PTAB

IPR2017-00536

Google Inc v. Mobile Telecommunications Technologies LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Nationwide Communication System
  • Brief Description: The ’946 patent describes a mobile unit with two-way wireless communication capabilities. The system allows a user to receive a message, view it on a display, and if errors are detected, use a switch on the mobile unit to request retransmission of the specific portion of the message containing the errors from the communications network.

3. Grounds for Unpatentability

Ground 1: Obviousness over Akiyama in view of Nelson - Claims 1, 2, 4, and 6-9 are obvious over Akiyama in view of Nelson.

  • Prior Art Relied Upon: Akiyama (Japanese Unexamined Patent Application Publication No. H2-213237) and Nelson (Patent 4,814,763).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Akiyama, which describes a "one-way mobile wireless data communication system," discloses nearly all elements of the challenged claims. Akiyama’s system allows a mobile terminal to receive messages broken into frames, detect errors, display the message and an error indication (e.g., by blinking the incorrect frames), and allow a user to press a "data transmission key" to request retransmission of only the erroneous frames. However, Akiyama’s mobile terminal transmits this request back to the network via a physical telephone line, not wirelessly via radio frequency (RF). Petitioner contended that Nelson remedies this deficiency by teaching a two-way wireless paging system where a mobile unit includes both a receiver and a transmitter for RF signals. Nelson explicitly discloses an "ack-back response button" that a user can press to transmit an RF acknowledgement signal back to the network, confirming message receipt. The combination of Akiyama's selective retransmission request system with Nelson's two-way RF communication capability for the mobile unit renders the challenged claims obvious.
    • Motivation to Combine (for §103 grounds): Petitioner asserted a person of ordinary skill in the art (POSITA) in 1993 would have been motivated to modify Akiyama’s one-way wireless system with Nelson’s two-way RF capabilities for several reasons:
      • To improve system reliability by providing an "acknowledge back" capability, assuring the sender of message receipt.
      • To improve user convenience by allowing a retransmission request via a simple button press on the mobile unit itself, rather than requiring the user to find and physically connect the unit to a telephone line.
      • To increase the speed of communication by using a direct RF signal from the mobile unit, which is significantly faster than transmitting through telephone lines.
      • It represented the application of a known technique (two-way RF communication from a mobile unit) to improve a similar system (a wireless data network) to achieve predictable results.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in combining the references, as implementing two-way RF capability in a mobile device was a well-known and predictable modification by the 1993 priority date of the challenged patent.

4. Key Claim Construction Positions

Petitioner asserted that because the ’946 patent is expired, a district court-type Phillips construction standard applies. Petitioner adopted several constructions from a concurrent district court litigation involving the same parties and patent.

  • “means for receiving a radio frequency message from the network” (claim 1): Petitioner adopted the court’s construction of this means-plus-function term, identifying the corresponding structure as "antenna 1502, transmit/receive switch 1504, and receiver 1506; and equivalents thereof."
  • “a switch actuatable” (claim 1): Petitioner argued this phrase means a switch that requires user activation. This construction was supported by the specification, prosecution history, and the concurrent district court’s interpretation. The user’s activation of the switch triggers an automatic selection by the mobile unit of the erroneous message portion for retransmission.
  • “means for transmitting, only upon actuation of the switch, a signal…” (claim 1): Petitioner adopted the court’s construction identifying the corresponding structure for this transmission function as "input switches 1516, transmit logic 1518, transmitter 1520, transmit/receive switch 1504, and antenna 1502; and equivalents thereof."

5. Arguments Regarding Discretionary Denial

Petitioner presented arguments that discretionary denial would be inappropriate. The petition included a Statement of Non-Redundancy, arguing that the Board should institute review despite other petitions filed against the ’946 patent.

  • Differentiation from Concurrent Petition: Petitioner noted it was concurrently filing another petition (IPR2017-00537) against the same claims, but that petition relied on a different primary reference (Schwendeman) which disclosed a two-way wireless network, presenting a distinct obviousness combination.
  • Differentiation from Prior Petitions: Petitioner distinguished this petition from prior IPRs filed by Microsoft (IPR2016-01576 and IPR2016-01581). The prior petitions allegedly challenged a different group of claims, were based on different prior art combinations and claim constructions, and were filed by an unrelated party that was believed to have settled with the Patent Owner.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 4, and 6-9 of the ’946 patent as unpatentable.