Apple Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00702
• Patent #: 7,969,925
• Filed: February 22, 2019
• Petitioner(s): Apple Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Peer-to-Peer Mobile Data Transfer Method and Device
• Brief Description: The ’925 patent describes a technique for establishing a direct, server-less, peer-to-peer data connection between two mobile devices. The method involves an initiating device sending an invitation message, such as an SMS containing its IP address, to a target device, which then uses that IP address to establish a direct TCP/IP connection back to the initiating device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Alos and RFC793 - Claims 1, 3-8, 10-15, and 17-20 are obvious over Alos in view of RFC793.

• Prior Art Relied Upon: Alos (European Application # EP 1 009 153 A1) and RFC793 (Request for Comment 793, "Transmission Control Protocol").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Alos taught the core method of the ’925 patent, including a first mobile device sending an SMS message containing its IP address to a second device to establish a peer-to-peer IP connection. Alos disclosed transmitting the invitation with a network address (claim 1b), receiving a response (claim 1c), and establishing a peer-to-peer session (claim 1d). The only element not expressly taught by Alos was "opening a software listening port" (claim 1a). Petitioner asserted that implementing this with a standard TCP port, as described in RFC793, was an obvious design choice.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA), when implementing the IP-based communication system of Alos, would have been motivated to select a transport layer protocol. Given that wireless links are inherently less reliable than wired links, a POSITA would have naturally turned to TCP, the well-known standard for reliable data transfer over IP networks defined in RFC793. Using TCP inherently requires opening a listening port on the receiving device to accept the incoming connection.
  • Expectation of Success: A POSITA would have had a high expectation of success, as combining Alos's messaging logic with the standardized and widely implemented TCP protocol from RFC793 would have predictably resulted in a reliable peer-to-peer communication system.

Ground 2: Obviousness over Alos, RFC793, SMS Specification, and WMA - Claims 2, 9, and 16 are obvious over the combination.

• Prior Art Relied Upon: Alos, RFC793, SMS Specification (3GPP TS 23.040), and WMA (JSR 120 Wireless Messaging API).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims 2, 9, and 16, which add the limitation of the initiating device also being able to receive invitations. While Alos taught that either device could initiate a connection, Petitioner argued the SMS Specification and WMA provided the obvious mechanism for implementing this. These references taught using SMS port addressing to route specific types of messages (like an Alos invitation) to a dedicated application, distinct from a device's standard SMS inbox. This required opening a listening port for the SMS service.
  • Motivation to Combine: A POSITA implementing the bidirectional system of Alos would need to distinguish Alos-protocol invitation messages from regular text messages. The SMS Specification explicitly provided for application port addressing for this purpose. WMA further taught opening an SMS port in a "listen mode" to receive such messages and notify the associated application. This combination provided a standard way to isolate the specialized protocol, enhancing robustness and modularity.

Ground 3: Obviousness over Cordenier and RFC793 - Claims 1, 3-8, 10-15, and 17-20 are obvious over Cordenier in view of RFC793.

• Prior Art Relied Upon: Cordenier (European Application # EP 1 385 323 A1) and RFC793.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Cordenier as an alternative primary reference that, like Alos, taught a system for peer-to-peer exchange of information without a server. Cordenier disclosed a first terminal sending an SMS message including its IP address to a second terminal, which then responded over a data network (e.g., the Internet) to establish a connection.
  • Motivation to Combine: The rationale for combining Cordenier with RFC793 mirrored the argument for Alos. Cordenier was silent on the specific transport layer protocol for its IP-based response. A POSITA would have been motivated to use the reliable, standard TCP protocol from RFC793 to ensure data integrity for the disclosed file exchange, chat, and texting applications, which would have required opening a TCP listening port.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Lee (Patent 6,847,632), RFC793, and other standard specifications (SMS Specification, WMA), as well as a combination of Cordenier, RFC793, and Dorenbosch (Application # 2003/0217174). These grounds relied on a similar rationale, presenting Lee and Cordenier as primary references that taught the core peer-to-peer invitation system, with the secondary references providing obvious, well-known implementation details for reliable transport (TCP) and message routing (SMS ports).

4. Key Claim Construction Positions

• "opening a listening software port" (claims 1, 2, 8, 9, 15, 16): Petitioner argued this phrase should be given its ordinary meaning to a POSITA: "associating a port identifier with a process." This construction is broad and encompasses the well-known practice of opening standard ports (e.g., for FTP, HTTP) or ephemeral ports, as detailed in references like RFC793. Petitioner contended this is not limited to opening a port exclusively for a single response from a specific device.
• "network address" (claims 1, 2, 3, 8, 9, 10, 15, 16, 17): Petitioner asserted this term should be given its ordinary meaning, which does not inherently require a port number. The argument was that the claims recite the address is an "IP address," and where a port is required, the patent and related applications explicitly say so. This distinction is critical to the argument that prior art teaching an IP address in an SMS meets this limitation, while the "port" limitation is met by the obvious combination with TCP standards.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that review is proper under §314(a) and §325(d) because none of the asserted prior art references (Alos, Lee, Cordenier, RFC793, SMS Specification, Dorenbosch, or WMA) were considered during the original prosecution of the ’925 patent. Therefore, the presented challenges were not cumulative of any references of record.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’925 patent as unpatentable.