, my

opinions in this report are from the perspective of such a person in March 2008.

C. Claims Of The ’657 Patent

51. Independent claim 1 of the ’657 patent recites a method for a reminder

feature for a communication with a contact:

1. A method, performed by a communication device, for reminding a user of the communication device of a conversation point for a future communication, the communication device having a processor and a display screen, 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:

(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;

(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;


(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; and

(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

52. Dependent claims 2-4 limit the method of claim 1 to scenarios in which

the contact list entry includes a contact’s phone number and reminders occur when

phone calls are received from or made to the contact:

2. 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.

3. 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, 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.


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

53. Dependent claims 5-6 limit the method of claim 1 to scenarios in which

the contact list entry includes a contact’s “messaging address” and reminders occur

when “messages” are composed to a contact.

5. 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.


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.

Dependent claims 7-8 then further specify that the contact list entry includes a

contact’s “email” messaging address and the reminders occur when “email”

messages are composed to a contact.

7. 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.


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.


54. The remaining claims of the ’657 patent are dependent claims that flow

directly from claim 1.

55. Dependent claim 9 adds the following additional limitation: “wherein

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

56. Dependent claims 10 adds the following additional limitation: “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.”

57. Dependent claim 11 adds the following additional limitation: “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.”

58. Dependent claim 12 adds the following additional limitation: “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.”

D. Meaning Of Different Claim Terms

59. In this and the following paragraphs, I discuss the meaning of different

claim terms that appear in certain claims of the ’657 patent. In my opinion, the

broadest reasonable interpretation (“BRI”) of the claim terms of the ’657 patent

would be easily understood by a POSITA. While not necessary to my opinions, I


provide below the BRI a POSITA would give certain term in light of the patent and

its file history.

60. The term “communication device” appears throughout the claims of

the ’657 patent. While the patent discloses no examples of such a device, a POSITA

would have understood this term to have a meaning that encompasses a device

capable of transmitting and receiving an analog or digital signal for communicating

with another such device, including a cellular phone and a smartphone.

61. The term “memo data” appears throughout the claims of the ’657

patent. The patent states that “memo data” can be one of “data, voice, image or video

files.” (’657 patent, 2:22). Likewise, dependent claim 10 indicates that the memo

data can be “one of text, audio, image, and video.” Neither the patent nor the claims

restricts the size of the “memo data,” so a POSITA would understand that it could

be of any size, including, for example, just a word. Accordingly, a POSITA would

have understood the term “memo data” to mean text, voice, image, video, or other

data of any size.

62. The phrase “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” appears in claim 1 of the ’657 patent. This element recites


the storage format for the contact list entries of the claims. The parent ’892 patent

discusses two possible storage formats for memo data, one as a field within the

contact list and one in a separate database that is linked in some way to the contact

list: “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.” (’892 patent,

2:8-12). A POSITA would have understood that the claim language quoted above

from claim 1 encompasses just the first of these alternatives, in which the data field

for the memo data is integrated within a contact list entry also having a name field

and a communication address field. It does not encompass the second alternative of

the memo data being stored in a separate database that is linked to the contact list in

some way, such as by a pointer or unique identifier number.

63. Claim 5 specifies that the stored “communication address” of claim 1

be a “messaging address.” A POSITA would have understood that the BRI for a

“messaging address” is a communication address for sending an electronic message,

including an email address. The ’657 patent confirms this because the only potential

“messaging address” the patent discloses is an email address. (’657 patent, 2:47-60,

Fig. 4). Likewise, claim 7 adds to claim 5 by specifying that the “communication

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

Logically, reading claim 5 with claim 7, an email address must be within the scope

of “messaging address” as used in the ’657 patent.


64. In my analysis below, for claim elements that have no meaningful

difference, my discussion of an element in the context of one claim is equally

applicable to the same or similar elements in the context of other claims.

IV. THE SONY, MATSUMOTO, SCOTT AND NEILSEN PRIOR ART

A. Sony

65. Sony is a European Patent Publication, filed June 29, 2005, and

published January 3, 2007. Sony discloses the same problem and solution as the

’657 patent. Sony frames its field of invention as “triggering the output of a reminder

to the user” in “electronic equipment for a wireless communication system.” (Sony,

¶ 0001). Sony uses the calling or called number as the trigger to display a reminder

related to a contact. (Sony, ¶¶ 0032-0033). Sony also discloses that an email

address, like a phone number, can serve as the “identification information” to which

a reminder is coupled and stored, thereby teaching to a POSITA that a reminder can

also be triggered when the user sends or receives an email. (Sony, ¶ 0030).

66. Sony discloses “electronic equipment 1” that “is able to transmit and

receive information in a wireless communication system, such as e.g. the UMTS, the

GSM or any other available wireless communication system.” (Sony, ¶ 0024). The

electronic equipment specifically includes “a communication means 6,” which

“comprises all means necessary for sending and/or receiving wireless signals in a

telecommunication system …” (Sony, ¶ 0025).


67. The Sony electronic equipment also includes other components

associated with a mobile phone, such as a display and a processor:

The communication means 6 is connected to 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. The central control unit 5 is further connected to an input means 7 and an output means 8. … The output means 8 serves for outputting information to the user or to any other electronic device and may be a display, a loudspeaker or an interface for enabling transmission of data and/or information via cable or any wireless means. In case that the electronic equipment 1 is a portable cell phone, then the input means 7 corresponds to the usual input keys enabling a user to input numbers, characters and symbols and the output means 8 corresponds to a display and/or loudspeakers.

(Sony, ¶ 0026).

68. Sony discloses that the electronic equipment also includes “storage 2,

3 for storing any kind of data and/or information.” (Sony, ¶ 0027). Storage 2 is a

“phonebook” “for storing identification information, e.g. phone 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.” (Sony, ¶ 0027). Reminders are stored in storage 3: “The storage may

further comprise a reminder storage 3 for storing reminders, whereby these

reminders serve for reminding the user of a certain event.” (Sony, ¶ 0027). The two


storages are linked so that the reminders in storage 3 can be associated with specific

contacts stored in phonebook 2:

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).

The main idea underlying the present invention is to couple a reminder to an identification information stored in the phonebook 2.

(Sony, ¶ 0029).

69. The reminders in Sony are input by the user using “input means 7”

through a series of “menu options,” as shown in Figure 2a:

In case the user selects the menu option of reminders, then in a further display as shown in Fig. 2a the user in turn in a sub-menu can 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 a contact name,

which can be an existing one or a new one, so the device can associate the reminder

in storage 3 with a name in phonebook 2:

In the present example according to Fig. 2a in case the user selects to edit a new reminder then the user is asked to input a name or any other identification information to which the reminder has to be coupled. Said name or identification information to which the reminder has to be coupled, can be chosen by the user either from the identification information already stored in the phone book or can be newly input by the user and afterwards stored as new entry in the phone book. That means that the reminder is stored in the reminder storage 3 and that 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.

(Sony, ¶ 0030). The user may also input text for the reminder: “Further, according

to Fig. 2a, the user may have the possibility to input a specific text for the reminder.”

(Sony, ¶ 0030).

70. The reminder process in Sony is like that in the ’657 patent in that the

system detects a calling or called phone number, checks to see if indentification

information (e.g., phone number) is stored in the phonebook, and if so, checks to see

if there is a stored reminder associated with that identification information, and if so,

outputs the reminder, such as to the display, before beginning the call. Figure 3 of

Sony summarizes this process:


During this process, 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). If the system is sending or receiving information, “then in step S3 the

detection means will detect the identification information [e.g., phone 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.,

phone number] of the second electronic equipment corresponds to a stored

identification information,” which is stored in the phonebook. (Sony, ¶ 0032).

71. If the identification information (e.g., 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). “[I]f 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). “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). Sony includes an exemplary display

of a reminder in Figure 4:


72. Relevant for dependent claim 12 of the ’657 patent, Sony describes an

express option for the user to delete the displayed reminder at the end of the call:

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).

B. Matsumoto

73. Matsumoto is a U.S. patent that issued on October 31, 2006, and

describes the same problem and solution as the ’657 patent. Matsumoto explains the

problem as a phone user needing a reminder for a future call: “It often happens that

a phone user makes a call and cannot get through to a person at the other end, and

that later, when the phone user tries to make a call to the same person or receives a

call from the person, he/she cannot remember what he/she was going to tell by the

original call.” (Matsumoto, 1:12-16).

74. The solution provided by Matsumoto is to prompt a telephone user to

store a reminder note, storing the note associated with contact information, when a

call is made or received checking to see if there is a note associated with the number,

and, if so, notifying the user of the note:

[T]he telephone according to the invention is made up of: a reminding unit for, when judging that a user makes a call but fails to convey information to a party, reminding the user to input the information into information acceptance unit; the information acceptance unit for accepting input


of the information from the user; a storage unit for associating the inputted information with a telephone number of the party and storing the associated information; and a notification unit for, when the user makes a call to the party or receives a call from the party, checking 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, notifying the user of the stored information.

(Matsumoto, 2:16-30).

75. For hardware, Matsumoto discloses a “mobile station 100 [that] is a

mobile phone which wirelessly communicates data (hereafter called

‘communication data’) such as sounds, images, and e-mail.” (Matsumoto, 5:4-6).

The mobile phone described in Matsumoto “includes a display, ten keys, other

control buttons, a speaker, and a microphone.” (Matsumoto, 5:7-8). Figure 1 of

Matsumoto illustrates the mobile phone 100:


76. The mobile phone in Matsumoto also includes a “general control unit

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

procedures of the wireless phone.” (Matsumoto, 5:37-40). The phone also has an

“input acceptance unit 101,” which includes ten keys for inputting character strings

used for such as telephone numbers and e-mail.” (Matsumoto, 5:19-21). The phone

includes a “recording unit 109” which “is a recording medium such as a nonvolatile

memory, which records the data output from the general control unit 104 and the

notepad control unit 113.” (Matsumoto, 5:34-36). And, the mobile phone includes

a “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). Matsumoto Figure 2, shown


below, illustrates the functions of the general control unit 104, input acceptance unit

101, recording unit 109, display unit 108, and other internal components of the

mobile phone:

77. Matsumoto discloses a contact list for storing personal information,

including fields for names, telephone numbers, email addresses, and user-input

notes. Specifically, Matsumoto describes “a table 200 concerning personal

information stored in the recording unit 109.” (Matsumoto, 8:3-4). Figure 3 of

Matsumoto, reprinted below, “shows a construction of the table 200.” (Matsumoto,

8:5).


78. As shown in Figure 3 above, Matsumoto’s contact list includes fields

for “TELEPHONE NUMBER” 201, “NAME” 202, “E-MAIL ADDRESS” 203, and

“SUBJECT OF NOTES” 204 corresponding to each contact. Matsumoto explains

that these fields contain text that can be input by the user:

In a telephone number section 201, telephone numbers which are inputted by the user or obtained as incoming telephone numbers are described.

In a name section 202, the names corresponding to the telephone numbers at the left side in the same line are described.

These names are inputted by the user. In an e-mail address section 203, e-mail addresses

corresponding to the telephone numbers at the left side in the same line are described.

These e-mail addresses are inputted by the user. In a subject of notes section 204, the subjects of notes

which are inputted in the notes input procedure are described.

Among of these data, names, e-mail addresses, and the subjects of notes are stored in the text format.



79. Matsumoto explains how a user may input notes when someone does

not answer the user’s call, for example, as a reminder of what the user intended to

discuss:

[I]f the communication cannot be established, the notepad control unit 113 displays the calling telephone number and a screen for accepting input of the subject of notes which should have been conveyed (Step S107) so as to inquire of the user whether the user wishes to write down the subject of notes on the screen (Step S108). … In the step S108, if accepting the instruction to write down the subject of notes, the notepad control unit 113 has the display unit 108 display a screen for accepting the input of the subject of notes, accepts the input of the subject of notes from the input acceptance unit 101.

(Matsumoto, 8:54-66). The notes entered by the user are then stored in the notes

field of the contact entry for the person called:

Then, the notepad control unit 113 associates the accepted subject of notes with personal information corresponding to the telephone number obtained in Step S101 and stores it in the recording unit 109 (Step S109).

(Matsumoto, 8:62-9:3).

80. Matsumoto also describes how the reminder notes stored in the contact

list are then displayed when the mobile phone detects an incoming call from the

phone number associated with the contact or an input of the phone number by the

user for an outgoing call to that contact phone number. Matsumoto includes flow


charts for each of these two scenarios, Figure 4 for an outbound call and Figure 5 for

an inbound call.

81. “FIG. 4 is a flowchart showing procedures conducted by the notepad

control unit 113 when making a phone call, (i.e., the notes input procedure and the

notes display procedure).” (Matsumoto, 4:50-53).


As shown in the Figure 4 flowchart, the outgoing call process in Matsumoto starts

when the phone user inputs a number to call:

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 (Step S101).

(Matsumoto, 8:29-31). Then, as in the ’657 patent, the system checks to see if there

is a note associated with the number in the contact list of table 200 and, if so, displays

the notes to the user and conducts the user’s outbound call:

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 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). … Then, the 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) …

(Matsumoto, 8:32-42, 8:47-49).

