Apple Inc v. MASA LLC

1. Case Identification

• Case #: IPR2016-00748
• Patent #: 8,519,834
• Filed: March 21, 2016
• Petitioner(s): Apple Inc.
• Patent Owner(s): Masa LLC
• Challenged Claims: 6-14

2. Patent Overview

• Title: WRIST WOUND VIBRATING DEVICE
• Brief Description: The ’834 patent describes a wrist-worn vibrating device designed to discretely alert a user to an electronic signal received from a cell phone. The device includes an electronic receiver, a vibrating unit, a memory unit, a selector option switch, and an electronic transmitter to allow the user to select and send pre-programmed text messages back to the cell phone.

3. Grounds for Unpatentability

Ground 1: Anticipation by Acharya - Claims 6-14 are anticipated under 35 U.S.C. §102(b) by Acharya.

• Prior Art Relied Upon: Acharya (Patent 7,840,681).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Acharya, which describes a vibrating wristwatch for integrating wearable devices within a SIP infrastructure, discloses every element of the challenged claims. Acharya’s device includes a vibrating unit actuated in response to signals like incoming calls, an electronic receiver (Bluetooth interface), a memory unit (RAM and flash memory), a selector option switch (buttons and watch stem switches), and an electronic transmitter (Bluetooth interface). Petitioner contended Acharya teaches selecting pre-defined replies and recipient phone numbers from memory and transmitting them. For dependent claims, Acharya was asserted to teach a display panel, receiving signals from a cell phone, and, through its incorporation by reference of the Narayanaswami article, a strap with a buckle.

Ground 2: Obviousness over Sweeney and Acharya - Claims 6-14 are obvious over Sweeney in view of Acharya.

• Prior Art Relied Upon: Sweeney (Patent 7,945,292) and Acharya (Patent 7,840,681).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Sweeney, which was cited during prosecution, discloses a base vibrating device (a wireless ringer) that can be actuated by an electronic signal. During prosecution, the applicant overcame Sweeney by adding limitations for a memory unit, a selector switch, and a transmitter configured to send a selected pre-programmed message and recipient number to a cell phone. Petitioner argued that Acharya, which was not considered by the Examiner, teaches precisely these distinguishing features. Acharya discloses a memory for holding incoming invitations, a selector switch for choosing from pre-programmed replies and phone numbers, and a transmitter for sending this information.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Acharya’s user interface and response features with Sweeney’s wearable alert device. This combination would predictably enhance the utility of Sweeney’s device by allowing a user to not only receive a discrete notification but also to send a quick, pre-programmed response, thereby solving the known problem of conveniently managing communications without physically handling a larger wireless device.
  • Expectation of Success: The combination involved applying known and common mobile device functionalities, as taught by Acharya, to the similar wearable device of Sweeney. Both references address the same technical field, and integrating Acharya's features would have been a straightforward application of known techniques to achieve a predictable improvement.

Ground 3: Obviousness over Acharya and Lee - Claims 9 and 13 are obvious over Acharya in view of Lee.

• Prior Art Relied Upon: Acharya (Patent 7,840,681) and Lee (Patent 7,796,548).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the assertion that Acharya discloses the base device of claims 6 and 10. The argument focused on the additional limitation in dependent claims 9 and 13 requiring the receipt of a "second electronic signal" that "comprises a date and time in real-time." While Acharya discloses receiving various signals, Petitioner argued Lee explicitly teaches this missing element. Lee describes a method for time synchronization in a mobile station using Simple Network Time Protocol (SNTP) to automatically update the device's internal clock with the correct real-time date and time, particularly when moving between time zones.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Lee’s automatic time synchronization into Acharya’s wearable device for several reasons. It would improve user convenience by eliminating the need for manual time updates and would enhance existing features in Acharya, such as its ability to create time-stamped session logs, by ensuring the logged time is accurate and synchronized with servers.
  • Expectation of Success: Lee suggests that its method uses conventionally used call procedures, indicating no significant technical barrier to implementation. Therefore, a POSITA would have had a reasonable expectation of success in combining the teachings.

• Additional Grounds: Petitioner asserted alternative obviousness challenges, arguing claims 9, 10, 13, and 14 are obvious over Acharya alone (Ground 2), and claims 10 and 14 are obvious over Acharya in view of Narayanaswami (Ground 4) to further support the teaching of a strap and buckle.

4. Key Claim Construction Positions

• Selector Option Switch: Petitioner argued this term should be construed to exclude touch screen input devices. The ’834 patent specification explicitly describes a touch screen as a substitute for the "selector option switch," stating the switch "may be substituted with touch screen selector...options." Petitioner contended that by disclosing but not claiming the touch screen embodiment as a type of selector switch, the patentee dedicated that subject matter to the public.

5. Key Technical Contentions (Beyond Claim Construction)

• Printed Matter Doctrine: For claims 9 and 13, which recite various types of signal content (e.g., calendar appointments, weather, stock tickers), Petitioner argued this content constitutes non-functional printed matter. The argument was that the claimed invention's structure and function are unrelated to the specific informational content of the signals it receives. As such, Petitioner contended that the novelty of the signal content itself cannot impart patentability over prior art like Acharya, which already teaches receiving signals with varied information formats (text, audio, video).

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 6-14 of Patent 8,519,834 as unpatentable under 35 U.S.C. §102 and §103.