PTAB

IPR2014-01034

Apple Inc v. Mobile Telecommunications Technologies LLC

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Key Events
Petition
petition

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 discloses a method and system for efficient communication in an electronic messaging network. The technology centers on storing identical files of predefined "canned" messages and associated codes at both user terminals and a central network operations center, allowing for the transmission of short codes instead of full-text messages to conserve bandwidth.

3. Grounds for Unpatentability

Ground 1: Obviousness over LaPorta and Deluca - Claims 8-14 are obvious over LaPorta in view of Deluca.

  • Prior Art Relied Upon: LaPorta (Patent 5,970,122) and Deluca (Patent 5,784,001).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that LaPorta discloses the core architecture of the ’506 patent, including a two-way messaging system with a network center ("user agent") and subscriber terminals that maintain identical, mirrored files of "canned messages" and their corresponding codes. In LaPorta, a sender transmits a short message code to the user agent, which then expands the code into the full message before forwarding it to the recipient. Deluca was argued to teach a complementary system where a paging terminal transmits codes to a receiver, which then uses the code to retrieve a corresponding graphic message from its own local database. The combination of LaPorta's network architecture with Deluca's method of end-to-end code transmission allegedly rendered the system of independent claim 8 obvious.
    • Motivation to Combine: A POSITA would combine the teachings to improve the bandwidth efficiency of LaPorta's system. Instead of having the network center expand the message, a POSITA would apply Deluca's teaching to forward the efficient message code all the way to the recipient's terminal for local retrieval, thus conserving bandwidth over the entire communication path.
    • Expectation of Success: The combination involved applying known techniques of code-based message retrieval to a compatible messaging architecture. Both references operate on the same fundamental principle, ensuring a high expectation of success.

Ground 2: Obviousness over LaPorta, Deluca, and Will - Claims 11-14 are obvious over LaPorta in view of Deluca and in further view of Will.

  • Prior Art Relied Upon: LaPorta (Patent 5,970,122), Deluca (Patent 5,784,001), and Will (Patent 5,109,390).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the system established by LaPorta and Deluca by adding the teachings of Will to address limitations in claims 11-14 related to interactive responses. While LaPorta taught embedding reply options, Petitioner asserted that Will explicitly discloses a system where a recipient receives a message with multiple response options, selects one, and transmits a corresponding response code back to a central station. This supplied the specific functionality for selecting, communicating, routing, and displaying a selected response option that Petitioner argued was an obvious addition to the base LaPorta/Deluca system.
    • Motivation to Combine: A POSITA would combine Will with the LaPorta/Deluca system to enhance its functionality with a more detailed, interactive reply mechanism. Implementing Will’s code-based reply system was a natural extension of a messaging system already based on transmitting codes to improve efficiency, thereby creating a more robust yet still bandwidth-conscious communication platform.
    • Expectation of Success: Integrating a code-based reply feature (Will) into a code-based messaging system (LaPorta/Deluca) was presented as a predictable design choice with a high expectation of success.

Ground 3: Anticipation by Will - Claims 19 and 21 are anticipated by Will.

  • Prior Art Relied Upon: Will (Patent 5,109,390).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Will alone teaches every element of apparatus claims 19 and 21. Will’s disclosure of a portable receiver was argued to be the claimed "message terminal." Will’s receiver includes a memory storing files of preprogrammed messages and responses with associated codes (the claimed "file of canned messages" and "file of canned multiple response options"). Further, Will’s microprocessor, display, thumbwheel/key interface, and transmitter were argued to meet the claimed "means for retrieving," "display," "means for selecting," "message compiler," and "transmitter" limitations, respectively, thereby anticipating the claims.

4. Key Claim Construction Positions

Petitioner proposed constructions for several key terms, arguing they were consistent with a Markman order in co-pending litigation.

  • "canned message": Construed as a "predefined sequence of characters."
  • "canned multiple response options": Construed as "predefined responses to a canned message."
  • "means for retrieving...": Construed functionally as "retrieving the file..." and structurally as a "CPU..., ROM..., and system bus..., and equivalents thereof."
  • "means for selecting...": Construed functionally as "selecting one of the canned messages..." and structurally as a "terminal keypad...; or a mouse; or a cursor; and equivalents thereof."

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner's arguments were framed to counter the Patent Owner's litigation position that a "canned message" could encompass an image, such as an emoji. Petitioner contended this interpretation is inconsistent with the proposed construction of "predefined sequence of characters" and the patent's own disclosure, which describes messages transmitted and displayed in text form.

6. Relief Requested

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