Ex Parte 7,835,757 et al

Patent Trial and Appeal Board

Dec 29, 2016

95001984 (P.T.A.B. Dec. 29, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,984 05/09/2012 7,835,757 Rex3-7835757 3119
107554 7590 12/29/2016
JUSTIN LESKO
LAW OFFICES OF STEVEN G. LISA, LTD.
C/O INTELLEVATE, LLC.
P.O. BOX 52050
MINNEAPOLIS, MN 55402
EXAMINER
TRAN, HENRY N
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/29/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

CBS INTERACTIVE INC., THE NEW YORK TIMES COMPANY,
G4 MEDIA, LLC, and BRAVO MEDIA LLC,
Third Party Requesters,

v.

HELFERICH PATENT LICENSING, LLC,
Patent Owner.
____________

Appeal 2016-005652
Inter Partes Reexamination Control No. 95/001,984
Patent US 7,835,757 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JONI Y. CHANG, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Patent Owner (“Owner”) appeals the Examiner’s rejections of claims
1–78.1 PO App. Br.2 We have jurisdiction under 35 U.S.C. §§ 134
and 315.3 We reverse.

BACKGROUND
This proceeding arose from a request for inter partes reexamination of
U.S. Patent 7,835,757 B2 (issued to Richard J. Helferich on Nov. 16, 2010
from Application 12/764,025, filed Apr. 20, 2010) (“the ’757 Patent”), and
which, according to Patent Owner (PO App. Br. 7), is assigned to Wireless

1 In the Patent Owner Response to Action Closing Prosecution (Non-Final)
Pursuant to 37 C.F.R. § 1.951(a) at 76 (filed Feb. 4, 2014) (“PO response to
ACP”), Owner explains that new claim 72 was an inadvertent typographical
error, and as such, “Owner has removed claim 72 from the proposed new
claims and has renumbered previously submitted new claims 73–79 as
proposed new claims 72–78.” See also id., Listing of the Claims section, at
xxvi (omitting claim 72 and renumbering claims 73–79 as claims 72–78).
The Examiner entered Owner’s claim amendment and also refers to the new,
originally numbered claims 73–79 as claims 72–78. See, e.g., RAN 7. For
consistency, we adopt the revised claim numbering convention.
2 We refer to various documents throughout this Opinion, including (1) the
Right of Appeal Notice, mailed November 20, 2014 (“RAN); (2) the Appeal
Brief by Patent Owner Appellant, filed February 19, 2015 (“PO App. Br.”);
(3) Respondent’s Brief, filed March 19, 2015; (4) the Examiner’s Answer,
mailed August 27, 2015 (“Ans.”) (incorporating by reference the RAN); and
(5) the Rebuttal Brief by Patent Owner Appellant (37 C.F.R. § 41.71), filed
September 28, 2015 (“PO Reb. Br.”).
3 Because the request for inter partes reexamination was filed in the instant
proceeding before September 16, 2012, the pre-Leahy-Smith America
Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), version of
35 U.S.C. §§ 134 and 315 applies.
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Science, LLC and Helferich Patent Licensing, LLC. The inter partes
reexamination request 95/001,984 (“Request”) was filed May 9, 2012, by
CBS Interactive Inc., The New York Times Company, Best Buy Co., Inc.,
The Bon-Ton Department Stores, Inc., G4 Media, LLC, Bravo Media LLC,
and Phoenix Newspapers, Inc. (“Requesters”).4 See Request for Inter Partes
Reexamination Transmittal Form.
Prior to the filing of the present inter partes reexamination Request,
Owner also filed two Certificates of Correction for the ‘757 Patent. See
Request for Certificate of Correction Pursuant to 37 C.F.R. § 1.323 (filed
Jan. 20, 2011) (changing a recitation of “content identifier” appearing in
each of claims 1, 2, and 9 to read “message”); see also Request for
Certificate of Correction Pursuant to 37 C.F.R. § 1.323 (filed Apr. 8, 2011)
(changing four recitations of “wireless communication device” in claim 1 to
read “cellular phone”).
According to Requesters (Request 23), the New York Times
Company also filed a Request for Ex Parte Reexamination of the
’757 Patent on February 25, 2011, requesting reexamination of claims 1–20.
See ex parte reexamination 90/009,882 (“the ’882 Reexamination”).
Requesters note various claim amendments that Owner made during the
’882 Reexamination. Request 23–24. For example, Owner amended

