Free Motion to Stay - District Court of California - California

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of: Inventors: Friedman et al. Patent No.: 7,228,383 Filed: June 1, 2001
For: System and Method for Progressive and Hierarchical Caching

REQUEST FOR REEXAMINATION UNDER 35 U.S.C. §§ 311 AND 37 C.F.R. §§ 1.913, 1.915

Mail Stop Inter Partes Reexamination ATTN: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 REQUEST FOR INTER PARTES REEXAMINATION OF U.S. PATENT 7,228,383

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TABLE OF CONTENTS LIST OF EXHIBITS ........................................................................................................ 5 A. B. C. D. I. II. PRIOR ART (PA) ......................................................................................... 5 RELEVANT PATENT MATERIALS (PAT) .................................................... 6 CLAIM CHARTS (CC) ................................................................................. 6 OTHER DOCUMENTS (OTH) ...................................................................... 7

REQUIREMENTS FOR INTER PARTES REEXAMINATION UNDER 37 C.F.R. § 1.915 ...................................................................................................... 10 OVERVIEW OF THE `383 PATENT AND SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY............................................................... 11 A. B. C. D. E. SUMMARY OF THE DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS OF THE `383 PATENT .......................................................... 11 `383 PATENT APPLICATION PROSECUTION HISTORY ................................. 12 RELATED CO-PENDING LITIGATION REQUIRES TREATMENT WITH SPECIAL DISPATCH AND PRIORITY OVER ALL OTHER CASES .................................. 14 CLAIM CONSTRUCTION .............................................................................. 15 SUMMARY OF THE PRIOR ART.................................................................... 17 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. SHERMAN `409 PATENT ................................................................... 17 BERN ................................................................................................ 19 RFC 2060......................................................................................... 20 HALAHMI ......................................................................................... 21 ZERBER ............................................................................................ 23 RFC 1939......................................................................................... 25 AUSTEIN ........................................................................................... 25 PCMAIL.......................................................................................... 26 BOONE ............................................................................................. 27 SHERMAN `214................................................................................. 28

III. IV.

STATEMENT UNDER 37 C.F.R. § 1.915(B)(3) OF EACH SUBSTANTIAL NEW QUESTION OF PATENTABILITY ...................................................... 30 CONCISE STATEMENT OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY ............................................................................................. 31

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A. B. C. D. E. F. G. H. I. J. K. L. M. N. O. P. Q. R. S. T. U.

CLAIMS 1-15 ARE ANTICIPATED BY SHERMAN `409 UNDER 35 U.S.C. § 102 ................................................................................................................... 32 CLAIMS 1-9 ARE ANTICIPATED BY BERN UNDER 35 U.S.C. § 102 ............ 43 CLAIMS 1-3 AND 5-9 ARE ANTICIPATED BY RFC 2060 UNDER 35 U.S.C. § 102.......................................................................................................... 49 CLAIMS 1-15 ARE ANTICIPATED BY HALAHMI UNDER 35 U.S.C. § 102.... 55 CLAIMS 1-15 ARE ANTICIPATED BY ZERBER UNDER 35 U.S.C. § 102 ....... 66 CLAIMS 1-15 ARE ANTICIPATED BY AUSTEIN UNDER 35 U.S.C. § 102 ..... 78 CLAIMS 1-15 ARE ANTICIPATED BY PCMAIL UNDER 35 U.S.C. § 102 .... 87 CLAIMS 10-15 ARE RENDERED OBVIOUS BY SHERMAN `409 IN VIEW OF SHERMAN `214 UNDER 35 U.S.C. § 103 ................................................... 97 CLAIMS 10-15 ARE RENDERED OBVIOUS BY RFC 2060 IN VIEW OF SHERMAN `409 AND FURTHER IN VIEW OF SHERMAN `214 UNDER 35 U.S.C. § 103 103 CLAIMS 10-15 ARE RENDERED OBVIOUS BY BERN IN VIEW OF SHERMAN `409 AND FURTHER IN VIEW OF SHERMAN `214 UNDER 35 U.S.C. § 103 109 CLAIMS 10-15 ARE RENDERED OBVIOUS BY HALAHMI IN VIEW OF SHERMAN `409 AND FURTHER IN VIEW OF SHERMAN `214 UNDER 35 U.S.C. § 103 116 CLAIMS 10-15 ARE RENDERED OBVIOUS BY ZERBER IN VIEW OF SHERMAN `409 AND FURTHER IN VIEW OF SHERMAN `214 UNDER 35 U.S.C. § 103 123 CLAIMS 10-15 ARE RENDERED OBVIOUS BY AUSTEIN IN VIEW OF SHERMAN `409 AND FURTHER IN VIEW OF SHERMAN `214 UNDER 35 U.S.C. § 103 130 CLAIMS 10-15 ARE RENDERED OBVIOUS BY PCMAIL IN VIEW OF SHERMAN `409 AND FURTHER IN VIEW OF SHERMAN `214 UNDER 35 U.S.C. § 103 137 CLAIMS 10-15 ARE RENDERED OBVIOUS BY SHERMAN `409 IN VIEW OF BOONE UNDER 35 U.S.C. § 103.............................................................. 143 CLAIMS 10-13 AND 15 ARE RENDERED OBVIOUS BY RFC 2060 IN VIEW OF BOONE UNDER 35 U.S.C. § 103.............................................................. 149 CLAIMS 10-15 ARE RENDERED OBVIOUS BY BERN IN VIEW OF BOONE UNDER 35 U.S.C. § 103 ...................................................................................... 155 CLAIMS 10-15 ARE RENDERED OBVIOUS BY HALAHMI IN VIEW OF BOONE UNDER 35 U.S.C. § 103 .......................................................................... 161 CLAIMS 10-15 ARE RENDERED OBVIOUS BY ZERBER IN VIEW OF BOONE UNDER 35 U.S.C. § 103 .......................................................................... 167 CLAIMS 10-15 ARE RENDERED OBVIOUS BY AUSTEIN IN VIEW OF BOONE UNDER 35 U.S.C. § 103 .......................................................................... 174 CLAIMS 10-15 ARE RENDERED OBVIOUS BY PCMAIL IN VIEW OF BOONE UNDER 35 U.S.C. § 103 .......................................................................... 179

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V.