82. “FIG. 5 is a flowchart showing the procedure conducted by the note pad

control unit when the user receives an incoming call (i.e., notes display procedure).”



As shown in the Figure 5 flowchart, the incoming call process in Matsumoto starts

when the mobile phone’s transmission/reception unit 105 receives a communication

signal:

The transmission/reception unit 105 receives communication data such as sounds, images, and texts transmitted from the outside to the mobile station 100 (Step S201).

(Matsumoto, 9:28-30). And, as in the ’657 patent, the system checks to see if there

is a note associated with the calling number in the contact list of table 200 and, if so,

displays the notes to the user before going forward with the call:

Then, the transmission/reception unit 105 extracts and recognizes the telephone number of the sender on the basis


of the information indicating the telephone number which is included in the communication data (Step S202), refers to the table 200 recorded in the recording unit 109 to judge whether the personal information concerning the telephone number includes the subject of notes (Step S203). If the personal information includes the subject of notes, the transmission/reception unit 105 has the display unit 108 display it (Step S204), has the general control unit 104 conduct the incoming procedure (Step S205) to complete the procedure.


83. Matsumoto also discloses to a POSITA that its device includes an email

client application capable of sending emails to the email address stored in the contact

list. (Matsumoto, 5:19-21). Specifically, as discussed above, when the user enters

a phone number to dial, the device in Matsumoto 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 it is present, automatically displaying the memo as a reminder

and dialing the phone number. (Matsumoto, Fig. 4 steps S102-S104). 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, 8:54-9:24, Fig. 4 steps S106-S111). Matsumoto does not

expressly disclose displaying a memo reminder when the user next uses the email

program to send an email to the contact.


C. Scott

84. Scott is a U.S. patent that issued on October 26, 2010 based on an

application filed May 9, 2006, almost two years before the priority date for the ’657

patent. Scott also describes the same problem and solution as the ’657 patent,

namely the problem of automatically reminding a user about something for a future

conversation.

85. Scott discloses a handheld communication device, as shown below:

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

and voice communications,” a processor, display, memory, and a keyboard for

inputting text. (Scott, 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.” (Scott, 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:

(Scott, Fig. 3, 4:45-54).

86. 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 (“Preferred Input Language”), 4:54-61). “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).


87. The preferred language field serves as a memo to remind the device

owner to use the preferred language for the communication, such as when answering

the phone call or initiating an email. (Scott, 5:35-40, 6:19-34). 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. This may be helpful to, for example, a salesperson to improve a relationship with a customer that speaks a language other than the native language of the salesperson.

(Scott, 6:19-34).

88. Scott’s Figure 1 illustrates the pop-up window automatically displaying

the memo reminding the user of the contact’s preferred language when an incoming

call is received from the contact:

(Scott, Fig. 1 (partial)).

89. For an email communication, Scott uses the preferred language memo

field for two functions. First, when the device detects 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 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.” (Scott, 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 they are 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. (Scott, 5:22-35, Fig. 4 steps 110, 115, 120). The second

use of the preferred language memo field for an email message is to automatically

remind the user via a “pop-up dialog box” displaying 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).

D. Neilsen

90. Neilsen is a published U.S. patent application that was published

August 31, 2006 based on an application filed April 17, 2003. Like Scott,

Matsumoto, Sony, and the ’657 patent, Neilsen teaches a method in a mobile phone

of storing a reminder associated with a contact and then displaying that reminder to


the user when a later communication with the contact occurs. Like Scott, Neilsen

teaches displaying the reminder for both a future phone call and a future email with

a contact. Neilsen goes even further and teaches how one can create such reminders

for use of any application or parameter within the application.

91. 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. (Neilsen, ¶¶0036-

0039). The phone also includes a number of software applications, including a “call

handling application” and an “email application.” (Neilsen, ¶0040). The processor

includes a “reminder controller,” which controls the handling of reminders and is

connected to each of the software applications so that it can generate reminders based

on events within any of those applications:


(Neilsen, Fig. 2, ¶0040).

92. Neilsen discloses that “the 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 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). Examples of such parameters include device or resource addresses, for

example, “mobile telephone numbers” and “e-mail addresses.” (Neilsen, ¶0006-

0008, 0012-0013). 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). 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). 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).

93. 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 being present on an incoming or outgoing e-mail …” (Neilsen, ¶0007, ¶

0012).


V. GROUND 1: OBVIOUSNESS OF CLAIMS 1-4 AND 9-12 IN LIGHT OF SONY IN VIEW OF MATSUMOTO A. A method, performed by a communication device,

for reminding a user of the communication device of a conversation point for a future communication (1.1)

94. Sony discloses a method performed by a communication device for

reminding a user of the communication device of a conversation point for or to be

mentioned in a future phone call. Sony discloses “electronic equipment 1” that “is

able to transmit and receive information in a wireless communication system, such

as e.g. the UMTS, the GSM or any other available wireless communication system.”

(Sony, ¶ 0024). The electronic equipment specifically includes “a communication

means 6,” which “comprises all means necessary for sending and/or receiving

wireless signals in a telecommunication system …” (Sony, ¶ 0025). One example

of the electronic equipment disclosed in Sony is “a portable cell phone.” (Sony, ¶

0026; see also Sony ¶ 0012 (identifying equipment “such as mobile telephones,

mobile cell phones, pagers, personal digital assistants, communicators, i.e. electronic

organisers, smartphones or the like”)). The electronic equipment in Sony performs

a method in which a user is able to input a textual reminder that is saved in storage

linked to a contact. (Sony, ¶¶ 0011, 0030, Fig. 2a). Then, when the user next calls

or is called by the number stored for that contact, the equipment displays the

reminder before connecting the call. (Sony, ¶¶ 0032-0033, Figs. 3-4).


B. the communication device having a processor and a display screen (1.2)

95. Sony discloses that its electronic equipment has both a processor and a

display screen. (Sony, ¶ 0026). Specifically, the processor in Sony is “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). For a display, Sony discloses an “output means 8,”

which “corresponds to a display and/or loudspeakers.” (Sony, ¶ 0026). The central

control unit is connected to the communication means 6, input means 7, and output

means 8, as shown in Figure 1 of Sony:

(Sony, ¶ 0026, Fig. 1). Thus, a POSITA would have understood that Sony discloses

a communication device having a processor and a display screen. Even if one

viewed Sony as not expressly disclosing that a processor performs a specific step,

that performance is inherent, given Sony’s disclosure that its microprocessor


“controls the operation of the electronic equipment 1” (Sony, ¶ 0026), the block

diagram in Figure 1 of Sony and associated text, and the understanding of a POSITA

regarding how a wireless phone such as that disclosed in Sony functions, a POSITA

would understand that the processor in Sony necessarily performs the functions of

the device, including those for storing a reminder, handling incoming and outgoing

calling functions, checking for reminders, and displaying reminders. In any event,

given the same disclosure, at the very least, a POSITA would have found it obvious

to use the processor to perform those steps. A POSITA, given a processor in a

communication device, such as the mobile phone in Sony, would have been

motivated to use that processor to execute instructions for any functions of the device

and would have had no doubt of the success of using a processor to carry out those

functions, particularly given the longstanding knowledge in the art of using

processors in cell phones and other communication devices to perform operations.

(See Chris Oxlade, The Inside & Out Guide to Inventions, p. 20 (David West

Children’s Books 2006) (“Central Processor. The processor controls the phone by

carrying out programmed instructions.”)). The inherency or obviousness of the

processor performing these steps is further supported by the fact that the ’657

Patent’s specification does not even expressly disclose a processor, much less

expressly disclose the processor performing these steps, instead assuming a POSITA

would understand that a processor must necessarily perform the steps.


C. 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 (1.3)

96. Sony discloses the communication device having access to a saved

contact list having one or more 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. The

contact list in Sony is found in “phonebook 2” (also called “storage 2” by Sony).

(Sony, ¶ 0027). The Sony phonebook is “for storing identification information, e.g.

phone 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.” (Sony, ¶ 0027). A phone number or an e-mail

address constitutes a “communication address” because, for example, they are used

to identify and direct a communication to a contact. (See Sony, ¶¶ 0027-28).


97. 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. Specifically, Sony describes “reminder storage 3

for storing reminders, whereby these reminders serve for reminding the user of a

certain event.” (Sony, ¶ 0027).

98. The reminders in Sony are input by the user using “input means 7”

through a series of “menu options,” as shown in Figure 2a:

(See also Sony, ¶ 0026 (describing “input means 7”), ¶ 0030 (describing “example

of inputting a reminder via the input means 7”).

99. The menu options allow the user to “choose between editing a new

reminder, changing an already existing reminder or deleting and already existing

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

“identification information” (e.g., a contact name, phone number, or email address)

so the device can associate the reminder in storage 3 with identification information

in phonebook 2:


In the present example according to Fig. 2a in case the user selects to edit a new reminder then the user is asked to input a name or any other identification information to which the reminder has to be coupled. Said name or identification information to which the reminder has to be coupled, can be chosen by the user either from the identification information already stored in the phone book or can be newly input by the user and afterwards stored as new entry in the phone book. That means that the reminder is stored in the reminder storage 3 and that 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.

(Sony, ¶ 0030). The user may also input text for the reminder: “Further, according

to Fig. 2a, the user may have the possibility to input a specific text for the reminder.”

(Sony, ¶ 0030).

100. As stated above, the phonebook storage 2 with contact identification

information is linked to the reminder storage 3 so that a reminder can be associated

with a specific contact stored in the phonebook:

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).

The main idea underlying the present invention is to couple a reminder to an identification information stored in the phonebook 2.

(Sony, ¶ 0029).


101. Sony does not appear to include an embodiment in which the reminders

are affirmatively described as being maintained in the same storage list as the contact

names, phone numbers, and email addresses. However, there are suggestions in

Sony that the contact information and reminders could be stored together as fields

in one contact list. For example, Sony explains that the storage could store “any

kind of data and/or information” and “may comprise several separated storages.”

(Sony, ¶ 0027, emphasis added). This would have suggested to a POSITA to that

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

non-separated storage for all name, number, email address, and reminder data could

be an alternative storage possibility. Thus, based on this suggestion in Sony alone,

a POSITA would have found it obvious to include a contact list having a name field,

communication address field (such as for a phone number or email address), and

memo field.

102. The ’892 patent (which the ’657 patent incorporates by reference in its

entirety) mentions these two alternative storage techniques as well. Specifically, the

’892 patent states:

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.

(’892 patent, 2:8-12). While identifying both alternatives—a single storage with

three fields in a contact list, and two separate storages for name/number and memo,


the ’892 patent claims only the former, single-storage embodiment. Thus, the ’892

patent also recognizes these two alternatives for achieving the function of having a

database of related information. Moreover, neither the ’892 patent nor the ’657

patent disclose specifically how to implement the linked alternative.

103. A POSITA would have understood that if the design goal or need was

to store related information, there were a limited number of obvious and

conventional alternatives for doing so, including storing the information together in

the same database table or storing information in separate database tables with links

to associate the information in one table with information in the other. Indeed,

Matsumoto and Sony illustrate this point. Both are directed to storing reminders

specifically associated with a contact. Both disclose checking, when a call is made

to or received from a contact, to see if there is a reminder stored that is linked to or

associated with that contact. Both then display the reminder if there is such a memo

for the contact. Matsumoto does this with a single storage of a contact list having

fields for name, number, email address, and memo, while Sony does this by having

one storage for name and number and a second storage for reminders with a link

between the two so that reminders are associated with a specific contact name and

number. A POSITA would have understood that while these two approaches are

distinct, the distinction between them is minimal and that linking two physical

databases to create a single virtual (or logical) database was well understood. The

central concept in distributed database systems is a database link. A database link is


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

them as one logical database. A few examples of publications before 2008

discussing this well-understood concept to a POSITA of a distributed database as an

alternative to a single database can be found in these books:

• Rick Greenwald et al., Professional Oracle Programming, p. 315

(Wiley Publishing 2005) (“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 databases used by

many organizations is to instead consolidate the data to a single database.”);

• Phil Race et al., 500 Computing Tips for Teachers and Lecturers, p. 38

(Stylus Publishing 2d ed. 1999) (“Learn about related tables. The power of

databases is increased enormously by linking files (or tables) together. …

“Imagine a database is storing the details of customers (name, address, etc.) and

a list of the items they have bought. There is an obvious problem here – how

many field should be used for the items they have bought? They won’t all buy

the same number of items, and there could be hundreds of them. Use one file for

the customers and include a filed in which to store a unique number for each

customer. Use a second file for details of the products that have been bought and

include the appropriate customer number for each item. Now the computer can

link the two files together to extract the information in the form that is required.”).


A POSITA would therefore have understood that these two techniques were 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 as is done in the ’657 claims. This conclusion is

reinforced by the very simple nature of the data required by claim 1, specifically,

just “at least one contact list entry” and just three fields of data (name,

communication address, and memo). This contact data required to be stored by

claim 1 is so minimal that a POSITA would perceive no challenges whatsoever to

changing from one of these known database alternatives to the other and would have

had no doubt about the success of such a change.

