United States v. EnvisionIT LLC

1. Case Identification

• Case #: IPR2017-00183
• Patent #: 7,693,938
• Filed: November 2, 2016
• Petitioner(s): Department of Justice (representing The United States)
• Patent Owner(s): EnvisionIT, LLC
• Challenged Claims: 1, 11-13, 42, 47, and 57

2. Patent Overview

• Title: Message Broadcasting Admission Control System and Method
• Brief Description: The ’938 patent describes systems and methods for controlling the admission of messages into a broadcast system. The technology involves receiving a broadcast request, validating the message based on parameters like the originator's identity and the target area, and then distributing the validated message to receiving devices.

3. Grounds for Unpatentability

Ground I: Claims 1, 11-13, 42, 47, and 57 are obvious over Gundlegård, 3GPP, Zimmers, and Sandhu.

• Prior Art Relied Upon: Gundlegård (a 2003 university paper on automotive telematics), 3GPP (a 2002 cell broadcast standard), Zimmers (Patent 6,816,878), and Sandhu (a 1994 IEEE article on access control).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gundlegård disclosed the fundamental message broadcasting system, including a Cell Broadcast Entity (CBE) as the request interface and a Cell Broadcast Center (CBC) as the admission control module that validates messages. The 3GPP standard was argued to supply the specific message formatting and protocol details, such as the use of a serial number and message ID, that Gundlegård’s system was designed to implement. Zimmers was asserted to teach a two-stage security system with user authentication and privileges, while Sandhu taught well-known access control and auditing functions.
  • Motivation to Combine: A POSITA would combine Gundlegård with the 3GPP standard because the standard provides the necessary protocol details to implement the system Gundlegård describes. A POSITA would incorporate the security and user privilege checks of Zimmers to solve the known problem of ensuring messages are sent by authorized users, and would add the auditing and access control features of Sandhu to facilitate commercial needs like billing and system security, which are contemplated by Gundlegård.
  • Expectation of Success: Petitioner contended that success was expected because the combination involved applying conventional security, auditing, and standardized protocols to a known broadcast messaging system to achieve predictable results.

Ground II: Claims 1, 11-13, 42, 47, and 57 are anticipated and/or rendered obvious by Mani I, Mani II, 3GPP, and Sandhu.

• Prior Art Relied Upon: Mani I (Application # 2002/0184346), Mani II (Application # 2002/0188725), 3GPP (a 2002 cell broadcast standard), and Sandhu (a 1994 IEEE article on access control).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Mani I taught the core emergency message notification system, including a graphical user interface for receiving messages and service logic for validating them based on the calling party’s authorization level. Mani II, incorporated by reference into Mani I, was argued to disclose using password and login ID information for validation. The 3GPP standard was relied upon to provide standardized message parameters, such as a Message ID, for broadcasting messages over the multiple networks (PLMNs) disclosed by Mani I. Sandhu was again used to supply the teachings for implementing user roles and authorization schemes.
  • Motivation to Combine: A POSITA would combine Mani I with the 3GPP standard to implement the described broadcast functionality across multiple cellular networks in a standardized way. A POSITA would have been motivated to implement the user role and authorization concepts of Sandhu to manage the different privilege levels taught by Mani I, thereby solving the common problem of maintaining system security and facilitating billing in a predictable manner.
  • Expectation of Success: Petitioner argued that success would be expected as it involved integrating a standard messaging protocol and known access control techniques into the emergency alert system described by Mani.

Ground III: Claims 1, 11-13, 42, 47, and 57 are anticipated by FCC Report No. 94-288.

• Prior Art Relied Upon: Federal Communications Commission Report No. 94-288 (“FCC Report”), published in 1995.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the FCC Report, which describes the modern Emergency Alert System (EAS), anticipated every limitation of the challenged claims. The report disclosed a complete message broadcasting system where EAS encoders serve as the "broadcast request interface" and EAS decoders function as the "broadcast admission control module." The EAS protocol includes codes for the message originator (ORG code) and target location (PSSCCC code), which Petitioner mapped directly to the claimed "originator identifier" and "broadcast target area." The FCC Report’s requirement that decoders validate these header codes before retransmitting a message was argued to constitute the claimed validation and generation of a validated message record.

4. Key Claim Construction Positions

• “broadcast”: Petitioner proposed construing this term as "to transmit data for purposes of wide dissemination over a communications network including, but not limited to, cellular carriers, digital private radio systems, private radio systems, internet, wireline telecommunications, satellite, and CATV systems." This construction was argued to be critical for establishing the broad scope of the claims and was drawn directly from the patent’s specification, which lists a wide array of public and private networks.

5. Key Technical Contentions (Beyond Claim Construction)

• Defective Priority Claim: A central contention of the petition was that the ’938 patent was not entitled to its claimed priority date of February 13, 2004. Petitioner argued the priority claim was defective under 35 U.S.C. §120 because it failed to state the specific relationship (e.g., continuation, divisional, or continuation-in-part) to a prior-filed application in the chain. As a result, Petitioner contended the earliest effective filing date for the challenged claims was November 23, 2005, which rendered several key prior art references, including Gundlegård and Mani, available under §102.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 11-13, 42, 47, and 57 of the ’938 patent as unpatentable.