PTAB

IPR2018-00821

Apple Inc v. AGIS Software Development LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method of Utilizing Forced Alerts for Interactive Remote Communications
  • Brief Description: The ’970 patent discloses a method and system for sending "forced message alerts" to remote devices like PDAs or cell phones. The system is designed to track message receipt and user responses, ensuring user attention by requiring a manual response to clear the alert from the device's screen.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 are obvious over Casey, Tanumihardja, and Haynes.

  • Prior Art Relied Upon: Casey (Application # 2005/0030977), Tanumihardja (Patent 7,386,589), and Haynes (Patent 6,232,971).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the prior art combination taught every element of the challenged claims.
      • Casey was asserted to teach the foundational system: a method for sending critical alert messages to mobile devices, receiving automatic acknowledgements of receipt, periodically resending alerts until acknowledged, and requiring a user to interact with a pop-up window to clear the message. Petitioner contended that Casey described the core functionality but lacked specific details regarding the user interface (UI).
      • Tanumihardja was introduced as analogous art that supplied the specific UI implementations Petitioner argued were missing from Casey. Tanumihardja disclosed systems for sending "managed messages" between wireless devices, including detailed examples of UIs for creating messages with custom response lists, designating recipients from a list, and displaying the status of message receipts and user responses in a clear, summarized format.
      • Haynes was cited for its description of conventional operating system functionalities available at the time. Specifically, Haynes explained that application developers could choose from several types of pop-up windows, including a fully "modal" or obtrusive window that prevents all other user interaction with the system until the user responds to that window. Petitioner argued this directly corresponds to the "forced" nature of the alerts in the challenged claims.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA), when implementing the urgent alert system of Casey, would naturally look to analogous art like Tanumihardja to incorporate well-known, efficient UI designs. Providing predefined response lists as taught by Tanumihardja would be an obvious way to ensure rapid and accurate user responses, a critical goal for an urgent alert system. To enforce the alert's urgency, a POSITA would combine this with the most obtrusive windowing option described by Haynes—a standard feature for high-priority notifications—to ensure the user could not ignore the alert.
    • Expectation of Success: A POSITA would have a high expectation of success in making this combination. The integration involved applying conventional UI paradigms (from Tanumihardja) and standard operating system features (from Haynes) to an existing alert framework (from Casey), which were all well-understood and predictable technologies.

4. Key Claim Construction Positions

  • "Forced Message Alert" and Related Terms: Petitioner proposed that the term "forced message alert" should be construed to include two components: (1) a voice or text message payload and (2) an accompanying "forced message alert application software packet." This packet contains data that triggers the alert software on the recipient's device to perform its functions, such as requiring a response. This construction was based on the claim language and specification.
  • Means-Plus-Function Terms: For the numerous means-plus-function limitations in claims 1 and 2, Petitioner, for the purposes of the IPR proceeding only, adopted the functions and corresponding structures that the Patent Owner (AGIS) had identified in its infringement contentions in parallel district court litigation. Petitioner maintained that the asserted prior art disclosed the structures corresponding to these functions.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Filing Date: A central contention was that the ’970 patent was not entitled to its claimed priority date of September 21, 2004. Petitioner argued that key limitations central to the invention, such as "forced message alert software," lacked adequate written description support in the parent applications in the priority chain. Therefore, Petitioner asserted the claims were only entitled to the patent’s actual filing date of November 26, 2008. This argument was critical to establishing that Casey, Tanumihardja, and Haynes, all of which predate 2008, qualify as prior art against the challenged claims.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-13 of Patent 8,213,970 as unpatentable under 35 U.S.C. §103.