PTAB

IPR2017-00223

Apple Inc v. Uniloc USA Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Instant Voice Messaging Over a Packet-Switched Network
  • Brief Description: The ’622 patent discloses systems and methods for instant voice messaging over a packet-switched network. The system includes client devices and a communication platform that maintains connection information (presence) for users, enabling the storage and forwarding of voice messages if a recipient is unavailable.

3. Grounds for Unpatentability

Ground 1: Obviousness over Vuori and SMSS - 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 (Universal Mobile Telecommunications System; Technical realization of the Short Message Service, 3G TS 23.040 version 3.5.0 Release 1999).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Vuori taught the core architecture of the ’622 patent, including a short voice message (SVM) system operating over a packet-based infrastructure (GPRS) with multiple client terminals. Vuori’s system included a service center that managed presence information, checked recipient availability, and provided store-and-forward functionality for unavailable recipients. While Vuori taught the overall system, Petitioner argued that SMSS, the prevailing technical standard for SMS at the time, supplied the specific message field structures required by the claims. For example, SMSS’s "TP-user-data field" taught the claimed "object field including a digitized audio file," its "TP-Message-Type-Indicator" taught the "action field," and its "TP-Originating-Address" and "TP-Destination-Address" taught the "source field" and "destination field," respectively.
    • Motivation to Combine: A POSITA would combine the references because Vuori explicitly stated its system could utilize the protocol layer of an existing SMS service. To implement this, a POSITA would have naturally consulted the contemporaneous and well-known SMSS specification to understand and apply the standard message fields necessary for interoperability and functionality. This combination represented the use of a known technique (an SMS protocol) to improve a similar system (Vuori's SVM service).
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved implementing a standardized, well-documented protocol (SMSS) into a system (Vuori) expressly designed to leverage such a protocol.

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

  • Prior Art Relied Upon: Vuori (Application # 2002/0146097), SMSS, and Holtzberg (Patent 6,625,261).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that while the combination of Vuori and SMSS taught most claim elements, it lacked an explicit teaching of a "message database" for storing messages as records with unique identifiers. Holtzberg, which is directed to bookmarking voicemail messages, remedied this deficiency by disclosing a voicemail database where each message is stored as a record associated with a unique message ID.
    • Motivation to Combine: A POSITA would combine Holtzberg with the Vuori/SMSS system to incorporate a known technique—using a database to store voice messages—to improve the system's storage and retrieval capabilities. Vuori disclosed a "means for storing" messages, and Holtzberg provided a conventional and predictable way to implement that means using a structured database, which was a common design choice for managing message data.

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

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

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed claim 19, which required an "encryption/decryption system." Petitioner asserted that the base Vuori/SMSS system lacked this feature. Väänänen, which discloses processing of packet-switched voicemail, taught that "cryptography methods may be employed with the data file and/or the packet stream" and described "employing decoding and/or decryption methods" upon message receipt.
    • Motivation to Combine: A POSITA would have been motivated to add the teachings of Väänänen to the Vuori/SMSS system to provide data security, a known and desirable feature for communication systems. The combination amounted to applying a known technique (cryptography) to an existing system to gain a predictable benefit (enhanced security).

  • Additional Grounds: Petitioner asserted that claim 38 is obvious over Vuori alone, arguing Vuori taught a complete system including a client device with a network interface and an installed instant 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, and was used to map the "TP-user-data field" from SMSS to this limitation.
  • "action field" (Claim 1): Petitioner proposed this term means "a message field identifying a permitted action." This construction was derived from the specification's list of actions (e.g., connect, disconnect, post message) and was central to mapping the "TP-Message-Type-Indicator" field from SMSS, which specifies different message types or actions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should institute trial because Vuori, a primary reference in its obviousness grounds, was not cited or considered during the original prosecution of the ’622 patent. Therefore, a discretionary denial under §325(d) based on previously considered art would be inappropriate.

6. Relief Requested

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