4 After the Request was filed, Bon-Ton Stores filed a Notice of Non-
Participation on May 17, 2012. Best Buy filed a Notice of Non-Participation
on July 27, 2012. Phoenix Newspapers filed a Notice of Non-Participation
on June 25, 2013. CBS Interactive filed a Notice of Non-Participation on
August 25, 2015. The New York Times filed a Notice of Non-Participation
on October 30, 2015. G4 Media and Bravo Media filed a Notice of Non-
Participation on December 1, 2015.
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independent claim 2 to recite “(d) the content provider receiving a request
message at the identified storage system transmitted over the mobile
radiotelephone network . . .” Id. at 24 (citing the claim amendment
associated with Owner’s Supplemental Request for Reconsideration after
Final Office Action Pursuant to 37 C.F.R. §§ 1.116 & 1.530 (filed Nov. 1,
2011)) (Owner’s ’882 Reexam. Supp. Request”) (emphasis added to indicate
the claim language added by amendment). Independent claim 9 was
similarly amended. Owner’s ’882 Reexam. Supp. Request at 5.
Owner explains in the ’882 Reexamination that these amendments
were submitted to overcome the then-pending obviousness rejection that was
based upon Tso5 and Bjorndahl,6 or in Owner’s parlance, “to moot the
disputed issues.” Owner’s ’882 Reexam. Supp. Request 22; see also
’882 Reexam Advisory Action (mailed Oct. 21, 2011) (explaining why the
claims—including independent claims 2 and 9—are rejected over Tso).
According to Owner (PO App. Br. 9, n.3), “Requesters filed a second
request [for reexamination] (95/001,739), which the PTO denied on its
merits as failing to raise a substantial new question of patentability.
Thereafter, Requesters filed this third reexamination request.”
Owner also asserts in their Appeal Brief of the present appeal that
“[t]here are no related PTO appeals or interferences involving the
’757 patent” (PO App. Br. 7), but then includes with its Appeal Brief,
“Appendix B: Related Cases and Orders Pursuant to 37 C.F.R. 41.37(c)(ii)”
(setting forth a list of approximately thirteen completed and pending

5 U.S. 6,047,327 (issued to Tso on April 4, 2000).
6 U.S. 5,406,616 (issued to Bjorndahl on April 11, 1995).
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reexaminations, an inter partes review, and approximately 24 resolved,
dismissed, or appealed litigations).
Joint oral argument was held on November 15, 2016 for this appeal,
as well as for related appeal 2016-004880 (taken from the inter partes
reexamination 95/002,016 of U.S. 8,134,450 B2). The combined hearing
transcript (“Tr.”) was entered into the record on December 7, 2016.

THE INVENTION, APPEALED CLAIMS, AND REJECTIONS
The ’757 Patent describes the invention as follows:
Systems and methods for delivering information to a transmitting
and receiving device. The device receives a notification alerting
a user of the device that information is available to be obtained
and, in some embodiments, providing a short description of the
information. After receiving the notification at the device, the
user can then use the device to obtain or otherwise act on the
information at a time and at a place convenient to the user.
Abstract.
Independent claim 2, which is illustrative of the appealed claims,
reads as follows with our emphasis added:
2. A method that communicates content from a content
provider utilizing a content notification system, through a mobile
radiotelephone network to a wireless communication device, the
content notification system: (i) including an interface to a home
location registry, (ii) configured to process data into a paging call
suitable for transmission to the wireless communication device,
and (iii) configured to transmit the paging call to the wireless
communication device; the method comprising:
(a) the content provider causing content available for
delivery to a wireless communication device to be stored at an
internet-accessible storage system;
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(b) the content provider causing a message intended for
the wireless communication device to be created, the message
including: (i) an identifier of the content, and (ii) a system
identifier that identifies the internet-accessible storage system
storing the content; wherein the content is not included in the
message;
(c) the content provider causing communication from the
content notification system of a paging call including the
message and intended for the wireless communication device
over the mobile radiotelephone network; and
(d) the content provider receiving a request message at the
identified storage system7 transmitted over the mobile
radiotelephone network, the request message including (i) data
corresponding to the identifier of the content and the system
identifier received by the wireless communication device, and
(ii) a command to perform on the content; and
(e) the content provider, subsequent to receiving the
request message, causing the content to be delivered to the
wireless communication device via the mobile radiotelephone
network.
Rather than restate all of the rejections on appeal here, we refer to the
RAN for the details. To summarize though, the Examiner adopted
approximately twenty-two obviousness rejections under 35 U.S.C. § 103(a)
out of twenty-five obviousness rejections that Requesters proposed.
RAN 29–33 (adopting proposed obviousness rejections 1–4, 6, 7, 9, 10, and
12–19 of original claims 1–69 and declining to adopt proposed obviousness
rejections 5, 8, and 11); see also RAN 33–34 (adopting the obviousness
rejections of new claims 70–78, which Requesters proposed in their

7 The emphasized language—“at the identified storage system”—was first
added by amendment during the ’882 ex parte reexamination. Owner’s
’882 Reexam. Supp. Request.
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Comments by Third Party Requesters Under 37 C.F.R. § 1.947, filed
January 4, 2013). The Examiner declined to adopt the proposed written
description rejection under 35 U.S.C. § 112, ¶ 1, of new claim 76 (originally
numbered as claim 77), or the proposed indefiniteness rejection under
35 U.S.C. § 112, ¶ 2, of new claim 72. RAN 35. Subsequent to Requesters
filing the proposed rejection, but prior to the RAN’s mailing, Owner
canceled claim 72, renumbering new claims 73–79 as claims 72–78. Id.; see
also PO Response to ACP at xxvi, 76.

