PTAB

IPR2015-00201

Google Inc. v. MobileStar Technologies LLC

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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 telecommunications device, such as a mobile phone. The system consolidates notifications for different types of pending messages (e.g., email, fax, voicemail) into a single, graphically displayed, searchable list for the user, purportedly improving on prior art systems that wasted device memory by storing full messages. The key feature involves retrieving messages as needed from a network services provider, which communicates with the device via an interface having connections with different bandwidths for different message types.

3. Grounds for Unpatentability

Ground 1: 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 discloses a “Group-Oriented Communications User Interface” that anticipates every limitation of the challenged claims. Keyworth’s system receives messages of various types (e-mail, voicemail, facsimile) from both a telephone wireline and a wireless data connection and displays them in a single, selectable "New Messages" list. This list includes the message type, sender, and other details, allowing a user to select an entry to view or play the message. Petitioner contended that the limitation requiring an interface with "independent connections with different bandwidths" is inherently disclosed. A person of ordinary skill in the art (POSA) would have understood that a telephone line connection and a wireless pager connection, as disclosed in Keyworth, necessarily operate at different bandwidths.

Ground 2: 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 teaches an "Integrated Messaging System" that integrates messages (text, voice, facsimile) from different mail systems and displays them in a single list. To conserve resources, Boaz’s server stores the full message and sends a low-data "pointer" or "header" to the user's device, which contains information like the sender and message type. While Boaz provides the core unified inbox functionality, it did not explicitly teach using connections of different bandwidths. Krebs was argued to supply this missing element, as it discloses a "Method for Efficient Bandwidth Utilization" by classifying messages into different bandwidth types (e.g., short text vs. long faxes) and sending low-bandwidth notifications for high-bandwidth messages to conserve network resources.
    • Motivation to Combine: A POSITA would combine Boaz and Krebs to improve the efficiency of Boaz’s system. Boaz itself taught the efficiency of using pointers instead of full messages. Krebs explicitly taught that its low-bandwidth notifications could be "displayed in any alternative format," which would have motivated a POSITA to implement them within a robust graphical user interface like the one disclosed in Boaz to create a more efficient and user-friendly system.
    • Expectation of Success: The combination was presented as a predictable uniting of old elements. Both references were directed to efficiently notifying a user of different message types. Integrating Krebs’s bandwidth management into Boaz’s existing server and UI architecture would have been a straightforward implementation with a high expectation of success, as it simply applied a known efficiency technique (from Krebs) to a known system (Boaz).

Ground 3: 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: This ground presented an alternative to Ground 2. Greco was relied upon by the Examiner during the original prosecution and was found to teach nearly all claim limitations. Greco discloses a graphical user interface for a unified inbox that displays voicemail, e-mail, and fax messages in a single selectable list with distinctive icons for each message type. The Examiner concluded Greco disclosed all limitations except for receiving messages from an "interface with independent connections with different bandwidths." Petitioner argued, as in Ground 2, that Krebs supplies this missing teaching with its method of handling messages of varying bandwidth types.
    • Motivation to Combine: The motivation to combine Greco and Krebs was similar to the motivation for combining Boaz and Krebs. A POSITA would have been motivated to incorporate Krebs’s bandwidth-saving techniques into Greco’s "superior user interface" to make it more efficient, especially for wireless applications. Krebs’s disclosure that its notifications could be displayed in any format would have naturally led a POSITA to the well-organized graphical list taught by Greco.
    • Expectation of Success: The combination would have yielded predictable results. The petition highlighted that the Examiner had previously found it obvious to combine Greco with another reference (Pepe) to address the transmission of different message types. Applying Krebs, which is specifically directed to bandwidth management for different message types, to Greco’s system would have been an equally obvious and predictable design choice.

4. Key Claim Construction Positions

  • "Pending messages": Based on the Patent Owner's infringement contentions in related litigation, Petitioner argued the Broadest Reasonable Interpretation (BRI) for this term is "messages that are downloaded or awaiting download." This construction is significant because it covers not only messages stored on a network server but also those already received on the user's device, thereby broadening the claim scope.
  • "The notification messages are received from an interface with independent connections with different bandwidths...": This phrase was added during prosecution to overcome prior art. Based on the Patent Owner's litigation positions, Petitioner asserted the BRI for this limitation is "the notification messages are displayed on a device having multiple communication connections of different bandwidths." This construction focuses on the capabilities of the end-user device rather than the specific architecture of the network interface from which messages are received.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 8-13 and 33 of the ’973 patent as unpatentable.