PTAB

IPR2014-01509

BlackBerry Corp v. Zipit Wireless Inc

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1. Case Identification

2. Patent Overview

  • Title: Parental Controls for Mobile Instant Messaging Terminals
  • Brief Description: The ’694 patent discloses a system for controlling a communication device, such as a mobile terminal used for instant messaging (IM). The system operates byhaving the device send a "monitor message" to a remote "control site" before executing a user command; the control site then verifies the device's identity and compares the requested action against a set of rules in a database to either allow or block the communication.

3. Grounds for Unpatentability

Ground 1: Anticipation over Lotter - Claims 9, 10, and 12 are anticipated by Lotter under 35 U.S.C. §102.

  • Prior Art Relied Upon: Lotter (Patent 7,996,005).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lotter discloses every element of claims 9, 10, and 12. Lotter teaches a system for monitoring communications on a mobile device against rules stored in a central repository (the "control site"). Petitioner mapped Lotter's "Data Center" to the claimed control site, its "permissions database" to the "control database," and its "Activity Log" database to the "device database." Lotter’s system generates a monitor message (an "Activity Record") containing a unique device ID, sends it to the Data Center for comparison against rules, generates a corresponding command message (allow/block), and sends it back to the device.
    • Key Aspects: This argument asserted that Lotter’s disclosure of monitoring IM (claim 10) and Photo/Video/Multimedia applications (claim 12) directly reads on the dependent claims.

Ground 2: Obviousness over Lotter and Patron - Claims 1, 2, 4, and 5 are obvious over Lotter in view of Patron under 35 U.S.C. §103.

  • Prior Art Relied Upon: Lotter (Patent 7,996,005) and Patron (Application # 2005/0060167).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Lotter teaches the majority of the limitations in independent claim 1, including the overall system architecture of a device sending monitor messages to a control site for verification against databases. However, claim 1 requires generating a "stop command" for a communication occurring outside "prescribed time limits." Petitioner argued that Patron supplies this missing element by explicitly teaching the use of "time-based controls" in a parental control profile, such as blocking a minor's device use at specific times (e.g., during school exams).
    • Motivation to Combine: A POSITA would combine Patron's time-based control feature with Lotter's monitoring system to provide more granular and effective parental controls. Both references address the same problem in the same field of endeavor, making the combination a predictable improvement.
    • Expectation of Success: Given that both systems were software-based, integrating a time-based rule set into Lotter's existing rule-checking framework was presented as a routine and straightforward task with a high expectation of success.

Ground 3: Obviousness over Adams and Patron - Claims 1, 2, and 4-7 are obvious over Adams in view of Patron under §103.

  • Prior Art Relied Upon: Adams (Application # 2005/0257209) and Patron (Application # 2005/0060167).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative invalidity theory using Adams as the base reference. Petitioner argued that Adams discloses a system for controlling an electronic device using an "owner control information database" on a remote server. The device sends a request (a monitor message) to the server to verify if a requested operation is allowed. As in the previous ground, Patron was cited for its teaching of time-based parental controls to satisfy the "prescribed time limits" limitation of claim 1.
    • Motivation to Combine: The motivation was analogous to the Lotter/Patron combination. A POSITA seeking to improve the parental control system of Adams would have found it obvious to incorporate the well-known and desirable feature of time-based restrictions as taught by Patron.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations incorporating Walter (Application # 2006/0014547) for its teaching of network-based (i.e., location-based) control policies, and another ground asserting claim 12 is obvious over Adams in view of Lotter.

4. Key Claim Construction Positions

  • Petitioner argued for the "broadest reasonable construction" of the term "database" to mean simply "a collection of information stored for retrieval and use by a computer system."
  • This construction was central to Petitioner's arguments, as it allowed for mapping the functionally distinct data stores in the prior art—such as Lotter's "permissions database" and "activity log"—onto the claimed "control database" and "device database," respectively, even though the prior art did not use the exact same terminology as the ’694 patent.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4-7, 9, 10, and 12 of the ’694 patent as unpatentable.