PTAB

IPR2019-00485

HTC Corp v. AGIS Software Development LLC

Key Events

Petition

petition Intelligence

Title: Forced Message Alert and Response System
Brief Description: The ’970 describes a system for sending "forced message alerts" to mobile devices like PDAs or cell phones. The system requires recipients to manually respond from a provided list to clear the alert and tracks acknowledgements and responses.

Prior Art Relied Upon: Kubala (Application # 2006/0218232) and Hammond (Patent 6,854,007).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the ’970 patent is not entitled to its claimed priority date, making Kubala and Hammond prior art. Kubala disclosed a system where PDAs receive mandatory-response email messages and display a menu of possible responses (e.g., "Too Busy Right Now") which a user must interact with. Hammond disclosed a system that tracks the delivery and review of electronic messages, records acknowledgements, and can periodically resend messages until delivery is confirmed.
- Motivation to Combine: A POSITA would combine Kubala and Hammond to solve the common problem of ensuring important messages receive timely responses. A POSITA would integrate Hammond’s robust tracking and resending capabilities into Kubala’s mandatory-response messaging system for PDAs to improve its reliability, which Petitioner argued was an obvious design choice.
- Expectation of Success: A POSITA would have a reasonable expectation of success as Hammond merely disclosed details about tracking features already suggested by Kubala’s system for collecting and recording recipient responses.

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 unpatentability based on the patent's earliest effective filing date. Petitioner argued Hammond taught tracking acknowledgements and responses to mandatory messages. Johnson taught a system that prohibits a user from exiting or closing a mandatory-response email until a specific response is provided. Pepe supplied the missing disclosure of application software residing on a PDA that provides an on-screen menu of pre-defined possible responses to an incoming message.
- Motivation to Combine: A POSITA would combine these references as they are all directed to mobile devices and mandatory-response messaging. It would be an obvious design choice to implement the forced-response and tracking logic of Hammond and Johnson on a PDA using the specific device architecture and user interface (a list of possible responses) disclosed by Pepe.
- Expectation of Success: The combination represented a predictable use of prior art elements according to their established functions. Pepe simply provided a known PDA-based user interface for implementing the known messaging rules of Johnson and Hammond.

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 added Banerjee to the combination from Ground 2. Petitioner argued that to the extent Pepe was considered not to explicitly disclose a touchscreen display, Banerjee remedied this by teaching a PDA with a touchscreen display for interacting with applications.
- Motivation to Combine: A POSITA would combine Banerjee with Pepe because Banerjee provided specific, well-known details (a touchscreen) for the more generally disclosed input-output device in Pepe. This combination improved user interactivity for Pepe's messaging application.

Petitioner proposed constructions for several means-plus-function terms, which it argued were central to the invalidity analysis. Key examples include:
- "means for requiring a required manual response...": Petitioner contended the recited function is requiring a manual response to clear a response list from the display. The corresponding structure is the "forced-message alert software-application program on the recipient PDA/cellular phone" that displays the message/list and clears it only when a response is selected.
- "means for periodically resending...": Petitioner asserted the function is resending a forced-message alert to a recipient that has not acknowledged it. The corresponding structure is the "forced-message alert software-application program on the sender PDA/cell phone" that periodically resends the alert.

Petitioner’s primary technical contention, foundational to Ground 1, was that the ’970 patent is not entitled to its claimed priority date of September 21, 2004. Petitioner argued that the parent applications fail to provide adequate written description support for the key limitation of a "forced message alert software application program," as required by the independent claims. Therefore, the patent’s effective filing date is its actual filing date of November 26, 2008, making references like Kubala (2006) valid prior art.

Petitioner argued against discretionary denial under §325(d) by asserting that the petition contained new arguments and prior art not previously presented to the USPTO. Petitioner contended that the Examiner did not cite or review any of the primary references (Kubala, Hammond, Johnson, Pepe, Banerjee) during prosecution. Furthermore, Petitioner argued its grounds were not redundant with a previously filed IPR by another party (Apple Inc.), as that petition relied on an entirely different set of prior art references.

Petitioner requested institution of an inter partes review and cancellation of claims 1 and 3-9 of the ’970 patent as unpatentable.