CONTROLLING AUTHORITY
1. We review the presently appealed rejections for error based upon the
issues identified by Appellants, and in light of the arguments and
evidence produced thereon. See Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)).
2. Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262
(CCPA 1974).
3. Rule 37 C.F.R. § 1.906 reads as follows:
Scope of reexamination in inter partes reexamination
proceeding.
(a) Claims in an inter partes reexamination
proceeding will be examined on the basis of patents or
printed publications and, with respect to subject matter
added or deleted in the reexamination proceeding, on the
basis of the requirements of 35 U.S.C. 112.
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(b) Claims in an inter partes reexamination
proceeding will not be permitted to enlarge the scope of
the claims of the patent.
(c) Issues other than those indicated in paragraphs
(a) and (b) of this section will not be resolved in an inter
partes reexamination proceeding. If such issues are raised
by the patent owner or the third party requester during a
reexamination proceeding, the existence of such issues
will be noted by the examiner in the next Office action, in
which case the patent owner may desire to consider the
advisability of filing a reissue application to have such
issues considered and resolved.
4. The Board errs when, in reviewing a rejection under 35 U.S.C. § 103,
it relies on what, at best, are speculative assumptions as to the
meaning of the claims. In re Steele, 305 F.2d 859, 862, (CCPA 1962).

ANALYSIS
Before considering the rejections, we must first determine the scope
of the claims. Geerdes, 491 F.2d at 1262.
The independent claims on appeal are claims 1, 2, 6, 9, 11, 18, 19, 21,
22, 24, 25, 35, 47, 48, 58, and 70. PO App. Br., Appx. A. All of the
independent claims set forth terms “content provider” and “content
notification system.” See, e.g., the preamble of claim 1, reciting “a content
provider utilizing a content notification system.” The independent claims
also set forth either “internet-accessible storage locations” (e.g., claim 1) or
“an internet accessible storage system” (e.g., claim 2).
Particularly noteworthy is independent claim 2, limitation (d), which
recites “the content provider receiving a request message at the identified
storage system.” Independent claim 9, limitation (d) similarly recites “the
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content provider receiving a request message at the identified storage
location.” These claim recitations are distinguishable from the language of
some other claims that alternatively state that the request message is
received at the content provider, itself, instead of received at the identified
storage location. See, e.g., claim 1, limitation (f), reciting “the content
provider receiving a request massage transmitted over the mobile
radiotelephone network.”
In order to first determine the claims’ metes and bounds, we initially
must determine the meaning of the claim terms “content provider,” “content
notification system,” and “internet-accessible storage system,” as well as
determine whether any differences exist among these terms and what the
relationships are among these terms.
In reexamination proceedings, the Board is to give unexpired claims
their broadest reasonable interpretation, consistent with the specification.
In re Yamamoto, 740 F.2d 1569, 1571 (Fed Cir. 1984).
This task of determining the meaning of these noted claim terms in a
manner that is consistent with the present Specification is complicated by the
fact that the term “content notification system” does not appear anywhere in
the written Specification of the ’757 Patent. The claim term “content
notification system” first appears in the claims of the ’025 Application that
were entered by Preliminary Amendment. See, e.g., claim 115 (issued as
’757 Patent claim 1) (reciting “A method that communicates content from a
content provider utilizing a content notification system . . .”).
Instead of disclosing a content notification system, the Specification’s
Background of the Invention section discusses prior art “paging systems.”
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’757 Patent, cols. 1–3. The Specification then describes “a paging system
[of the present invention] [that] notifies a paging transceiver that a message
has been received but does not initially transmit the associated message.” Id.
col. 3, ll. 19–22. In describing the paging system of the present invention,
the written Specification and Drawings more specifically refer to an overall
“messaging system 200” that contains “a plurality of systems 30.” Id.
col. 16, ll. 50–51; FIGs. 3 and 10. The Specification explains that
[The overall] messaging system 200 may comprise [for
example,] a plurality of systems [30A, 30B, 30C] connected to
the [public switched telephone network (PSTN)] 35 with system
30A being associated with base station 34A and transceiver
antenna 37A and system 30B being associated with base station
34B and transceiver antenna 37B.
Id. col. 16, ll. 51–55 (discussing FIG. 10).
The overall messaging system—including system 30, base station 34,
PSTN 35, and paging transceiver 100—is also referred to as “a
communication system” as an alternative to “a messaging system.” See,
e.g., ’757 Patent, col. 4, ll. 28–29, (setting forth that “FIG. 3 is a block
diagram of a communication system according to a preferred embodiment of
the invention”) (emphasis added). But regardless of whether it is called a
messaging system or a communication system, the overall system is
nowhere called a content notification system. See generally ’757 Spec.
In fact, it appears reasonably clear that the content notification system
does not refer to the overall messaging system 200. Claim 2’s preamble, for
example, states that “the notification system: . . . (iii) [is] configured to
transmit the paging call to the wireless communication device.” But the
wireless communication device (or transceiver 100) forms a part of the
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messaging system 200. See FIG. 10. As such, the recited content
notification system appears to correspond to some subsystem that is less than
the entire messaging system 200.
Various passages of the ’757 Patent’s Specification initially may
appear to indicate that the claimed content notification system corresponds
to the disclosed “system 30.” For example, the ’757 Patent describes
