PTAB

IPR2015-01227

Cox Communications Inc v. AT&T Intellectual Property I LP

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Profile Management System Including User Interface for Accessing and Maintaining Profile Data of User Subscribed Telephony Services
  • Brief Description: The ’714 patent describes a method and system for managing telephony subscriber profile data. The system provides a user interface on a client computer, allowing a subscriber to remotely view and update their service profile data stored on a communications network database.

3. Grounds for Unpatentability

Ground 1: Unpatentability Over Blumhardt and Combinations

  • Claims: 1-5, 7, and 13-15 are anticipated by Blumhardt; claims 8-9 and 18-19 are obvious over Blumhardt in view of Boulware; claim 10 is obvious over Blumhardt in view of Bayless; and claims 14-15 and 21-22 are obvious over Blumhardt in view of Beck.
    • Prior Art Relied Upon: Blumhardt (Patent 5,629,978), Boulware (Patent 5,757,899), Bayless (Patent 5,754,636), and Beck (Patent 5,883,946).
    • Core Argument for this Ground:
      • Prior Art Mapping: Petitioner argued that Blumhardt alone discloses every element of the independent claims, describing a system for managing subscriber profile data where a client sends a "profile request message," retrieves data from a Public Switched Telephone Network (PSTN), receives a "profile result message," and sends an "update request message." For dependent claims, Petitioner asserted that Boulware teaches using "privileged caller codes" (access codes) for call screening, Bayless teaches a "call logging feature" for reporting on call activity, and Beck teaches a specific profile management topology including an intermediate network with a "SPACE" service management system.
      • Motivation to Combine (for §103 grounds): A POSITA would combine these references to enhance the functionality of Blumhardt’s base system. Incorporating Boulware’s call screening, Bayless's call logging, or Beck's management topology were presented as predictable ways to add desirable, known features to improve the overall service offering.
      • Expectation of Success (for §103 grounds): Success was expected because the combinations involved incorporating well-understood telecommunication features and system architectures to achieve their known functions.

Ground 2: Unpatentability Over Buhrmann and Combinations

  • Claims: 1-7, 12-17, and 20 are anticipated by Buhrmann; claims 8-9 and 18-19 are obvious over Buhrmann in view of Boulware; claim 10 is obvious over Buhrmann in view of Bayless; and claims 14-15 and 21-22 are obvious over Buhrmann in view of Beck.
    • Prior Art Relied Upon: Buhrmann (Patent 5,903,845), Boulware (Patent 5,757,899), Bayless (Patent 5,754,636), and Beck (Patent 5,883,946).
    • Core Argument for this Ground:
      • Prior Art Mapping: Petitioner contended that Buhrmann discloses a "personal information manager (PIM)" that allows a subscriber to generate and transmit profile update data to a database in a telecommunications system. This PIM, accessed via a user interface, performs the core steps of receiving requests, retrieving data from a service control point (SCP), and forwarding updates. The arguments for combining with Boulware, Bayless, and Beck to meet limitations related to access codes, call logging, and the SPACE system mirrored the logic presented for the Blumhardt combinations.
      • Motivation to Combine (for §103 grounds): Similar to the motivation for the Blumhardt combinations, Petitioner argued a POSITA would be motivated to add the known features from Boulware, Bayless, and Beck to Buhrmann's PIM-based system to predictably improve its capabilities and provide a more comprehensive service.
      • Expectation of Success (for §103 grounds): Petitioner argued there was a clear expectation of success in combining these known elements for their intended purposes.
  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges based on An (Patent 6,031,904) and Elliott (Patent 6,335,927) as primary references, combined with the same secondary references (Boulware, Bayless, Beck) and relying on similar theories of predictable design modification.

4. Key Technical Contentions (Beyond Claim Construction)

  • Inability to "Swear Behind" Prior Art: A central contention of the petition was that the Patent Owner would be unable to antedate the cited prior art references. Petitioner argued that evidence submitted during prosecution failed to demonstrate the required diligence in reducing the invention to practice for the entire "critical period."
    • Petitioner highlighted that the Patent Owner's evidence of diligence consisted of only three meetings over several months, which is insufficient to establish continuous activity.
    • Furthermore, the required declarations demonstrating diligence were provided by only one of the seven named inventors, failing to meet the requirement that such a showing be made for each inventor.
    • Petitioner also noted that internal memoranda from the relevant period described the required PC interface as an "Open Issue" with "many unanswered questions," indicating the invention had not been reduced to practice.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-22 of the ’714 patent as unpatentable.