CONCLUSION ................................................................................................. 185

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TABLE OF EXHIBITS LIST OF EXHIBITS The exhibits to the present Request are arranged in four groups: prior art ("PA"), relevant patent prosecution file history, patents, and claim dependency relationships ("PAT"), claim charts ("CC"), and other ("OTH"). A. PRIOR ART (PA) PA-SB08A PA-A USPTO Form SB/08A U.S. Patent No. 6,647,409 to Roman Sherman et al., "Maintaining a Sliding View of Server Based data on a Handheld Personal Computer," filed July 13, 1999. (hereinafter "Sherman `409") U.S. Patent No. 6,898,422 to Marie Bern et al., "Method and System for Providing Mobile Services," filed April 12, 2001. (hereinafter "Bern") M. Crispin, Request for Comments 2060, Internet Message Access Protocol - Version 4rev1, December 1996. (hereinafter "RFC 2060") U.S. Patent No. 6,684,088 to Erez Halahmi, "System and Method for Displaying Electronic Mail Messages on a Low Bandwidth Device," filed March 1, 2000. (hereinafter "Halahmi") U.S. Patent No 5,951,636 to Kevin Gregory Zerber, "Accessing a Post Office System from a Client Computer Using Applets," filed December 4, 1997. (hereinafter "Zerber") J. Myers and M. Rose, Request for Comments No. 1939; May 1996. (hereinafter "RFC 1939") R. Austein, "Synchronization Operations for Disconnected IMAP 4 Clients," Internet Draft: Disconnected Access; November 1994. (hereinafter "Austein") M. Lambert, "PCMAIL: A Distributed Mail System for Personal Computers," Request for Comments 1056; June 1988. (hereinafter "PCMAIL") G. Boone, "Concept Features in RE: Agent, an Intelligent Email Agent," Georgia Institute of Technology; 1998. (hereinafter "Boone")

PA-B

PA-C

PA-D

PA-E

PA-F PA-G

PA-H

PA-I

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PA-J

U.S. Patent No. 6,505,214 to Roman Sherman, "Selective Information Synchronization Based on Implicit User Designation," filed September 28, 1999. (hereinafter "Sherman `214")

B. RELEVANT PATENT MATERIALS (PAT) PAT-A PAT-B PAT-C U.S. Patent No. 7,228,383 (the `383 patent) File Wrapper for the `383 Patent Dependency Table for `383 Patent

C. CLAIM CHARTS (CC) CC-A CC-B CC-C CC-D CC-E CC-F CC-G CC-H CC-I Claim Chart showing Sherman `409 anticipating claims 1-15 of the `383 patent Claim Chart showing Bern anticipating claims 1-9 of the `383 patent Claim Chart showing RFC 2060 anticipating claims 1-3 and 5-9 of the `383 patent Claim Chart showing Halahmi anticipating claims 1-15 of the `383 patent Claim Chart showing Zerber anticipating claims 1-15 of the `383 patent Claim Chart showing Austein anticipating claims 1-15 of the `383 patent Claim Chart showing PCMAIL anticipating claims 1-15 of the `383 patent Claim Chart showing Sherman `409 in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Claim Chart showing RFC 2060 in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Claim Chart showing Bern in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Claim Chart showing Halahmi in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Claim Chart showing Zerber in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent

CC-J

CC-K

CC-L

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CC-M

Claim Chart showing Austein in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Claim Chart showing PCMAIL in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Claim Chart showing Sherman `409 in view of Boone rendering obvious claims 10-15 of the `383 patent Claim Chart showing RFC 2060 in view of Boone rendering obvious claims 10-13 and 15 of the `383 patent Claim Chart showing Bern in view of Boone rendering obvious claims 10-15 of the `383 patent Claim Chart showing Halahmi in view of Boone rendering obvious claims 10-15 of the `383 patent Claim Chart showing Zerber in view of Boone rendering obvious claims 10-15 of the `383 patent Claim Chart showing Austein in view of Boone rendering obvious claims 10-15 of the `383 patent Claim Chart showing PCMAIL in view of Boone rendering obvious claims 10-15 of the `383 patent

CC-N

CC-O CC-P CC-Q CC-R CC-S CC-T CC-U

D. OTHER DOCUMENTS (OTH) OTH-A Patent Owner's First Amended Answer to Complaint and Counterclaims in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) filed Sept. 18, 2007. "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) "Order Adopting With Exception Case Management And Docket Control Order" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007)

OTH-B

OTH-C

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of: Inventors: Friedman et al. Patent No.: 7,228,383 Filed: June 1, 2001
For: System and Method for Progressive and Hierarchical Caching

REQUEST FOR REEXAMINATION UNDER 35 U.S.C. §§ 311 AND 37 C.F.R. §§ 1.913, 1.915

Mail Stop Inter Partes Reexamination ATTN: Central Reexamination Unit Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 REQUEST FOR INTER PARTES REEXAMINATION OF U.S. PATENT 7,228,383 Dear Sir: Pursuant to 37 C.F.R. § 1.915(b)(8), the Real Party in Interest Research in Motion Ltd., (hereinafter "Requester") hereby respectfully requests reexamination pursuant to 35 U.S.C. §§ 311 et seq. and 37 C.F.R. § 1.902 et. seq., , of original claims 1-15 of U.S. Patent No. 7,228,383 ("the `383 patent") filed June 1, 2001 and issued June 5, 2007 to Gregory Scott Friedman et al. (Exhibit PAT A). Reexamination is requested in view of the

substantial new questions of patentability ("SNQ") presented below. Requester reserves all rights and defenses available including, without limitation, defenses as to invalidity and unenforceability. By simply filing this Request in compliance with the Patent Rules, Requester does not represent, agree or concur that the `383 patent is enforceable1 and by
1

As alleged by Patent Owner in the below defined Underlying Litigation, and as required by 37 C.F.R. § 1.510(a), the `383 patent is still within its period of enforceability for reexamination purposes, to the extent that the `383 patent has not lapsed for failure to pay maintenance fees, has not been the subject of any Terminal Disclaimer, and has not yet been held unenforceable in a court of competent jurisdiction.

