PTAB

IPR2017-00223

Apple Inc. v. Uniloc USA, Inc.

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1. Case Identification

  • Case #: IPR2017-00223
  • Patent #: 8,724,622
  • Filed: November 14, 2016
  • Petitioner(s): Apple Inc.
  • Patent Owner(s): Uniloc Luxembourg S.A.
  • Challenged Claims: 3-4, 6-8, 10-19, 21-23, and 38

2. Patent Overview

  • Title: Instant Voice Messaging Over a Packet-Switched Network
  • Brief Description: The ’622 patent discloses methods, systems, and programs for instant voice messaging (IVM) over a packet-switched network. The system involves client devices communicating with a central messaging system that manages connection information, message scheduling, and store-and-forward delivery if a recipient is offline.

3. Grounds for Unpatentability

Ground 1: Claims 3-4, 6-8, 11-13, 18, and 21-23 are obvious over Vuori in view of SMSS.

  • Prior Art Relied Upon: Vuori (Application # 2002/0146097) and SMSS (a 3G technical specification for Short Message Service).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Vuori teaches the core system of the ’622 patent, including a Short Voice Message (SVM) service over a packet-based network (GPRS) with client terminals and a central service center. Vuori’s system determines recipient availability via a presence service, sends messages to available users, and temporarily stores messages for unavailable users. Petitioner contended that while Vuori teaches the high-level system, SMSS provides the specific, conventional protocol details for the message structure. SMSS explicitly defines message fields corresponding to the claimed "object field" (TP-user-data field), "action field" (TP-Message-Type-Indicator), "identifier field" (TP-Message-Number), "source field" (TP-Originating-Address), and "destination field" (TP-Destination-Address).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Vuori and SMSS because Vuori expressly states its system may utilize the protocol layer of an existing SMS point-to-point service. SMSS was the prevailing standard protocol at the time. Therefore, a POSITA implementing Vuori’s system would have naturally looked to the SMSS standard to provide the detailed, low-level message field structures, viewing it as a routine implementation of Vuori’s suggestion.
    • Expectation of Success: A POSITA would have had a high expectation of success, as this combination involves integrating a system (Vuori) with the specific, well-defined industry standard protocol (SMSS) that it was designed to leverage.

Ground 2: Claims 10 and 14-17 are obvious over Vuori, SMSS, and Holtzberg.

  • Prior Art Relied Upon: Vuori (Application # 2002/0146097), SMSS (a 3G technical specification), and Holtzberg (Patent 6,625,261).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the combination of Vuori and SMSS from Ground 1. Petitioner introduced Holtzberg to supply the "message database" limitation recited in claims 10 and 14-17, which Petitioner argued was not explicitly taught by Vuori/SMSS. Holtzberg discloses a voicemail system that stores messages in a voicemail database (DB 72), where each message is associated with a unique message ID and stored as a database record. This directly maps to the claim limitations requiring a database for storing instant voice messages and representing them as records with unique identifiers.
    • Motivation to Combine: Petitioner asserted that while Vuori teaches a "means for storing" messages, a POSITA seeking to implement this functionality would have found it obvious to use a conventional database, a well-known technique for storing messages. Holtzberg provides a clear example of such a database in the analogous field of voicemail. A POSITA would have been motivated to enhance Vuori's system with Holtzberg’s more detailed database structure to improve message management and retrieval, a predictable design choice.
    • Expectation of Success: The combination was argued to be predictable, as it amounts to using a known technique (a database, per Holtzberg) to implement a basic function (storage, per Vuori) in a known system.

Ground 3: Claim 19 is obvious over Vuori, SMSS, and Väänänen.

  • Prior Art Relied Upon: Vuori (Application # 2002/0146097), SMSS (a 3G technical specification), and Väänänen (Patent 7,218,919).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground also uses Vuori and SMSS as the base system. Petitioner introduced Väänänen to teach the "encryption/decryption system" recited in claim 19. Väänänen describes a system for packet-switched voicemail that explicitly discloses the use of "cryptography methods" for the data file and/or packet stream. Väänänen further teaches that receiving a message may involve "employing decoding and/or decryption methods."
    • Motivation to Combine: A POSITA would have been motivated to combine Väänänen's teachings with the Vuori/SMSS system to provide enhanced data security, a common and desirable feature in communication systems. Since Vuori’s system transmits voice messages over a network, adding encryption as taught by Väänänen would have been an obvious improvement to protect message content.
    • Expectation of Success: Success would be expected because adding encryption is a known method for improving security in messaging systems. Väänänen's teachings applied to the comparable system of Vuori/SMSS would yield predictable results.

  • Additional Grounds: Petitioner also asserted that claim 38 is obvious over Vuori alone, arguing Vuori single-handedly teaches a complete system with a client device, network interface, and an installed voice messaging application.

4. Key Claim Construction Positions

  • "object field" (Claim 1): Petitioner proposed this term means "a field containing a block of data carried in an instant voice message." This construction was based on the specification's description that the object field's content is a block of data, such as a digitized voice message.
  • "action field" (Claim 1): Petitioner proposed this means "a message field identifying a permitted action." This was based on the specification listing actions like "connect" and "post message" as content for this field.
  • "identifier field" (Claim 1): Petitioner proposed this means "a message field including a unique identifier for the message." This was derived from the specification stating the ID field represents a unique identifier for the message object.
  • "display[ing]... messages" (Claim 16): Petitioner proposed this means "displaying the content or identifying information of at least one of the plurality of instant voice messages." This broader construction was argued to be necessary because the patent describes displaying a "listing" of messages, which implies displaying identifying information (sender, time) and not just the full content.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that institution is proper and discretionary denial under §325(d) would be inappropriate. The petition emphasized that the primary prior art reference, Vuori, was never cited or considered by the Examiner during the original prosecution of the ’622 patent.
  • The petition also distinguished its Vuori-based grounds from a co-pending petition based on a different primary reference (Dahod), arguing that the prior art does not overlap and the grounds are meaningfully distinct.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 3-4, 6-8, 10-19, 21-23, and 38 of the ’622 patent as unpatentable under 35 U.S.C. §103.