Apple Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00700
• Patent #: 8,406,116
• Filed: February 22, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Uniloc
• Challenged Claims: 1-20

2. Patent Overview

• Title: Mobile Conferencing Method and System
• Brief Description: The ’116 patent describes a technique for establishing a data connection between mobile devices through a central server. The method involves a server allocating a session identifier (e.g., an IP address and port number) to an initiating device, which then transmits this identifier to a target device via page-mode messaging (such as SMS) to enable a server-facilitated data exchange.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Kirmse in view of Chambers.

• Prior Art Relied Upon: Kirmse (Patent 6,699,125) and Chambers (Application # 2003/0142654).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kirmse disclosed a client-server system for online gaming where a game server provides connection details (server IP address and port number) to an initiating player, who then invites other players to join the session. Kirmse taught using various messaging services for the invitation but did not explicitly specify SMS. Chambers was alleged to cure this deficiency by teaching a multi-user chat system where an initiating mobile device sends an SMS invitation containing an IP address to other mobile devices. Petitioner contended that Kirmse taught all limitations of the independent claims except for using a "page-mode messaging service" for the invitation, a feature supplied by Chambers.
  • Motivation to Combine: A POSITA would combine the teachings to improve the system in Kirmse. Specifically, a POSITA would incorporate the SMS invitation method from Chambers to reliably reach invitees who might not have an active IP connection or are not logged into a specific instant messaging service. The combination was presented as a simple and predictable substitution of one known messaging method for another to leverage the ubiquity and store-and-forward capabilities of SMS.
  • Expectation of Success: A POSITA would have had a high expectation of success because using SMS messages to initiate IP-based communications was a well-known and predictable technique at the time.

Ground 2: Claims 1-20 are obvious over Chambers in view of RSIP.

• Prior Art Relied Upon: Chambers (Application # 2003/0142654) and RSIP (IETF RFC 3103).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Chambers taught the core method of using an SMS invitation containing an IP address to establish a multi-user chat session. However, Chambers’ preferred embodiment assumed devices have worldwide unique IP addresses, which was not typical. RSIP (Realm Specific IP) taught a well-known Network Address Translation (NAT) traversal technique where an RSIP server allocates a public IP address and port to a device behind a NAT. This allows other devices to connect to the allocated public address, with the RSIP server relaying communications to the private device. The proposed combination applied RSIP’s NAT traversal functionality to the system of Chambers.
  • Motivation to Combine: A POSITA would have been motivated to add RSIP’s NAT traversal functionality to the Chambers system to make it workable in typical real-world scenarios. Mobile devices are commonly assigned private IP addresses and operate behind NATs, a situation not addressed by Chambers' assumption of globally unique IPs. Implementing RSIP would allow the service provider to use less scarce private IP addresses and support multi-way conferencing between devices on heterogeneous networks.
  • Expectation of Success: The combination would have yielded predictable results, as NAT traversal techniques like RSIP were well-known, and their application to enable IP-based communications for devices behind NATs was a standard practice.

Ground 3: Claims 1-3, 5-10, and 12-20 are obvious over Cordenier in view of TURN.

• Prior Art Relied Upon: Cordenier (European Application # EP 1 385 323 A1) and TURN (IETF Draft "Traversal Using Relay NAT").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Cordenier disclosed a method where a first mobile terminal sends an SMS message containing its IP address to a second terminal to initiate an IP-based data exchange. Like Chambers, Cordenier did not provide a robust solution for when devices are separated by NATs. TURN was a well-known NAT traversal technique where a client requests a public IP address and port allocation from a TURN server, which then relays data between the client and a peer. The combination involved modifying Cordenier’s system to use a TURN server to allocate connection details and relay traffic, rather than attempting a direct connection using a potentially private IP address.
  • Motivation to Combine: Cordenier explicitly acknowledged that mobile devices could be on different networks and separated by NAT but failed to provide a technical solution. A POSITA, recognizing this problem, would have been motivated to search for and implement a known NAT traversal technique. TURN was an advantageous and known choice, particularly because it guarantees connectivity even through difficult NAT types (e.g., symmetric NATs).
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as adding known NAT traversal functionality was a common solution to a known problem. The necessary software modifications to request a relayed socket from a TURN server instead of sending a private IP address were well within the skill of a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper because the asserted prior art combinations and arguments were not previously considered by the USPTO.
• Specifically, it was asserted that Kirmse, Cordenier, and RSIP were never considered during prosecution. While Chambers and a later version of the TURN protocol were made of record, Petitioner contended they were not substantively addressed or analyzed in the manner presented in the petition.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’116 patent as unpatentable.