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asserting the SNQ herein, Requester specifically asserts that original claims 1-15 of the `383 patent are in fact not patentable and as such the U.S. Patent and Trademark Office (the "Office") should reexamine and find all claims unpatentable and cancel all claims of the `383 patent, rendering the `383 patent null, void and otherwise unenforceable. Requester notes that the `383 patent, for which reexamination is requested, was asserted by Visto Corp, (hereinafter "the Patent Owner"), in the litigation Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) ("the Pending Litigation"). See Patent Owner's First Amended Answer to Complaint and Counterclaims filed Sept. 18, 2007 at Exhibit OTH-A. For purposes of this Request, the Requester has and will construe all claim language from the claims asserted by the patentee in the litigation in the manner proffered by Visto Corp. Such statements by the patentee may be used by the Office to interpret claim language at issue.2 When the claims are interpreted in the manner proffered by Visto Corp., or even under a narrower, more reasonable interpretation of the claims, the claims are unpatentable in view of the prior art references presented herein. By construing the claim language in the manner proffered by Visto Corp., and/or as otherwise set forth explicitly or implicitly herein, the Requester is not admitting and/or acquiescing as to the correctness and/or reasonableness of Visto Corp.'s proffered claim construction in the litigation and/or as otherwise set forth herein. In fact, the Requester expressly challenges, and will continue to vigorously challenge, Visto Corp.'s proffered claim construction, in whole or part, as the litigation continues. The interpretation and/or construction of claims presented either implicitly or explicitly herein should not be viewed as constituting, in whole or in part, the Requester's own interpretation and/or construction of such unasserted claims, but instead, should be viewed as constituting an interpretation and/or construction of such claims that is consistent with Visto Corp.'s claim construction positions in the litigation. In fact, the Requester expressly reserves the right to present its own interpretation of these claims at a later time, which interpretation may differ, in whole or in part, from that presented herein.
2

See 37 C.F.R. § 1.104(c)(3): "In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability[.]"

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I. REQUIREMENTS FOR INTER PARTES REEXAMINATION UNDER 37 C.F.R. § 1.915 The Real Party in Interest is Research In Motion Ltd. (referred to herein as "Requester") satisfies each requirement for Inter Partes reexamination of the `383 patent. A full copy of the `383 patent is submitted herein at Exhibit PAT-A in accordance with 37 C.F.R. § 1.915(b)(5). Pursuant to 37 C.F.R. § 1.915(b)(7), Requester certifies that the estoppel provisions of 37 C.F.R. § 1.907 do not prohibit the filing of this Inter Partes reexamination. Pursuant to 37 C.F.R. §1.915(b)(4) a copy of every patent or printed publication relied upon to present an SNQ is submitted herein at Exhibits PA-A through Exhibits PAJ. A citation of which may be found on the accompanying Form PTO-SB/08A at Exhibit PTO-SB/08A in accordance with 37 C.F.R. § 1.915(b)(2). All of these cited prior art publications constitute effective prior art as to the claims of the `383 patent under 35 U.S.C. § 102 and 35 U.S.C. § 103. A statement pointing out each substantial new question of patentability based on the cited patents and printed publication, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to claims 1-15 of the `383 patent is presented below in accordance with 37 C.F.R. § 1.915 (b)(3). A copy of this request has been served in its entirety on the patent owner in accordance with 37 C.F.R. § 1.915(b)(6) at the following address: OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C. 1940 DUKE STREET ALEXANDRIA VA 22314 In accordance with 37 C.F.R. § 1.915(a), a credit card authorization to cover the Fee for reexamination of $8,800.00 is attached. If this authorization is missing or

defective please charge the Fee to the Novak Druce Deposit Account No. 14-1437.

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II. OVERVIEW OF THE `383 PATENT AND SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY

Please see attached Exhibit PAT-C for a table presenting dependency chart for the dependent claims. A. SUMMARY OF THE DETAILED DESCRIPTION OF THE PREFERRED EMBODIMENTS OF THE `383 PATENT The preferred embodiment of the `383 patent is directed to a system and method for allowing a user to update their portable electronic mail account to correspond to the contents of the user's regular electronic mail account. Col. 2, lines 27-31. Referring to Figure 1 of the `383 patent below; when a user at a Computer System (101) attempts to retrieve their electronic mail from the user's regular electronic mail account at Remote Computer (127), the system and method will conduct a retrieval and caching operation.

Figure 1 of the `383 patent In the detailed description of the alleged invention in the `383 patent, the Patent Owner discloses a method for using a read-through cache to monitor the Computer System's status for determining if the local mail status is current as compared to the Remote Computer's mail status. Col. 4, lines 15-20 & 45-50. If the Computer System's

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(101) cache does not accurately reflect the mail status of Remote Computer, the retrieval and caching operation will update the contents of the Computer System's cache for future access by the user. Col. 4, lines 45-58. The `383 patent allegedly discloses a method for more efficiently retrieving and updating the contents of the Computer System's data cache by retrieving, from the remote computer, discrete categories of data according to a hierarchical order. Col. 2, lines 23-26 & Col. 4, lines 59-64. As presented in the specification of the `383, exemplar embodiments of this system and method are directed to retrieving, in discrete categories, electronic mail data according to a hierarchical order. See e.g., Specifically, during the highest hierarchical retrieval, the Computer System's local cache will update only the unique identifiers corresponding to the user's messages. Col. 5, lines 1-16. The second level of information for an electronic mail message is the metadata (e.g., title, subject, author, etc.) which may be retrieved and cached separately from the unique identifiers. Col. 5, lines 51-62. Following the metadata is the third level of information which would correspond to the entire text of the message. Col. 5, line 63 to Col. 4, line 6. Thus, during a third retrieval, the text could be updated. Col. 5, line 63 to Col. 4, line 6. Further, during a third retrieval operation, the forth category of information, corresponding to an attachment may be retrieved and stored in the Computer System's cache for each of the user's messages. Col. 6, lines 7-18. B. `383 PATENT APPLICATION PROSECUTION HISTORY During the prosecution of the `383 patent, the Examiner repeatedly rejected original claims 1-7, 9-10, and 14-15 under 35 USC § 102 over M.C. Chan et al. "Application of Compaction Technique to Optimizing Wireless Email Transfer" IEEE Wireless Communications and Networking Conference 1999, p. 1535 Section A ("Chan"). See Exhibit PAT-B at Non-Final Office action dated March, 14, 2003; NonFinal Office action dated October 17, 2003; Final Office Action dated May 20, 2004; Final Office Action dated January 26, 2005. Original claims 8, and 11-13 were also repeatedly rejected under 35 USC § 103 as being obvious over Chan in view of U.S. Patent No. 6,052,735 to Ulrich et al. ("Ulrich"). See Exhibit PAT-B at Non-Final Office action dated March, 14, 2003; Non-Final Office action dated October 17, 2003; Final Office Action dated May 20, 2004; Final Office Action dated January 26, 2005.

