PTAB

IPR2018-00223

Unified Patents Inc. v. Anuwave LLC

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1. Case Identification

2. Patent Overview

  • Title: Method for Communicating Through an SMS Communication Channel
  • Brief Description: The ’862 patent discloses a method for enabling communication through a Short Message Service (SMS) channel. The method involves a terminal station, like a mobile phone, that lists available SMS-based services, allows a user to select a service, prompts for parameters, and then submits a request to an SMS gateway.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 7 are obvious over Tumminaro.

  • Prior Art Relied Upon: Tumminaro (Application # 2007/0244811).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tumminaro, which discloses a mobile client application (MCA) for mobile payments, teaches all limitations of independent claims 1 and 7. Tumminaro’s MCA displays a menu of services (e.g., Pay, Balance, History) on a mobile phone, which corresponds to listing services from meta-information on a terminal station. Upon selecting a service like "Request Pay," the MCA prompts the user through a series of screens to enter or select parameters, such as a phone number from an address book, a payment amount, a message, and a PIN. This combination of selecting pre-listed parameters (the contact) and entering unlisted parameters (the amount, message, PIN) was argued to disclose the key limitation of claim 1[f], which requires associated parameters to include both those listed at the terminal and those desired by the user but not listed. The request is then sent via SMS to a server platform for processing, and the server responds with a confirmation, satisfying the remaining claim elements.
    • Motivation to Combine: As a single-reference ground, the argument was based on obviousness, asserting that a person of ordinary skill in the art (POSITA) would have found it an obvious design choice to implement the features described. For instance, Petitioner contended it was well-known to use an SMS gateway to facilitate message exchange between a mobile device and a server.
    • Expectation of Success: Petitioner asserted that implementing the claimed features using Tumminaro's teachings would have been a matter of applying known principles with predictable results.

Ground 2: Claims 1-7 are obvious over Durand in view of Guthery.

  • Prior Art Relied Upon: Durand (Application # 2005/0245241) and Guthery (a 2002 printed publication, "Mobile Application Development with SMS and the SIM Toolkit").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Durand, which teaches a client-side content delivery application (CDA) for directory assistance, provides the basic framework for the claimed method, while Guthery, a technical textbook on mobile applications, supplies the specific implementation details that were allegedly missing. Durand disclosed a CDA on a mobile phone for requesting services (e.g., finding a restaurant) by entering keywords and parameters, transmitting the request via SMS, and receiving a response. However, Durand did not explicitly show a main menu listing all services. Guthery was argued to supply this by disclosing mobile applications with a menu of services loaded onto the SIM, from which a user could select. Guthery also provided extensive detail on using middleware on the terminal (e.g., on the SIM) to intercept and route SMS messages, distinguishing between application-specific messages and standard user texts. This middleware was argued to meet the limitations of dependent claim 2, which requires middleware to check and route incoming messages.
    • Motivation to Combine: Petitioner argued a POSITA would combine Durand and Guthery because they are analogous art, both directed to systems utilizing SMS communication. A developer implementing the service-request system of Durand would have been motivated to consult a technical reference like Guthery for established methods of creating a user-friendly menu of services and for handling SMS message routing efficiently. Guthery expressly disclosed that value-added services were the "holy grail" for wireless operators, providing a clear motivation to implement its menu and middleware teachings to enhance the services in Durand.
    • Expectation of Success: Petitioner asserted the combination would have been predictable. There would be no point in offering services on a terminal if a user could not easily find and select them from a list. The use of middleware to route messages and encoding/decoding of commands were conventional techniques in SMS communication, leading to a high expectation of success.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of the ’862 patent as unpatentable under 35 U.S.C. §103.