PTAB

IPR2018-00884

Apple Inc v. Uniloc Luxembourg SA

Title: Controlling Services in a Packet-Based Telephony Network
Brief Description: The ’552 patent discloses a telephony system that uses a network "policy enforcement point" to intercept call signaling messages between endpoints. This entity analyzes the messages to ensure that requested services (e.g., caller ID, specific call features) are authorized for the user based on a stored subscriber profile, thereby preventing the use of unauthorized services.

Prior Art Relied Upon: Kalmanek (Patent 6,324,279).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kalmanek taught all limitations of the primary independent claims. Kalmanek disclosed a packet-based telephony system to prevent service theft where "gate controllers" (GCs) and "network edge devices" (NEDs) function as the claimed "network entity." These GCs intercept call SETUP messages, access authentication databases and customer profiles to verify if a user is subscribed to requested services (e.g., caller ID, quality of service via codec specification), and manage the call accordingly. This process directly maps to the ’552 patent’s method of intercepting a message, determining authorization based on a profile, and filtering or processing the message to enforce service rules.
- Motivation to Combine (for §103 grounds): This ground relied on a single reference in view of the general knowledge of a Person of Ordinary Skill in the Art (POSITA). Petitioner asserted a POSITA would find it obvious to apply the well-understood principles taught in Kalmanek to achieve the system of the ’552 patent.
- Key Aspects: The core of this ground was the assertion that Kalmanek’s "gate controller" performing "service-specific admission control" based on "customer profile information" is functionally identical to the ’552 patent’s "policy enforcement point" using a "device profile" to authorize services.

Prior Art Relied Upon: Kalmanek (Patent 6,324,279) and Shaffer (Patent 7,023,839).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claims 5 and 11, which added the limitation of monitoring media data flow to ensure compliance with authorized services and bandwidth. Petitioner asserted Kalmanek taught the base system, including that its NEDs/edge routers track resource usage for accounting. Shaffer was introduced because it explicitly disclosed a bandwidth adjustment server (BWAS) that monitors system bandwidth usage and quality of service requirements.
- Motivation to Combine (for §103 grounds): A POSITA would combine Shaffer’s explicit bandwidth monitoring functionality with Kalmanek's system to enhance it. Since Kalmanek’s system was already concerned with authorizing quality of service and tracking network resources, adding the specific monitoring and compliance features from Shaffer was a logical and predictable improvement to ensure authorized service levels were maintained.
- Expectation of Success: The combination was argued to be predictable, as it involved integrating a known monitoring solution (Shaffer) into a system already designed for service authorization and resource management (Kalmanek).

Prior Art Relied Upon: Kalmanek (Patent 6,324,279) and Strathmeyer (Application # 2001/0026548).
Core Argument for this Ground:
- Prior Art Mapping: This ground targeted claims specific to the Session Initiation Protocol (SIP). Kalmanek disclosed a system using the H.323 protocol. Strathmeyer was introduced because it taught call control systems and explicitly stated that H.323 and SIP are "functionally equivalent" protocols for call setup, with a SIP "proxy" performing the role of an H.323 "gatekeeper."
- Motivation to Combine (for §103 grounds): A POSITA would have found it obvious to modify Kalmanek’s H.323-based system to use the well-known SIP protocol. Given Strathmeyer’s teaching of their equivalence, this would have been a simple substitution to implement a widely used protocol within the architecture taught by Kalmanek.
- Expectation of Success: Success would be expected and the result predictable, as it amounted to substituting one well-known, equivalent call signaling protocol for another.

Prior Art Relied Upon: Kalmanek (Patent 6,324,279) and Gleichauf (Patent 7,412,598).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claim 17, which recites returning an option message to a user who requests an unauthorized service, asking if they want to invoke it. While Kalmanek focused on blocking unauthorized services, Gleichauf was introduced as teaching the precise concept of "real-time insertion of services" during a call. Gleichauf solved the problem of users paying for monthly services they rarely use by allowing them to add a service on demand.
- Motivation to Combine (for §103 grounds): A POSITA would have recognized the significant commercial benefit of adding Gleichauf’s on-demand service feature to Kalmanek’s authorization framework. This modification would generate new revenue streams for the service provider by upselling services to users in real-time when they attempt to use a feature for which they are not subscribed.
- Expectation of Success: This was presented as a straightforward modification that combined two related telephony concepts to provide a predictable and commercially valuable feature.

"intercepting" (claims 1, 6, 18, 23): Petitioner argued that under the Broadest Reasonable Interpretation, "intercepting" a signaling message simply means "receiving" the message by a network entity located in the communications path between the call's endpoints. This construction was necessary to map the functionality of Kalmanek’s "gate controller," which is described as receiving SETUP messages.
"device profile" (claim 1): Petitioner contended that because the ’552 patent specification only describes authorization based on a "user profile," the claim term "device profile" must be construed to encompass a user's profile that is associated with a particular device. This interpretation was critical for mapping prior art like Kalmanek, which teaches authentication based on "customer profile information" tied to a user's line or device, not a profile of the device itself.

Petitioner requests institution of an IPR and cancellation of claims 1-25 of the ’552 patent as unpatentable.