PTAB

IPR2019-00219

Apple Inc v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: RADIO COMMUNICATION SYSTEM
  • Brief Description: The ’106 patent discloses a communication system allowing a mobile station to communicate with a base station using two different modes, where one mode is bi-directional and a second mode can be uni-directional to create a more economical system.

3. Grounds for Unpatentability

Ground 1: Claims 15, 17, and 18 are obvious over Dahlin in view of Moessner.

  • Prior Art Relied Upon: Dahlin (Patent 6,122,263) and Moessner (a 2000 publication titled Terminal Reconfigureability – The Software Download Aspect).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dahlin disclosed a hybrid communication system with a communication station (radio terminal) that communicates with a further station (base station) using two modes. The first mode (GSM) is bi-directional via a transceiver, and the second mode (DAB) is a uni-directional, high-speed downlink via a receiver. Dahlin taught switching to the second (DAB) mode when the first (GSM) mode links are unavailable due to congestion or buffer overflow. Petitioner contended that Moessner supplied the missing limitation of transmitting "specification information" by teaching a protocol for over-the-air software downloads to update radio interface specifications in a reconfigurable terminal.
    • Motivation to Combine: A POSITA would combine Dahlin and Moessner to realize the known benefits of over-the-air updates for the radio technology in Dahlin’s system. As radio standards like DAB evolved, it would have been obvious to incorporate Moessner’s protocol to allow Dahlin’s radio terminal to fix bugs, receive service upgrades, and extend its operable life by downloading updates for its DAB radio interface, thereby applying a known technique to a known system to achieve predictable results.
    • Expectation of Success: A POSITA would have expected success in applying Moessner’s software download protocol to Dahlin’s system, as both references relate to mobile communication terminals and improving their functionality.

Ground 2: Claims 15-18 are obvious over Dillon.

  • Prior Art Relied Upon: Dillon (Patent 5,852,721).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Dillon, by itself, rendered the challenged claims obvious. Dillon disclosed a system with a communication station (hybrid terminal, modem, and satellite receiver) that communicates with a further station (hybrid gateway) using two modes: a first bi-directional terrestrial mode via a modem (the "first transceiver") and a second uni-directional satellite mode via a satellite receiver ("at least one of a transmitter and receiver"). Dillon taught that the satellite link could serve as a backup if the terrestrial link fails, thus communicating information via the second mode when the first mode is "not available." Petitioner argued that Dillon's use of tunneled IP packets with specific source/destination addresses to select the satellite reply path constituted transmitting "specification information about a radio interface specification defining said second mode."
    • Motivation to Combine (for §103 grounds): Not applicable (single reference ground).
    • Expectation of Success (for §103 grounds): Not applicable (single reference ground).

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including:

    • Claim 16 is obvious over Dahlin, Moessner, and Spiero (Patent 6,078,592), arguing Spiero taught a converter for a DAB receiver that would have been obvious to add to the Dahlin/Moessner combination.
    • Claims 15-18 are obvious over combinations of Dillon with Liebenow (Patent 6,522,640), Moessner, and both Liebenow and Moessner, arguing these references provided teachings on wireless transceivers and over-the-air updates that would have been obvious modifications to Dillon's system.

4. Key Claim Construction Positions

  • "transceiver" (claim 15): Petitioner proposed this term encompasses "a device that transmits and receives signals," consistent with its plain meaning and standard dictionary definitions at the time.
  • "at least one of a transmitter and receiver" (claim 15): Petitioner dedicated significant argument to construing this phrase disjunctively, meaning it requires only a transmitter or a receiver, but not necessarily both. This construction was central to their arguments, as the prior art often disclosed a simple receiver for the second, uni-directional mode. Petitioner argued this reading was compelled by:
    • Different Claim Language: Claim 15 used "transceiver" for the first mode but "at least one of a transmitter and receiver" for the second, implying a different meaning was intended.
    • Specification's Stated Purpose: The ’106 patent's purported invention was providing a "more economical" multi-mode system by recognizing it is "not necessary for all the modes to have a bi-directional link." A conjunctive construction (requiring both a transmitter and receiver) would negate this stated purpose by effectively requiring a second transceiver.
    • Prosecution History: The applicant argued for patentability by touting the benefit of being able to "eliminate a channel altogether," which is only possible with a uni-directional (e.g., receive-only) second mode.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 15-18 of the ’106 patent as unpatentable.