PTAB

IPR2017-00532

Google Inc v. Mobile Telecommunications Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Generating and Communicating Messages Between Subscribers to an Electronic Messaging Network
  • Brief Description: The ’506 patent describes a communication system where users can send pre-defined "canned messages" by selecting a message on a first device, which transmits a corresponding abbreviated message code over a network. A receiving device uses this code to retrieve the full text of the canned message from its local memory for display.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 15-17 are obvious over LaPorta in view of Ise and Tett

  • Prior Art Relied Upon: LaPorta (Patent 5,970,122), Ise (Patent 5,257,307), and Tett (Patent 5,635,918).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that LaPorta disclosed the foundational two-way wireless messaging system where a network operation center ("user agent") and user devices maintain corresponding files of canned messages and codes. A message code sent from a user device is expanded by the user agent for delivery. However, LaPorta’s server determines the format the recipient wishes to receive the message in. Ise was argued to supply the express teaching of transmitting messages in a "message code form" to the receiving pager to reduce data transmission, and a user selecting a desired message code from a list on the transmitting pager. Tett was argued to teach a network server determining if a recipient device is configured to receive messages in a condensed (coded) form or full text form, and transmitting the message in the appropriate format in response to that determination.
    • Motivation to Combine: A POSITA would combine LaPorta with Ise to gain the well-known benefits of reducing data transmission, which would conserve network resources, reduce battery consumption, decrease the likelihood of errors, and allow for more subscribers. The combination would solve the channel bandwidth "asymmetry" problem expressly acknowledged in LaPorta. A POSITA would further incorporate Tett's teachings to make the resulting system more robust and device-agnostic, allowing it to efficiently communicate with both code-capable and text-only devices by selecting the most efficient delivery format for each recipient.
    • Expectation of Success: Petitioner asserted that combining these known elements from the prior art to achieve greater efficiency was merely the application of a known technique to a known system to yield predictable results.

Ground 2: Claim 18 is obvious over LaPorta in view of Ise, Tett, and Will

  • Prior Art Relied Upon: LaPorta (Patent 5,970,122), Ise (Patent 5,257,307), Tett (Patent 5,635,918), and Will (Patent 5,588,009).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of LaPorta, Ise, and Tett from Ground 1 to address the limitations of claim 18, which specifically recites storing and retrieving "canned multiple response options." Petitioner argued that while LaPorta disclosed "reply components" with a "reply code," the prior art system of Will explicitly taught a communications system that included storing a "Preprogrammed Response List" with corresponding codes at both a central station and on user devices. Will’s central station could process received response codes by looking them up in a table to expand them into full text.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Will's teachings for pre-programmed responses into the LaPorta/Ise/Tett system for the same reasons as sending original messages in coded form: to reduce bandwidth usage for replies and to reduce "laborious" character entry for the user, thereby improving the user experience. Will provided an express description of a conventional feature already suggested by LaPorta's "reply codes," making the combination a predictable design choice.
    • Expectation of Success: Petitioner contended that adding Will's explicit teaching of a pre-programmed response list to the base system was a predictable implementation that used known elements, each performing its known function, to achieve the expected benefits of an efficient, code-based reply system.

4. Key Claim Construction Positions

  • Petitioner argued for constructions of several means-plus-function terms, adopting the constructions from a concurrent district court order between the parties. Key proposed constructions included:
    • “means responsive to the received message code for retrieving from the memory the canned message assigned thereto” (claim 15): Petitioner adopted the court's construction identifying the corresponding structure as the Network Operation Center (NOC) and associated memory. The prior art combination of LaPorta's user agent and Tett's server were argued to provide this structure.
    • “means for determining whether a receiving terminal in the network can receive the canned message in text form or message code form” (claim 15): Petitioner adopted the court's construction identifying the structure as the NOC and memory configured to perform the disclosed algorithm. The combination of LaPorta's user agents determining a "desired format" and Tett's server determining device capabilities was argued to supply this structure.
    • “means for updating the canned message file…” (claim 17): Petitioner adopted the court’s construction identifying the structure as the NOC, NOC memory, and terminal memories. LaPorta’s system, which propagates changes between the server and devices, was argued to provide this structure.

5. Arguments Regarding Discretionary Denial

  • Petitioner pre-emptively argued against discretionary denial based on two prior IPR petitions filed against the ’506 patent (IPR2014-01033 and IPR2014-01034). Petitioner contended this petition was not redundant because it (1) challenged a different grouping of claims, (2) was based on a different combination of references, notably including the Ise patent which was not cited in the prior petitions, and (3) was filed by a different petitioner after the prior petitioner (Apple Inc.) had terminated its proceedings.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-7 and 15-18 of the ’506 patent as unpatentable.