system 30 as follows: “system 30 [of the overall system 200 is] for storing
messages on behalf of a plurality of paging transceivers 100.” Id. col. 16,
ll. 45–47. System 30 may comprise, in turn, a paging terminal controller 31,
storage and retrieval unit 32, and input/output controller 33. Id. at col. 6,
ll. 25–35 (discussing FIG. 3).
[P]aging terminal controller 31 [] may comprise a controller
circuit and associated memory having a database of subscriber
listings and corresponding selective call address fields. The
paging terminal controller 31 communicates with storage and
retrieval unit 32 and correlates messages with subscriber listings.
The storage and retrieval unit 32 may comprise a CPU or control
circuit, message information and program memory, memory
interface circuitry and a [digital signal processor (DSP)] with
appropriate operational code for storage and retrieval of the
desired messages. The input/output controller 33 contains all
necessary input and output circuitry such as encoders and
decoders, modems and required routing and control circuitry for
communicating with the paging terminal controller 31, the
storage and retrieval unit 32, [as well as the following
components external to system 30:] the PSTN 35, and the base
station 34.
Id. at col. 6, ll. 25–40 (discussing FIG. 3).
Furthermore, a discussion of the flowcharts depicted in FIGs. 4A
and 4B—which depict “an exemplary set-up routine for establishing
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communications between the system of FIG. 3 and the transceiver of FIG. 1”
(col. 4, ll. 30–32)—reads as follows:
If, at step 42, the input/output controller 33 [of system 30]
determines that the call is from a device, such as a paging
transceiver 100 or computer terminal, data is exchanged between
the paging transceiver 100 and system 30 at step 43 . . . [T]he
location of the paging transceiver 100 may be determined from a
home location registry (HLR) and the HLR data may be utilized
by the system 30 in order to determine the location of the paging
transceiver 100, as opposed to having the paging transceiver 100
supply the location information to system 30.
Id. at col. 6, ll. 53–col. 7, l. 2.
However, other portions of the ’757 Patent raise undue doubt as to
whether the claimed “content notification system” does, in fact, correspond
to the disclosed “system 30.” For example, the ’757 Patent also states the
following:
The example provided in FIG. 3 was a single system 30
for storing messages on behalf of a plurality of paging
transceivers 100. The invention, however, may include any
number of systems 30 for storing messages with each system 30
storing information for a transceiver 100 being considered a
content provider.
’757 Patent, col. 16, ll. 45–50 (emphasis added). This passage rather plainly
suggests that a single disclosed system 30 corresponds to the claims “content
provider,” as opposed to the claimed “content notification system.”
Moreover, it appears reasonably clear that the terms “content
provider” and “content notification system” do not refer to the same
component. If they did, the following language of claim 2 would make no
sense: “[a] method that communicates content from a content provider
utilizing a content notification system, through a mobile radiotelephone
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network to a wireless communication device” (emphasis added). More
specifically, if the two terms were intended to reference the same
component, reciting “a content provider utilizing a content notification
system” would be redundant. The claim language, instead, would have been
written more simply as something to the effect of a method that
communicates content from a content provider through a mobile
radiotelephone network to a wireless communication device.
That is, claim 2 appears to require that the content provider (i.e., a
system 30 in accordance with the ’747 Specification) use some distinct
component (i.e., the content notification system) to communicate the
content. But the Specification simply does not state with sufficient clarity
what this distinct content notification system is.
It further appears that the content notification system is not a
subcomponent of the system 30—or at least not synonymous with the
system 30’s storage and retrieval unit 32. This inference results from the
fact that the originally filed claims indicate that the storage and retrieval
system is coupled to, and accesses, the notification system. That is, the
originally filed claims indicate that the storage and retrieval system is
separate and distinct from the notification system.
For example, the preamble of original claim 107 and the entirety of
original claim 109 read as follows:
107. A method that sends dynamic content to a cell phone,
wherein the data is stored at a content storage and retrieval
system that is coupled to the internet and coupled to a notification
system, comprising: . . .
109. The method of claim 108 [which, in turn, depends from
claim 107] further comprising accessing the subscriber database
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[of system 30’s paging terminal controller 31]8 with either the
content storage and retrieval system or the notification system.
Originally filed claims 107 and 109 of the ’025 Application (canceled by
Preliminary Amendment (filed Apr. 20, 2010) (emphasis added).
If we were forced to speculate,9 the most reasonable interpretation
would seem to be that the terms “content provider,” “content notification
system,” and “internet-accessible storage system” refer to distinct
systems 30 of the ’757 Patent’s overall messaging system 200. For example,
it might initially appear to be the case that the content notification system is
intended to correspond to system 30A of the ’757 Patent’s FIG. 10
embodiment, while the internet-accessible storage system corresponds to
system 30B and the content provider corresponds to system 30C. This
mapping initially would appear to be consistent with the following
discussion of the ’757 Patent’s FIG. 10 embodiment:
Either one or both of base stations 34A or 34B may page the
paging transceiver [100] and either one or both of the base
stations 34A or 34B may deliver the contents of messages to the
paging transceiver. Each of the systems 30A, 30B, and 30C may
store messages on behalf of a user with the messages being of the
same or different types. Furthermore, the messages stored within
a single system 30 may be all the same type or may differ from
each other.

