PTAB

IPR2015-00761

Apple Inc v. YOzmot 33 Ltd

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1. Case Identification

2. Patent Overview

  • Title: Telephone Identification Calling Apparatus and Procedures
  • Brief Description: The ’359 patent discloses methods and systems for improving telephone calling procedures by playing customized audio messages upon receipt of an incoming call. The invention applies to cellular telephones equipped with an earphone speaker, a ring loudspeaker, and a "boosted loudspeaker" for playing the customized messages instead of a traditional ringtone.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, and 18-19 are obvious over Shen in view of Duffy and Applicant Admitted Prior Art (AAPA).

  • Prior Art Relied Upon: Shen (Patent 5,481,594), Duffy (Patent 5,303,288), and AAPA.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shen taught a caller identification system that plays a user-recorded, customized audio message through a loudspeaker to identify an incoming caller. Duffy disclosed a car-based cellular telephone with all the necessary hardware recited in the claims, including an earphone speaker in a handset, a ringer ("beeper transducer"), and an amplified "boosted" loudspeaker for hands-free use. AAPA, taken from the background of the ’359 patent itself, established that it was well-known for telephone exchanges to have memory cells assigned to each subscriber. The combination of these references allegedly taught every element of the challenged independent claims.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Shen's audible caller ID with Duffy's car-based cellular phone to enhance driver safety. Announcing the caller's identity audibly would eliminate the driver's need to look away from the road, a clear and compelling benefit. Petitioner asserted that as mobile phones became popular, subscribers came to expect the same features available on landlines, making the integration of Shen's known feature into a mobile context a logical and desirable improvement.
    • Expectation of Success: Success was predictable because Duffy’s phone already contained the necessary hardware components (speakers, controller, memory), and both Shen and Duffy utilized similar and well-understood telephone system components and principles.

Ground 2: Claims 5, 7-8, and 12 are obvious over Shen in view of Duffy, AAPA, and Sremac.

  • Prior Art Relied Upon: Shen (Patent 5,481,594), Duffy (Patent 5,303,288), AAPA, and Sremac (Patent 6,002,761).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the base combination of Shen and Duffy by adding the teachings of Sremac to address dependent claims related to the type of customized message. Sremac disclosed a user-programmable telephone that plays a recorded message to identify the receiving telephone itself, either instead of or between standard rings. This is distinct from Shen, which identifies the caller.
    • Motivation to Combine: As cellular phones became personal and ubiquitous, a common problem arose in environments with multiple users: determining which person's phone was ringing. A POSITA would be motivated to add Sremac's feature to the Shen/Duffy combination to solve this known problem. The resulting device would allow a user to audibly identify not only who is calling (from Shen's teachings) but also that the call is for their specific device (from Sremac's teachings), which would be particularly useful in a public or office setting.
    • Expectation of Success: The combination was predictable as it involved adding another known type of audio notification feature to a standard telephone system using conventional components.

Ground 3: Claim 20 is obvious over Shen in view of Duffy, AAPA, and Pawlish.

  • Prior Art Relied Upon: Shen (Patent 5,481,594), Duffy (Patent 5,303,288), AAPA, and Pawlish (Patent 5,276,916).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed dependent claim 20, which recites a "boosted loudspeaker" that comprises an additional circuit driving said earphone loudspeaker with greater power. Pawlish taught a foldable communication device where a single earphone speaker is driven by an amplifier with a variable gain setting. A lower gain was used for private, earpiece-style listening, while a higher gain provided increased audio output, allowing the same speaker to function for hands-free listening at a distance.
    • Motivation to Combine: Petitioner argued that a POSITA would be motivated to replace Duffy’s more complex two-speaker system (a separate earpiece and hands-free loudspeaker) with Pawlish's simpler, single-speaker solution. This modification would reduce the cost, size, and complexity of the device—a well-known goal in electronic design and a specific teaching of Duffy—while still providing both private and hands-free functionality. This made it an obvious and advantageous design choice.
    • Expectation of Success: Implementing a variable-gain amplifier to drive a single speaker for dual-mode operation was a well-understood technique in the art, ensuring a high expectation of success.

4. Key Claim Construction Positions

  • Petitioner argued for specific constructions of several means-plus-function terms based on the ’359 patent’s specification, asserting these constructions were critical to its obviousness analysis.
  • “means for performing a standard hook-up procedure” (claim 1): Petitioner proposed the function is performing the hook-up (i.e., answering the call), with the corresponding structure disclosed in the specification being a press-able button, a lift-able cover, or a lift-able earpiece.
  • “memory means” (claims 1, 18): Construed broadly to be memory coupled to either the telephone exchange or the telephone itself, consistent with the two distinct embodiments described in the specification.
  • “switch means for connecting a source of power...” (claim 18): Petitioner argued the function is connecting power successively to the boosted, ring, and earphone loudspeakers. The corresponding structure disclosed in the specification for this function is a transistor or its equivalents.
  • “means for controlling operation of said switch means” (claim 18): Proposed function is controlling the operation of the switch means, with the corresponding disclosed structure being a controller or microcircuit.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 5, 7-8, 12, and 18-20 of the ’359 patent as unpatentable.