104. In sum, a POSITA would have understood that Sony discloses a contact

list with one or more contact list entries, each including at least a name field and

number filed, as well as a store of memos associated with a specific contact so that

when a contact next calls or is called, the reminder memo can be retrieved and

displayed. While the embodiment in Sony discloses the contact list and reminder

list as stored separately with a link, a POSITA would have understood this alternate

storage technique as an obvious and conventional variation from the claims’

requirement that the memo be stored in a field of the contact list—merely

substituting one know equivalent in the field for another with a well-known and

predictable result. Thus, a POSITA would have found element 1.3 at the very least

obvious in view of the disclosure in Sony alone.


105. Matsumoto discloses all of elements 1.3, including the contact list

containing all three fields: name, communication address (number and email

address), and memo. (See ¶ 152 below).

106. A POSITA would have been motivated to combine that storage

technique of Matsumoto in which the name, number, email address, and note data is

all in the same contact list with the well-known alternative storage technique of the

Sony embodiment in which the reminder data is stored in a separate, linked storage

from that in which name and number data is stored, for a number of reasons.

107. For example, as stated above in paragraph 103, 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 related data and accessing that related data, and they

amounted to at most a trivial change with a predictable result. This knowledge of

the POSITA would have motivated him or her to substitute Matsumoto’s storage

technique for the one in Sony’s embodiment.

108. Moreover, Matsumoto and Sony share the same purpose and a nearly

identical solution, further evidencing why a POSITA would have been motivated to

combine their disclosures:


• Both Matsumoto and Sony address the same need recognized among

those of skill in the art at the time to provide a device user a reminder about a

specific contact when that contact is contacted by or contacts the user.

• Both Matsumoto and Sony implement this solution on a mobile phone

that has a stored contact list containing information such as the name, number,

and email address of each contact.

• Both Matsumoto and Sony perform the same method of, when a call is

received or dialed, checking to see if there is a note stored that is associated with

the calling or dialed contact and, if so, displaying the text of the note to the user

before the call is connected.

109. The motivation to combine is also supported by Sony and Matsumoto

both expressly disclosing or, at the very least, suggesting every element of claim 1.

As discussed in this declaration, Matsumoto expressly discloses every element of

claim 1 (see ¶¶ 150-169), and Sony expressly discloses nearly every element of

claim 1 (see ¶¶ 94-123) and at least suggests use of the claimed database format (see

¶ 101). This nearly identical overlap further evidences the closely related nature of

these two references for purposes of the ’657 patent, which would encourage a

POSITA to look to one of them for any modifications to the other.

110. Nothing in Sony or Matsumoto discourages a POSITA from

substituting one’s storage technique for the other’s. Moreover, there is nothing in

Sony that would have been viewed to a POSITA as technically incompatible with


employing the single storage format of Matsumoto in place of Sony’s multiple

storage embodiment, or vice-versa. Indeed, Sony at the very least suggests this

alternative of one storage by explaining that its storage could store “any kind of data

and/or information” and (using permissive language) “may comprise several

separated storages.” (Sony, ¶ 0027). A POSITA would have been affirmatively

motivated to switch from the multiple linked storages of the Sony embodiment to

Matsumoto’s single storage technique in part because it would have been a simpler

database format and thus simpler to code.

111. Thus, a POSITA would have understood that Sony discloses a contact

list with one or more contact list entries, each including at least a name field and

number filed, as well as a store of memos associated with a specific contact so that

when a contact next calls or is called, the reminder memo can be retrieved and

displayed. While Sony’s embodiment has the contact list and reminder list stored

separately with a link, a POSITA would have understood this alternate storage

technique as an obvious and conventional variation from the claim requirement that

the memo be stored in a field of the contact list. Moreover, a POSITA would have

been motivated to combine the single storage technique of Matsumoto with the

linked storage of the Sony embodiment.


D. (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 (1.4)

112. In Sony, the receiving function for an incoming or outgoing

communication (e.g., telephone call or email communication) is illustrated as Steps

S2-S4 in Figure 3:


(Sony, Fig. 3). More specifically, 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). The “first input” of the receiving step would be an

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

the user is trying to initiate a communication with another device. If the system is

sending or receiving information, “then in step S3 the detection means will detect

the identification information [e.g., phone number or email address] 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., phone

number or email address] of the second electronic equipment corresponds to a stored

identification information,” which is stored in the phonebook. (Sony, ¶ 0032). A

POSITA would have understood that this procedure is performed by the processor

of the central control unit, which “controls the operation of the electronic equipment

1.” (Sony, ¶ 0026).

113. A POSITA would have understood that this process in Steps S2-S4 of

Sony includes 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. Even if the disclosure of the processor


performing the receiving were not express, it is inherent or at the very least obvious

that Sony’s processor performs this function. (See ¶ 95 above).

E. (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 (1.5)

114. Sony discloses this step for both incoming and outgoing call

procedures.

115. Specifically, Figure 3 in Sony illustrates the checking process for both

incoming and outgoing calls. 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. If not, then the call

is just “normally processed” at Step S7. (Sony, ¶ 0032). If, however, 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). A POSITA would have understood that this

procedure is performed by the processor of the central control unit, which “controls

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

116. A POSITA would have understood that the process discussed and

shown in Sony, including Step S5 in Figure 3, includes checking, by the processor

whether there is memo data that is attached to the memo field of the first contact list

entry, and that these checking processes occur after the processes for receiving input

discussed above for element 1.4. Even if the disclosure of the processor performing


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

processor performs this function. (See ¶ 94 above).

F. (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 (1.6)

117. Claim 1’s step (c), called element 1.6 here, involves the user receiving,

requesting, drafting, or conducting a communication “during the activating of the

first contact list entry” by the processor. 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). 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 entry and

extends through the time of conducting the communication with that contact.

118. Sony discloses the step of activating the contact list entry as recited in

element 1.6. Specifically, 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). It is clear that the “process call”

step involves connecting the user and the caller/called party and allowing them to

conduct the call because the next step (S8) includes “ending the call.” (Sony, ¶

0032). A POSITA would have understood that this procedure is performed by the

processor of the central control unit, which “controls the operation of the electronic

equipment 1.” (Sony, ¶ 0026).

119. A POSITA would have understood that the processes discussed and

shown in Sony include 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. Even if the disclosure of

the processor performing the activating were not express, it is inherent or at the very

least obvious that Sony’s processor performs this function. (See ¶ 95 above).

G. (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 (1.7)

120. Claim 1’s final step (d) recites that, if the stored contact list includes

memo data associated with the communication address, then an indication of the


presence of that memo data is automatically displayed on the display screen. Claim

9 is a dependent claim that specifies that the “indication” of the presence of memo

data attached to the memo field “comprises contents of the at least one memo of the

memo data.” Thus, a POSITA would have understood that while claim 1

encompasses displaying any indication of that presence of memo data, displaying

the actual content of the memo satisfies the requirement as well. Sony discloses this

step because it displays the content of the stored reminder stored when the associated

contact calls or is called by the user.

121. The display procedure is illustrated as Step S6 (“output reminder”) in

Figure 3 of Sony. As further explained in Sony, “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). For a cell phone, Sony

discloses the output means corresponds to a display. (Sony, ¶ 0026). Figure 4 of

Sony illustrates “an example of outputting a reminder to the user” on the display.

(Sony, ¶ 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 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. 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). As with all of Figure 3 and its accompanying description, this same

procedure applies to both incoming and outgoing calls. Further, a POSITA would

have understood that this procedure is performed by the processor of the central

control unit, which “controls the operation of the electronic equipment 1.” (Sony, ¶

0026).

122. 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 call to or from a number associated with the contact occurs. For

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

met. 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).


123. A POSITA would have understood that the procedure discussed and

shown in Sony includes 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. Even if the disclosure of the processor

performing the causing the display function were not express, it is inherent or at the

very least obvious that Sony’s processor performs this function. (See ¶ 95 above).

H. 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 (2)

124. As discussed in paragraphs 94-123 above, Sony expressly discloses

elements 1.1-1.2 and 1.4-1.7 of claim 1, expressly discloses most of element 1.3, and

discloses at the very least an obvious and conventional variation of the remainder of

that element. Thus, claim 1 would have been obvious to a POSITA viewing Sony

alone but at the very least when viewing the combination of Sony and Matsumoto,

which expressly discloses all of element 1.3 (and the remainder of claim 1 as well).

125. As discussed above in paragraphs 96-97 for element 1.3 of claim 1, the

contact list in Sony is found in “phonebook 2” (also called “storage 2” by Sony).

(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.”)).

126. Thus, a POSITA would have understood that Sony discloses the

additional element in claim 2 in which 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.

I. 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, 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 (3)







128. As discussed above in paragraphs 112-113 for element 1.4 of claim 1,

Sony discloses receiving, by the processor, 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. The receiving function for an incoming or outgoing phone

call is illustrated as Steps S2-S4 in Sony’s Figure 3. (Sony, Fig. 3. ¶0032).

129. As discussed above in paragraphs 117-119 for elements 1.6 of claim 1,

Sony discloses that during the activating of the first contact list entry, the user

accepts the incoming phone call and, as a result, conducts the incoming phone call

with the corresponding entity of the first contact list entry using the communication

device. 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). 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).


additional element in claim 3 in which 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, 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.


J. 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 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 (4)







132. As discussed above in paragraphs 112-113 for element 1.4 of claim 1,

Sony discloses receiving, by the processor, a first input indicating a request that the

phone number of the first contact list entry of the contact list be dialed for an

outgoing phone call. The function of receiving an input for an incoming or outgoing

phone call is illustrated as Steps S2-S4 in Sony’s Figure 3. (Sony, Fig. 3. ¶0032).

133. As discussed above in paragraphs 117-119 for elements 1.6 of claim 1,

Sony also discloses that 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. 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). 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).


additional element in claim 4 in which 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 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.

K. The method of claim 1, wherein the first indication comprises contents of the at least one memo of the memo data (9)








136. As discussed in paragraphs 120-123 above, Sony discloses displaying

the content of the reminder stored in the contact list entry when the associated

contact calls or is called by the user. Thus, for those same reasons, a POSITA would

have understood that Sony discloses the additional element in claim 9 wherein the

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

L. 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 (10)







138. As discussed in paragraphs 98-99, Sony discloses that the user may

input text for a reminder: “Further, according to Fig. 2a, the user may have the

possibility to input a specific text for the reminder.” (Sony, ¶ 0030). Sony also

discloses that the text of the reminder 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). Figure 4 of Sony shows an example of reminder text (“ask about

dinner on Monday”) being displayed to the user.


additional elements in claim 10 in which 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.

M. 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 (11)







141. Sony discloses that the step of checking for memo data occurs before

or during activating the contact list entry. As discussed in paragraphs 117-118

above, the activation of the contact list for claim 1 necessarily includes the time

during which the call is being conducted by the user. That “activation” process of


connecting and conducting the call is shown for both incoming and outgoing calls

as Step S7 of Figure 3. The step for checking for a stored reminder (memo data)

associated with the number is shown as the earlier Step S5 of Figure 3. Indeed, if

there is such a reminder, it is also displayed before the activation of the call, as shown

in Step S6. The supporting text of the specification likewise supports the checking

for a reminder (and then displaying it) before the call is connected and conducted.

(Sony, ¶ 0032).


additional elements in claim 11 in which 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.

N. 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 (12)








144. Claim 12 recites the method of claim 1 as well as an additional feature

in which “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.”

145. Sony describes an express option for the user to delete the displayed

reminder at the end of a phone call:

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). A POSITA would have understood this disclosure to mean that 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

an incoming or outgoing phone call on which the reminder was displayed.

146. 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 paragraphs 98-99 above. A POSITA would have understood that Sony disclosed

options for creating, editing, and deleting a reminder before or after a call ends as an

option to delete the reminder at the end of the call on which it was displayed.

147. In addition, even apart from Sony’s express disclosure of the element

in claim 12, the element would have been obvious based on the common sense of a

POSITA. The options to erase the memo after its purpose has been served (e.g., the


conversation point was covered during the call), to save 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 to edit 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 or knowledge.

148. In sum, my opinion is that claims 1-4 and 9-12 of the ’657 patent would

have been obvious to a POSITA in view of Sony alone. To the extent that one

considered Sony not to disclose the specific single contact list with name, number,

email address, and note fields, or render that element of claim 1 obvious by itself, a

POSITA would have been motivated to combine the express disclosure of such a

single contact list in Matsumoto with the disclosure in Sony so as to render obvious

claims 1-4 and 9-12.

VI. GROUNDS 2-3: OBVIOUSNESS OF CLAIMS 5-8 IN LIGHT OF MATSUMOTO IN VIEW OF EITHER SCOTT AND/OR NEILSEN 149. As discussed in the following paragraphs, all the elements of claim 1

are disclosed by Matsumoto, and the remaining elements of dependent claims 5-8

are obvious in light of Matsumoto in view of either Scott (Ground 2) and/or Neilsen

(Ground 3).


