PTAB

IPR2017-00530

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 discloses methods for managing message delivery in a two-way wireless communications system, such as a paging network. The technology focuses on using probe messages to locate mobile units when an initial data message is not acknowledged and provides for storing undelivered messages for future delivery.

3. Grounds for Unpatentability

Ground 1: Claims 8 and 10 are obvious over Gorday, Cameron, and Leonardo.

  • Prior Art Relied Upon: Gorday (Patent 5,703,570), Cameron (WO 1994/011960), and Leonardo (WO 1989/05009).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of independent claim 8 and dependent claim 10. Gorday was asserted to disclose the foundational two-way communication system, including a network operations center (system controller) that transmits data messages to a mobile unit (PSU) and receives acknowledgements. Cameron was argued to teach the missing step of transmitting a "probe message" to locate a mobile unit if no acknowledgement for a data message is received. Leonardo was asserted to supply the final steps of marking a data message as undelivered and storing it if a subsequent probe message also fails to receive an acknowledgement. For claim 10, Petitioner argued that Gorday’s disclosure of accessing undelivered messages via "voice mail" and Cameron’s disclosure of a network center with dial-in access teach the limitation of a subscriber having dial-in access to retrieve stored messages.
    • Motivation to Combine: A POSITA would combine Gorday with Cameron to create a more robust and efficient system for locating mobile units that may have moved out of their last known zone, which was a known problem. The combination with Leonardo was motivated by the desire to prevent message loss and improve user experience by storing undelivered messages for later retrieval, which Leonardo taught was a conventional way to handle unacknowledged pages.
    • Expectation of Success: Petitioner asserted that combining these elements would have been a predictable implementation of known techniques to improve the functionality of a standard paging system. Each reference addressed a distinct, well-understood problem in such systems with a straightforward solution.

Ground 2: Claim 9 is obvious over Gorday, Cameron, Leonardo, and Henry.

  • Prior Art Relied Upon: Gorday (Patent 5,703,570), Cameron (WO 1994/011960), Leonardo (WO 1989/05009), and Henry (Patent 5,590,396).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination asserted in Ground 1 to address dependent claim 9, which adds the step of transmitting stored, undelivered data messages to a mobile unit upon receiving a "registration message" from that unit. Petitioner argued that Henry explicitly teaches this functionality. Henry describes a mobile station in "pager-only mode" to conserve battery, which upon powering up or re-entering a service area, transmits a "power-up registration message" to the network. This registration alerts the network that the mobile station is active and prepared to receive messages, which in turn triggers the network to automatically transmit any stored SMS messages to the device.
    • Motivation to Combine: A POSITA would combine Henry's teachings to improve the efficiency of the underlying system of Gorday, Cameron, and Leonardo. Instead of the network having to repeatedly send probe messages to find a non-responsive device, Henry's registration feature allows the device to proactively announce its availability. This would reduce unnecessary network traffic and CPU cycles on the system controller. Further motivations included maximizing the mobile unit's battery life (a key focus of Henry) and allowing users to control when they connect to the system.
    • Expectation of Success: Adding a registration-triggered delivery mechanism was presented as a predictable enhancement to a wireless messaging system. The integration of this feature from Henry into the base system would have been a straightforward application of known techniques to improve system efficiency and battery performance.

4. Key Claim Construction Positions

  • "probe message" (claim 8): Petitioner adopted the construction from concurrent district court litigation, defining the term as "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 construction was used to equate Henry’s "power-up registration message" with the claimed feature.
  • "dial-in access" (claim 10): Petitioner adopted the construction "access using a telephone network." This allowed Petitioner to argue that Gorday's disclosure of retrieving messages via "voice mail" and Cameron's teaching of a network center accessible by phone met the claim limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not deny institution for redundancy, despite the filing of two other IPR petitions against the ’428 patent on the same day. It was contended that the petitions were distinct because each was based on a different primary system and set of references. This petition relied on Gorday (prior art under §102(e)), a second petition relied on Cameron (prior art under §102(b)), and a third relied on publications related to the GSM system, each presenting a unique invalidity challenge.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 8-10 of the ’428 patent as unpatentable under 35 U.S.C. §103.