8 See ’757 Patent, col. 6, ll. 25–28 (indicating that the subscriber database is
contained within the memory of the paging terminal controller 31).
9 But see Steele, 305 F.2d at 862 (holding that the Examiner and the Board
erred in relying on what, at best, were speculative assumptions as to the
meaning of the claims and in basing a rejection under 35 U.S.C. § 103
thereon).

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As an example, system 30A may store voice mail
messages and email messages directed to the user’s office,
system 30B may store voice mail messages directed to the user’s
home, and system 30C may store audio messages. The base
station 34A acts as a clearinghouse for all messages delivered to
the user to any of the systems 30 and pages the paging transceiver
100 whenever a message is received. Thus, when a voice mail
message or email message is received at system 30A, the system
30A delivers a page to base station 34A which is then delivered
to paging transceiver 100. When a voice message is received at
system 30B, the system 30B sends information about the
message to system 30A and system 30A then delivers a page to
base station 34A for delivering the page to the paging transceiver
100. Similarly, when system 30C has an audio message it
notifies system 30A and system 30A acts to have the page
delivered to the paging transceiver 100.
’757 Patent, col. 17, ll. 13–36.
However, a closer comparison of the’757 Patent’s claims to its
Specification indicates that such an interpretation is unsupported by the
Specification. Specifically, claim 2, limitation (a), requires that the content
provider (system 30C) cause content available for delivery to a wireless
communication device (transceiver 100) be stored at the internet-accessible
storage system (system 30B). Then, per limitation (b), the content provider
(system 30C) also causes a message to be created for delivery to a wireless
communication device (transceiver 100), the message identifying the
internet-accessible storage system storing the content (system 30B). Also,
per limitation (c), the content provider (system 30C) causes communication
from the content notification system (system 30A) of a paging call for the
wireless communication device (transceiver 100) over the mobile
radiotelephone network (e.g., base station 34A and transceiver antenna
37A).
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However, limitation (d) of claim 2 requires that the content
provider—the particular system 30 that is neither the storage system, nor the
notification system—receive a request message at the identified storage
system. And limitation (e) further requires that subsequent to the content
provider receiving the request message at the storage system, the content
provider then causes the content stored at the storage system to be delivered
via the radiotelephone network. But while the ’757 Patent’s Specification
does disclose a system that can be characterized as the non-information
storing, non-communicating, content provider system according to claim 2
(e.g., system 30C), the Specification does not appear to disclose this
particular system receiving a request at a distinct, content storing system
(e.g., at system 30B) and then have the non-storing, content-provider system
(system 30C) then serve as an intermediary in causing the information
storing system (system 30B) to deliver the content.
Instead, the present Specification alternatively indicates that the
content-notification system in communication with the mobile device
(e.g., system 30A)—not some distinct, intermediary content provider
(system 30C)—is the system that communicates with the content storing
system (system 30B) and that causes the content to be delivered from the
storage system (from storage system 30B) to the wireless communication
device:
The information transmitted to the paging transceiver 100, with
reference to FIG. 7, may be inserted into a short message
transmitted to the user at step 98. From the system ID
information, the paging transceiver 100 can determine which
system 30 it needs to respond to in order to act upon a message.
For instance, system 30A may page the paging transceiver 100
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and indicate that system 30B has a stored message. If the user
selects the retrieve message function, then the paging transceiver
100 can contact system 30B through base station 34B to retrieve
the desired message. The paging transceiver 100 as discussed
above may instead respond to base station 34A to retrieve the
message and base station 34A would communicate with system
30B to retrieve or otherwise act upon the message. . . .
As described with reference to FIG. 9, a call to the system
30 may be required in order for the paging transceiver 100 to
perform a desired function. If a call is required, the paging
transceiver 100 relays information in the data transmission 201
to the system 30. If the paging transceiver 100 responds to a
