PTAB

IPR2017-00537

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 two-way wireless communication system wherein a mobile unit receives and displays messages from a network. The mobile unit includes a user-actuatable switch to request retransmission of a specific portion of a displayed message, particularly a portion identified as containing errors.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4, and 7-9 are obvious over Schwendeman in view of Kuznicki.

  • Prior Art Relied Upon: Schwendeman (Patent 5,396,537) and Kuznicki (Patent 5,311,516).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schwendeman disclosed a mobile unit in a two-way paging system that performs a "reconciliation" procedure to re-acquire unsuccessfully received message "items." This reconciliation could be initiated by manual user input via buttons or switches. However, Schwendeman transmitted entire messages as single items. Petitioner asserted that Kuznicki taught the conventional technique of fragmenting a single large message into multiple smaller portions for sequential transmission. The combination of these references, Petitioner contended, resulted in a system where Schwendeman’s user-initiated reconciliation of "items" would inherently become a user-initiated retransmission of message "portions," as taught by Kuznicki, thus meeting the key limitations of independent claims 1, 7, and 8.
    • Motivation to Combine: A POSITA would combine Kuznicki's message fragmentation with Schwendeman's reconciliation system for several predictable benefits. These included reducing communication channel blocking caused by long, single-packet messages; decreasing the likelihood of transmission errors which are more common in longer transmissions; and improving overall system efficiency and user experience by preventing network timeouts. Petitioner argued this was a simple application of a known technique (fragmentation) to improve a known system (two-way paging).
    • Expectation of Success: The combination involved applying a well-understood and conventional data transmission technique to an existing communication system, leading to a high expectation of success.

Ground 2: Claims 2 and 9 are obvious over Schwendeman in view of Kuznicki and Akiyama.

  • Prior Art Relied Upon: Schwendeman (’537 patent), Kuznicki (’516 patent), and Akiyama (Japanese Application Publication No. H2-213237).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of dependent claims 2 and 9, which require "means for highlighting said errors" on the mobile unit's display. Petitioner asserted that Akiyama explicitly disclosed a method for displaying data frames containing errors by causing them to "blink." This blinking served to draw the user's attention to the erroneous data. Petitioner argued that Akiyama's blinking was a conventional and well-known equivalent to the highlighting methods suggested in the ’946 patent (e.g., underlining, reverse video).
    • Motivation to Combine: A POSITA would be motivated to add Akiyama’s error-highlighting feature to the Schwendeman/Kuznicki system to improve usability. Highlighting errors would clearly inform the user which specific portions of a message were corrupted, allowing them to make an informed decision about whether to request retransmission. This could reduce unnecessary retransmissions if the message remained legible despite the errors, thereby conserving network resources.

Ground 3: Claims 4 and 6 are obvious over Schwendeman in view of Kuznicki and Gutman.

  • Prior Art Relied Upon: Schwendeman (’537 patent), Kuznicki (’516 patent), and Gutman (Patent 4,940,963).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Gutman to the base combination to address claims 4 and 6, which require the system to transmit a signal indicating the user has "read the message." Petitioner argued that Gutman disclosed a two-way pager system with a manual pushbutton that allowed the user to send an "ack-back response." This response explicitly confirmed to the network that the message was "duly received and understood by the intended pager wearer," going beyond a simple automatic delivery receipt.
    • Motivation to Combine: A POSITA would incorporate Gutman's manual acknowledgment feature into the Schwendeman/Kuznicki system to enhance communication reliability. This addition would allow the network to distinguish between an automatic receipt and an affirmative confirmation from the user that the message content was actually read and understood. This feature would provide valuable feedback to the message sender and prevent confusion about the status of the message.

4. Key Claim Construction Positions

  • Petitioner proposed constructions for several terms, largely adopting those from a concurrent district court litigation involving the same patent.
  • a switch actuatable (claim 1): Construed as "a switch that requires user activation." This construction was central to the argument that the prior art's manual input buttons for initiating retransmission met the claim limitation.
  • means for... terms (claims 1, 2, 6, 7): Petitioner adopted the court's constructions, which interpreted these means-plus-function limitations under 35 U.S.C. §112, ¶6 by identifying corresponding structures in the ’946 patent specification. For example, the "means for receiving a radio frequency message" was construed as "antenna 1502, transmit/receive switch 1504, and receiver 1506; and equivalents thereof."

5. Arguments Regarding Discretionary Denial

  • Petitioner asserted that its grounds were not redundant with those in a concurrently filed petition (IPR2017-00536) because the petitions relied on different primary references and combinations to address different elements of the claims.
  • Petitioner also noted that prior IPRs filed against the ’946 patent (IPR2016-01576 and IPR2016-01581) were filed by an unrelated party (Microsoft Corp.), challenged a different grouping of claims, and were based on different prior art combinations and claim constructions.

6. Relief Requested

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