Apple Inc v. AGIS Software Development LLC

1. Case Identification

• Case #: IPR2019-00411
• Patent #: 8,213,970
• Filed: December 7, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): AGIS Software Development LLC
• Challenged Claims: 1, 3-9

2. Patent Overview

• Title: Method of Utilizing Forced Alerts for Interactive Remote Communications
• Brief Description: The ’970 patent discloses a system for sending "forced message alerts" to recipient devices, such as PDAs or cell phones, which are electronic messages that require a manual response. The system also tracks the receipt of, and response to, these forced alerts.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kubala and Hammond - Claims 1 and 3-9 are obvious over Kubala in view of Hammond.

• Prior Art Relied Upon: Kubala (Application # 2006/0218232) and Hammond (Patent 6,854,007).
• Core Argument for this Ground:
  • Priority Date Challenge: Petitioner argued that the ’970 patent is not entitled to its claimed priority date of September 21, 2004. Petitioner asserted that the priority applications (’490, ’648, and ’830 applications) fail to provide written description support for the key limitation of a "forced message alert software application program." Consequently, the patent’s effective filing date is its actual filing date of November 26, 2008, making Kubala (published 2006) and Hammond (issued 2005) valid prior art under 35 U.S.C. §102(b).
  • Prior Art Mapping: Petitioner argued that Kubala taught a mandatory-response messaging system for PDAs where a recipient is alerted and required to act. Kubala’s "enhanced email application" with a "mandatory-response functional unit" was alleged to meet the "forced message alert software" limitation of independent claims 1 and 6. Kubala also disclosed providing a menu of possible responses (e.g., "Too busy right now") and preventing a user from closing the message until a response is sent. To the extent Kubala did not explicitly teach detailed tracking of acknowledgements and responses, Hammond was argued to supply this element by disclosing a "Message Review Server" and "Message Tracking Table" that ensure messages are delivered, reviewed, and periodically resent if not confirmed.
  • Motivation to Combine: A POSITA would combine Kubala and Hammond because both references addressed the same problem: ensuring that important electronic messages receive timely responses. Petitioner argued that implementing Hammond's detailed tracking features into Kubala's mandatory-response system would have been an obvious design choice to improve the reliability and monitoring capabilities of Kubala’s system.

Ground 2: Obviousness over Hammond, Johnson, and Pepe - Claims 1 and 3-9 are obvious over Hammond in view of Johnson and Pepe.

• Prior Art Relied Upon: Hammond (Patent 6,854,007), Johnson (Patent 5,325,310), and Pepe (Patent 5,742,905).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Hammond taught the core system for tracking message delivery, acknowledgements, and responses. Johnson was argued to add the concept of a mandatory-response system where a user is "prohibited from performing a selected action until the specific response has been entered," thereby teaching the "forced" nature of the alert and the requirement to respond to clear the message. Pepe was argued to supply the missing disclosure of implementing such a system on PDAs with "application software residing in the PDA" that provides an on-screen menu of possible responses to an incoming message.
  • Motivation to Combine: A POSITA would combine these references because they are all directed to improving electronic messaging reliability. Petitioner argued it would be obvious to implement the mandatory-response functionality of Johnson and the tracking of Hammond on the PDA platform taught by Pepe. Combining Pepe's user-friendly list of pre-defined responses with Johnson's system would improve efficiency, and adding Hammond's tracking would ensure the system's overall reliability.

Ground 3: Obviousness over Hammond, Johnson, Pepe, and Banerjee - Claims 1 and 3-9 are obvious over Hammond in view of Johnson, Pepe, and Banerjee.

• Prior Art Relied Upon: Hammond (Patent 6,854,007), Johnson (Patent 5,325,310), Pepe (Patent 5,742,905), and Banerjee (Application # 2003/0128195).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated all arguments from Ground 2 and added Banerjee. Petitioner argued that while Pepe disclosed a PDA with an input-output device and display, Banerjee was added to explicitly teach a PDA that includes a touchscreen display.
  • Motivation to Combine: A POSITA would be motivated to look to Banerjee to supplement Pepe’s disclosure because both references related to PDAs and user interfaces. Because PDAs with touchscreens were well-known, a POSITA seeking to implement the system of Hammond and Johnson on the PDA platform of Pepe would have naturally and obviously incorporated a touchscreen interface as taught by Banerjee to provide the necessary user input functionality.

4. Key Claim Construction Positions

• Petitioner argued that several claim terms were means-plus-function limitations under 35 U.S.C. §112, para. 6 and proposed the following constructions for key terms:
  • "means for receiving and displaying a listing of which recipient PDA/cell phones have automatically acknowledged...": Petitioner construed the function as receiving and displaying a list of acknowledged and unacknowledged recipients. The corresponding structure was identified as the "forced-message alert software-application program on the sender’s PDA/cell phone that monitors for and receives electronic transmissions with acknowledgement receipts."
  • "means for requiring a required manual response...": Petitioner construed the function as requiring a manual response from a list to clear that list from the recipient's display. The corresponding structure was identified as the "forced-message alert software-application program on the recipient PDA/cellular phone that causes the message and manual response list to be displayed...and clears the forced alert text data when a response is selected."

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) or §325(d). The petition was asserted to be substantively identical to a petition in IPR2018-01079 that had already been instituted. Petitioner stated it was concurrently filing a motion for joinder to that proceeding in a limited "understudy" role, which it argued "effectively neutralizes" the General Plastic factors concerning follow-on petitions and obviates concerns of serial harassment or inefficient use of resources.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1 and 3-9 of Patent 8,213,970 as unpatentable.