A. A method, performed by a communication device, for reminding a user of the communication device of a conversation point for a future conversation (1.1)

150. Matsumoto discloses 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, Fig. 1, Fig. 2, 5:4-8. 5:37-40). The mobile phone in Matsumoto

performs a method in which, if a user of the phone is unable to reach the called party,

the user is prompted to input information that was to be conveyed on the failed call;

the input information is then stored. (Matsumoto, 2:16-25). When the user next

“makes a call to the party or receives a call from the party, [the telephone] 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). Thus, “when the user calls

back to the party or receives a call from the party, the telephone notifies the user of

the information, which enables the user to easily convey the information without

omission. That is, when making a phone call, the user can be notified of the

information simply by performing normal calling process.” (Matsumoto, 2:31-38).

B. the communication device having a processor and a display screen (1.2)

151. Matsumoto discloses that its mobile phone communication device has

both a processor and a display screen. (Matsumoto, Fig. 1, Fig. 2 (numbers 104,

108)). Specifically, the processor in Matsumoto 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). Both of these elements are

shown in Figure 2 of Matsumoto:

The general control unit, which includes the Digital Signal Processor, controls the

“general procedures” of the wireless phone. (Matsumoto, 5:37-39). In light of this

disclosure, the block diagram in Figure 2 of Matsumoto, and the understanding of a

POSITA regarding how a wireless phone such as that disclosed in Matsumoto

functions, a POSITA would understand that the processor (general control unit 104)

in Matsumoto necessarily executes the instructions for performing the functions of

the device, including those for storing a note, handling incoming and outgoing


calling functions, checking for notes, and displaying notes. To the extent one viewed

Matsumoto as not expressly disclosing that its processor performs any specific

function discussed below regarding the steps of claim 1, that performance is inherent

given Matsumoto’s processor controlling the “general procedures” of the device

(Matsumoto, 5:37-39), the block diagram in Figure 2 of Matsumoto and associated

text, and the understanding of a POSITA regarding how a wireless phone such as

that disclosed in Matsumoto functions. In any event, given the same disclosure and

knowledge, at the very least, a POSITA would have found it obvious to use the

processor to perform those steps. A POSITA, given a processor in a communication

device, such as the mobile phone in Matsumoto, would have been motivated to use

that processor to execute instructions for any functions of the device and would have

had no doubt of the success of using a processor to carry out those functions,

particularly given the longstanding knowledge in the art of using processors in cell

phones and other communication devices to perform operations. (See Chris Oxlade,

The Inside & Out Guide to Inventions, p. 20 (David West Children’s Books 2006)

(“Central Processor. The processor controls the phone by carrying out programmed

instructions.”)). The inherency or obviousness of the processor performing these

steps is further supported by the fact that the ’657 Patent’s specification does not

even expressly disclose a processor, much less expressly disclose the processor

performing these steps, instead assuming a POSITA would understand that a

processor must necessarily perform the steps.


C. 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 (1.3)

152. Matsumoto discloses the communication device having access to the

saved contact list recited in element 1.3 of claim 1. The contact list in Matsumoto

is “a table 200 concerning personal information stored in the recording unit 109.”

(Matsumoto, 8:3-4). The contact list is shown in Figure 3:

(Matsumoto, Fig. 3 (annotated in red)). Matsumoto’s contact list shown in table 200

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 ADDRESS” field 203, and “SUBJECT OF NOTES”


field 204. Matsumoto explains that each of these fields can be input by the user of

the device. (Matsumoto, 8:6-22). As illustrated in the annotated 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.” Matsumoto describes in significant detail the process by which a user

inputs reminder notes for a later call when the user fails to reach a contact.

(Matsumoto, 8:54-59; Figure 4, steps S106-S109). A POSITA would have

understood that this table 200 is a contact list with a field (telephone number 201 or

email address 203) configured to retrieve a stored communication address of a

corresponding entity of the respective contact list entry, a field (202) configured to

retrieve a stored name identifying the corresponding entity, and a memo field (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 a future

communication between the user and the corresponding entity.

153. The table 200 is saved in recording unit 109 of the communication

device. (Matsumoto, 8:3-5, 8:62-9:3). Likewise, the communication device has

access to that saved table 200, 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 the called or calling number, and to retrieve such notes for

display to the user. (Matsumoto, 8:62-9:3, 8:32-42).


154. In sum, a POSITA would have understood that Matsumoto discloses

the contact list and all its claimed details recited in element 1.3.

D. (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 (1.4)

155. Matsumoto discloses this “receiving … a first input” element, for both

requesting and receiving a communication, specifically, for both an incoming phone

call and an outgoing phone call. In Matsumoto, that procedure for an outgoing call

(“requesting a communication addressed to the stored communication address of the

first contact list entry”), illustrated in Figure 4, begins at Step S101, in which 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). The outgoing call procedure illustrated in Figure 4 is performed by the

processor of general control unit 104. (Matsumoto, 5:37-45; see ¶ 151 above). Thus,

a POSITA would have understood that this process in Step S101 of Matsumoto

includes 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 requesting a

communication addressed to the stored communication address of the first contact

list entry. Even if the disclosure of the processor performing the receiving were not

express, it is inherent or at the very least obvious that Matsumoto’s processor

performs this function. (See ¶ 151 above).


156. Matsumoto’s procedure for an incoming call (“receiving … a

communication addressed to the stored communication address of the first contact

list entry”), illustrated in Figure 5, begins at Step S201, where the device receives

input in the form of “communication data such as sounds, images, and texts

transmitted from the outside to the mobile station 100.” (Matsumoto, 9:28-30; see

also Matsumoto, 7:43-53). After receipt of that input, the phone in Step S202

“extracts and recognizes the telephone number of the sender on the basis of the

information indicating the telephone number which is included in the

communication data.” (Matsumoto, 9:31-34). The incoming call procedure

illustrated in Figure 5 is performed by the processor (general control unit 104).

(Matsumoto, 5:37-40). A POSITA would have understood that this process in Steps

S201 and S202 of Matsumoto includes 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 receiving a communication addressed to the stored communication address

of the first contact list entry. Even if the disclosure of the processor performing the

receiving were not express, it is inherent or at the very least obvious that

Matsumoto’s processor performs this function. (See ¶ 151 above).

E. (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 (1.5)

157. Matsumoto discloses this “checking” step for both outgoing and

incoming call procedures.


158. For the outgoing call procedure, Matsumoto discloses this step of

checking for memo data associated with the contact in Steps S102 and S103,

illustrated in Figure 4. There, “[t]he 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 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). Likewise, Figure 4 discloses that in Step

S101, the phone accepts input of the telephone number and in S102, it refers to the

recorded notes. 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.2 This procedure is performed by the processor

(general control unit 104). (Matsumoto, 5:37-45; see ¶ 151 above).

2 Even if this step of checking for notes were not inherent in Matsumoto’s

disclosure of reading out the information, including notes, associated with the outgoing number, such checking would have been a trivial and obvious addition to a POSITA. Indeed, the express disclosure of checking for notes is disclosed for an incoming call (see ¶ 159), and there is nothing in Matsumoto that would teach away from doing the same express checking for an outgoing call. The commonality of the incoming and outgoing call processes in fact would have taught a POSITA to do the same process for incoming and outgoing calls once a number is recognized.


159. For the incoming call procedure of claim 1, Matsumoto discloses this

step of checking for memo data associated with the contact in Step S203, illustrated

in Figure 5. There, “the transmission/reception unit 105 extracts and recognizes the

telephone number of the sender on the basis of the information indicating the

telephone number which is included in the communication data (Step S202), [and]

refers to the table 200 recorded in the recording unit 109 to judge whether the

personal information concerning the telephone number includes the subject of notes

(Step S203).” (Matsumoto, 9:31-37).


shown in Matsumoto include checking, by the processor whether there is memo data

that is attached to the memo field of the first contact list entry, and that these

checking processes occur after the processes for receiving input discussed above for

element 1.4. Even if the disclosure of the processor performing the checking were

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

performs this function. (See ¶ 151 above).

F. (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 (1.6)

161. Claim 1’s step (c), called element 1.6 here, discusses the user receiving,

requesting, drafting, or conducting the communication “during the activating of the

first contact entry” by the processor. As discussed in paragraph 117 above, 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 entry and

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

¶ 117 above).

162. Matsumoto discloses the step of activating the contact list entry as

recited in element 1.6. Specifically, for an outgoing call as shown in Figure 4, after

notes are displayed in Step S104 (or after determining in Step S103 that the number

is not recorded in the phonebook), the mobile phone goes forward with the “calling

procedure” of Step S105. (Matsumoto, Fig. 4, 8:46-52). Specifically, “the 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.” (Matsumoto, 8:46-52). This procedure is performed by the processor

(general control unit 104). (Matsumoto, 5:37-45; see ¶ 151 above).

163. For an incoming call as shown in Figure 5, after notes are displayed in

Step S204 (or after determining in Step S203 that there are no such notes), the mobile

phone goes forward with the “incoming procedure” of Step S205. (Matsumoto,


9:37-42). Matsumoto further explains that the “incoming procedure” means that

“[w]hen the user receives a call from the party, the general control unit 104 also

performs a procedure for establishing communication (hereafter called ‘incoming

procedure’).” (Matsumoto, 5:57-59). This incoming procedure is performed by the

processor (general control unit 104). (Matsumoto, 5:37-45; see ¶ 151 above).


shown in Matsumoto include 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. Even if the disclosure

of the processor performing the activating were not express, it is inherent or at the

very least obvious that Matsumoto’s processor performs this function. (See ¶ 151

above).

G. (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 (1.7)

165. Claim 1’s final step (d) recites that, if the stored contact list includes

memo data associated with the communication address, then an indication of the

presence of that memo data is automatically displayed on the display screen. Claim

9 is a dependent claim that specifies that the “indication” of the presence of memo


data attached to the memo field “comprises contents of the at least one memo of the

memo data.” Thus, a POSITA would have understood that while claim 1

encompasses displaying any indication of that presence of memo data, displaying

the actual content of the memo satisfies the requirement as well. Matsumoto

discloses this step because it displays the contents of the stored reminder stored when

the contact calls or is called by the user.

166. For the outgoing call procedure of claim 6, 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. More specifically, the mobile phone “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 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, 8:32-42).

167. For the incoming call procedure of claim 1, Matsumoto discloses

displaying the notes stored in the “subject of notes” field of the table 200 associated

with the contact number that is calling, as shown in Step S204 (“DISPLAY THE

NOTES”) of Figure 5. There, the mobile phone “refers to the table 200 recorded in


the recording unit 109 to judge whether the personal information concerning the

telephone number includes the subject of notes (Step S203). If the personal

information includes the subject of notes, the transmission/reception unit 105 has the

display unit 108 display it (Step S204) …” (Matsumoto, 9:34-40; see also

Matsumoto, 7:43-53). “That is, when the checking unit 112 inputs the personal

information, i.e., the user gets a phone call, the notepad control unit 113 outputs the

telephone number, the name, and the subject of notes included in the inputted

personal information to the display unit 108 …” (Matsumoto, 7:46-50).

168. A POSITA would have understood that the procedure in Matsumoto for

displaying the notes stored in table 200 associated with a contact if such notes data

are present is “automatic” when a call to or from a number associated with the

contact occurs. For example, the flow charts in Figures 4 and 5 show the display

occurring if the conditions are met. The associated text of the specification discloses

the same. (Matsumoto, 8:32-42, 9:31-42). Matsumoto also expressly 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.” (Matsumoto, 2:52-57). The procedure for causing the display in

Matsumoto is performed by the processor (general control unit 104). (Matsumoto,

5:37-45; see ¶ 151 above).


shown in Matsumoto include 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. Even if the disclosure of the processor

performing the causing the display function were not express, it is inherent or at the

very least obvious that Matsumoto’s processor performs this function. (See ¶ 151

above).

H. 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 (5)

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

a “messaging address.” As discussed in paragraph 63 above, a POSITA would have

understood that a “messaging address” refers to a communication address for

sending an electronic message, including an email address.

Matsumoto:

171. In addition to disclosing all the elements of claim 1 (see ¶¶ 150-169

above), Matsumoto discloses a contact list entry that includes an email address and

a phone number as communication addresses for the contact. (Matsumoto, Fig. 3,

8:5-17; see ¶¶ 152-154 above). Thus a POSITA would understand that Matsumoto

discloses that a 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.

172. Matsumoto also discloses that the device user can send a memo as an

email to the contact using an email client program. (Matsumoto, 7:5-14). When

the user enters a phone number to dial, the device in Matsumoto 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 it is present, automatically displaying

the memo as a reminder and dialing the phone number. (Matsumoto, Fig. 4 steps

S102-S105; see ¶¶ 158, 162, 166 above). 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, 8:54-9:22, Fig. 4 steps S106-S111).

173. Matsumoto does not expressly disclose that the email address in the

contact list entry is used for the steps (a)-(d) in claim 1 (elements 1.4-1.7), including

triggering the reminder, instead disclosing a phone number for those steps.

