PTAB

IPR2018-00821

Apple Inc. v. AGIS Software Development LLC

1. Case Identification

2. Patent Overview

  • Title: Method of Utilizing Forced Alerts for Interactive Remote Communications
  • Brief Description: The ’970 patent relates to a method and system for sending urgent, "forced" alerts to remote communication devices like PDAs and cell phones. The technology focuses on confirming message receipt via automatic acknowledgements and requiring a manual user response to clear the persistent alert from the device's display.

3. Grounds for Unpatentability

Ground 1: Claims 1-13 are obvious over the combination of 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 combination of these three references teaches every limitation of the challenged claims. Casey was presented as the primary reference, teaching a foundational system for sending critical alerts to designated "subscriber" devices. Casey's system included sending an alert message with additional "alert information," receiving automatic acknowledgements from the recipient's device, periodically resending alerts if not acknowledged, and requiring a manual user response via a "pop-up window" to clear the alert. Petitioner contended that while Casey provided the core framework, it lacked specific user interface (UI) implementation details.

    • To supply these details, Petitioner relied on Tanumihardja, which described a similar mobile messaging system. Tanumihardja was argued to teach specific UI implementations for creating messages, designating recipients (individually or by group), creating and attaching a list of possible responses (e.g., a multi-choice list), and displaying detailed status updates (e.g., "Viewed," "Not Viewed," "Undeliverable") on the sender's device.

    • Finally, Haynes was used to support the argument for a "forced" alert that requires a response. Haynes was cited for its background teaching on conventional operating system window behaviors, specifically describing a modal "pop-up window" that prevents all other user interaction until a response is provided. Petitioner argued this was the obvious and well-known method for implementing the urgent alerts described in Casey.

    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSA) would combine Casey with Tanumihardja to implement Casey's conceptual alert system with the concrete, efficient UI features disclosed in Tanumihardja, which was closely analogous art. A POSA would look to Tanumihardja to learn how to create response lists and display status updates, improving the usability of Casey's system. Furthermore, a POSA would combine the teachings of Casey and Tanumihardja with Haynes's disclosure of modal windows to fulfill Casey’s goal of ensuring a high-priority alert is seen and addressed. Forcing a response via a modal window was a common design choice to grab a user's immediate attention.

    • Expectation of Success: Petitioner argued a POSA would have had a high expectation of success in making this combination. The proposed modifications involved applying conventional UI designs and standard operating system features to an existing alert framework, which would have been a predictable and straightforward integration of known technologies.

4. Key Claim Construction Positions

  • Petitioner argued that because the ’970 patent had not expired, its claims should be given their broadest reasonable interpretation. Several key constructions were proposed:
    • "forced message alert": This term, appearing in all claims, was construed to mean a combination of a voice or text message and an accompanying "forced message alert application software packet." This packet contains data that triggers the alert software on a recipient's device.
    • "forced message alert software application program": This phrase was construed broadly to mean the software used to perform the various claimed functions, including creating, sending, receiving, displaying, acknowledging, and tracking the forced alerts.
    • Means-Plus-Function Terms: For the numerous means-plus-function limitations recited in claims 1 and 2, Petitioner, for the purposes of the IPR only, adopted the functions and corresponding structures (including specific algorithms from the patent's figures) that the Patent Owner had identified in its infringement contentions in parallel district court litigation.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention of the petition was that the ’970 patent is not entitled to its claimed priority date of September 21, 2004. Petitioner argued that key claim limitations—specifically those involving "forced message alert software," the requirement for a list of possible responses, and the mechanism for clearing the display only after a manual response—were not disclosed in the parent applications and lack written description support.
  • Based on this alleged lack of support, Petitioner contended the patent’s earliest effective filing date is its actual filing date of November 26, 2008. This argument was critical to the invalidity case, as it established that Casey (filed 2004), Tanumihardja (filed 2001), and Haynes (issued 2001) all qualify as prior art.

6. Relief Requested

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