PTAB

IPR2017-00559

Google Inc v. Mobile Telecommunications Technologies LLC

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1. Case Identification

2. Patent Overview

  • Title: Method and Device for Processing Undelivered Data Messages in a Two-Way Wireless Communications System
  • Brief Description: The ’428 patent discloses methods for managing data messages in a two-way wireless network, such as a paging system. The system attempts to deliver a message, and if unsuccessful, can transmit a "probe message" to locate the mobile unit and subsequently mark and store the undelivered message for future delivery.

3. Grounds for Unpatentability

Ground 1: Obviousness over GSM System References - Claims 8 and 9 are obvious over Mouly, Redl, and the GSM 03.40 Specification.

  • Prior Art Relied Upon: Mouly (a 1992 textbook, The GSM System for Mobile Communications), Redl (a 1995 textbook, An Introduction to GSM), and the GSM 03.40 Specification (an ETSI standard from Jan. 1994).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of references, all describing aspects of the widely known pre-1996 Global System for Mobile Communications (GSM), taught every element of the challenged claims. Independent claim 8 recites a method for processing undelivered messages. Petitioner mapped this to the GSM Short Message Service (SMS), where the network transmits a data message (RP-MT-DATA) and expects an acknowledgment (RP-ACK). If no acknowledgment is received, indicating a delivery failure, the system initiates a redelivery attempt. This redelivery attempt begins with a "paging message" to locate the mobile station, which Petitioner contended is the claimed "probe message." If the paging attempt also fails (no response), the references teach setting a "messages-waiting-flag" and storing the message, which Petitioner equated to the claimed steps of "marking" and "storing" the undelivered message. Dependent claim 9 adds transmitting the stored message upon receiving a "registration message"; Petitioner argued Redl explicitly taught a registration procedure where a mobile unit sends a "Location Update Request" to the network, and Mouly taught that the network would then deliver stored messages once the subscriber "resumes contact."
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because they all describe different, complementary aspects of the same, single, publicly implemented GSM system. Mouly and Redl were textbooks intended to explain the system defined by technical standards like the GSM 03.40 Specification. A POSITA seeking to understand or implement GSM's message handling would have naturally consulted all three to gain a complete picture.
    • Expectation of Success: Success was expected because the combination merely involved applying the known, documented principles of the existing GSM system, which was a working, commercialized technology. The references described an already-combined and functioning system.

Ground 2: Obviousness over GSM System References and Frohman - Claim 10 is obvious over Mouly, Redl, the GSM 03.40 Specification, and Frohman.

  • Prior Art Relied Upon: Mouly, Redl, GSM 03.40 Specification (as in Ground 1), and Frohman (Patent 5,418,835).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground incorporated all arguments from Ground 1 for the limitations of base claim 8. For the additional limitation of dependent claim 10—"wherein a subscriber has dial-in access to the undelivered data messages stored at the network operations center to retrieve" them—Petitioner relied on Frohman. Frohman taught a cellular communication system where undelivered pages or text messages could be converted into voicemail messages. A subscriber could then retrieve these stored messages via "dial-in access" using a telephone interconnect from an office, payphone, or cellular phone. Petitioner argued this taught the exact functionality recited in claim 10.
    • Motivation to Combine: A POSITA would have been motivated to add the dial-in retrieval feature from Frohman to the GSM system of the primary references for several predictable reasons. First, it solved the known problem of message queues overwhelming a mobile unit's storage capacity by offloading stored messages to a network-based voicemail system. Second, it provided a convenient, alternative means for a user to access messages if their mobile unit was lost, broken, or otherwise unavailable. Petitioner asserted this was a simple application of a known technique (dial-in message retrieval) to improve a similar system (GSM message storage), yielding only predictable results.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because GSM systems, as described by Mouly, already included speech services and interconnectivity with the public switched telephone network (PSTN). Integrating Frohman's conventional dial-in voicemail retrieval feature into such a network would have been a straightforward implementation for a skilled artisan.

4. Key Claim Construction Positions

  • "probe message" (claim 8): Petitioner adopted the district court's construction from concurrent litigation: "a message that is generated to locate a mobile unit." This was argued to be consistent with the patent's disclosure and to encompass the "paging messages" used in the prior art GSM system to locate a mobile station before message delivery.
  • "registration message" (claim 9): Petitioner adopted the district court's construction: "a message that a mobile unit generates to identify itself to the network operations center." This construction was argued to cover the "Location Update Request" messages disclosed in the prior art reference Redl.
  • "dial-in access" (claim 10): Petitioner adopted the district court's construction: "access using a telephone network." This broad construction was key to mapping the teachings of Frohman, which described using a telephone interconnect to retrieve messages, onto the functionality of claim 10.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and cancellation of claims 8-10 of the ’428 patent as unpatentable.