system 30 other than the one storing the message or information,
the paging transceiver 100 identifies the system 30 storing the
message or information and also identifies the message. . . . The
call to the system 30 would automatically provide the transceiver
identification information to the system 30, although the paging
transceiver 100 could provide this information with the other
information provided to the system 30. Upon receiving a call
from the paging transceiver 100, the system 30 reads the
transceiver identification and message information to find the
information requested by the paging transceiver 100.
’757 Patent, col. 18, ll. 20–59.
To summarize, then, it initially may seem reasonable, as a general
matter, to label three given systems 30 respectively as a content provider, an
internet-accessible storage system, or as a content notification system. But
the’757 Specification lacks support for systems 30A, 30B, and 30C
cooperating together to perform the interrelated functions of the content
provider, internet-accessible storage system, and content notification system,
as recited in claims 2 and 9. This lack of support raises undue questions as
to what disclosed components of the Specification, the three recited claim
terms actually refer. The lack of support also raises undue questions, then, as
to what are the objective metes and bounds of all of the claims on appeal.
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Owner’s Appeal Brief does not resolve these questions. The
Summary of Claimed Subject Matter Section (PO App. Br. 7–12) does not
explain what the differences are between a content provider, a content
notification system, and an internet-accessible storage system. Nor does the
Appeal Brief explain how these three claimed elements interact or cooperate.
Rather, Owner merely cites to passages of the Specification that allegedly
provide support for claimed elements in isolation.
For example, as support for the recited content notification system,
Owner cites to the Specification’s passage that does not mention
notifications, but instead merely states that “each system 30 storing
information for a transceiver [is] considered [to be] a content provider.”
See, e.g., PO App. Br. 9 (citing, in relation to claim 1, col. 16, ll. 47–50).
Owner then cites this exact same passage as providing support for both the
content provider and the content notification system. See, e.g., PO App. Br.
10 (“Independent Claim 2 (and similarly, claims 6, 21–22, 25, and 48)
recites [a] method that communicates content from a content provider
utilizing a content notification system [’757 Spec.] (16:47–50)”).
Owner also cites to multiple passages for support of entire limitations
of claim 2. Id. at 10–11 (citing multiple passages of the Specification as
providing support for each of claim 2’s limitations (a)–(e)). But Owner does
not explain what particular components within the cited passages correspond
to the individual components of these claims’ limitations. Id.
For example, Owner states in relation to limitations (c) and (d) of
claim 2,
The content provider causes communication from the content
notification system of a paging call including the message
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intended for the wireless communication device over the mobile
radiotelephone network [’757 Spec.](6:26–32, 18:19–23). The
content provider receives a request message at the identified
storage system transmitted over the mobile radiotelephone
network that includes (i) data corresponding to the identifier of
the content and the system identifier received by the wireless
communication device, and (ii) a command to perform on the
content [’757 Spec.](18:45–52, 10:33–52, 13:6–11).
Id. at 11 (emphasis added). This summary does not explain what precise
components respectively correspond to the content provider, the internet-
accessible storage system or the content notification system.
Owner does not appear to clarify this matter in the ’882 ex parte
reexamination, either. For example, Owner does set forth alleged support
for the newly added language of claim 2, “at the identified storage system.”
Owner’s ’882 Reexam. Supp. Request, Appx. 1 at ii.10 However, this cited
support consists of a passage of the ’757 Patent’s Specification that explains
the cited storage system’s operation generally (id. (citing ’757 Patent col. 12,
l. 60–col. 13, l. 1)), as well as a passage that explains the storage system’s
interaction with the system 30A, which, in turn, communicates with the
paging transceiver:
See also, e.g., ’757, C 18:23-30, stating “From the system ID
information, the paging transceiver 100 can determine which
system 30 it needs to respond to in order to act upon a message.
For instance, system 30A may page the paging transceiver 100
and indicate that system 30B has a stored message. If the user
selects the retrieve message function, then the paging transceiver