Scott:

174. Scott supplies this element missing (at least expressly) from Matsumoto

by teaching not only the contact list having 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.


175. As shown in Figure 1 below, Scott discloses a handheld communication

device:

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

and voice communications.” (Scott, 3:60-67, Fig. 2). The Scott device also includes

a processor, display, memory, and a keyboard for inputting text. (Scott, 3:10-14,

3:27-38, 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.” (Scott, 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:


(Scott, Fig. 3, 4:45-54).

176. Scott’s contact list also includes a data field numbered 85 for a memo

specifying the contact’s preferred language. (Scott, Fig. 3 (“Preferred Input

Language”), 4:54-61). “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 constitutes a “memo” as used in

the claims of the ’657 patent and as understood by a POSITA when reading the term

in the context of the patent. The ’657 patent uses the term “memo” broadly,

indicating that it can be “one or more of data, audio, image and video file.” (’657

patent, 2:22). Claim 1 specifies that the “memo” is “user-inputted” and “can be


served to remind the user of a conversation point for a future communication

between the user and the corresponding entity.” Scott’s preferred language field

meets all of these criteria and would be viewed by a POSITA as “memo” as used in

claim 1 of the ’657 patent. It is data, it is input by the user (Scott, 4:57-67), and (as

discussed in more detail in the next two paragraphs) 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 (Scott, 5:35-40, 6:19-

34).3

177. The preferred language memo field serves to remind the device owner

to use the preferred language for the communication, such as when answering the

phone call or initiating an email. For example, 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

3Even if someone viewed Scott’s “preferred language” reminder field as not

meeting the “memo” of claim 1, that would not change my opinion that Matsumoto in combination with Scott renders claims 5-8 obvious to a POSITA. Scott is not being discussed here to provide a memo, because Matsumoto already discloses the 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. Of course, the fact that Scott’s preferred language does, in fact, constitute a “memo, as discussed above, and provides information useful for a future conversation with the contact simply provides further support for that motivation to a POSITA.


should initiate or answer the phone call, whichever the case may be, in the preferred language. This may be helpful to, for example, a salesperson to improve a relationship with a customer that speaks a language other than the native language of the salesperson.

(Scott, 6:19-34). Scott’s Figure 1 illustrates the pop-up window automatically

displaying the memo reminding the user of the contact’s preferred language when

an incoming call is received from the contact.

178. For an email communication, Scott uses the preferred language memo

field for two functions. First, when the device detects 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 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.” (Scott, 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 they are 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. (Scott, 5:22-35, Fig. 4 steps 110, 115, 120). The second

use of the preferred language memo field for an email message is to automatically

remind the user via a “pop-up dialog box” displaying the current (at that point the

preferred) 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).

179. Thus, Scott discloses to a POSITA a stored messaging address in a

contact list entry corresponding to the entity of that entry.

Neilsen:

180. 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 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. (Neilsen, ¶¶ 0007, 0009, 0012).

181. As shown in Figure 1 below, 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. (Neilsen, ¶¶ 0036-

0039). The phone also includes a number of software applications, including a “call

handling application” and an “email application.” (Neilsen, ¶ 0040). The processor

includes a “reminder controller,” which controls the handling of reminders and is

connected to each of the software applications so that it can generate reminders based

on events within any of those applications (including call handler labeled 31 and

email client labeled 40):


(Neilsen, Fig. 2, ¶ 0040).

182. Neilsen discloses that “the 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 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). Examples of such parameters include device or resource addresses, for

example, “mobile telephone numbers” and “e-mail addresses.” (Neilsen, ¶ 0006-

0008, 0012-0013). 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). 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). Announcement

of reminders can include a “display of text or a picture on the display,” a “sound

alert,” or a “combination of these.” (Neilsen, ¶ 0060).

183. 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 being present on an incoming or outgoing e-mail …” (Neilsen, ¶ 0007, ¶

0012).


184. In sum, 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).

A POSITA Would Have Been Motivated to Practice Claims 5-8 Looking at Matsumoto Alone or in Combination with Scott and/or Neilsen: 185. Given the express teachings of both Scott and Neilsen of generating

reminders based on phone numbers or email addresses, as discussed in paragraphs

174-184 above, a POSITA would have been motivated 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. A POSITA would

thus have found obvious the combination of Matsumoto with Scott and/or Neilsen

in this way to practice the method of claim 5. Because claims 6-8 likewise merely

involve applying the generic communication reminder system of claim 1 (which

Matsumoto performs for phone calls) to an email message, my opinions below

regarding the obviousness of claim 5 and motivations to combine apply equally to

claims 6-8.

186. There are many reasons why, in my opinion, a POSITA would have

found claims 5-8 obvious looking at Matsumoto alone or in combination with Scott

and/or Neilsen. First, the Matsumoto device 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). Thus, Matsumoto already discloses the

additional elements necessary to perform the reminder method claimed in claims 5-

8 for email messaging. To put it another way, Matsumoto discloses all of the

plumbing infrastructure for practicing the methods of claims 5-8.

187. Second, there are a limited number of types of electronic

communications a user can employ on a mobile phone, including telephone calls,

text messaging, and email messaging. Because Matsumoto already discloses

checking to see if a communication is with one of the contact list fields (a phone

number) to trigger the display of a reminder when communications are sent to or

received from that number, and because there are only a handful of communication

methods on a typical mobile phone (e.g., a phone call, text messaging, and email

messaging), a POSITA would have been motivated to use the same reminder

technique for other communication methods, including using the email address field

so that reminders were displayed when the user composes an email message to a

contact. The benefits a POSITA would have recognized of making such a

modification are already reflected in Matsumoto itself, which explains the difficulty

some people may have to remember or find paper notes about something that needs

to be conveyed, a problem that occurs when receiving a phone call or writing an

email. (Matsumoto, 1:12-34). Matsumoto already teaches how the general control

unit 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.

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. Thus, making the substitution of an email messaging address for

the phone number that triggers the reminder was a change within the knowledge of

a POSITA reading Matsumoto.

188. Third, the motivation to substitute an email address for the phone

number in Matsumoto so that the reminder is displayed when an email is composed

to the contact is also expressly taught to a POSITA by both Scott and Neilsen. 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 can be used

automatically to display the reminder when the user sends or receives a phone call

from that contact and when the user composes an email addressed to that contact.

(Scott, 5:35-40, 6:19-34, Fig. 1). This express teaching of a reminder on a mobile

phone that has both phone functionality and email functionality alone instructs a

POSITA that extending Matsumoto’s reminder for phone calls to email messages is

desirable and within the ordinary skill in the art. Put another way, because Scott

teaches how to create reminders for both phone calls and emails, a POSITA would

have been motivated to make the same change in Matsumoto.


189. Neilsen also specifically 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). Neilsen provides a broader motivation to

a POSITA, instructing that reminders can be unchained from their traditional triggers

of dates and times so that they are instead triggered by events occurring within an

array of mobile phone software applications, including but not limited to 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. … This can allow a reminder to be announced when a call is received from, or made to, a particular colleague, friend or family member, identified by their telephone number or phonebook entry for instance. … One of the displayed options is an option to add a reminder for association with that application. It will be appreciated that the application can be any of the applications 21, and 31 to 40 shown in FIG. 2.

(Neilsen, ¶¶ 0005, 0007, 0009, ¶0042). A POSITA, reading Neilsen’s universal

teaching that a reminder can be triggered and displayed due to any event within any

application and its more specific teaching of examples that include reminders

displayed in response to a phone call with a contact’s phone number or to an email

being composed to a contact’s email address, would have seen the benefits of making


the adjustment in Matsumoto to display reminders in association with email

messages as well phone calls.

190. Another reason why a POSITA would look to Scott and/or Neilsen for

teachings with which to combine with Matsumoto is the closeness of these

references in terms of practicing the methods of the ’657 patent. As discussed in

paragraphs 150-169 above, Matsumoto discloses all of the elements of claim 1.

Likewise, Scott discloses all of the elements of claim 1, for both an incoming phone

call and an email messaging being composed. (See ¶¶ 174-179 above).

191. Likewise, while Neilsen does not expressly disclose a contact list with

fields, Neilsen nonetheless discloses much of claim 1, including:

• a method performed by a communication device, for reminding a

user of the communication device of a conversation point for a

future conversation;

• the communication device having a processor and a display screen;

• receiving a first input indicating an incoming our outgoing phone

call, or an incoming or outgoing email communication;

• checking, after the receiving step, whether there is a reminder

associated with the phone number or email address;

• receiving or initiating a phone call with a contact’s phone number

(or sending or receiving an email to a contact’s email address;


• displaying the reminder when it is detected that there is a reminder

stored in association with the phone number or email address.

(See ¶¶ 180-184 above).

192. The substantially complete overlap of the three prior art references

illustrates the closeness of the art and why a POSITA would look to the other two

when determining possible changes to one of them.

193. 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 need recognized among those of skill in the art

at the time to provide a mobile phone user a reminder about a specific

contact when a communication is sent to or received from a contact; and

• 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 the

communication address (e.g., phone number and/or email address) and, if

so, displaying the text of the note to the user.

194. 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 to the contact. Indeed, as discussed in paragraph 186

above, Matsumoto already has the “plumbing” necessary 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.

195. A POSITA, both using his or her own 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.

I. 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 (6)

196. As discussed in paragraphs 150-195 above, Matsumoto discloses all the

elements in claim 1, and Matsumoto alone or in combination with Scott and/or

Neilsen renders claim 5 obvious to a POSITA. My opinions regarding claim 5 above

equally apply to claim 6, such that a POSITA would have found the claim obvious

in view of Matsumoto alone or in combination with Scott and/or Neilsen.

197. More specifically, Matsumoto discloses element 1.4 of claim 1 of

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 ¶¶ 155-156 above).


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. (See ¶¶ 174-184 above).

198. Matsumoto also 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 be dialed. (See ¶¶ 161-164 above). 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). And, as discussed in paragraphs 174-184 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 ¶¶

174-184 above; Scott, 5:10-35, Fig. 4; Neilsen, ¶¶ 0006-0008, 0012-0013, Fig. 7).

199. My opinions in paragraphs 185-196 above (namely, that a POSITA

would have been motivated to adjust the telephone number reminder functionality

of Matsumoto to work when composing an email message to a contact’s email

address using the teachings in Matsumoto itself, common sense, or the teachings of

Scott and/or Neilsen) apply equally to claim 6. Thus, for the same reasons, a

POSITA would have found the subject matter of claim 6 obvious.


J. 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 (7)

200. While claim 5 requires that the stored communication address of the

first contact list entry of the contact list is a “messaging address,” claim 7 is based

on claim 5 and further specifies that the communication address be an “email

address.” Because my opinions above with respect to claim 5 already discuss an

email address (see ¶¶ 150-195 above), claim 7 would have been obvious to a

POSITA in light of Matsumoto alone or in combination with either Scott and/or

Neilsen for the same reasons discussed there.

K. 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 (8)

201. 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 my

opinions above with respect to claim 5 already discuss an email address, email client,

and email (see ¶¶ 150-195 above), claim 7 would have been obvious to a POSITA

in light of Matsumoto alone or in combination with either Scott and/or Neilsen for

the same reasons discussed there.


I declare that all statements made herein of my own knowledge are true and

that all statements made on information and belief are believed to be true, and further

that these statements were made with the knowledge that willful false statements and

the like so made are punishable by fine or imprisonment, or both, under Section 1001

of Title 18 of the United States Code.

May 8, 2017 ___________________

Peter B. Rysavy

APPENDIX 1

118

Peter Rysavy – Curriculum Vitae PO Box 680, Hood River, OR 97031, USA

+1-541-386-7475, [email protected], http://www.rysavy.com

Peter Rysavy is an expert in wireless technology, mobile computing, and data networking

Contents WORK EXPERIENCE ......................................................................................... 1 PATENTS .......................................................................................................... 3 TESTIFYING AND CONSULTING EXPERIENCE IN LITIGATION.......................... 4 PUBLISHED ARTICLES AND REPORTS .............................................................. 7 WIRELESS COURSES ...................................................................................... 15

Work Experience Rysavy Research. 1993 to Present: President

Peter Rysavy is president of Rysavy Research LLC, a consulting firm that has specialized in wireless technology and mobile computing since 1993. Projects have included evaluation of wireless technology capabilities, network performance measurement, reports on the evolution of wireless technology, spectrum analysis for broadband services, strategic consultations, system design, articles, courses and webcasts, and test reports.

