PTAB

IPR2018-00282

Apple Inc v. Uniloc 2017 LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Automated Telephone Dialing System
  • Brief Description: The ’671 patent discloses a system and method where a handheld computer system, such as a personal information device (PID), wirelessly interacts with a telephone to automatically dial a telephone number stored in the handheld device's memory. The system is designed to overcome the difficulty of manually dialing numbers on small telephone keypads.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 9-14 are obvious over Yun in view of Kikinis.

  • Prior Art Relied Upon: Yun (Patent 6,084,949) and Kikinis (Patent 5,790,644).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yun disclosed the core system of an automated telephone dialing system comprising a handheld computer ("electronic pocketbook") and a telephone. Yun’s system used a short-range wireless (infrared) link to transmit a selected telephone number from the pocketbook to the telephone, which then automatically dialed the number. However, Yun did not explicitly teach displaying the numbers in a selectable list format. Kikinis, which relates to a computer-to-telephone interface, remedied this deficiency by disclosing a user interface with a "Dial List" that displays a list of phone numbers and allows a user to select a number from the list to be called.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references as they are in the same field of endeavor: communication between a computer and a telephone. A POSITA would have been motivated to incorporate the user-friendly, list-based display from Kikinis into Yun’s system to create a more efficient and desirable product. Presenting search results in a selectable list is a known technique for improving user interfaces, making the combination a predictable solution to a known problem.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the known user interface element of Kikinis with the autodialing system of Yun, as it involved applying a known interface technique to an existing system ready for improvement.

Ground 2: Claims 7 and 15 are obvious over Yun in view of Kikinis, in further view of Inoue.

  • Prior Art Relied Upon: Yun (Patent 6,084,949), Kikinis (Patent 5,790,644), and Inoue (Patent 7,080,154).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Yun and Kikinis combination to address claims 7 and 15, which require the wireless communication to be "compatible with a version of the Bluetooth specification." The base combination disclosed infrared communication. Petitioner asserted that Inoue taught that various short-range wireless communication technologies—including infrared (IrDA) and Bluetooth—were known and available options for communication between portable terminals and other computer devices.
    • Motivation to Combine: Petitioner argued that Yun explicitly stated its invention was open to "changes and modifications." A POSITA seeking to implement the system of Yun/Kikinis would have recognized the available options for short-range wireless communication taught by Inoue. The selection of Bluetooth over infrared would have been a simple and predictable design choice based on the needs of a specific application, as Inoue presents them as known alternatives. Bluetooth was known to be a "high noise immune protocol," providing a clear reason for its selection.
    • Expectation of Success: A POSITA would have expected success in substituting one known wireless standard (infrared) for another (Bluetooth) in the Yun/Kikinis system, as this was a well-understood design modification with predictable results.

Ground 3: Claims 1-7 and 9-15 are obvious over Harris in view of Kikinis.

  • Prior Art Relied Upon: Harris (Patent 6,738,643) and Kikinis (Patent 5,790,644).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented Harris as an alternative primary reference that disclosed an automated dialing system where a PDA communicates with a telephone to automatically dial a number. Crucially, Harris explicitly taught using a "bluetooth module" for this wireless communication, thus satisfying the limitation of claims 7 and 15. While Harris disclosed displaying a contact's name and number, it did not teach presenting this information in a selectable list. As in Ground 1, Kikinis was relied upon for its teaching of a "Dial List" menu that allows a user to display and select a phone number from a list.
    • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA would combine the teachings of Harris and Kikinis, both in the computer-to-telephone communication field, to improve the user interface of Harris's system. Integrating Kikinis's efficient list-based selection method into Harris’s Bluetooth-enabled system would be the application of a known technique to an existing system to improve its functionality, a predictable step for a skilled artisan.
    • Expectation of Success: The combination of Harris's system with Kikinis's user interface would have been straightforward and predictable, as it involved integrating a known software feature (a selectable list) into another known system.

4. Key Claim Construction Positions

  • "wireless port": Petitioner argued that based on the patent’s specification, the broadest reasonable construction for the term "wireless port" as used in all claims is "some combination of a wireless receiver and/or transmitter." This construction was central to arguing that the infrared optical units in Yun and the Bluetooth modules in Harris met the claim limitation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7 and 9-15 of the ’671 patent as unpatentable.