PTAB

IPR2019-00453

Unified Patents LLC v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: Communal Audio Message Recording System
  • Brief Description: The ’252 patent describes a "communal recording system" that allows users to record audio messages and associate them with a "qualifying parameter" (e.g., time, location, personal characteristic). Subsequent users can only access a recorded message if they provide a matching parameter to the system.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness of Claim 1 over Nabkel

  • Prior Art Relied Upon: Nabkel (Patent 5,963,626)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nabkel anticipates every element of claim 1. Nabkel disclosed a system for generating and posting audio messages ("communiques") to callers based on a caller's identity. The system allowed a subscriber to record a message and assign access-controlling parameters, such as an expiration time/date or a Personal Identification Number (PIN). Petitioner contended these parameters are "qualifying parameters" under the patent's claim construction. A subsequent user must provide a matching parameter (the correct PIN) or access the message before the expiration time to gain access, otherwise access is denied, directly mapping to the limitations of claim 1.
    • Key Aspects: As an alternative position, Petitioner asserted that if the Board found Nabkel did not explicitly disclose the time/date limitation of claim 1[e], it would have been obvious for a person of ordinary skill in the art (POSITA) to implement Nabkel's disclosed message expiration feature by using both the recording time/date and the playback request time/date. This would be a predictable solution to achieve the stated goal of time-limited message availability.

Ground 2: Obviousness of Claims 2-5 over Nabkel in view of Hidary

  • Prior Art Relied Upon: Nabkel (Patent 5,963,626), Hidary (Patent 5,852,775)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nabkel taught the foundational system of restricting access to audio messages using parameters like a PIN, as established in Ground 1. However, Nabkel did not expressly link these parameters to a user's personal characteristics. Hidary remedied this deficiency by disclosing a system that selectively grants access to commercial messages based on a subscriber's personalized profile, which includes "personal characteristics" like age, sex, hobbies, and preferences ("pastime of the user"). Hidary also taught providing a menu of options based on these characteristics.
    • Motivation to Combine: A POSITA would combine Hidary's teachings with Nabkel's system to improve it. The combination would expand Nabkel's limited set of qualifying parameters (PIN, time) to include a wider range of user-specific data from Hidary. This would allow for more relevant, targeted messaging, which was a known goal in the art. Modifying Nabkel's PIN-based access to a code-based system that pulls from a user profile containing personal characteristics would have been a predictable and desirable improvement.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the modification was straightforward. It involved integrating Hidary's known concept of user profiles into Nabkel's existing database structure, which already stored user information. The combination yielded predictable results without changing the fundamental operation of either system.

Ground 3: Obviousness of Claims 2-5 over Ala-Laurila in view of Hidary

  • Prior Art Relied Upon: Ala-Laurila (Patent 6,246,871), Hidary (Patent 5,852,775)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Ala-Laurila, like the challenged patent, taught a system for providing access to recorded audio messages in a network mailbox. Access was restricted based on a "qualifying parameter," specifically a temporary access code or password assigned to a message. A recipient had to provide the matching code to retrieve the message. As with the Nabkel combination, Hidary was cited for its disclosure of tailoring message access based on a user's personal characteristics (age, hobbies, pastimes) stored in a profile.
    • Motivation to Combine: A POSITA would have been motivated to modify Ala-Laurila's simple, non-specific temporary access code with Hidary's more sophisticated, user-profile-based approach. This would overcome the limitations of Ala-Laurila's system by allowing access to be controlled by who the user is (based on their profile) rather than merely what code they have. This would enable the delivery of more relevant and targeted audio messages, an understood goal in the art.
    • Expectation of Success: Success was reasonably expected because the combination involved replacing one known access control method (a temporary code) with another known method (a profile-linked code). The necessary modifications, such as creating an association between a user code and a profile, were well within the skill of a POSITA.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 1 based on Ala-Laurila in view of Nabkel, arguing for the combination of Ala-Laurila's temporary access code system with Nabkel's time/date expiration functionality.

4. Key Claim Construction Positions

  • "qualifying parameter": Petitioner proposed this term be construed to mean "one or more variables used to determine eligibility." This construction was based on the plain and ordinary meaning of the words "qualify" and "parameter" and was argued to be consistent with the patent's specification.
  • "personal characteristic": Petitioner proposed this term be construed to mean "a feature that helps distinguish a person." This construction was derived from dictionary definitions and asserted to be consistent with the context of the claims, which list examples like pastimes that distinguish one individual from another.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5 of Patent 7,020,252 as unpatentable.