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Specifically, with respect to claim 1, the examiner pointed to Chan as disclosing the following: in a first retrieval operation, retrieving and storing into a memory only a first hierarchical level of information corresponding to at least one of the data items on page 1534 Section III 3rd paragraph lines 9-12; and in a second retrieval operation separate from the first retrieval operation, retrieving and storing into the memory only a second hierarchical level of information corresponding to the at least one of the data items page 1534 Section III 3rd paragraph lines 10-12. 3 To overcome the examiner's rejections, the Patent Owner made the following amendments to original claim 1: 1. A method of caching information relating to a set of data items, comprising: providing a first memory storing a set of data items; wherein information of each of the data items is categorized into hierarchical levels; in a first retrieval operation, retrieving from the first memory and storing into a memory only a first hierarchical level of information corresponding to at least one of the data items, wherein the first hierarchical level of information comprises at least one identifier for uniquely identifying each of the at least one of the data items; and in a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information corresponding to the at least one of the data items,

3

Page 1534 Section III 3rd paragraph of Chan discloses: In the server-to-client direction, a client receives notification of new email messages by receiving concise descriptions of these messages from the server. These descriptions contain the sender name, date, message length and subject. The client selectively retrieves emails by sending the name of the requested email and the set of reference messages to the server. The reference messages are chosen by the selection algorithm given the set of messages cached locally. From the implementation point of view, all reference to emails will be via unique integers generated by the server (e.g., the unique identifier or UID in IMAP4 can be used). On receiving the request, the server performs encoding using the set of reference objects and sent this encoded object to the client. Finally, the client receives and decodes the encoded object using locally cached reference objects.

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wherein the second hierarchical level of information comprises metadata for the at least one of the data items.4 See Exhibit PAT-B at Response to Final Office Action (37 CFR §1.116) and Request for Continued Examination (37 CFR §1.114) filed July 26, 2005 pg. 2. Subsequently, in the stated reason for allowance over Chan, the examiner pointed out that "Chan, the closest available art of record, combines the unique identifier and metadata into a single hierarchical level of information. For this reason claim 1 is found allowable of the prior art of record."5 See Exhibit PAT-B at Non-Final Office Action dated October 3, 2005 pg. 4. C. RELATED CO-PENDING LITIGATION REQUIRES TREATMENT WITH SPECIAL DISPATCH AND PRIORITY OVER ALL OTHER CASES The `383 patent is presently the subject of litigation including Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) ("the Pending Litigation"). See Patent Owner's First Amended Answer to Complaint and Counterclaims filed Sept. 18, 2007 at Exhibit OTH-A. Additionally, please find attached at Exhibit OTH-C, the scheduling order for the Pending Litigation. See "Order Adopting With Exception Case Management And Docket Control Order" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) at Exhibit OTH-C.

A patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-137 (1942) ("By the amendment [the patentee] recognized and emphasized the difference between the two phrases and proclaimed his abandonment of all that is embraced in that difference"). Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740 (2002). In litigation, Patent Owner has taken a different position with respect to unique identifiers being in a separate hierarchical level. Specifically, in "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" the Patent Owner stated that an infringing device would carry out a "first retrieval operation by retrieving only a first hierarchical level of information (including at least a unique message identifier and perhaps also e.g., message headers, message subject, or a specific limited number of bytes of a message)..." See Exhibit OTH-B at "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) (emphasis added). Thus, contrary to the stated reason for allowance in prosecution, the Patent Owner is now arguing that in a first retrieval operation, a unique identifier and metadata may be within the same hierarchical level. In spite of Visto's two inconsistent interpretations, the prior art submitted herein anticipates all claims of the `383.
5

4

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Pursuant to 35 U.S.C. § 314, it is respectfully urged that this Request be granted and reexamination conducted not only with "special dispatch," but also with "priority over all other cases" in accordance with MPEP § 2661, due to the ongoing nature of the underlying litigation. Further, pursuant to the recently announced policy of the Office concerning revised reexamination procedures to provide for a scheduling-type order of expected substantive action dates in Requests ordered after the Office's 2005 fiscal year, Requester respectfully seeks such a scheduling order upon the granting of this Request D. CLAIM CONSTRUCTION Requester notes that the `383 patent, for which reexamination is requested, was asserted by Visto Corp, (hereinafter "the Patent Owner"), in the litigation Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) ("the Pending Litigation"). See Patent Owner's First Amended Answer to Complaint and Counterclaims filed Sept. 18, 2007 at Exhibit OTH-A. For purposes of this Request, the Requester has and will construe all claim language from the claims asserted by the patentee in the litigation in the manner proffered by Visto Corp. Such statements by the patentee may be used by the Office to interpret claim language at issue.6 When the claims are interpreted in the manner proffered by Visto Corp., or even under a narrower, more reasonable interpretation of the claims, the claims are unpatentable in view of the prior art references presented herein. By construing the claim language in the manner proffered by Visto Corp., and/or as otherwise set forth explicitly or implicitly herein, the Requester is not admitting and/or acquiescing as to the correctness and/or reasonableness of Visto Corp.'s proffered claim construction in the litigation and/or as otherwise set forth herein. In fact, the Requester expressly challenges, and will continue to vigorously challenge, Visto Corp.'s proffered claim construction, in whole or part, as the litigation continues. The interpretation and/or construction of such claims presented either implicitly or explicitly herein should not be viewed as constituting, in whole or in part, the Requester's
See 37 C.F.R. § 1.104(c)(3): "In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability[.]"
6

