PTAB

IPR2015-01986

LG Electronics Inc v. Core Wireless Licensing SARL

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1. Case Identification

2. Patent Overview

  • Title: Filtering of Electronic Information To Be Transferred to a Terminal
  • Brief Description: The ’049 patent discloses methods and apparatus for filtering electronic messages in a cellular network. The system sends a "filtering parameter" containing summary information about a message to a terminal first, allowing the terminal’s processor to automatically decide whether to receive the full message content based on pre-set user preferences.

3. Grounds for Unpatentability

Ground 1: Obviousness over MMS Specs and Nokia Proposal - Claims 11-14 and 17 are obvious over the MMS Specifications in view of the Nokia Proposal.

  • Prior Art Relied Upon: MMS Specifications (a collection of 3GPP technical standards for Multimedia Messaging Service, including MMS-1 v0.1.0 and v0.2.0) and Nokia Proposal (a June 1999 presentation to a 3GPP working group).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued the MMS Specifications disclose all elements of the independent claims. Specifically, they teach a mobile terminal (MM-Terminator) with a radio part that receives a "notification" (the claimed filtering parameter) containing a description (e.g., content, size, type) of an incoming multimedia message (MM). The terminal can then allow (initiate downloading) or prevent the receipt of the full MM based on this notification. Petitioner asserted that the MMS Specifications’ teaching of using a "user profile" with pre-set restrictions to perform this filtering satisfies the "automatically" limitation of the claims. The Nokia Proposal was cited as further disclosing "automatic" message screening based on user-configurable options.
    • Motivation to Combine: A POSITA would combine these references because both were part of the same public, collaborative 3GPP standards-setting effort for MMS. The Nokia Proposal, which was presented by the ’049 patent's named inventor, explicitly stated its goal was to provide a technical basis for the MMS platform. A POSITA would have viewed it as a natural complement to the MMS Specifications to implement and automate the message retrieval functions described therein.
    • Expectation of Success: Given that the references address the same technical problem within the same standards body, a POSITA would have had a high expectation of success in combining their features to achieve the predictable result of automated message filtering.

Ground 2: Obviousness over MMS/Nokia/Sony/SMS - Claims 28-31 are obvious over the MMS Specifications in view of the Nokia Proposal, the Sony Proposal, and the SMS Realization.

  • Prior Art Relied Upon: MMS Specifications, Nokia Proposal, Sony Proposal (a November 1999 presentation to a 3GPP working group), and SMS Realization (a 3GPP technical standard for SMS).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the previous combination to meet the limitations of claim 28, which requires a multimedia message with specific fields: "message class," "subject," "to whom," and "content." Petitioner argued the MMS Specifications disclose the "message class" (as "type") and "content" fields. For the "subject" and "to whom" fields, Petitioner pointed to the SMS Realization standard, which explicitly defined these fields. The Sony Proposal was cited for its disclosure of message classifications based on "topic" (e.g., "corporate news"), further teaching the "message class" concept.
    • Motivation to Combine: A POSITA would combine these references as they all relate to the 3GPP’s development of mobile messaging standards. Petitioner argued that because the MMS standard was explicitly built upon the "very successful" SMS standard, incorporating message header fields from the SMS Realization would be an obvious design choice to ensure functionality and interoperability. The Sony Proposal, like the Nokia Proposal, was part of the same collaborative effort to define MMS features and would be consulted to implement robust message classification.
    • Expectation of Success: The combination involved integrating known features from closely related and often interdependent technical standards and proposals, ensuring a high expectation of success in creating a multimedia message format with the claimed fields.

Ground 3: Obviousness over MMS/Nokia and Shiroshita - Claims 11-14 and 17 are obvious over the MMS Specifications and the Nokia Proposal in view of Shiroshita.

  • Prior Art Relied Upon: MMS Specifications, Nokia Proposal, and Shiroshita (Japanese Patent Application No. 1999-110401).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted this combination as an alternative to Ground 1. While arguing a processor and user interface were inherent in the MMS Specifications, Petitioner contended that Shiroshita explicitly discloses these elements. Shiroshita teaches a filtering system where a terminal receives a "distribution announcement" (filtering parameter) and uses a processor ("match evaluating means") and pre-input user parameters to decide whether to receive the full data distribution. This explicit disclosure was used to bolster the argument that these elements were well-known and their inclusion in an MMS system would have been obvious.
    • Motivation to Combine: A POSITA would combine Shiroshita with the MMS-related art because they share the common subject matter of filtering electronic information sent to a terminal based on summary data. Shiroshita’s explicit teachings on using a processor and user-defined filtering rules would be seen as a straightforward, known technique to implement the more conceptual filtering requirements outlined in the MMS Specifications.
    • Expectation of Success: Implementing the well-understood processing and filtering logic from Shiroshita within the MMS framework described by the other references would have been a predictable and successful endeavor for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of the MMS Specifications, Sony Proposal, and Shiroshita for claim 15, and a combination of all five primary references for claims 28-31, relying on similar art mappings and motivations to combine.

4. Key Claim Construction Positions

  • "automatically": Petitioner proposed construing this term as "[allow or prevent the receiving] based on settings input by the user in advance of receiving the filtering parameter." This construction was argued to be critical for demonstrating that the user-profile-based filtering described in the MMS Specifications met the claim limitation, as it encompasses decisions made without real-time user interaction.
  • "cellular telecommunication connection": Petitioner proposed this be construed as a "transmission link that allows communication of electronic information between a network and a cellular phone." This broad construction was intended to encompass both "connection-based" and "connectionless" (e.g., SMS) methods, which Petitioner argued were both disclosed in the prior art and relevant to different dependent claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 11-15, 17, and 28-31 as unpatentable.