Peter Rysavy has expertise in IEEE 802.11 (Wi-Fi), wireless hotspots, mesh networks, metro and municipal Wi-Fi, paging technology, 2G, 3G, 4G, 5G, IMT-Advanced, IMT-2020, Global System for Mobile Communications (GSM), General Packet Radio Service (GPRS), Enhanced Data Rates for GSM Evolution (EDGE), Universal Mobile Telecommunications System (UMTS), Code Division Multiple Access (CDMA), Wideband CDMA (WCDMA), High Speed Downlink Packet Access (HSDPA), High Speed Uplink Packet Access (HSUPA), High Speed Packet Access (HSPA), HSPA+, Long Term Evolution (LTE), LTE-Advanced, LTE-Advanced Pro, CDMA2000, CDMA2000 1XRTT, Evolved Data Optimized (EV-DO), Bluetooth, WiMAX, IEEE 802.16 (IEEE 802.16e, IEEE 802.16m), wireless security, smartphones, smartphone operating systems, Mobile IP, Evolved Packet System (EPS), Evolved Packet Core (EPC), e-mail, wireless e-mail, browsers, mobile browsers, media gateways, orthogonal frequency division multiplexing (OFDM), orthogonal frequency division multiple access (OFDMA), voice over IP (VoIP), mobile video, wireless spectrum, spectrum sharing, spectral efficiency, and capacity analysis.

Patent Litigation

Peter Rysavy has worked in numerous cases, both as testifying and consulting expert. He has trial experience, reports, and depositions. See section 3 for details.

Analysis

119

mailto:[email protected]

http://www.rysavy.com/

Peter Rysavy Curriculum Vitae Page 2

Rysavy Research analyzes wireless technologies for capability, compatibility, interoperability, and intellectual-property considerations.

Training

Rysavy Research conducts wireless-technology training, both publicly and privately.

Testing and Reports

Rysavy Research tests, evaluates, and reports on all major wireless technologies.

Application Development and Deployment

Rysavy Research works with companies to define architectures, select vendors, perform pilots, and to deploy wireless systems and applications.

Clients (excluding confidential litigation cases) from 1993 to 2017 include:

4G Americas, AltaVista, Anchorage Partners, Antenna Software, AT&T, AT&T Wireless, Aventail, Black Lowe & Graham, Bluetooth SIG, Broadbeam, Cingular Wireless, City of Seattle, CMP Media, Compression Laboratories, Coinstar, Comverse Network Systems, Cricket Wireless, Crosslink Capital, Customer Focused Strategies, Datacomm Research, CTIA – The Wireless Association, Data Communications Magazine, Datacomm Research, Delco Electronics, Epicenter, Epicron, Ericsson, Fish & Richardson, Fluke, Foley Lardner, GE, Gerson Lehrman Group, Gibson Dunn, Good, GSMA, Hillman Company, Hobnob, Hughes Network Systems, IMS Expert Services, Information Week, Intel, IT World, iWindsurf, Juniper Networks, Kirkland & Ellis, MCCI, Medtronic Physio-Control, Microsoft, Mobile Computing Promotion Consortium (MCPC), Mobile Future, Moffatt Thomas, NetMotion Wireless, Network Magazine, Network Computing Magazine, New York State Wireless Association, Nokia, Norcom Networks, Novatel Wireless, OmniSky, Pacific Commware, Portable Computer and Communications Association (PCCA), Portland State University, Powell and Gilbert, Research in Motion (RIM), Park and Associates, Quality in Motion, RKM Holdings, Rogers Communications, Ruckus Wireless, Sanyo, SkyGo, Sprint, Stratos Product Development Group, Superconductor Technologies, Symbian, T-Mobile, TCI, Teklicon, Tektronix, Teledyne Electronic Technologies, Traveling Software (LapLink), United Business Media, University of British Columbia, UCLA, US Department of Defense, Wells Fargo, White & Case, Whitworth Analytics, WiMAX Forum, Wireless Data Forum, WRQ, Xerox Palo Alto Research Center, and Xircom.

Wireless Technology Association. 2000 to 2016: Executive Director.

Managed all the logistics of a non-profit industry organization that that evaluated wireless technologies, investigated mobile communications architectures, and promoted wireless-data interoperability. Organized and moderated more than fifty industry workshops.

Traveling Software (LapLink), Bothell, WA, USA. 1992 to 1993: Vice President of Technology.

Researched and evaluated key technologies. Developed Traveling Software's wireless communications strategy for local area and wide area connections. Helped define

120


overall product and technology directions. Prototyped new technologies. Collaborated with technology partners. Developed license agreements for sale and purchase of technology. Participated in strategic sales efforts. Frequently traveled around the US and Asia. Spoke at conferences. Attended and monitored standards efforts. Managed patent applications and patent issues.

Traveling Software (LapLink), Bothell, WA, USA. 1988 to 1992: Vice President, Research and Development.

Developed Traveling Software's Research and Development department. Recruited over thirty professionals, including managers, design engineers, quality assurance engineers and technical writers. Under my management, we implemented: documented design and quality assurance procedures; a version control system; complete archiving with off-site storage; regular performance appraisals; a bonus plan; and well defined career paths. This R&D organization successfully brought in house all strategic technology and also released numerous successful software products for the retail PC market, including LapLink, LapLink Mac, DOS Connect for the HP 95LX, Organizer Link for the Sharp Wizard, and PC Link for the Casio BOSS.

Fluke Corporation, Everett, WA, USA. 1979 to 1981 and 1983 to 1988: Program Manager, Project Manager, Design Engineer.

As program manager, managed marketing group to determine target markets, sales channels, positioning and promotion in support of Fluke's operator interface business. As project manager, managed development of an entire family of communications-oriented touch terminals. Fluke introduced the first member, the 1020 Touch Control Screen in May, 1986. Directed software (C code for 68000 family processor), digital hardware (surface mount, semi-custom IC's, computer aided engineering), package design (injection molded plastic parts, steel chassis), and manuals (in English, French, German and Japanese.) Coordinated many groups: design, manufacturing, purchasing, component engineering, and marketing. As design engineer from 1979 to 1981, designed hardware and firmware for various systems, including: RS-232 communications; IEEE-488 communications; RS-485 multi-drop communications; thermal printer interface; cartridge drive interface; vacuum display driver and keypad driver.

Other Work Experience:

Time Office Computers, Australia, 1981 to 1983: Ethernet networking, random-access memory, power supply hardware development.

Stanford University, USA, 1976-1979: software consulting services for university/industry collaborations.

Education:

BSEE, MSEE Electrical Engineering, Stanford University, 1979.

Additional information:

Available at http://www.rysavy.com

Patents Peter Rysavy is the co-inventor of US4929935A, Apparatus for aligning raster scanned image to touch panel, filed May 2, 1986.

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http://www.rysavy.com/


Peter Rysavy is the co-inventor of US4941845 A, Data transfer cable, filed June 7, 1989.

Testifying and Consulting Experience in Litigation Summary

Court testimony as testifying expert in one patent-litigation trial.

Four patent-litigation depositions.

One breach-of-contract litigation deposition.

Eleven expert declarations in Inter Partes Review (five patents).

Two expert reports on non-infringement (eight patents).

Five expert reports on invalidity (seven patents).

Two expert reports on non-breach-of-contract.

Multiple cases as consulting expert.

Ongoing Patent-Litigation Cases (most recent on top)

Testifying expert for Microsoft. Inter Partes Review. U.S. Patent 8,848,892. Case no. IPR2017-01052. Declaration filed March 9, 2017. Firm: Klarquist Sparkman.

Testifying expert for Google, Inter Partes Review.

U.S. Patent 5,809,428. Case nos. IPR2017-00529, IPR2017-00530, and IPR2017-00559. Three declarations filed December 30, 2016. Firm: Fish & Richardson.

U.S. Patent 5,754,946. Case nos. IPR2017-00536 and IPR2017-00537. Two declarations filed December 29, 2016. Firm: Fish & Richardson.

U.S. Patent 5,894,506. Case nos. IPR2017-00532, IPR2017-00533, IPR2017-00534, and IPR2017-00535. Four declarations filed December 28, 2016. Firm: Fish & Richardson.

Testifying expert for T-Mobile, non-infringement, Intellectual Ventures v. T-Mobile US, case no. 1:13-cv-01632-LPS. Firm: Gibson Dunn. Expert report May 26, 2016. Deposed September 20, 2016.

Prior Patent-Litigation Cases as Testifying Expert

Testifying expert for Apple, non-infringement (two patents) and invalidity (one patent), in Unwired Planet v. Apple, case No. 13-cv-04134. Firm: Gibson Dunn. Report on non-infringement January 12, 2015; report on invalidity December 3, 2014; rebuttal-reply report on invalidity January 26, 2015. Deposed February 13, 2015. Case settled in April 2017.

Testifying expert for RPX, Inter Partes Review.

U.S. Patents 8,135,342 and 8,879,987. Case nos. IPR2016-01052, IPR2016-01053, and IPR2016-01054. Declaration filed May 17, 2016. Firm: Klarquist Sparkman. January 2017, all IPRs were instituted on a majority of the claims in the petitions, and patent owner ultimately canceled all instituted claims.

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U.S. Patents 8,135,342 and 8,879,987. Case nos. IPR2016-00985 and IPR2016-00989. Declaration filed April 30, 2016. Firm: Klarquist Sparkman. January 2017, both IPRs were instituted on a majority of the claims in the petitions, and patent owner ultimately canceled all instituted claims.

Testifying expert for Microsoft, invalidity and non-infringement (two patents), in Eleven Engineering Inc. et al. v. Microsoft Corporation et al., No. 09-903-LPS (D. Del.). Firm: Fish & Richardson. Plaintiff conceded to non-infringement based on claim construction July 2016 prior to report submission.

Testifying expert for LG Electronics, non-infringement (one patent), in Cellular Communication Equipment LLC v. LG Electronics, Inc., et al., Case no. 6:13-cv-00508 (EDTX). Firm: Mayer Brown. Case settled July 2016 prior to report submission.

Testifying expert for Amazon, Barnes & Noble, MediaTek, Nokia, Samsung, Texas Instruments, invalidity (one patent), in CSIRO v. MediaTek et al., Case No. 6:12-cv-578-LED-KNM. Firms: Covington & Burling, O'Melveny & Myers, Quinn Emanuel Urquhart & Sullivan, White & Case. Report on invalidity December 19, 2014. Deposed March 6, 2015. Case settled July 2015.

Testifying expert for Apple, non-infringement (one patent) and invalidity (one patent), in Unwired Planet v. Apple, case No. 4:13-cv-04134. Firm: Gibson Dunn. Report on non-infringement January 12, 2015; report on invalidity December 3, 2014; rebuttal-reply report on invalidity January 26, 2015. Deposed February 13, 2015. Apple won summary judgment of non-infringement in May 2015.

Testifying expert for Apple, invalidity (three patents) in GPNE v. Apple, case no. 12-CV-02885-LHK. Firm: Fish & Richardson. Report on invalidity January 4, 2014. Deposed February 20, 2014. Testified in court October 17 and October 20, 2014. Jury verdict of non-infringement on all three patents.

Testifying expert for HTC, invalidity (one patent), in Nokia v. HTC, ITC Investigation No. 337-TA-847. Firm: White & Case. Report 2013. Patent withdrawn from dispute.

Other Patent-Litigation Testimony

Claim-construction declaration for Microsoft in Eleven Engineering Inc. et al. v. Microsoft Corporation et al., No. 09-903-LPS (D. Del.), January 28, 2016. Case details above.

Claim-construction declaration for Apple in Unwired Planet v. Apple, April 7, 2014. Case details above.

Declaration “In re Patent Application of Han-Jin JOH, 11/266,114.” Docket No. P2481US00, April 18, 2012. Firm: H.C. Park & Associates, PLC.

Declarations for Front Row Technologies in Inter Partes Reexam. 95/001,565, April 4, 2011; 95/001,568, March 7, 2011; 95/001,566, March 4, 2011. Firm: Black, Lowe & Graham PLLC.

Breach-of-Contract Litigation

Testifying expert for Sprint, non-breach-of-contract, in Truckstop.net vs. Sprint Communications, Case No. CV-04-561-S-BLW. Firm: Moffatt Thomas. Report March

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31, 2006, supplemental report September 28, 2006. Deposed May 3, 2007. Worked on case 2005 to 2010.

Consulting Expert History

Consulting expert for T-Mobile in Intellectual Ventures v. T-Mobile USA, No. 13-cv-1671, No. 14-cv-1232. Firm: Keker & Van Nest. 2016.

Consulting expert for Huawei in UK litigation, Unwired Planet International Limited v Huawei Technologies (UK) Co., Limited and others, Claim no. HP14 801038. Firm: Powell Gilbert.

Consulting expert for Nokia in Mobile Enhancement Solutions LLC v. Nokia Corp. et al., 3:13-cv-03977-M. Firm: King & Spalding. 2014.

Consulting expert for Amazon in GPNE v. Amazon.com, et al. No. 1-11-CV-00426. Firm: Klarquist Sparkman. 2012.

Consulting expert for Motorola in Microsoft Corp. v. Motorola Mobility, Inc. - UK Litigation. Claim No. HCll C04536. Firm: Powell Gilbert. 2012.

Consulting expert for Pantech in GPNE v. Amazon.com, et al., No. 1-11-CV-00426. Firm: HC Park & Associates. 2012.

Consulting expert for SkyTel (Verizon) in EON Corp. IP Holdings, LLC v. SkyTel, et al., Case No. 3:08-CV-385. Firm: Simpson, Thacher & Bartlett. 2009.