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own interpretation and/or construction of such unasserted claims, but instead, should be viewed as constituting an interpretation and/or construction of the claims that is consistent with Visto Corp.'s claim construction positions in the litigation. In fact, the Requester expressly reserves the right to present its own interpretation of these claims at a later time, which interpretation may differ, in whole or in part, from that presented herein. This Request reflects a construction of applicable claim language from the Patent Owner's infringement contentions in the concurrent litigation. See OTH-B, "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 31" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007). In one example from the infringement contentions, the Patent Owner alleges that an infringing product would carry out a first retrieval operation by: retrieving only a first hierarchical level of information (including at least a unique message identifier and perhaps also e.g., message headers, message subject, or a specific limited number of bytes of a message) of PIM data or emails based on unique identifiers in a database using the unique identifiers to map the corresponding record to a Blackberry Smartphone or device. Exhibit OTH-B, "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) (emphasis added). Contrary to the stated reason for allowance in prosecution (e.g., where the unique identifiers and metadata were in separate hierarchical levels), now the Patent Owner is arguing that a unique identifier and metadata may be within the same hierarchical level of information retrieved during a first retrieval operation. See Exhibit PAT-B at Non-Final Office Action dated October 3, 2005 pg. 4; See also Exhibit OTH-B, "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007). In spite of Visto's two inconsistent interpretations, the prior art submitted herein anticipates all claims of the `383 under either interpretation. In a second example from the infringement contentions, the Patent Owner alleges that a second retrieval operation, separate from the first retrieval operation, would be conducted by "retriev[ing] a second hierarchical level of information (including e.g.,

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further message headers, additional bytes of a message, or one or more attachments to the message)." Exhibit OTH-B, "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) (emphasis added). In a third example from the infringement contentions, the Patent Owner alleges that a predictive indicator could be an email "filter." For example, a user can set preferences or `filters' to specify for sending a first or second hierarchical level of information for the data items. A user may set a filter to send headers only which will trigger the delivery of email headers to the device, or also set filters to send message of high importance. These filters are predictive indicators which result in triggers for retrieving information. Exhibit OTH-B, "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) (emphasis added). When the claims are interpreted in the manner proffered by Visto Corp., or even under a narrower, more reasonable interpretation of the claims, the claims are unpatentable in view of the prior art references presented herein. E. 1. SUMMARY OF THE PRIOR ART SHERMAN `409 PATENT

The Sherman `409 patent issued November 11, 2003 from application No. 09/352,279, filed July 13, 1999. The Sherman `409 patent constitutes effective prior art under 35 U.S.C. § 102. The Sherman `409 patent discloses all of the limitations in the claims of the `383 patent including the limitations the Patent Owner added for allowance. Specifically, as can be seen from Figure 1 below, the Sherman `409 patent discloses a first memory (e.g., "server") storing data items (e.g., "electronic items such as electronic mail messages") in hierarchical levels. Sherman `409 at Fig. 1; Col. 3 line 65 through Col. 4, line 7.

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Further, Sherman `409 discloses a first retrieval operation, retrieving from the first memory and storing into a second memory (e.g., "client computer system 22 is preferably a handheld personal computer") only a first hierarchical level of information corresponding to at least one of the data items. Sherman `409 at Col. 7, lines 31-50. Specifically, a user will request only a first hierarchical level of information comprising at least one identifier (e.g., "identification numbers") for uniquely identifying each of the at least one of the data items. Sherman `409 at Col. 7, lines 40-44. ("As an example, a request may be made for a list of only identification numbers (ID) related to each item on the email server that belongs to the user of the client H/PC."). Further still, Sherman `409 discloses a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information (e.g., "header") corresponding to the at least one of the data items. Sherman `409 at Abstract. Specifically, Sherman `409 discloses that the second hierarchical level of information comprises metadata for the at least one of the data items. Sherman `409 at Col. 6, lines 54-57 ("header 113 has information about the email message 27 such as originator, addressee, time created and the subject of the email message 27. The header 113 may include other fields.")

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The Sherman `409 patent was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. The Sherman `409 patent anticipates claims 1-15 of the `383 patent. In the alternative, the Sherman `409 patent renders obvious, claims 10-15 of the `383 patent when viewed in light of the Sherman `214 patent. Also in the alternative, the Sherman `409 patent renders obvious, claim 10-15 of the `383 patent when viewed in light of the Boone reference. 2. BERN Bern issued on May 24, 2005 from application No. 09/834,222, filed on April 12, 2001. Bern constitutes effective art under 35 USC §102. Bern discloses all of the limitations in claims 1-9 of the `383 patent including the limitations the Patent Owner added for allowance. Specifically, Bern discloses a first memory (e.g., e-mail server based on an ICSA platform) for storing data items (e-mail) in hierarchical levels. Bern at Abstract; Col. 5, lines 1-7. Further, Bern discloses a first retrieval operation, retrieving from the first memory and storing into a second memory (e.g., mail client on a mobile communications station) only a first hierarchical level of information corresponding to at least one of the data items. Bern at Col. 4, lines 1-19; Col. 6, lines 23-54; Col. 7, line 57 ­ Col. 8, line 2. Specifically, a user will request only a first hierarchical level of information comprising at least one identifier (e.g., SMS notification with job identifier) for uniquely identifying each of the at least one of the data items. Bern at Col. 4, lines 1-19; Col. 6, lines 23-54; Col. 7, line 57 ­ Col. 8, line 2; see also Col. 3, lines 1-3 ("Thus, if an enduser wishes to identify and retrieve a particular e-mail from a mail server host he has to list all the UIDs of the e-mails in the mail box."). Further still, Bern discloses a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information (retrieving header information only, retrieving first or second parts of an e-mail body, or any other possible manipulation of email.) Bern at Col. 5, lines 1-7. Specifically, Bern discloses that the second hierarchical level of information comprises metadata for the at least one of the data items (e.g., header

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information.) Bern at Col. 5, lines 1-7. ("It should be understood that the expression to access an e-mail includes a number of possible operations with respect to the e-mail, such as retrieving the e-mail deleting it, forwarding it, reading its header information only, reading a first or a second part of the e-mail information body, or in any other way manipulating with, or retrieving information from, the e-mail.") Bern was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. The Bern patent anticipates claims 1-9 of the `383 patent. The Bern patent also renders obvious claims 10-15 of the `383 patent when viewed in light of the Sherman `409 patent, Sherman `214 patent and the Boone reference. 3. RFC 2060 RFC 2060 was published in December 1996 as Request for Comments 2060. RFC 2060 constitutes effective prior art under 35 U.S.C. § 102. RFC 2060 discloses all of the limitations in claims 1-3 and 5-9 of the `383 patent including the limitations the Patent Owner added for allowance. Specifically, RFC 2060 discloses a first memory (e.g., "server") storing data items (e.g., "electronic mail messages") in hierarchical levels. RFC 2060 at 1 ("IMAP4rev1 includes operations for . . . selective fetching of message attributes, texts, and portions thereof."). Further, RFC 2060 discloses a first retrieval operation, retrieving from the first memory and storing into a second memory (e.g., "client") only a first hierarchical level of information corresponding to at least one of the data items. RFC 2060 at 1 and 41-44. Specifically, a user will request only a first hierarchical level of information comprising at least one identifier (e.g., "Unique Identifier") for uniquely identifying each of the at least one of the data items. RFC 2060 at 7-8 ("2.3.1.1. Unique Identifier (UID) Message Attribute--A 32-bit value assigned to each message, which when used with the unique identifier validity value (see below) forms a 64-bit value that is permanently guaranteed not to refer to any other message in the mailbox."). Further still, RFC 2060 discloses a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information (e.g., "message attributes")