10 Appendix 1, which sets forth claim charts showing support for the claims,
is unnumbered. The chart for claim 2 appears on the second page of this
unnumbered appendix.
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100 can contact system 30B through base station 34B to retrieve
the desired message.”
Owner’s ’882 Reexam. Supp. Request, Appx. 1 at ii. The cited support does
not explain, though, the relationship of the identified storage system to a
content provider system that is separate and distinct from a content
notification system, as recited in limitation (d) of claim 2.
Nor could Owner’s Counsel at oral hearing sufficiently explain these
terms’ meaning or adequately address the Panel’s claim-interpretation
questions. This is despite the fact that Owner’s Counsel was given ample
opportunity to do so throughout the roughly seventy-seven minute hearing.
See Tr. 16–25 and 27–38 (wherein the Panel questions Owner’s Counsel
regarding the meaning of the claim terms “content provider,” “content
notification system,” and “identified storage system”).
For example, Owner’s Counsel first takes the position that the content
provider corresponds to any one or more of the plural systems 30 (Tr. 16)
and that the content notification system corresponds to a system 30 in
combination with base station 34 (id. at 17–18). See also id. at 24 (wherein
Owner’s counsel reasserts that the base station is part of the content
notification system).
But Owner’s Counsel further explains that “there can be one
system 30 that s[t]ores the content and another one that is the notification
system as well.” Id. at 19; see also id. at 21 (“we’re talking about two
different systems, one for storing content and the other for notification.
There’s the 30A and then there’s 30B and 30C.”). This latter explanation
seems to indicate that the content notification system corresponds to just one
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of the systems 30 alone—not a system 30 in combination with base
station 34.
Owner’s Counsel also asserts that requests are received at the same,
particular system that is storing the content—the identified storage system.
Id. at 28. See also id. at 30–32:
JUDGE JEFFERY: Each one of those [system] 30s, 30A,
30B, 30C, has its own storage and retrieval unit?
MR. LESKO: That’s right.
JUDGE JEFFERY: Of 32. Okay. So, for a content
provider to receive a request message at the identified storage
system, would be only that content provider, then, that has the
content stored?
MR. LESKO: That’s the one with the content stored,
that’s right.
Owner’s Counsel subsequently states that the content provider
comprises multiple systems 30—not just a single system 30:
MR. LESKO: [System] 30B is receiving that request.
JUDGE BAUMEISTER: But you’re saying -- the claim
says the content provider receives the request at a different
system. So, I guess I’m not understanding which [system 30] is
receiving the -- are they both receiving a request? [The request
is] received by one [system] and then forwarded to the other? I
mean, I guess I don’t understand what it means for content
provider, i.e. system 30A, to receive a request at system 30B.
MR. LESKO: Well, the content provider can involve these
multiple systems. So, 30A and 30B, they’re separate systems,
but they still involve a content provider.
JUDGE BAUMEISTER: But I thought the content
provider is mapped to a single system 30.
MR. LESKO: No. If I said that I misspoke. So, the
content provider can involve multiple systems and control
different systems. But 30A and 30B are still separate systems.
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MR. LESKO: I’m sorry, I’m just trying to read this in full
context here.
JUDGE BAUMEISTER: Take your time. I don’t mean
to put you on the spot, just trying to sort this all out.
MR. LESKO: I don't think there’s anything there limiting.
It says, “each -- may include a number of systems for storing and
each system storing information being considered a content
provider.” I don’t think the specification there limits it to being
each content provider is only one system 30. I think the content
provider can involve multiple systems.
It says here, “system 200 may include any number of
systems 30.” So, I mean, I think that’s the answer. I don’t think
they have to be limited that way. It doesn’t say that they must
be.
Id. at 30–32 (emphasis added).
But Owner’s counsel then reverts to the position that each system 30
corresponds to a different content provider:
JUDGE JEFFERY: Yeah, I wanted to just sort of loop
back to Figure 3 again and Figure 10. Just to make sure, one
more time, I’ve got it here for element (d) of claim 2.
MR. LESKO: Sure.
JUDGE JEFFERY: So, we have different content
providers, or at least we can, at least I think I hear you saying,
30A, 30B and 30C, each could provide content.
MR. LESKO: Right.
JUDGE JEFFERY: Okay. And that the request in
figure -- in element (d) of claim 2, the content provider receiving
a request at the identified storage system would be only that
content provider, let’s say 30A, that has the storage system?
MR. LESKO: Yes. Okay. If it’s stored at 30A.
Id. at 32–33.
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Owner’s Counsel then restates that a content provider corresponds to a
single system 30 and further reverts to the position that a notification
involves a system 30 in combination with additional components such as the
base station and communications infrastructure:
JUDGE JEFFERY: So, the content notification system
that the content provider uses to communicate content, would
involve other things, base station, communications
infrastructure, if you will. Other things.
MR. LESKO: Sure. Right. Like a base station, yeah.
JUDGE JEFFERY: So, I was looking at figure 3 when I
was asking the question because figure 3 is a nice showing of
what’s inside element 30, and then right to the right of that you
have a base station 34. So, you have a distinction here at least
between system 30 and communications infrastructure, that is to
say the base station 34.
MR. LESKO: Right.
JUDGE JEFFERY: So, a content notification system,
then, would involve at least 34.
MR. LESKO: Right.
JUDGE JEFFERY: In figure 3.
MR. LESKO: Right.
JUDGE JEFFERY: And maybe other things, but at least
34.
MR. LESKO: That’s right.
JUDGE JEFFERY: Versus the content provider would be
30 in figure 3.
MR. LESKO: Right.
Id. at 33–35.
In response, the Panel questioned Owner’s Counsel whether this
