PTAB

IPR2017-00534

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, such as a paging network, for transmitting "canned messages" between subscriber devices. The system uses abbreviated message codes to represent the full text of the messages, which are stored in files on both the network and the subscriber terminals.

3. Grounds for Unpatentability

Ground 1: Obviousness over LaPorta and Ise - Claims 8-11 are obvious over LaPorta in view of Ise.

  • Prior Art Relied Upon: LaPorta (Patent 5,970,122) and Ise (Patent 5,257,307).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that LaPorta disclosed a two-way wireless messaging system where users can select and transmit canned messages using associated message codes between pagers via a network operation center (a "user agent"). The user agent and the devices maintain corresponding message tables. Petitioner asserted Ise supplemented this by teaching a radio pager system where it is conventional for all devices to store identical, synchronized message tables to ensure accurate message decoding from a received message code.
    • Motivation to Combine: A POSITA would combine LaPorta and Ise to improve the functionality and efficiency of LaPorta’s system. Petitioner presented several motivations, arguing a POSITA would seek to: (1) reduce the amount of data transmitted over the network, thereby preserving network resources and reducing message errors; (2) solve the bandwidth asymmetry problem acknowledged in LaPorta; and (3) improve the user experience by reducing the number of key operations required for message transmission. The combination was presented as the predictable application of a known technique (Ise’s synchronized message tables) to a known system (LaPorta’s network) to yield predictable results.
    • Expectation of Success: Petitioner contended success was expected because both references described similar pager-based messaging systems using canned messages and message codes. Integrating Ise’s conventional method of synchronizing message tables into LaPorta's system was a straightforward design choice with no technical hurdles.

Ground 2: Obviousness over LaPorta, Ise, and Will - Claims 12-14 and 19-21 are obvious over LaPorta in view of Ise and Will.

  • Prior Art Relied Upon: LaPorta (Patent 5,970,122), Ise (Patent 5,257,307), and Will (Patent 5,588,009).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of LaPorta and Ise from Ground 1. Petitioner argued that the remaining limitations in claims 12-14 and 19-21, which related to maintaining and using files of "canned multiple response options" and their corresponding "response codes," were taught by Will. Will disclosed a communications system that used pre-programmed message and response lists, stored at both a central station and individual communication units, allowing users to select and transmit responses using response codes. This taught the claimed maintaining of corresponding response files at the network and terminals.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Will’s teachings into the LaPorta/Ise system to add the well-known feature of pre-programmed, coded responses. This addition would further reduce data transmission and network strain, as taught by Will, and reduce "laborious" character entry for the user, improving usability. Petitioner argued that since LaPorta already taught using a "reply code" for embedded replies, incorporating Will’s more detailed description of storing and managing pre-programmed response lists was a logical and predictable design improvement.
    • Expectation of Success: Petitioner argued that since all three references concerned similar coded messaging systems, a POSITA would have reasonably expected success in applying Will's conventional methods for handling pre-programmed responses to the system of LaPorta and Ise.

4. Key Claim Construction Positions

  • Petitioner stated that since the ’506 patent is expired, the claims should be construed under the Phillips standard, consistent with a recent order in concurrent district court litigation involving the same parties.
  • For several means-plus-function terms in claims 19-21, Petitioner explicitly adopted the constructions from that litigation. For example, for the "means for retrieving the file of canned messages and message codes from the memory" (claim 21), Petitioner adopted the corresponding structure of "CPU 110, ROM 112 (including stored application program for controlling terminal operation), and system bus 130... and equivalents."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the instant petition was not redundant with prior IPRs filed against the ’506 patent by an unrelated party (Apple Inc.). Petitioner distinguished the current filing by noting that:
    • The prior petitions challenged a different grouping of claims.
    • The prior art combinations were different, particularly as the prior petitions did not rely on the Ise reference, which Petitioner asserted was critical to its invalidity arguments.
    • The prior petitions were based on different claim constructions under a different standard.
    • The prior proceedings were terminated by agreement between the patent owner and Apple before a final decision.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 8-14 and 19-21 of the ’506 patent as unpatentable.