PTAB

IPR2015-00935

Apple Inc v. Enterprise Systems Technologies SARL

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: System for Providing Message Services Through a Private Network and Mobile Station
  • Brief Description: The ’201 patent describes a mobile messaging system where messages are sent to a user based on a user identifier (e.g., a screen name) rather than an identifier for the mobile station itself (e.g., a phone number). This allows a sender to message a recipient without knowing the specific device identifier.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carey and Nachman - Claims 1, 5, 7-11, and 13 are obvious over Carey, with Claim 13 also obvious over Carey in view of Nachman.

  • Prior Art Relied Upon: Carey (Patent 6,714,793) and Nachman (Application # 2001/0027474).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Carey, which discloses America Online’s instant messaging (IM) system integrated with mobile phones, teaches the core limitations of the challenged claims. Carey’s “instant message name” was asserted to be the claimed “user identifier,” and its corresponding “destination address” (e.g., phone number) was mapped to the “mobile station identifier.” The AOL “instant message routing system,” comprising a server and database, was presented as the claimed “private network.” For dependent claims requiring authentication, Petitioner pointed to Carey’s disclosure of a user sign-on process using a screen name and password.
    • Motivation to Combine (for §103 grounds): For claim 13, which requires a “send message” command, Petitioner contended it would have been obvious to supplement Carey with the teachings of Nachman. Nachman explicitly discloses an IM system where a user clicks a “SEND MESSAGE” button to transmit a composed message. A POSITA would combine Carey with this well-known feature from Nachman to improve usability and provide predictable functionality, as users of messaging applications expect to affirmatively send a message after composition.
    • Expectation of Success (for §103 grounds): Petitioner asserted that adding a standard “send” command to an existing messaging system was a routine and predictable modification with a high expectation of success.

Ground 2: Obviousness over RDSS and Jacobs - Claims 5 and 7-10 are obvious over RDSS in view of Jacobs.

  • Prior Art Relied Upon: RDSS ("Understanding Radio Determination Satellite Service," a 1989 publication) and Jacobs ("The Application of a Novel Two-Way Mobile Satellite Communications..." a 1991 article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the RDSS publication, describing the Geostar two-way satellite messaging system, discloses the base system of claim 1. In this system, the Geostar Central control segment and its associated satellites constitute the “private network.” The dependent claims (5, 7-10) add limitations requiring the system to handle authentication information. Jacobs, which describes the competing Qualcomm OmniTRACS satellite system, was cited for its explicit teaching of user authentication via an access code including an account number and password, which are validated before messages are accepted.
    • Motivation to Combine (for §103 grounds): A POSITA would combine these references because they described similar, competing satellite messaging systems targeted at the same industry (transportation). Petitioner argued a POSITA would naturally look to a competitor's system (Jacobs) to implement a known, beneficial feature like user authentication into the Geostar system (RDSS). This would enhance security, a key design consideration, and ensure access was limited to paying subscribers.
    • Expectation of Success (for §103 grounds): Implementing a known password-based login from one satellite messaging system onto a similar competing system was argued to be a straightforward task with predictable results.

Ground 3: Obviousness over RDSS and Laurance - Claims 5 and 7-10 are obvious over RDSS in view of Laurance.

  • Prior Art Relied Upon: RDSS (1989 publication) and Laurance (European Application # 0 203 853).
  • Core Argument for this Ground:
    • Prior Art Mapping: As in the previous ground, RDSS was argued to teach the base messaging system. Laurance was cited to supply the authentication limitations of claims 5 and 7-10. Laurance explicitly discloses methods for improving the security of the Geostar satellite system—the very same system described in RDSS—by authenticating users with a PIN or other access code.
    • Motivation to Combine (for §103 grounds): Petitioner argued the motivation to combine was exceptionally strong because Laurance is expressly directed to adding security and authentication features to the specific Geostar system disclosed in RDSS. A POSITA seeking to enhance the security of the RDSS system would have been directly motivated to apply the compatible and purpose-built authentication teachings of Laurance.
    • Expectation of Success (for §103 grounds): Because Laurance’s authentication methods were designed for implementation within the Geostar system architecture, a POSITA would have had a very high expectation of success in combining the teachings.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Carey or RDSS in view of only the general knowledge of a POSITA, relying on arguments that features like processors, memory, and basic user lists were inherent or obvious additions.

4. Key Claim Construction Positions

  • “private network”: Petitioner proposed this term be construed as “a network or portion of a network that communicates with and that can be managed apart from a public network.” This construction was argued to be critical for mapping prior art systems like AOL’s IM infrastructure or the Geostar satellite system, which, while potentially interfacing with public networks, contain a core, privately managed infrastructure for routing messages.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 7-11, and 13 of the ’201 patent as unpatentable.