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corresponding to the at least one of the data items. See e.g., RFC 2060 at 1. Specifically, RFC 2060 discloses that the second hierarchical level of information comprises metadata for the at least one of the data items. See e.g., RFC 2060 at 7 ("In addition to message text, each message has several attributes associated with it. These attributes may be retrieved individually or in conjunction with other attributes or message texts.") Although RFC 2060 was before the Office with respect to the `383 patent, it was only submitted with respect to Section 2.3.1.1 and was never fully considered by the Examiner. As presented herein, RFC 2060 anticipates claims 1-3 and 5-9 of the `383 patent. In the alternative, RFC 2060 renders obvious claims 10-15 of the `383 patent when viewed in light of the Sherman `409 patent and further in view of the Sherman `214 patent. Also in the alternative, the RFC 2060 reference renders obvious claim 10-13 and 15 of the `383 patent when viewed in light of the Boone reference. 4. HALAHMI Halahmi issued on January 27, 2004 from application No. 09/516,118, filed March 1, 2000. Halahmi constitutes effective art under 35 USC §102. Halahmi discloses all of the limitations in the claims of the `383 patent including the limitations the Patent Owner added for allowance. Specifically, Halahmi discloses a first memory (e.g., e-mail server) storing data items (e.g., electronic mail messages) in hierarchical levels. Halahmi at Col. 5, lines 40-52; Halahmi at Col. 6, lines 55-65. Further, as can be seen from Figure 1 below, Halahmi discloses a first retrieval operation, retrieving from the first memory and storing into a second memory (e.g., "email portion server") only a first hierarchical level of information corresponding to at least one of the data items. Halahmi at Col. 5, lines 40-52; Halahmi at Col. 8, lines 1-39. Specifically, a user will request only a first hierarchical level of information comprising at least one identifier (e.g., "The received list includes the message identification numbers.") for uniquely identifying each of the at least one of the data items. Halahmi at Col. 8, lines 1-39.

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Further still, Halahmi discloses a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information (e.g., "header information") corresponding to the at least one of the data items. See e.g., Halahmi at Col. 8, lines 1620. Specifically, Halahmi discloses that the second hierarchical level of information comprises metadata for the at least one of the data items. See e.g., Halahmi at Col. 8, lines 16-20. ("For example, the user could request to see only the identity of the sender and the subject of the e-mail message"). Halahmi was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. As presented herein, the Halahmi patent anticipates claims 1-15 of the `383 patent. In the alternative, Halahmi renders obvious claims 10-15 of the `383 patent when viewed in light of the Sherman `409 patent and further in view of the Sherman `214 patent. Also in the alternative, the Halahmi patent renders obvious claim 10-15 of the `383 patent when viewed in light of the Boone reference.

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5. ZERBER Zerber issued on September 14, 1999 from application No. 08/984,750, filed on December 4, 1997. Zerber constitutes effective art under 35 USC §102. Zerber discloses all of the limitations in the claims of the `383 patent including the limitations the Patent Owner added for allowance. Specifically, Zerber discloses a first memory (e.g., personal computers, workstations, minicomputers or mainframes) storing data items (e.g., e-mail) in hierarchical levels. Zerber at Abstract; Col. 3, line 66 to Col. 4, line 5. Further, as can be seen from Figure 3 below, Zerber discloses a first retrieval operation, retrieving from the first memory (e.g., personal computers, workstations, minicomputers or mainframes) and storing into a second memory (e.g., personal computers, laptops, palmtops or workstations) only a first hierarchical level of information corresponding to at least one of the data items. Zerber at Abstract; Col. 3, line 66 to Col. 4, line 5. Specifically, a user will request only a first hierarchical level of information comprising at least one identifier (e.g., URL information) for uniquely identifying each of the at least one of the data items. Zerber at Abstract; Col. 3, line 66 to Col. 4, line 5.

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Further still, Zerber discloses a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information (e.g., message headers). See e.g., Zerber at Abstract. Specifically, Zerber discloses that the second hierarchical level of

information comprises metadata for the at least one of the data items. See e.g., Zerber at Abstract. ("The client computer communicates a command to the mail server to parse messages in the folder to obtain message headers. downloaded to the client computer."). Zerber was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. As presented herein, the Zerber patent, which incorporates by reference RFC 1939, anticipates claims 1-15 of the `383 patent. In the alternative, Zerber renders obvious claims 10-15 of the `383 patent when viewed in light of the Sherman `409 patent and further in view of the The message headers are then

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Sherman `214 patent. Also in the alternative, the Zerber patent renders obvious claim 1015 of the `383 patent when viewed in light of the Boone reference. 6. RFC 1939 RFC 1939 was published in May 1996 in Request for Comments 1939. RFC 1939 constitutes effective art under 35 USC §102. RFC 1939 is a publication directed to the POP3 protocol used for mail delivery from a remote server to a client. RFC 1939 at 3. RFC 1939 is incorporated by reference into the Zerber patent. Zerber at Col. 10, lines 49-57. RFC 1939 provides that the POP3 protocol is used for parsing messages at a remote POP3 server based on a unique identifier (e.g., "Unique-ID"). RFC 1939 at 12 ("The unique-id of a message is an arbitrary server-determined string, consisting of one to 70 characters in the range 0x21 to 0x7E, which uniquely identifies a message within a maildrop and which persists across sessions."). More specifically, a user is able to receive data items (e.g., emails) in a first memory (e.g., server) and download them to a second memory (e.g., workstation) when a connection to the server is available. RFC 1939 at 3. RFC 1939 provides that may receive only a first hierarchical level of information comprising at least one identifier (e.g., UIDL) for uniquely identifying each of the at least one of the data items. RFC 1939 at 12-13. RFC 1939 was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. As presented herein, RFC 1939, as incorporated into the Zerber patent, anticipates claims 1-15 of the `383 patent. Also in the alternative, RFC 1939, as incorporated by into the Zerber patent, renders obvious claim 10-15 of the `383 patent when viewed in light of the Boone reference. 7. AUSTEIN Austein was published in November 1994 in Internet Draft: Disconnected Access. Austein constitutes effective art under 35 USC §102. Austein discloses all of the limitations in the claims of the `383 patent including the limitations the Patent Owner added for allowance. Specifically, Austein discloses a

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first memory (e.g., "server") storing data items (e.g., e-mail messages) in hierarchical levels. Austein at 2. Further, Austein discloses a first retrieval operation, retrieving from the first memory and storing into a second memory (e.g., "client") only a first hierarchical level of information corresponding to at least one of the data items. Austein at 2, 4, 6.