Consulting expert for Research in Motion in Visto Corp. v. Research in Motion Corp. Firm: Kirkland & Ellis. 2008.

Consulting expert for Starent Networks in UT Starcom, Inc. v. Starent Networks, Corp, No. 07 CV 2582. Firm: Finnegan, Henderson, Farabow, Garrett & Dunner. 2008.

Consulting expert for Apple in Apple Computer/Creative Labs Patent Disputes. Firm: Kirkland & Ellis. 2006.

Consulting expert for Samsung in Reese v. Samsung Telecommunications America L.P. et al., Civil Action No. 2:05-CV-00415-DF. Firm: Kirkland & Ellis. 2006.

Consulting expert for Sanyo in Antor Media Corporation v. Nokia, Inc., Utstarcom Personal Communications, LLC, Audiovox Communications Corp., Kyocera Wireless Corp., Sanyo North America Corp., Sharp Electronics Corp., NEC America, Inc., Research In Motion Corp., Virgin Mobile USA, LLC, LG Electronics Mobilecomm U.S.A., Inc., Palmone, Inc., and Panasonic Corp. of North America, Case No. 2-05cv-186 LED. Firm: Kirkland & Ellis. 2005.

Consulting expert for Sanyo in Zoltar Satellite Systems, Inc. [sic] v. LG Electronics Mobile Communications Co., et al., 2:05-CV-002150 LED. Firm: Foley & Lardner. 2005.

Consulting expert for Sanyo in William Reber L.L.C. v. Samsung Electronics America, Inc., et al. Civ. Action No. 03 C 4174. Firm: Foley Lardner. 2004.

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Published Articles and Reports The 172 articles, reports and white papers that Peter Rysavy has had published, listed from most recent to oldest, include the following:

1. “How "Title II" Net Neutrality Undermines 5G,” April 2017. Report published by Rysavy Research.

2. “Accelerating Innovation in Unlicensed Spectrum,” November 2016. Article published by Fierce Wireless.

3. “IoT &5G: Wait or Move?” October 2016. Report published by Informa.

4. “Mobile Broadband Transformation,” August 2016. Report published by 5G Americas.

5. “Threading the Spectrum Needle - Can LTE and Wi-Fi Coexist?” February 2016. Article published by Fierce Wireless.

6. “5G – Promises and Pitfalls,” November 2015. Article published by RCR Wireless News.

7. “LTE and 5G Innovation: Igniting Mobile Broadband,” August 2015. Report published by 4G Americas.

8. “Latest FCC Auction Shatters Spectrum Myths,” January 2015. Article published by Gigaom.

9. “LTE Congestion Management - Enabling Innovation and Improving the Consumer Experience,” January 2015. Report published by Mobile Future.

10. “Mobile Broadband Networks Should Not Be Hampered by Net Neutrality Constraints,” September 2014. Article published by Fierce Wireless.

11. “How Wireless is Different - Considerations for the Open Internet Rulemaking,” September 2014. Report for Mobile Future.

12. “Beyond LTE: Enabling the Mobile Broadband Explosion,” August 2014. Report published by 4G Americas.

13. “Will LTE in Unlicensed Spectrum Unlock a Vast Store of Mobile Broadband Capacity?” June 2014. Article published by MIMO World.

14. “How will 5G compare to fiber, cable or DSL?” May 2014. Article published by Fierce Wireless.

15. “It’s Time for a Rational Perspective on Wi-Fi,” April 2014. Article published by Gigaom.

16. “Complexities of Spectrum Sharing - How to Move Forward,” April 2014. Report published by Mobile Future.

17. “Canadian 700 MHz Auction: Analysis of Results.” April 2014. Analysis of auction that concluded February 2014 in Canada.

18. “Challenges and Considerations in Defining Spectrum Efficiency,” March 2014. Article for Proceedings of the IEEE.

19. “The High and Wide Future of Radio,” March 2014. Column for Fierce Wireless.

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20. “Uncertain Government Spectrum Policies Have Far-Reaching Consequences,” November, 2013. Article for Bloomberg BNA Insights.

21. “Who Owns the Internet of Things?”, September 2013. Column for Fierce Wireless co-authored with Chris Rezendes.

22. “Mobile Broadband Explosion - The 3GPP Wireless Evolution,” August 2013. Report for 4G Americas.

23. “Learn How Technology Will Turn Less Desirable Airwaves into ‘Beachfront’ Spectrum,” June 2013. Article for Gigaom.

24. “Efficiency of Spectrum Use,” May 2013. Article for Fierce Wireless.

25. “2013 Mobile Commerce Survey,” May 2013. Report for Information Week.

26. “Trends in Enterprise Cellular Network Data Usage,” March 2013. Market research and report done in conjunction with NetMotion Wireless.”

27. “White Spaces Networks Are Not “Super” Nor Even Wi-Fi,” March 2013. Article for Gigaom.

28. “Mobile Commerce: State of the Market,” February 2013. Coauthored report for Information Week.

29. “Vehicles and Mobility Are Converging but Fragmentation, Lack of Standards May Hinder Progress,” February 2013. Column for Fierce Wireless.

30. “4G: Carriers, IT Pros Square Off,” December 2012. Report for Information Week.

31. “Spectrum – All Options Essential, Including Incentive Auctions,” December 2012. Blog for HighTech Forum.

32. “Spectrum Sharing with LTE is Conceivable But Not Trivial,” November 2012. Column for Fierce Wireless.

33. “4G World: The Need For More Spectrum,” October 2012. Column for Information Week.

34. “Spectrum Sharing Opens a Potential Attack Route,” October 2012. Article for Giagaom.

35. “No Silver Bullets for FCC, NTIA Spectrum Challenge,” September 2012. Article for Bloomberg BNA.

36. “Mobile Broadband Explosion – The 3GPP Wireless Evolution,” September 2012. Report for 4G Americas.

37. “Spectrum Sharing – The Promise and The Reality,” July 2012. Report for Mobile Future.

38. “Mobile Network Design and Deployment: How Incumbent Operators Plan for Technology Upgrades and Related Spectrum Needs,” June 2012. Rysavy Research report.

39. “LTE: Huge Technology, Huge Challenges,” March 2012. Report for Information Week.

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40. “Wireless Spectrum Doomsday Looms,” January, 2012. Column for InformationWeek.

41. “Unleashing the Wireless Power of Long-Term Evolution: Spectrum, and Lots of It,” December 2011. Article for Bureau of National Affairs (BNA).

42. “Convergence of 3G/4G and Wi-Fi, October 2011. Report for InformationWeek.

43. “Comments on Citi ‘Wireless Supply and Demand’,” October 2011. Analysis and report.

44. “Mobile Broadband Explosion. 3GPP Broadband Evolution to IMT-Advanced (4G),” September 2011. Detailed report for 4G Americas.

45. “Public Safety Spectrum,” July 2011. Analysis and report.

46. “Efficient Use of Spectrum,” May, 2011. Report sponsored by CTIA, filed with the FCC.

47. “The Spectrum Imperative: Mobile Broadband Spectrum and its Impacts for U.S. Consumers and the Economy. An Engineering Analysis,” March 2011. Report sponsored by Mobile Future.

48. “Application Mobilization: A Rapidly Changing Landscape,” January 2011. Report published by Information Week.

49. “Smartphone Efficiency Report,” January 2011. Rysavy Research report.

50. “Innovation Enabled by Mobile Wireless Network Management,” Report sponsored by Mobile Future, filed with the FCC October, 2010.

51. “Strategic Use of Wi-Fi in Mobile Broadband Networks,” October 2010, Rysavy Research white paper.

52. “Transition to 4G – 3GPP Broadband Evolution to IMT-Advanced,” September 2010. Rysavy Research report for 4G Americas.

53. “Spectrum Shortfall Consequences,” April 2010. Analysis written for CTIA and filed with the FCC.

54. “Beyond Smartphones,” February, 2010. Article published by Information Week.

55. “Mobile Broadband Capacity Constraints And the Need for Optimization,” February 2010. Rysavy Research report.

56. “The 2.6 GHz Spectrum Band - Unique Opportunity to Realize Global Mobile Broadband,” December 2009. Report published by GSMA with Peter Rysavy providing the technology analysis on how best to manage the 2.6 GHz band.

57. “Net Neutrality Regulatory Proposals: Operational and Engineering Implications for Wireless Networks and the Consumers They Serve.” Report sponsored by Mobile Future, filed with the FCC January, 2010.

58. “The Mobile Web Imperative,” December 2010. Article published by Information Week.

59. “Air Pressure: Why IT Must Sort Out App Mobilization Challenges,” October, 2009. Analytics report published by Information Week.

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60. “Spectrum Crisis?” October, 2009. Article published by Information Week.

61. “HSPA to LTE-Advanced. 3GPP Broadband Evolution to IMT-Advanced (4G)” September 2009. Detailed report published by 3G Americas.

62. “3G Safeguards: Incomplete, Getting Better,” May 2009. Article published by Information Week.

63. “Mobile Broadband Spectrum Demand,” December 2008. Report commissioned by CTIA, released at CTIA Wireless March, 2009.

64. “Femtocells Suit Up For Work,” January 2009. Article published by Information Week.

65. “Wireless E-Mail Efficiency Assessment,” January 2009. Test report.

66. “HSUPA Gets Uploads Almost Up To Download Speeds,” September 2008. Article published by Information Week.

67. “EDGE, HSPA and LTE - Broadband Innovation,” September 2008. White paper, published by 3G Americas.

68. “Code of the Road,” August 2008. Article published by Information Week.

69. “Global Mobile,” May 2008. Article published by Information Week.

70. “GPS Performance,” March 2008. Test report.

71. “Mobile Application Development Quick Start Guide,” March 2008. White paper, published by AT&T.

72. “Harnessing Mobile Middleware”, December 2008. White paper published by AT&T.

73. “Security Requirements for Wireless Networking,” December 2007. White paper.

74. “Mobile Application Development Best Practices,” September 2007. Peter Rysavy co-wrote this white paper, published by AT&T.

75. “EDGE, HSPA, LTE: The Mobile Broadband Advantage”, September 2007, White Paper for 3G Americas

76. “Handheld Computing Evolution”, June 13, 2007, Network Computing Mobile Observer

77. “Reach Me if You Can”, article on wireless application deployment, May 2007, Network Computing Magazine

78. “Global Mobile”, May 23, 2007, Network Computing Mobile Observer

79. “Wireless Networks, Wired Bottlenecks”, May 2, 2007, Network Computing Mobile Observer

80. “Breaking the Gray Flannel Ceiling”, article on mobile IM, April 2007, Network Computing Magazine

81. “QoS and VoIP With 3G: Not an Easy Marriage”, Apr 11, 2007, Network Computing Mobile Observer

82. “Mobile Linux Puzzle - Coming Together.” March 2007, Network Computing Magazine.

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83. “Learning from Bluetooth”, Mar 21, 2007, Network Computing Mobile Observer

84. “Disconnect!”, Feb 28, 2007, Network Computing Mobile Observer

85. “EV-DO Rev A: Upping the Ante”, Feb 7, 2007, Network Computing Mobile Observer

86. “IEEE 802.11n for the Enterprise—Not a Trivial Upgrade”, Jan 17, 2007, Network Computing Mobile Observer

87. “Google Embraces Mobile”, Dec 20, 2006, Network Computing Mobile Observer

88. “Using VPNs with Wireless Networks”, Nov 29, 2006, Network Computing Mobile Observer

89. “Evolved EDGE and the Future of TDMA”, Oct 18, 2006, Network Computing Mobile Observer

90. “Wireless E-Mail Efficiency Assessment.” Oct 13, 2006. White paper that presents the results of a detailed engineering assessment to compare network efficiency of RIM Blackberry versus Microsoft Direct Push.

91. “Mobile Broadband: EDGE, HSPA & LTE”, Sep 2006. White paper published by 3G Americas.

92. “Mobile Computing Policy and De-Perimeterization”, Sep 27, 2006, Network Computing Mobile Observer

93. “Trials and Tribulations in Assessing Wireless Network Performance”, Sep 6, 2006, Network Computing Mobile Observer

94. “Time to Decide”, article on wireless networking, Aug 31, 2006, Network Computing Cover Story

95. “Sprint Nextel, WiMAX and the Mobile Broadband Conundrum”, Aug 16, 2006, Network Computing Mobile Observer

96. “Wide-Area Wireless—The Next Five Years”, Jul 26, 2006, Network Computing Mobile Observer

97. “Anatomy of a Well-Designed Wireless Application”, Jul 5, 2006, Network Computing Mobile Observer

98. “Wireless Network Assessment, EVDO and WiFi Hotspots.” A detailed test report on the relative performance of CDMA2000 EVDO and WiFi hotspots. March 21, 2006.

