PTAB

IPR2015-00201

Google Inc v. MobileStar Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Integrated Messaging Center for Telecommunications Equipment
  • Brief Description: The ’973 patent describes an "integrated messaging center" for a mobile device. The system consolidates notifications for different types of messages (e.g., email, fax, voicemail) stored on a network server into a single, selectable list on the user's device, purportedly saving device memory. The claims require that these notification messages are received from an interface with independent connections with different bandwidths for the different message types.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 8-13 and 33 are anticipated by Keyworth.

  • Prior Art Relied Upon: Keyworth (Patent 5,579,472).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Keyworth disclosed every limitation of the challenged claims. Keyworth taught a "Group-Oriented Communications User Interface" that receives various message types (email, voicemail, fax, pager) and displays them in a unified, selectable list. The system received messages via both a telephone wireline connection and a wireless data connection through a single hardware interface. Petitioner contended that the disclosure of receiving messages over both a wireless pager connection and a standard telephone line inherently taught the use of connections with different bandwidths, thus anticipating the claims.

Ground 2: Obviousness over Boaz and Krebs - Claims 8-13 and 33 are obvious over Boaz in view of Krebs.

  • Prior Art Relied Upon: Boaz (Patent 5,333,266) and Krebs (Patent 5,448,759).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Boaz taught a unified messaging system that displayed notifications, or "pointers," for various message types (text, voice, fax) in a single in-basket. The actual messages remained stored on a server, addressing the same memory-saving objective as the ’973 patent. However, Boaz did not explicitly teach managing these messages based on varying bandwidths. Petitioner argued Krebs supplied this missing element by disclosing a method for efficient bandwidth utilization. Krebs taught sending low-bandwidth notifications for pending high-bandwidth messages (e.g., multi-page faxes), allowing a user to decide whether to retrieve the full message over an appropriate, higher-bandwidth communication resource.
    • Motivation to Combine: A POSITA would combine Boaz and Krebs to improve the efficiency of Boaz's system. Boaz itself taught using pointers to handle "foreign" message types, which would have suggested incorporating a system like Krebs that explicitly manages messages of different bandwidth types. Further, Krebs taught that its notifications could be displayed in "any alternative format," motivating the use of a more robust graphical user interface like the one disclosed in Boaz. The combination was presented as a predictable integration of known elements to yield the claimed invention.
    • Expectation of Success: Combining Krebs's bandwidth management with Boaz's unified interface would have been straightforward, as both systems were directed to more efficiently notifying a user of different types of pending messages stored on a network.

Ground 3: Obviousness over Greco and Krebs - Claims 8-13 and 33 are obvious over Greco in view of Krebs.

  • Prior Art Relied Upon: Greco (Patent 5,568,540) and Krebs (Patent 5,448,759).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Greco disclosed a graphical user interface that merged voicemail, email, and fax messages into a single selectable list, teaching nearly all claim limitations. Petitioner highlighted that during the original prosecution of the ’973 patent, the Examiner concluded that Greco disclosed all limitations except for receiving notifications from an "interface with independent connections with different bandwidths." As in Ground 2, Petitioner asserted that Krebs supplied this missing feature by teaching a system that conserves network bandwidth by sending low-bandwidth notifications for pending high-bandwidth messages.
    • Motivation to Combine: A POSITA would combine Greco's superior user interface for unified messaging with Krebs's method for efficient bandwidth management. Krebs's teaching that its notifications could be displayed in "any alternative format" would motivate its integration with a sophisticated interface like Greco's. Petitioner noted that the Examiner's own reasoning during prosecution (suggesting amendments to add the "different bandwidths" limitation to overcome the prior art) supported the view that combining a unified messaging system with a system for managing bandwidth was an obvious design choice.
    • Expectation of Success: The combination was a predictable merging of a user interface for displaying messages with a known method for efficiently transmitting them, resulting in a system with predictable advantages.

4. Key Claim Construction Positions

  • "pending messages": Petitioner argued, based on the Patent Owner's infringement contentions in co-pending litigation, that this term should be construed broadly as "messages that are downloaded or awaiting download." This construction was important because it allowed prior art that notifies a user of messages already received on a device (like Keyworth) to meet the claim limitation.
  • "interface with independent connections with different bandwidths": Based on the Patent Owner's litigation positions, Petitioner argued this phrase should be construed as "a device having multiple communication connections of different bandwidths" where notifications are displayed. This construction broadens the term "interface" from a specific network component to the user device itself, making it easier to meet with prior art that describes devices capable of both Wi-Fi and cellular communication, for example.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 8-13 and 33 of Patent 6,333,973 as unpatentable.