Google Inc v. Mobile Telecommunications Technologies LLC

1. Case Identification

• Case #: IPR2017-00533
• Patent #: 5,894,506
• Filed: December 28, 2016
• Petitioner(s): Google Inc.
• Patent Owner(s): Mobile Telecommunications Technologies, LLC
• Challenged Claims: 1-7, 15-18

2. Patent Overview

• Title: Method and Apparatus for Generating and Communicating Messages Between Subscribers to an Electronic Messaging Network
• Brief Description: The ’506 patent discloses a communication system where a user selects a pre-defined "canned message" from a first device, which then transmits an abbreviated message code to a receiving device. The receiving device uses the code to retrieve and display the full text of the corresponding canned message from a locally stored file.

3. Grounds for Unpatentability

Ground 1: Obviousness over Will, Shimura, and Cannon - Claims 1-7 and 15-18 are obvious over Will in view of Shimura and Cannon.

• Prior Art Relied Upon: Will (Patent 5,588,009), Shimura (EP Application # 89108853), and Cannon (Patent 5,850,594).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the prior art combination disclosed all limitations of the challenged claims. Will was asserted to teach the foundational system: a communications network with a "Central Station" and user "Communications Units" that send and receive "brief messages" using pre-programmed message codes stored in corresponding "Preprogrammed Message Lists" on each device. Shimura was alleged to teach key enhancements for such systems, including the ability to customize "standard expressions" (canned messages) by adding parameters like time or currency. Shimura disclosed transmitting a message code and the added parameter together to a receiving pager, which would then display the combined message. Cannon was asserted to teach the intelligent routing logic necessary for an efficient network. Cannon described a two-way messaging system where a central controller determined if a receiving terminal could accept a message in a compressed code form ("alias") or required the full text. Based on this determination, the controller sent the message in the most efficient format to conserve network resources. Cannon also taught updating the canned message databases on both the central controller and the user terminals to maintain synchronization.
  • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine the references to achieve predictable benefits. A POSITA would first combine Will with Cannon to improve the efficiency and reliability of Will’s basic system. Incorporating Cannon's logic for determining a receiving device's capability would reduce network load by sending codes instead of full text when possible, while also preventing message loss by ensuring format compatibility, making the system "device agnostic." A POSITA would then have been motivated to incorporate Shimura's teachings to add the well-known and desirable functionality of customizing canned messages with parameters. Petitioner contended that a POSITA would have recognized that Will's concept of "canned responses" could be implemented as the customizable "parameters" taught by Shimura, thereby enhancing user functionality while leveraging the network efficiencies of code-based messaging.
  • Expectation of Success (for §103 grounds): Petitioner asserted that a POSITA would have had a reasonable expectation of success in combining these elements. The combination represented the application of known techniques (format determination, message parameterization) to a known type of system (canned messaging network) to solve known problems (network efficiency, limited functionality), and each element would have performed its expected function to yield predictable results.

4. Key Claim Construction Positions

Petitioner dedicated significant argument to the construction of several means-plus-function limitations in apparatus claims 15-18. For the purposes of the IPR, Petitioner adopted the constructions used in a concurrent district court litigation between the parties.

• “means responsive to the received message code for retrieving from the memory the canned message assigned thereto” (claims 15, 18): Petitioner adopted the construction where the recited function is retrieving the message from memory using a code. The corresponding structure was identified as a Network Operation Center (NOC) and associated memory, as disclosed in the ’506 patent specification. Petitioner argued the "Central Station" of Will and control centers of Shimura and Cannon provided this structure.
• “means for determining whether a receiving terminal…can receive the canned message in text form or message code form” (claims 15-16): Petitioner adopted the construction where the function is determining the receiving terminal's format capability. The corresponding structure was identified as the NOC and memory, configured to perform the algorithm for this determination. Petitioner argued Cannon explicitly taught this function and its implementation in a system controller.
• “means for updating the canned message file…” (claim 17): Petitioner adopted the construction where the function is updating the canned message files on both the central network and the user terminal. The corresponding structure was identified as the NOC, NOC memory, and terminal memories. Petitioner argued both Will and Cannon taught this function to ensure system-wide message consistency.

5. Arguments Regarding Discretionary Denial

Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d) based on prior, terminated IPRs filed against the ’506 patent by an unrelated party (Apple Inc.). Petitioner contended this petition was not redundant for several reasons. First, it relied on a different and non-cumulative combination of prior art, notably introducing the Shimura reference, which was not cited in the earlier petitions. Second, the petition challenged a different grouping of claims than those in the prior proceedings. Finally, Petitioner asserted that it relied on different claim constructions, consistent with a recent court order, which distinguished its arguments from those previously presented to the Patent Office.

6. Relief Requested

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