interpretation conflicts with the record, and whether the content provider and
the content notification system, instead, each correspond to only distinct
systems 30—not to storage systems in combination with base stations 34 or
communications infrastructure:
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JUDGE BAUMEISTER: I’m sorry, the system could
not include the base station, because your system 30 is
[designated] 30, and your base station is 34, but [base station 34
is] connected to system 30. So, they are two distinct elements.
And your Spec. describes each system 30 [as] being considered
a content provider. So, I read content provider [as] reading only
on system 30, not on 30 in combination with 34. And in your
appeal brief, you say your content notification system
corresponds to system 30. So, I don't see any – either [of] those
statements don’t seem to indicate that a content notification
system or a content provider includes a base station.
MR. LESKO: That’s what the content provider uses
the notification system. That has -- that includes a base station,
because that’s how the messages are sent out wirelessly through
these base stations. So, there has to be some kind of base station
involved with sending out these messages.
JUDGE BAUMEISTER: Well, yeah, I mean your
notification system communicates through a mobile
radiotelephone network, so wouldn’t the base station be
considered part of the mobile telephone network?
MR. LESKO: Right, yeah, I guess you can interpret it
that way. I guess I’m misunderstanding. So, you’re saying if
there’s a 30A and 30B, 30A can be the content provider and 30B
can be the notification system.
JUDGE BAUMEISTER: That’s what I thought your
spec and briefs were saying. I myself am not sure what is
mapping to what.
MR. LESKO: I’m sorry, I think I've gotten a little bit
caught off myself here in talking about it. So, the notification
system can be a 30A, and the storage system can be a 30B, as a
content provider, and they can use 30A to send the messages, to
cause the messages to be sent. So, we’re in agreement there.
. . . .
JUDGE BAUMEISTER: So, the question is is a
content provider one system 30 and a content notification system
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that includes a storage system [sic: storage and retrieval unit] 32
a different system 30?
MR. LESKO: Content provider can be a system that
includes a storage system, and then there can be a separate
notification system, and the content does not have to be stored
necessarily at that separate system 30 that has -- that does the
notifications.
JUDGE BAUMEISTER: Okay.
MR. LESKO: So, it can be stored at any of the systems
30, and any of the systems 30 can be the notification system.
Id. at 35–37.
To summarize, Owner’s Counsel presented inconsistent and
conflicting definitions at oral hearing for the meanings of, and relationships
among, the claim terms, “content provider,” content notification system,”
and “internet-accessible storage system.” And despite being asked to clarify
(e.g., Tr. 29–31), Owner’s Counsel did not sufficiently explain what it
means within the context of “[a] method that communicates content from a
content provider utilizing a content notification system” for “the content
provider [to be] receiving a request message at [an] identified [internet-
accessible] storage system,” as recited in independent claim 2. Nor did
Owner’s Counsel sufficiently explain where the Specification describes the
specific interrelationships among these three distinct claim elements. See
generally Tr.
As such, it is not sufficiently clear, e.g., whether it is reasonable to
interpret the term “a storage system” as reading on any system 30 of
messaging system 200, including either the claimed content provider system
30 or the content notification system 30. It is not sufficiently clear whether a
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“content notification system” alternatively corresponds only to some
subcomponents of a disclosed system (e.g., some, but not all, of the paging
terminal controller 31, the storage and retrieval unit 32, and input/output
controller 33). It is not reasonably clear whether it is reasonable to interpret
the claimed content notification system—or the content provider or content
storage system, for that matter—as corresponding to one of the disclosed
systems 30 in combination with the associated base station 34 and/or the
associated communication infrastructure.
Rule 1.906 makes clear that the Board will not address the question of
whether any original claim in an inter partes reexamination is indefinite
under 35 U.S.C. § 112, ¶ 2. This rule applies even where, as here, the claim
in question was first presented by amendment during a prior ex parte
reexamination. Accordingly, the Board will not address whether the above-
noted clarity questions render any of the claims indefinite.
Nonetheless, our reviewing court has also instructed the Board not to
speculate as to the meaning of claim terms when reviewing the
reasonableness of an obviousness rejection. See In re Steele, 305 F.2d at
862 (holding that the Examiner and the Board were wrong in relying on
what, at best, were speculative assumptions as to the meaning of the claims
and in basing a rejection under 35 U.S.C. § 103 thereon).
For the reasons set forth above, we conclude that undue speculation is
required to determine the meaning, as well as the interrelationships among,
the claim terms “content provider, “content notification system,” and
internet-accessible storage system.” Because each of the claims on appeal
contain these terms, the Examiner could not have reasonably determined the
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metes and bounds of the claims undergoing reexamination. As such, the
Examiner erred in adopting each of the proposed obviousness rejections
because doing so necessarily entailed engaging in undue speculation.

CONCLUSION
For the reasons set forth above, we do not sustain any of the adopted
obviousness rejections of claims 1–78.

DECISION
The Examiner’s decision rejecting claims 1–78 is reversed.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

REVERSED

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Patent Owner:

JUSTIN LESKO
LAW OFFICES OF STEVEN G. LISA, LTD.
C/O INTELLEVATE, LLC.
P.O. BOX 52050
MINNEAPOLIS, MN 55402

Third Party Requester:

COVINGTON & BURLING, LLP
ATTN: PATENT DOCKETING
1201 PENNSYLVANIA AVENUE, NW
WASHINGTON, DC 20004-2401