PTAB

IPR2018-01279

Apple Inc v. Qualcomm Inc

Key Events

Petition

petition

Title: METHOD AND DEVICE FOR ENABLING MESSAGE RESPONSES TO INCOMING PHONE CALLS
Brief Description: The ’037 patent describes a method and device that, in response to an incoming call, can determine a message identifier for the calling device based on data from the incoming communication. The receiving device can then programmatically use this identifier to address a message back to the calling device, allowing a user to send a message response instead of answering the call.

Prior Art Relied Upon: Mäkelä (Patent 6,301,338) and Moran (Application # 2003/0104827).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Mäkelä taught the core method of replying to an unanswered incoming call. Specifically, Mäkelä disclosed a portable terminal that identifies a caller using information included in the call signal (e.g., Caller Line Identity or CLI) and, based on user input, sends a reply message such as an SMS message. Petitioner contended that this met the limitations of receiving a call (a "voice-exchange session"), determining a message identifier (the CLI/phone number) from the incoming call data, and prompting a user to compose a message without answering. Moran was cited for its teaching of the "conventional" method of sending SMS messages by addressing them to the destination device's phone number.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Mäkelä with the conventional SMS addressing taught by Moran to ensure the system's interoperability with standard wireless communication networks (e.g., AT&T, Sprint, Verizon). This modification would allow Mäkelä's device to function effectively on existing infrastructure.
- Expectation of Success: The combination would have yielded predictable results, as Moran already taught a device that sends SMS messages addressed by phone number, which was a well-established and conventional practice.

Prior Art Relied Upon: Mäkelä (Patent 6,301,338), Moran (Application # 2003/0104827), and Tsampalis (Application # 2004/0203956).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the combination of Mäkelä and Moran to address claims requiring verification that the recipient device is enabled to receive messages. Petitioner asserted that Tsampalis taught techniques for storing "device messaging format capabilities" (e.g., whether a device can handle SMS or EMS formats) in a local phonebook or contact record. A sending device could then consult this locally stored information to verify compatibility before transmitting a message, satisfying the "verifying" limitation of claims like claim 7.
- Motivation to Combine: A POSITA would be motivated to integrate Tsampalis's teachings into the Mäkelä/Moran system to gain the benefit of "quickly and locally obtaining" the recipient's messaging capabilities. This avoids having to query an external network, which would reduce network utilization and improve efficiency—a clear advantage that would have motivated the combination.
- Expectation of Success: Success would have been predictable because Tsampalis described a communication device that already implemented this local capability-checking mechanism.

Prior Art Relied Upon: Mäkelä (Patent 6,301,338), Moran (Application # 2003/0104827), and Fargano (Patent 6,456,696).
Core Argument for this Ground:
- Prior Art Mapping: This ground targeted claim 23, which added the limitation of a user interface enabling the user to "extend an amount of time" the device waits before initiating voicemail. Petitioner argued that Fargano taught this exact functionality. Fargano disclosed a user interface that allows a subscriber to "select, re-start or extend the predetermined time" before an unanswered call is forwarded to voicemail.
- Motivation to Combine: A POSITA would modify the base Mäkelä/Moran device with Fargano's feature to provide users with greater flexibility and privacy. It would allow a user to silence a ringer without immediately rejecting the call or sending it to voicemail, thereby reducing disruption and giving the user time to move to a more private location before answering. This known benefit of reducing annoyance and minimizing inconvenience to the caller would have motivated the combination.
- Expectation of Success: The outcome was predictable, as Fargano explicitly taught a device operating with this user interface-driven time extension for handling incoming calls.

"voice-exchange session" (claim 1): Petitioner proposed this term means "a data transfer in which a user's speech or utterance is transmitted across a network to the location of another device or user in real-time... or near real-time..., such as a telephone call." This construction was based on the patent's specification stating that telephone calls are just one example of such a session.
"instant message" (claims 3, 4, 8, etc.): Petitioner argued this term should be construed as "a message that when transmitted to a recipient, [is] rendered on a device of the recipient immediately, nearly immediately, or alternatively without user-action, such as a 'Short Message Service' or 'SMS' text message." This relied on the specification's definition and its explicit example of SMS.
"automatically" (claims 1, 3, 4, etc.): Petitioner asserted this term should mean "performed without user input," based on the specification presenting manual input as an alternative to automatic transmission.

Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-14 and 16-25 of the ’037 patent as unpatentable.