Apple Inc v. Uniloc Luxembourg SA

1. Case Identification

• Patent #: 6,446,127
• Filed: January 11, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Uniloc Luxembourg, S.A.
• Challenged Claims: 1-5, 8, 15, 21-24, 27-28, and 30

2. Patent Overview

• Title: Method and System for Providing User Mobility Services That Can Be Configured by User-Operated Portable Information Devices
• Brief Description: The ’127 patent describes a system to provide user mobility services in a telephony network. The system allows a user to employ a portable information device (PID) to transfer their "user attributes" to a voice communication device at a temporary location, which then registers the user's new location with a central registration server to ensure calls are routed correctly.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 15 and 27-28 under §102 over Nunokawa

• Prior Art Relied Upon: Nunokawa (Patent 5,982,877).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nunokawa discloses every element of claims 15 and 27-28. Nunokawa describes a communications system using a portable recording medium (e.g., an IC card) that stores a user's personal ID ("user attributes"). A user connects this portable medium to a communications apparatus (a "voice communication device") at a new location. The apparatus reads the user's ID and transmits it in a "register request" to a "center apparatus" (a "registration server"). The server then updates its database to associate the user with the new apparatus, enabling personal call transfer services. This process, Petitioner contended, directly maps to the system and method steps recited in independent claims 15 and 27. The dependent claim 28 is also met, as Nunokawa describes the server processing a call by referencing the database to direct the call to the newly registered device.

Ground 2: Obviousness of Claim 24 under §103 over Nunokawa in view of Szlam

• Prior Art Relied Upon: Nunokawa (Patent 5,982,877) and Szlam (Patent 6,359,892).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the obviousness challenge to claims 21-23 over Nunokawa, which asserts that implementing the logic of Nunokawa's control circuits as "machine language instructions" would have been an obvious design choice. Claim 24 further requires the voice communication device to be a personal computer with a microphone and speaker. While Nunokawa discloses a generic "communications apparatus" like a telephone, Szlam explicitly teaches using a laptop computer with built-in voice/video facilities (microphone, speakers) as a substitute for a traditional telephone set to achieve remote communication.
  • Motivation to Combine: Petitioner asserted a POSITA would combine these references because they are in the same field of user mobility and telecommunications. A POSITA looking to implement Nunokawa's system would have recognized that using a personal computer, as taught by Szlam, was a well-known and advantageous alternative to a dedicated telephone, offering greater functionality and convenience for a "road warrior" user.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Nunokawa does not limit its communications apparatus to any specific hardware. Integrating Szlam's known use of a PC for telephony into Nunokawa's system architecture would be a straightforward application of a known technique to improve a prior art system.

Ground 3: Obviousness of Claims 1-5 and 8 under §103 over Szlam in view of Fraser

• Prior Art Relied Upon: Szlam (Patent 6,359,892) and Fraser (Patent 6,487,200).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Szlam discloses the basic framework for a data network telephony system providing user mobility, including a portable computer, a network, and a remote access controller for routing calls based on a user profile. However, claim 1 requires communication via "voice-over-data packets." While Szlam teaches digital communication and mentions protocols like VoIP, Fraser specifically details a packet telephone system using short, compressed voice packets to communicate over a data network (e.g., ATM).
  • Motivation to Combine: A POSITA would be motivated to incorporate Fraser's packet-based voice transmission into Szlam's system to achieve greater network efficiency. Fraser explicitly teaches that using voice packets with compression significantly reduces the network resources required for telephone calls, thus lowering the cost of building and running the system. This provides a clear motivation to apply Fraser's technique to the system in Szlam.
  • Expectation of Success: Success would be expected because Szlam's system already contemplates using digital voice protocols. Implementing the more efficient packetization method from Fraser would have been a predictable improvement, not an inventive leap.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 21-23 are obvious over Nunokawa alone (arguing that implementing its control functions via "machine language instructions" was an obvious design choice) and that claim 30 is obvious over Nunokawa in view of Lehmus (WO 98/33343) (arguing for the substitution of Nunokawa's IC card with a mobile station/PDA as taught by Lehmus).

4. Key Claim Construction Positions

• "machine language instructions": Petitioner argued this term, appearing in claims 21-23, should be given its plain and ordinary meaning: "instructions or code that a processor or computer can recognize and execute." Petitioner contended that this phrase and similar ones ("first set of...", "second set of...") do not invoke means-plus-function treatment under 35 U.S.C. §112, ¶6. This construction is critical to the obviousness arguments for claims 21-23, as it allows the "instructions" to be satisfied by the inherent software-based operation of the prior art's control circuits, rather than requiring an identical disclosed algorithm.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution is proper and not cumulative because the challenges rely on prior art and combinations that were not before the examiner during the original prosecution of the ’127 patent. The examiner allowed all claims without a single prior art rejection. Petitioner asserted that its introduction of Nunokawa, Szlam, Fraser, and Lehmus, supported by an expert declaration, presents new arguments and evidence establishing a reasonable likelihood of unpatentability that warrants review.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-5, 8, 15, 21-24, 27-28, and 30 of the ’127 patent as unpatentable.