PTAB

IPR2017-00535

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 for transmitting pre-defined "canned messages" between subscriber devices, such as pagers, using abbreviated message codes. The system allows users to customize these messages with parameters and to reply to received messages using pre-defined "canned responses."

3. Grounds for Unpatentability

Ground 1: Obviousness over Will and Shimura - Claims 8, 10-13 and 19-21 are obvious over Will in view of Shimura.

  • Prior Art Relied Upon: Will (Patent 5,588,009) and Shimura (EP Application # 89108853).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Will disclosed the foundational communication system for sending "brief messages" between user devices using message codes. Will’s system included a central station and communication units that each maintained corresponding "Preprogrammed Message Lists" and "Preprogrammed Response Lists." While Will established the core architecture, Petitioner asserted that Shimura, which teaches a radio paging system, supplied the remaining elements. Shimura explicitly disclosed transmitting an alphanumeric code for a "standard expression" to a receiving pager, which then uses that code to retrieve the full message text from its local memory. Shimura also taught adding parameters, such as a time or currency amount, to these coded messages. The combination, therefore, taught all elements of the independent claims, including maintaining message files at a central location and on subscriber terminals, selecting a canned message, sending its code, and having the receiving terminal retrieve and display the message using the code.
    • Motivation to Combine: A POSITA would combine Will and Shimura for several reasons. Primarily, transmitting only a message code instead of the full text, as suggested by Shimura, would reduce the amount of data transmitted over the network. This would conserve network resources, reduce the likelihood of transmission errors, and allow for an increased number of users without requiring additional infrastructure. Furthermore, implementing this functionality would have been a simple modification, as Will's devices already stored the necessary message tables.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved applying a known, data-saving technique (coded message transmission from Shimura) to a known communication system (Will) to achieve the predictable result of a more efficient network.

Ground 2: Obviousness over Will, Shimura, and Cannon - Claims 9 and 14 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: This ground builds upon the combination of Will and Shimura from Ground 1 to address the additional limitations of claims 9 and 14, which require updating the canned message files. Petitioner argued that while Will taught using a "maintenance message" to make changes to tables, Cannon provided explicit teachings for the dependent claims' updating feature. Cannon described a two-way messaging system where databases of frequently used messages and their corresponding aliases, stored at both a central system controller and on portable messaging units (PMUs), are "updated, when necessary" by the controller. This process ensures that the message lists on all devices remain consistent with the central server's list.
    • Motivation to Combine: A POSITA would be motivated to add Cannon's updating functionality to the Will/Shimura system for predictable benefits. First, it would ensure consistency across all devices, guaranteeing that a message code sent by one user would retrieve the correct message text on another user's device. Second, it would allow the system to be updated with new phrases or customized lists, improving the system’s utility and relevance. This was presented as the routine application of a known technique (synchronized database updates) to solve a known problem (maintaining data consistency in a distributed system).
    • Expectation of Success: Success was expected because updating message tables was a well-known practice in similar communication systems. Implementing Cannon's teachings would predictably result in a more robust and reliable messaging system without altering the core functions of the Will/Shimura combination.

4. Key Claim Construction Positions

  • Petitioner dedicated a significant portion of its argument to construing several means-plus-function limitations under 35 U.S.C. §112, ¶6, as the ’506 patent is expired.
  • Petitioner adopted the constructions from a claim construction order in a concurrent district court litigation involving the same parties (Mobile Telecommunications Technologies, LLC, v. Google, Inc., E.D. Tex).
  • "means for retrieving the file of canned messages..." (claim 19): Construed as "CPU 110, ROM 112 (including stored application program for controlling terminal operation), and system bus 130...and equivalents."
  • "means for selecting one of the canned messages..." (claim 19): Construed as "terminal keypad 126; or a mouse; or a cursor, and equivalents."
  • "means for adding parameters to the selected canned message..." (claim 20): Construed as "terminal keypad 126 and terminal 10; and equivalents."

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the petition should not be denied as redundant. It distinguished this filing from prior, terminated IPRs filed by Apple against the ’506 patent and from a concurrently filed petition by Google (IPR2017-00534).
  • The petition asserted it was not redundant because it relied on different prior art combinations, specifically introducing the Shimura reference which was not cited in the prior Apple petitions. It also relied on new expert testimony from Peter Rysavy and addressed a different grouping of claims than the prior petitions.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 8-14 and 19-21 of the ’506 patent as unpatentable under 35 U.S.C. §103.