PTAB

IPR2013-00126

Research In Motion Corp v. Wi LAN USA Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Two-Stage Data Transmission
  • Brief Description: The ’088 patent relates to a method for managing the wireless transmission of large alphanumeric messages to an electronic communication receiver, such as a two-way pager. The method involves breaking the message into sequential portions and transmitting them based on affirmative user requests to conserve network resources and device memory.

3. Grounds for Unpatentability

Ground 1: Anticipation over Inter@ctive Pager Guide - Claims 19-21 are anticipated under 35 U.S.C. § 102(a) by the Inter@ctive Pager Guide.

  • Prior Art Relied Upon: Inter@ctive Pager Guide (a 1997 user guide for the RIM Inter@ctive Pager).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued the Inter@ctive Pager Guide explicitly teaches every element of the challenged claims. The guide describes a method for handling messages longer than 512 characters by breaking them into multiple portions for sequential retrieval. The pager first receives an initial portion of the message. After the user scrolls to the end of this portion, the pager displays a prompt, “Press ‘M’ for More,” which provides the user with a clear choice to receive the second portion. Pressing the ‘M’ key causes the pager to transmit instructions to the network’s base station, which in turn transmits the second portion. Petitioner contended this same user-initiated process is used to retrieve a third portion of the message, thus meeting all limitations of independent claim 19. Dependent claims 20 and 21 are met because the guide explicitly states the system handles e-mail messages.

Ground 2: Anticipation over Adler - Claims 19-21 are anticipated under 35 U.S.C. § 102(e) by Adler.

  • Prior Art Relied Upon: Adler (Patent 6,157,630).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Adler discloses a method for wirelessly transmitting an e-mail from a host server to a radio device by dividing the message into a plurality of portions. Adler teaches that the server first sends only an initial portion of the message. The receiving device presents the user with a “more” button, providing a choice to receive the next part of the message. Pressing this button sends a “more” command to the server, which responds by transmitting the second portion. Petitioner argued that Adler’s system is iterative, as shown in its flowcharts, and that this process of requesting and receiving subsequent portions is repeated to retrieve a third portion of the message. As Adler’s system is designed for e-mails, it was argued to anticipate claims 19-21.

Ground 3: Obviousness over HP Guide in view of Nokia Manual - Claims 19-21 are obvious over the HP Guide in view of the Nokia Manual.

  • Prior Art Relied Upon: HP Guide (a 1998 HP 620LX/660LX Palmtop User Guide), Nokia Manual (a 1997 Nokia 9000i Communicator User's Manual).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the HP Guide teaches all method steps of claim 19 for a palmtop PC but discloses using a wired, dial-up connection. The HP Guide describes downloading e-mail in three distinct, user-initiated stages: (1) downloading a message header (first portion); (2) double-tapping the header to download the first 50 lines of the message (second portion); and (3) selecting a menu option to retrieve the full-text copy (third portion). The Nokia Manual was cited for its teaching of sending and receiving e-mail over a wireless cellular network on a portable device.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the HP Guide’s staged downloading method with the Nokia Manual’s wireless communication capability. The motivation would be to achieve the well-known and predictable benefits of wireless mobility for the palmtop PC’s e-mail functionality, an entirely conventional and desirable improvement at the time.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. Applying established wireless data transmission protocols, as taught by the Nokia Manual, to the known e-mail retrieval process of the HP Guide was a straightforward application of existing technologies for their intended purposes.
  • Additional Grounds: Petitioner asserted that claims 19-21 are also obvious over the Inter@ctive Pager Guide alone (as an alternative to anticipation) and anticipated by Kikinis (Patent 5,838,252), which discloses a two-way pager system sending e-mail portion-by-portion in response to a user triggering "more information through return buttons."

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 19-21 of the ’088 patent as unpatentable.