PTAB

IPR2018-01280

Apple Inc. v. Qualcomm Incorporated

Title: METHOD AND DEVICE FOR ENABLING MESSAGE RESPONSES TO INCOMING PHONE CALLS
Brief Description: The ’037 patent describes a method and device for responding to an incoming phone call with a message. The technology involves a computing device that, upon receiving a call, determines a message identifier (e.g., the caller's phone number) from data provided with the call and programmatically addresses a response message using that identifier.

Prior Art Relied Upon: Brown (Application # 2004/0203794) and Moran (Application # 2003/0104827).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Brown taught a primary method for providing an automatic response to a telephone call on a wireless device. Brown's system received an incoming call, used caller ID information to identify the caller's phone number, and allowed a user to actuate a key to send a text message (e.g., SMS) in response without answering the call. Petitioner asserted that Moran taught the "conventional" method of sending SMS messages involves addressing the message to the phone number of the destination device. The combination was argued to teach all limitations of independent claims 1, 19, and 22, such as determining a message identifier from the call and automatically addressing a message.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Moran's conventional SMS addressing method with Brown's auto-response system for the simple and compelling reason of ensuring interoperability. Conforming Brown's device to the standard method of sending SMS messages via a phone number would allow it to function on conventional wireless networks.
- Expectation of Success: Success in this combination would have been highly predictable, as Moran described its phone-number-based addressing as a standard, widely implemented technique, not a speculative concept.

Prior Art Relied Upon: Brown (Application # 2004/0203794), Moran (Application # 2003/0104827), and Tsampalis (Application # 2004/0203956).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the Brown/Moran combination by incorporating the teachings of Tsampalis to address limitations related to verifying recipient capability. Petitioner asserted that Tsampalis taught storing a remote device's messaging format capabilities (e.g., ability to receive SMS or EMS formats) in a local phonebook or contact record. A sending device could then consult this locally stored information to confirm the recipient device was enabled for that message type before sending. This combination was argued to render obvious the limitations of claims 7-11 and 24-25, which require verifying that the second computing device is enabled to receive the message.
- Motivation to Combine: A POSITA would be motivated to add the feature taught by Tsampalis to the base Brown/Moran device to obtain the known benefit of improved efficiency. Storing and checking format capabilities locally would allow the device to "quickly and locally" verify compatibility without having to retrieve such information externally over the network, thereby reducing network utilization.
- Expectation of Success: The outcome was predictable, as it involved integrating a known feature (local capability verification) to achieve its well-understood benefit (reduced network traffic).

Prior Art Relied Upon: Brown (Application # 2004/0203794), Moran (Application # 2003/0104827), and Fargano (Patent 6,456,696).
Core Argument for this Ground:
- Prior Art Mapping: This ground added the teachings of Fargano to the base combination to challenge claim 23. Petitioner argued Fargano disclosed a user interface that enabled a user to elect to extend an amount of time the device waits before taking an action, such as forwarding the call to voicemail. This functionality could be used to temporarily deactivate a ringer, allowing a user to move to a more private location before answering, without the call being missed.
- Motivation to Combine: A POSITA would have been motivated to modify the Brown/Moran device with Fargano's feature to achieve the benefit of reducing the "disruption and annoyance" of a telephone ringer. This would also allow the underlying processing of the incoming call to continue, minimizing inconvenience to the caller while the user finds an appropriate place to answer or respond.
- Expectation of Success: The result of this combination was argued to be predictable because Fargano taught a communication device already operating according to these described techniques to solve this common problem.

"voice-exchange session" (claim 1): Petitioner argued this term, based on explicit definitions in the specification, means "a data transfer in which a user's speech or utterance is transmitted across a network... in real-time... or near real-time... such as a telephone call." This construction was important for ensuring that prior art disclosing standard "telephone calls" fell within the scope of the claim.
"automatically" (claims 1, 3, 4, 11, 14, 17): Petitioner asserted this term should be construed to mean "performed without user input." This construction was based on the specification's direct contrast of "automatically" with actions requiring "manual input from the user" and was critical for mapping prior art systems that performed steps (like addressing a message) without further user interaction after an initial trigger.
"instant message" (claims 3, 4, 8, 12, 13, 22): Petitioner contended this term should be construed to mean "a message that when transmitted to a recipient, [is] rendered on a device of the recipient immediately, nearly immediately, or alternatively without user-action," and noted that the patent identifies an SMS text message as a primary example. This construction directly linked the claim term to the SMS technology widely discussed in the prior art.

Petitioner requested institution of an inter partes review and the cancellation of claims 1-16 and 18-25 of Patent 7,844,037 as unpatentable under 35 U.S.C. §103 on all grounds presented.