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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
RYSAVY DECLARATION Page 2
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
RYSAVY DECLARATION Page 3
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
RYSAVY DECLARATION Page 4
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
RYSAVY DECLARATION Page 5
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
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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
RYSAVY DECLARATION Page 7
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.
RYSAVY DECLARATION Page 8
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.
RYSAVY DECLARATION Page 9
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”)
RYSAVY DECLARATION Page 10
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
RYSAVY DECLARATION Page 11
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
RYSAVY DECLARATION Page 12
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
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• 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.
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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
RYSAVY DECLARATION Page 15
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
RYSAVY DECLARATION Page 16
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
RYSAVY DECLARATION Page 17
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:
RYSAVY DECLARATION Page 18
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:
RYSAVY DECLARATION Page 19
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
RYSAVY DECLARATION Page 20
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
RYSAVY DECLARATION Page 21
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:
RYSAVY DECLARATION Page 22
(’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.
RYSAVY DECLARATION Page 23
(’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
RYSAVY DECLARATION Page 24
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.”).
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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.
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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;
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(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.
4. 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
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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.
6. 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.
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.
8. 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.
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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
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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
RYSAVY DECLARATION Page 31
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.
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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).
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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
RYSAVY DECLARATION Page 34
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.
RYSAVY DECLARATION Page 35
(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:
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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
RYSAVY DECLARATION Page 37
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:
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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
RYSAVY DECLARATION Page 39
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:
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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
RYSAVY DECLARATION Page 41
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).
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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.
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(Matsumoto, 8:6-22).
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
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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).
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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).”
(Matsumoto, 4:54-56).
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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
RYSAVY DECLARATION Page 47
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.
(Matsumoto, 9:31-42).
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.
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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
RYSAVY DECLARATION Page 49
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).
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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
RYSAVY DECLARATION Page 51
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
RYSAVY DECLARATION Page 52
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:
RYSAVY DECLARATION Page 53
(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
RYSAVY DECLARATION Page 54
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).
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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).
RYSAVY DECLARATION Page 56
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
RYSAVY DECLARATION Page 57
“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.
RYSAVY DECLARATION Page 58
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).
RYSAVY DECLARATION Page 59
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:
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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).
RYSAVY DECLARATION Page 61
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,
RYSAVY DECLARATION Page 62
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
RYSAVY DECLARATION Page 63
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.”).
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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.
RYSAVY DECLARATION Page 65
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:
RYSAVY DECLARATION Page 66
• 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
RYSAVY DECLARATION Page 67
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.
RYSAVY DECLARATION Page 68
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:
RYSAVY DECLARATION Page 69
(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
RYSAVY DECLARATION Page 70
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
RYSAVY DECLARATION Page 71
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
RYSAVY DECLARATION Page 72
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
RYSAVY DECLARATION Page 73
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):
RYSAVY DECLARATION Page 74
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).
RYSAVY DECLARATION Page 75
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
RYSAVY DECLARATION Page 76
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)
127. 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).
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
RYSAVY DECLARATION Page 77
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).
130. Thus, a POSITA would have understood that Sony discloses the
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.
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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)
131. 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).
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
RYSAVY DECLARATION Page 79
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).
134. Thus, a POSITA would have understood that Sony discloses the
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)
135. 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
RYSAVY DECLARATION Page 80
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).
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)
137. 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).
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
RYSAVY DECLARATION Page 81
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.
139. Thus, a POSITA would have understood that Sony discloses the
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)
140. 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).
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
RYSAVY DECLARATION Page 82
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).
142. Thus, a POSITA would have understood that Sony discloses the
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)
143. 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).
RYSAVY DECLARATION Page 83
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
RYSAVY DECLARATION Page 84
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).
RYSAVY DECLARATION Page 85
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
RYSAVY DECLARATION Page 86
“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
RYSAVY DECLARATION Page 87
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.
RYSAVY DECLARATION Page 88
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”
RYSAVY DECLARATION Page 89
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).
RYSAVY DECLARATION Page 90
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).
RYSAVY DECLARATION Page 91
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.
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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.
RYSAVY DECLARATION Page 93
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).
160. A POSITA would have understood that the processes discussed and
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
RYSAVY DECLARATION Page 94
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,
RYSAVY DECLARATION Page 95
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).
164. A POSITA would have understood that the processes discussed and
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
RYSAVY DECLARATION Page 96
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
RYSAVY DECLARATION Page 97
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).
169. A POSITA would have understood that the processes discussed and
shown in Matsumoto include causing, by the processor, a first indication indicating
RYSAVY DECLARATION Page 98
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
RYSAVY DECLARATION Page 99
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.
RYSAVY DECLARATION Page 100
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:
RYSAVY DECLARATION Page 101
(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
RYSAVY DECLARATION Page 102
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.
RYSAVY DECLARATION Page 103
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
RYSAVY DECLARATION Page 104
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:
RYSAVY DECLARATION Page 105
(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):
RYSAVY DECLARATION Page 106
(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
RYSAVY DECLARATION Page 107
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).
RYSAVY DECLARATION Page 108
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
RYSAVY DECLARATION Page 109
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
RYSAVY DECLARATION Page 110
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.
RYSAVY DECLARATION Page 111
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
RYSAVY DECLARATION Page 112
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;
RYSAVY DECLARATION Page 113
• 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
RYSAVY DECLARATION Page 114
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).
RYSAVY DECLARATION Page 115
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.
RYSAVY DECLARATION Page 116
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.
RYSAVY DECLARATION Page 117
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
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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
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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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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.
42. UCLA, 1995, "Wireless Voice And Data Communications (Personal Communications Services, Digital Cellular, and Wireless Data)", 4 day course co-taught with C. R. Baugh Ph.D.
43. UCLA, 1994, "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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