PTAB

IPR2017-00529

Google Inc v. Mobile Telecommunications Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Device for Processing Undelivered Data Messages in a Two-Way Wireless Communications System
  • Brief Description: The ’428 patent describes methods for processing data messages between a network operations center and a mobile unit in a two-way wireless paging system. The system uses probe messages to locate a mobile unit if a data message is not acknowledged and provides for storing undelivered messages for future delivery.

3. Grounds for Unpatentability

Ground 1: Claims 8-10 are obvious over Cameron in view of Leonardo

  • Prior Art Relied Upon: Cameron (International Publication No. WO 1994/011960) and Leonardo (International Publication No. WO 1989/05009).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cameron, a reference considered related to one cited during prosecution but with a more detailed specification, taught most elements of independent claim 8. Cameron described a two-way communication system that transmits data messages to a mobile unit and, if no acknowledgment is received, transmits a probe message during a subsequent systemwide time interval to locate the unit. Petitioner contended that Leonardo, which described a paging system with acknowledge-back capability, supplied the only elements missing from Cameron: explicitly marking a data message as undelivered and storing it for later retransmission if an acknowledgment is not received. Leonardo taught storing a message in an "unacknowledged page file" for later retransmission, which Petitioner asserted met these limitations. Dependent claim 10, requiring dial-in access for a subscriber to retrieve messages, was allegedly taught by Cameron's disclosure of users accessing the central computer via phone lines.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Leonardo’s message storage functionality with Cameron’s system for several predictable reasons. These included efficiently preventing message loss, improving the user experience by ensuring eventual delivery, reducing network bandwidth consumed by repeated re-transmissions, and implementing a known technique to improve a similar system. The combination was presented as an ordinary and predictable expansion of Cameron's existing database capabilities.
    • Expectation of Success: Petitioner argued success would be expected because the combination merely integrated a conventional message-handling feature (marking and storing) from one paging system (Leonardo) into another (Cameron) to gain a known benefit.

Ground 2: Claim 9 is obvious over Cameron in view of Leonardo and Elder

  • Prior Art Relied Upon: Cameron (WO 1994/011960), Leonardo (WO 1989/05009), and Elder (British Pub. No. GB2,244,409).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the additional limitations of dependent claim 9. Claim 9 requires the step of transmitting undelivered messages upon receiving a registration message from the mobile unit. While Petitioner argued Cameron already suggested this functionality, it offered Elder as an explicit teaching of this feature. Elder disclosed a communications network where a service center stores undelivered messages and automatically transmits them upon receipt of a "handset availability signal," which occurs when the handset is switched on. Petitioner asserted this availability signal was equivalent to the claimed "registration message."
    • Motivation to Combine: Petitioner argued a POSITA would be motivated to incorporate Elder's teachings into the Cameron/Leonardo system. The primary motivations were to promote reliable message delivery when a mobile unit is switched back on, to reduce the number of probe messages required to locate a unit (thereby saving network resources), and to improve the battery life of the mobile unit by allowing it to use a low-power mode and establish periodic links via registration messages rather than requiring constant network probing.
    • Expectation of Success: The petition asserted success would be expected, as this combination involved applying a known technique—using registration messages to trigger delivery of stored messages—to improve a known system in a predictable manner.

4. Key Claim Construction Positions

  • "probe message" (claim 8): Petitioner adopted the construction from concurrent district court litigation: "a message that is generated to locate a mobile unit." This construction was central to mapping Cameron's "probe signal" to the claim limitation.
  • "registration message" (claim 9): Petitioner adopted the construction: "a message that a mobile unit generates to identify itself to the network operations center." This was used to argue that Elder's "handset availability signal" met the claim limitation.
  • "dial-in access" (claim 10): Petitioner adopted the construction: "access using a telephone network." This was important for showing that Cameron's disclosure of user access via "phone lines" satisfied the limitation for retrieving stored messages.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 8-10 as unpatentable.