Specifically, a user will request only a first hierarchical level of information comprising at least one identifier (e.g., at a minimum, a message's "UID" and "FLAG" information) for uniquely identifying each of the at least one of the data items. Austein at 2, 4, 6 ("At a minimum, the descriptor contains the message's UID and FLAGS."). Further still, Austein discloses a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information (e.g., "interesting" messages or body parts) corresponding to the at least one of the data items. See e.g., Austein at 5.

Specifically, Austein discloses that the second hierarchical level of information comprises metadata for the at least one of the data items. See e.g., Austein at 4 (e.g., Austein discloses that metadata can include, for example, author information, subject information, content information and message size information). Austein was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. As presented herein, the Austein reference anticipates claims 1-15 of the `383 patent. In the

alternative, Austein renders obvious claims 10-15 of the `383 patent when viewed in light of the Sherman `409 patent and further in view of the Sherman `214 patent. Also in the alternative, the Austein reference renders obvious claim 10-15 of the `383 patent when viewed in light of the Boone reference. 8. PCMAIL PCMAIL published in June 1988 from application in RFC 1056. constitutes effective art under 35 USC §102. PCMAIL discloses all of the limitations in the claims of the `383 patent including the limitations the Patent Owner added for allowance. Specifically, PCMAIL discloses a PCMAIL

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first memory (e.g., a repository with a large amount of disk storage) storing data items (e.g., electronic mail messages) in hierarchical levels. PCMAIL at 2-3. Further, PCMAIL discloses a first retrieval operation, retrieving from the first memory and storing into a second memory (e.g., workstation) only a first hierarchical level of information corresponding to at least one of the data items. PCMAIL at 16. Specifically, a user will request only a first hierarchical level of information comprising at least one identifier (e.g., fetch descriptors operation would result in a series of unique identifiers, representing the lower and upper bounds of the list) for uniquely identifying each of the at least one of the data items. PCMAIL at 16 ("The series is identified by a pair of message [Unique Identifiers] UIDs, representing the lower and upper bounds of the list."). Further still, PCMAIL discloses a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information (e.g., message) corresponding to the at least one of the data items. See e.g., PCMAIL at 17. Specifically, PCMAIL discloses that the second hierarchical level of information comprises metadata for the at least one of the data items. See e.g., PCMAIL at 19-20. ("Fetch-changed descriptors"). PCMAIL was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. As presented herein, PCMAIL anticipates claims 1-15 of the `383 patent. In the alternative, PCMAIL renders obvious claims 10-15 of the `383 patent when viewed in light of the Sherman `409 patent and further in view of the Sherman `214 patent. Also in the alternative, the PCMAIL reference renders obvious claim 10-15 of the `383 patent when viewed in light of the Boone reference. 9. BOONE The Boone reference was published in 1998. The Boone reference constitutes effective prior art under 35 U.S.C. §103(a). The Boone reference is directed to an intelligent email agent that is useful for downloading email from a first memory (e.g., a mail server) to a second memory (e.g., a palmtop computer utilizing the features of the Boone reference). Boone at 141.

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Specifically, the Boone reference provides for a machine learning technique such that information can be intelligently downloaded to the second memory using triggers, wherein at least one trigger is a predictive indicator predicting a user's preference for retrieving information (e.g., using a feature extraction approach). Boone at 141-143. The Boone reference was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. As presented herein, the Boone reference in combination Sherman `409 patent, the Bern patent, RFC 2060, the Halahmi patent, the Zerber patent which incorporates RFC 1939, the Austein reference and/or the PCMAIL reference renders obvious claims 10-15 of the `383 patent. Furthermore, the combination of Boone with the prior art presented herein would have yielded the predictable result. As outlined in KSR , the United States Supreme Court emphasized that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966). The Court provided further instruction stating that "when a patent `simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 1740 (quoting Sakraida at 273.) See also Ex parte Catan, Appeal 2007-0820 (BPAI July 3, 2007); Ex Parte Kubin, 2007-0819 (BPAI May 31, 2007); Ex Parte Smith, Appeal 2007-1925 (BPAI June 25, 2007). 10. SHERMAN `214 The Sherman `214 patent issued January 7, 2003 from application No. 09/407,543, filed September 28, 1999. The Sherman `214 patent constitutes effective prior under 35 U.S.C. §103(a). As can be seen from Figure 1 below, the Sherman `214 patent discloses a first memory (e.g., "server") storing data items (e.g., "electronic items such as electronic mail messages") in hierarchical levels. Sherman `214 at Fig. 1; Col. 6 line 20-41.