99. “Using Your Cell Phone as a Modem”, Jun 14, 2006, Network Computing Mobile Observer

100. “Convergence Update: IMS and UMA”, May 24, 2006, Network Computing Mobile Observer

101. “Mobile Broadband - Trying to Catch a Fast-Moving Target”, May 3, 2006, Network Computing Mobile Observer

102. “Integrated Voice/Data in 3G”, Apr 12, 2006, Network Computing Mobile Observer

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103. “Mobile Middleware in the Broadband Era”, Mar 22, 2006, Network Computing Mobile Observer

104. “Figuring Out Metro Wi-Fi”, Mar 1, 2006, Network Computing Mobile Observer

105. “Sprint Nextel's Jump to the Future”, Feb 8, 2006, Network Computing Mobile Observer

106. “The Smartphone Conundrum”, Jan 18, 2006, Network Computing Mobile Observer

107. “Municipal and Mesh Wi-Fi”, Dec 21, 2005, column, Network Computing Mobile Observer

108. “Linksys WRT54G -- Not What It Used to Be”, Nov 30, 2005, column, Network Computing Mobile Observer

109. “Confusion About 4G”, Nov 9, 2005, column, Network Computing Mobile Observer

110. “Strong Capabilities, Difficult Decisions”, Oct 27, 2005, article, Network Computing Magazine

111. “Hard Numbers and Experts' Insights on Migration to Evolved 3G and 4G Wireless Technology”, Oct, 2005, updated public report, published by Datacomm Research

112. “Wireless Data Pricing--One Hundred Times Less Expensive and Still Not Satisfied”, Oct 19, 2005, column, Network Computing Mobile Observer

113. “Secure Mobile Access Using SSL VPNs”, Oct 2005, white paper, published by Aventail

114. “Embedded Wireless WAN”, Sep 28, 2005, column, Network Computing Mobile Observer

115. “Redefining the Endpoint--Wireless Broadband Routers”, Sep 7, 2005, column, Network Computing Mobile Observer

116. “Data Capabilities: GPRS to HSDPA and Beyond”, Sep 2005, white paper, published by 3G Americas

117. “High Speed Downlink Packet Access (HSDPA)”, Aug 17, 2005, column, Network Computing Mobile Observer

118. “The Uneven Uptake of Wireless Data”, Jul 21, 2005, column, Network Computing Mobile Observer

119. “Where is WiMAX?”, Jul 6, 2005, column, Network Computing Mobile Observer

120. “Mobile Broadband and the Multi-Network Path to 4G”, Jul 2005, article, WiMAX Business and Technology Strategies

121. “Freed Up or Tied Down”, Jul 21, 2005, article, Network Computing Magazine

122. “Wireless E-Mail for the Masses, Jun 15, 2005, column, Network Computing Mobile Observer

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123. “Parallel Mobile Universes”, May 25, 2005, column, Network Computing Mobile Observer

124. “Beyond the Airlink- IP Multimedia Subsystem”, May 4, 2005, column, Network Computing Mobile Observer

125. “Secure Wireless Networking Using SSL VPNs”, May 2005, white paper, published by Aventail

126. “3 Sides to 3G”, Apr 13, 2005, column, Network Computing Mobile Observer

127. “Hard Numbers and Experts' Insights on Migration to Evolved 3G and 4G Wireless Technology”, Feb, 2005, public report, published by Datacomm Research

128. “Forever Evolving”, Oct 14, 2004, article, Network Computing Magazine

129. “Data Capabilities: GPRS to HSDPA”, Sep 2004, white paper, published by 3G Americas

130. “Brush up on Bluetooth”, Jun 24, 2004, article, Network Computing Magazine

131. “Policing the Airwaves”, May 7, 2004, article, Secure Enterprise Magazine

132. “Device Drivers (Smartphones and Wireless PDAs)”, Apr 15, 2004, article, Network Computing Magazine

133. “Making the Smart Choice (Smartphone and Wireless PDA Platform Review), Apr 15, 2004, article, Network Computing Magazine

134. “Wireless Instant Messaging: Propelling SMS and Desktop IM to the Next Level”, Oct 27, 2003, public report, published by Datacomm Research

135. Common Goals, Unique Strengths – Survey of Hotspot Operators, May 15, 2003, article, Network Computing Magazine

136. “Data Capabilities for GSM Evolution to UMTS”, Nov 19, 2002, white paper, published by 3G Americas.

137. “Wireless Nirvana”, Oct 21, 2002, article, Network Computing Magazine

138. “Voice Capacity Enhancements for GSM Evolution to UMTS”, Jul 18, 2002, white paper, published by 3G Americas.

139. “Networking Standards and Wireless Networks”, 2002, white paper, published by NetMotion Wireless

140. “Public Wireless LANs: Challenges, Opportunities and Strategies”, Jul 9, 2001, public report, published by Datacomm Research

141. “Break Free With Wireless LANs”, Oct 29, 2001, article, Network Computing Magazine

142. “MMDS Struggles to Find a Foothold”, Oct 29, 2001, article, Network Computing Magazine

143. “Can MWIF Unify Cellular Protocols?”, May 2001, column, M-Business Magazine

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144. “M-Wallets: Not Ready Yet”, Apr 2001, column, M-Business Magazine

145. “AT&T's GSM Move Could Ignite U.S. Market”, Mar 2001, column, M-Business Magazine, March 2001

146. “Lessons From I-Mode”, Feb 2001, column, M-Business Magazine

147. “E-Commerce Unleashed”, Jan 22, 2001, article, Network Computing Magazine

148. “Mobile-Commerce ASPs Do the Legwork”, Jan 22, 2001, article, Network Computing Magazine.

149. “Big Step to Mobile Payments”, Jan 2001, column, M-Business Magazine.

150. “Emerging Technology: Clear Signals for General Packet Radio Service”, Dec 2000, article, Network Magazine.

151. “WAP: Untangling the Wireless Standard”, Nov 2000, article, Network Computing Magazine

152. “The Road to a Wireless Future”, Oct 30, 2000, article, Network Computing Magazine

153. “Wireless Wonders (HiperLAN and Bluetooth) Coming Your Way”, May 2000, article, Network Magazine.

154. “Managing Mobile Code”, Aug 23, 1999, online manual, Network Computing Magazine.

155. “The Evolution of Cellular Data: On the Road to 3G”, 1999, article published by Intel “On The Road To PCS”, February 15, 1996, article, Network Computing Magazine.

156. “Wireless IP - A Case Study”, Apr 30, 1999, article, PCS Data Today online journal

157. “Broadband Wireless: Now Playing in Select Locations”, Oct 7, 1999, article, Data Communications Magazine

158. “Satellite Services: Don’t Join the Space Race”, Sep 21, 1999, column, Data Communications Magazine

159. “Making the Case for Fixed Wireless Technology”, Jul 1999, column, Data Communications Magazine

160. “Wireless IP: Ready to Lift Off?”, Mar 1999, column, Data Communications Magazine.

161. “Planning and Implementing Wireless LANS”, 1999, online manual, Network Computing Magazine.

162. “Wireless Broadband and Other Fixed-Wireless Systems”, 1998, online manual, Network Computing Magazine.

163. “General Packet Radio Service (GPRS)”, September 30, 1998, GSM Data Today online journal.

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164. “Wide-Area Wireless Computing”, 1997, online manual, Network Computing Magazine.

165. “Internet-To-Go, Now With Mobile IP”, November 1, 1997, article, Network Computing Magazine.

166. “Making The Call With Two-Way Paging”, January 15, 1997, article, Network Computing Magazine.

167. “Cellular Data Communications Made Easy”, July 1, 1997, article, Network Computing Magazine.

168. “Wireless Data Made To Order”, March 15, 1996, article, Network Computing Magazine.

169. “TCP/IP: The Best Protocol for Remote Computing”, public white paper, WRQ. 1996.

170. “Message Middleware In A Wireless Environment”, April 15, 1996, article, Network Computing Magazine.

171. “On The Road To PCS”, Feb 15, 1996, article, Network Computing Magazine

172. “The ABCs of PCS,” Nov 7, 1994, article, Network World.

Wireless Courses The following lists the public courses that Rysavy Research has taught. These are listed in the order of most recent to oldest. Rysavy Research has also privately taught on wireless technology at AT&T, Bluetooth SIG, Cingular Wireless, Cricket Communications, Intel, Medtronic, Microsoft, NetMotion Wireless, RIM, Tektronix, Teledyne, T-Mobile, and the U.S. Department of Defense.

1. Interop Conference, Las Vegas, May 2013. "Wireless Everywhere: LTE and Beyond," 1 hour course.

2. Bellevue, WA, April 2013. "4G: Deep Technology Insights," 1 day course.

3. Interop Conference, Las Vegas, May 2012. "LTE Update," 1 hour course.

4. Bellevue, WA, April 2012. “Mobile Broadband Explosion,” 1 day course.

5. Redmond, WA, December 2010. "Mobile Broadband - Technology Evolution and Strategic Considerations," 1 day course.

6. Portland, OR, November 2010. "Mobile Broadband - Technology Evolution and Strategic Considerations," 1 day course.

7. AT&T Developer Program, March 2010, “Guidelines for Delivering Streaming Services on AT&T’s Wireless Network,” 1 hour webcast.

8. Bellevue, WA, Oct 2009. "Mobile Broadband - Entering the 4G Decade," 1.5 hour session at IEEE Wireless Workshop.

9. Bellevue, WA, Apr 2009. Portland, OR, May 2009. "Mobile Broadband Innovation - 3G to 4G Evolution and Impacts," 1 day course.

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10. 3G Americas, Dec 2008, "EDGE, HSPA, LTE - Broadband Innovation," 1 hour webcast.

11. AT&T Developer Program, August 2008, "Broadband Innovation - Applications for New Broadband Networks," 1 hour webcast.

12. AT&T Developer Program, June 2008, "Emerging Mobile Application Architectures," 1 hour webcast.

13. AT&T Developer Program, March 2008, "Understanding Mobile Application Development Environments: Open Platforms, Tools, Capabilities, Developer Strategies," 1 hour webcast.

14. AT&T Developer Program, Dec 2007, "Harnessing Mobile Middleware - Architectures, Functions and Integration," 1 hour webcast.

15. AT&T Developer Program, Sep 2007, "Best Practices for Mobile Application Development - Strategies, Considerations, and Techniques for Optimal Development," 1 hour webcast.

16. AT&T Developer Program, Apr 2007, "How Enterprises Can Get Ready for IP Multimedia Subsystem (IMS): IMS Strategies and Application Development Approaches," 1 hour webcast.

17. Bellevue, WA, May 2006, “Evolution of Mobile Broadband”, 1 day course.

18. Portland State University, Apr 2006, "Wireless Technology Advances: Wi-Fi, 3G, WiMAX, Mobile Broadband", 1 day course.

19. Portland State University, Sep 2005, "3G, Evolved 3G, 4G and WiMAX", 1 day course.

20. Bellevue, WA, April 2005, "Wireless Technology Advances", 1 day course.

21. CTIA Wireless Data University, Mar 2005, "Wi-Fi and WiMAX in Detail", half day course.

22. Portland State University, Jan 2005, "Wi-Fi Technology - Evolution and Integration", 1 day course.

23. CTIA Wireless Data University, Oct 2004, Wi-Fi - Technology, Evolution, Adoption and Hotspots, Added Section: WiMAX", half day course.

24. Portland State University, Jun 2004, "3G, WiMAX and other Wide-Area Broadband Wireless Networks", 1 day course.

25. CTIA Wireless Data University, Mar 2004, "Wi-Fi - Technology, Evolution, Adoption and Hotspots", half day course.

26. Portland State University, Nov 2003, "Wi-Fi - Evolution, Adoption and Hotspots", 1 day course.

27. CTIA Wireless Data University, Oct 2003, "Wi-Fi Technology - Evolution, Adoption and Hotspots", half day course.

28. IEEE Wireless LAN Conference, 2002, "Wireless LAN Business and Marketing Issues", 1 hour.

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29. Portland State University, 2002, "WLANs, 3G Cellular and Beyond", 2 day course.

30. Portland State University, 2001, "Next Generation Cellular Data", 1 day course.

31. CMP Web 2001, "The Wireless Web in Detail", 1 day course.

32. IEEE Chapter Evening Presentation, 2001, "Wireless Networking Advances - Setting Reasonable Expectations", 2 hours.

33. UCLA, 2001, "Wireless Data Systems", 1 day course.

34. CMP Web 2000, "Wireless Data Networks", 1 day course.

35. UCLA, 2000, "Wireless Data Systems", 2 day course.

36. UCLA, 1999, "New Third Generation Cellular, Digital PCS and Broadband Mobile Data - What Will Dominate?", 4 day course co-taught with C. R. Baugh Ph.D.

37. Portable Design Conference, 1999, "Wireless Data Integration", 1 day course.

38. Northcon, 1998, "Wireless Data Networking Advances", 1 day course.

39. UCLA, 1998, "Technologies for Wireless Competitive Markets: Cellular, PCS and Wireless Data", 4 day course co-taught with C. R. Baugh Ph.D.

40. UCLA, 1997, "Cellular, PCS and Wireless Data Technology", 4 day course co-taught with C. R. Baugh Ph.D.

41. UCLA, 1996, "Wireless Voice And Data Communications (Personal Communications Services, Digital Cellular, and Wireless Data)", 4 day course co-taught with C. R. Baugh Ph.D.



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