PTAB

IPR2014-01033

Apple Inc v. Mobile Telecommunications Technologies LLC

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1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Generating and Communicating Messages Between Subscribers to an Electronic Messaging Network
  • Brief Description: The ’506 patent describes an electronic messaging network comprising a central network operation center and multiple message terminals. The terminals and the center store corresponding files of "canned messages" and associated "message codes," allowing a user to send a pre-written message by selecting it and transmitting its shorter, corresponding code over the network.

3. Grounds for Unpatentability

Ground 1: Claims 8 and 9 are anticipated by Cannon under 35 U.S.C. §102.

  • Prior Art Relied Upon: Cannon (Patent 5,850,594).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cannon, which describes a two-way communication system between portable messaging units (PMUs) and a system controller, teaches every limitation of claims 8 and 9. Cannon’s use of "relatively short aliases" to represent "frequently transmitted information" was asserted to be equivalent to the ’506 patent’s "message codes" and "canned messages." Petitioner contended that Cannon’s system controller (a "network operation center") and its PMUs (subscriber "terminals") each store corresponding databases of these aliases and messages, directly mapping to the claimed architecture of maintaining first, second, and third files of messages and codes across the network. This disclosure, Petitioner argued, directly addresses the features the examiner found novel during original prosecution.

Ground 2: Claims 10, 19, and 21 are obvious over Cannon in view of LaPorta.

  • Prior Art Relied Upon: Cannon (Patent 5,850,594) and LaPorta (Patent 5,970,122).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that while Cannon taught the base system of sending pre-defined messages using efficient codes (aliases), it did not explicitly teach customizing those messages with parameters. LaPorta was alleged to supply this missing element by disclosing a messaging system where "fixed pre-canned components" can be customized by adding "dynamic components" such as embedded replies, choices, or pre-defined variables. The combination, therefore, would render obvious a system where a user selects a canned message (per Cannon) and adds a parameter or selects from multiple response options (per LaPorta) for transmission. Specifically, claim 10’s step of "adding a parameter" and claim 19's "file of canned multiple response options" were alleged to be taught by LaPorta's flexible message customization.
    • Motivation to Combine: A POSITA would combine Cannon's efficient alias-based messaging with LaPorta's customization features to increase the flexibility and practical applicability of the system. This combination would allow for more complex, interactive messages without requiring the storage of every possible message variation, thus making the system both efficient and versatile.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in integrating LaPorta’s known method for message customization into Cannon’s messaging framework, as it represented a predictable enhancement to a known communication system.

Ground 3: Claims 11 and 12 are obvious over Cannon in view of Will.

  • Prior Art Relied Upon: Cannon (Patent 5,850,594) and Will (Patent 5,588,009).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground focused on adding interactive response capabilities to Cannon's system. Petitioner argued that Will taught a paging system where an originator can send a message that includes preprogrammed response options. The recipient can then select one of these options, and a corresponding response code is transmitted back. This was alleged to teach the limitations of claim 11, which require adding multiple response options, selecting one at the second terminal, and communicating the selected option back through the network. Claim 12, which depends on claim 11 and adds the maintenance of corresponding response option files, was also alleged to be obvious for the same reasons.
    • Motivation to Combine: A POSITA would be motivated to integrate Will's response-and-reply functionality into Cannon’s system to create a more interactive, dialogue-based communication platform. Combining Cannon's efficient use of message aliases with Will's system for pre-programmed responses would be a logical step to enhance two-way communication capabilities.
    • Expectation of Success: The integration was presented as a straightforward application of known messaging features (pre-programmed replies) to an existing messaging system, carrying a high expectation of success.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 13-14 based on Cannon in view of Will and further in view of LaPorta, arguing that LaPorta’s teaching of adding other parameters (such as choices and variables) represented a known design modification that could be applied to the interactive Cannon/Will system.

4. Key Claim Construction Positions

  • "canned message" / "canned multiple response options": Petitioner proposed construing "canned message" as a "predefined sequence of characters" and "canned multiple response options" as "predefined responses to a canned message." These constructions were argued to be consistent with constructions from co-pending litigation and necessary to map the "frequently transmitted information" and "preprogrammed responses" from the prior art to the claim limitations.
  • "means for retrieving..." / "means for selecting...": Petitioner argued these means-plus-function terms should be construed based on the corresponding structures disclosed in the specification, such as a CPU, ROM, system bus, and terminal keypad. Petitioner contended that these standard hardware components were well-known and disclosed in the cited prior art references, satisfying the structural requirements of the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 8-14, 19, and 21 of the ’506 patent as unpatentable.