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The Sherman `214 patent discloses a trigger may be a predictive indicator predicting a user's preference for retrieving information from the set of data items (e.g., "based on implicit perception of a user's desire to synchronize such information and without the need for explicit designation by the user"). Sherman `214 at Abstract, Col. 2, lines 22-36. The Sherman `214 patent was not before the Examiner during the prosecution of the `383 patent and has not been considered by the Office with regards to the `383 patent. As presented herein, the Sherman `214 patent in combination with the Sherman `409 patent, the Bern patent, RFC 2060, the Halahmi patent, the Zerber patent which incorporates RFC 1939, the Austein reference and the PCMAIL reference renders obvious claims 10-15 of the `383 patent. Furthermore, the combination of Sherman `214 patent with the prior art presented herein would have yielded the predictable result. As outlined in KSR , the United States Supreme Court emphasized that "[t]he combination of

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familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966). The Court provided further

instruction stating that "when a patent `simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 1740 (quoting Sakraida at 273.) See also Ex parte Catan, Appeal 2007-0820 (BPAI July 3, 2007); Ex Parte Kubin, 2007-0819 (BPAI May 31, 2007); Ex Parte Smith, Appeal 20071925 (BPAI June 25, 2007). III. STATEMENT UNDER 37 C.F.R. § 1.915(b)(3) OF EACH SUBSTANTIAL NEW QUESTION OF PATENTABILITY This Request is based on the cited prior art documents listed above and on the accompanying Form PTO-SB/08A. Exhibit PA-SB/08A. All of these cited prior art publications constitute effective prior art as to the claims of the `383 patent under 35 U.S.C. § 102 and 35 U.S.C. § 103. 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. Sherman `409 anticipates claims 1-15 of the `383 patent Bern anticipates claims 1-9 of the `383 patent RFC 2060 anticipates claims 1-3 and 5-9 of the `383 patent Halahmi anticipates claims 1-15 of the `383 patent Zerber, which incorporates by reference RFC 1939, anticipates claims 1-15 of the `383 patent Austein anticipates claims 1-15 of the `383 patent PCMAIL anticipates claims 1-15 of the `383 patent Sherman `409 in view of Sherman `214 renders obvious claims 1015 of the `383 patent RFC 2060 in view of Sherman `409 and further in view of Sherman `214 renders obvious claims 10-15 of the `383 patent Bern in view of Sherman `409 and further in view of Sherman `214 renders obvious claims 10-15 of the `383 patent Halahmi in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Zerber in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent

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13. 14. 15. 16. 17. 18. 19. 20. 21.

Austein in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent PCMAIL in view of Sherman `409 and further in view of Sherman `214 rendering obvious claims 10-15 of the `383 patent Sherman `409 in view of Boone rendering obvious claims 10-15 of the `383 patent RFC 2060 in view of Boone rendering obvious claims 10-13 and 15 of the `383 patent Bern in view of Boone rendering obvious claims 10-15 of the `383 patent Halahmi in view of Boone rendering obvious claims 10-15 of the `383 patent Zerber in view of Boone rendering obvious claims 10-15 of the `383 patent Austein in view of Boone rendering obvious claims 10-15 of the `383 patent PCMAIL in view of Boone rendering obvious claims 10-15 of the `383 patent IV. CONCISE STATEMENT OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY Claims 1-15 of the `383 patent are fully anticipated under 35 U.S.C. § 102 by,

and/or are unpatentable under 35 U.S.C. § 103 in view of, the several different prior art references cited herein, which were not previously considered by the Examiner during the examination of the `383 patent application or are discussed in a new light from the original prosecution of the `383 patent application. Claims 1-15 of the `383 patent are set forth in detail in the attached claim charts (Exhibit CC-A through CC-U) that compare the limitations of the claims of the `383 patent to the pertinent prior art references. As the claim charts demonstrate, claims 1-15 are unpatentable under 35 U.S.C. § 102 and/or 35 U.S.C. § 103 in view of the prior art references under any reasonable interpretation of the claims, and especially when the claims are interpreted in the manner proffered by Visto Corp. in the above-referenced litigation.

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A. Claims 1-15 are Anticipated by Sherman `409 Under 35 U.S.C. § 102 Please see attached Exhibit CC-A presenting claim charts for comparison of the Sherman `409 patent with the claims of the `383 patent.

1.

CLAIM 1

Requester respectfully submits that claims 1-15 of the `383 patent are anticipated by Sherman `409 under 35 U.S.C. § 102 under either of the inconsistent claim interpretation positions taken by Visto Corp. in prosecution and litigation.7 A claim chart applying Sherman `409 to these claims is submitted herewith as Exhibit CC-A. 1. Claim 1 of the `383 Patent

Claim 1 of the `383 patent reads as follows: 1. A method of caching information relating to a set of data items, comprising: providing a first memory storing a set of data items; wherein information of each of the data items is categorized into hierarchical levels; in a first retrieval operation, retrieving from the first memory and storing into a second memory only a first hierarchical level of information corresponding to at least one of the data items, wherein the first hierarchical level of information comprises at least one identifier for uniquely identifying each of the at least one of the data items; and in a second retrieval operation separate from the first retrieval operation, retrieving from the first memory and storing into the second memory only a second hierarchical level of information corresponding to
In litigation, Patent Owner has taken a different position with respect to unique identifiers being in a separate hierarchical level. Specifically, in "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" the Patent Owner stated that an infringing device would carry out a "first retrieval operation by retrieving only a first hierarchical level of information (including at least a unique message identifier and perhaps also e.g., message headers, message subject, or a specific limited number of bytes of a message)..." See Exhibit OTH-B at "Visto's Disclosure of Asserted Claims and Infringement Contentions under Patent Local Rule 3-1" in Research In Motion Limited vs. Visto Corporation., Case No. C-07-3177 (N.D. Cal. June 15, 2007) (emphasis added). Thus, contrary to the stated reason for allowance in prosecution, the Patent Owner is now arguing that in a first retrieval operation, a unique identifier and metadata may be within the same hierarchical level. In spite of Visto's two inconsistent interpretations, Sherman anticipates all claims of the `383 under either interpretation.
7

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the at least one of the data items, wherein the second hierarchical level of information comprises metadata for the at least one of the data items. Each of the elements in claim 1 is disclosed in Sherman `409. Sherman `409 discloses a method of caching information relating to a set of data items. Sherman `409 at Abstract. Specifically, Sherman `409 discloses a handheld client computing system would selectively retrieve data items from a server in a hierarchical order. Sherman `409 at Abstract. The first element of claim 1 is "providing a first memory storing a set of data items; wherein information of each of the data items is categorized into hierarchical levels." Sherman `409 discloses a first memory storing a set of data items. Sherman `409 at Fig. 1; Col. 3, lines 54-56; Col. 3, line 65 through Col. 4, line 7. Specifically, Figure 1 of Sherman `409 shows an "Internet server or an Intranet server" as a first memory store, which sends and receives data items such as electronic mail messages. Sherman `409 at Col. 3, line 65 through Col. 4, line 7. Further, Sherman `409 discloses that the data items are categorized into hierarchical levels. Sherman `409 at Abstract. Specifically, Sherman `409 discloses that the data items, which are categorized into hierarchical levels, may be retrieved by a handheld client in