PTAB

IPR2019-00918

Apple Inc v. Uniloc 2017 LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Establishing Network Connections Between Stationary Terminals and Remote Devices Through Mobile Devices
  • Brief Description: The ’298 patent discloses a method for establishing a data connection between a stationary terminal and a remote device. The remote device sends an SMS invitation containing its network address (e.g., IP address) and a port number to a proximate mobile device, which then forwards this information over a short-range wireless link to the stationary terminal to initiate the connection.

3. Grounds for Unpatentability

Ground 1: Obviousness over Charbonnier, RFC793, and the SMS Specification - Claims 1, 3, 5, 6, 8, and 10

  • Prior Art Relied Upon: Charbonnier (European Patent Application No. EP 1 077 567 A1), RFC793 (the TCP standard), and the SMS Specification (3G TS 23.040).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Charbonnier teaches the core method of the ’298 patent: an initiating remote device (mobile phone 6) sends an SMS message containing its temporary IP address to a proximate mobile device (phone 8), which then establishes a TCP/IP-based connection with the initiating device. Charbonnier discloses all elements of the independent claims except the explicit use of listening ports for routing the SMS and TCP/IP communications.
    • Motivation to Combine: Petitioner contended that because Charbonnier explicitly discloses using the SMS and TCP protocols, a person of ordinary skill in the art (POSITA) would naturally consult the governing standards for these protocols—the SMS Specification and RFC793—for implementation details. These standards inherently teach the use of ports (SMS ports and TCP ports) to route incoming messages to the correct software applications on a device. A POSITA would combine these teachings to implement the system described in Charbonnier, making it obvious to open an SMS listening port to receive the invitation and to include a TCP listening port in the invitation to ensure the response is correctly routed.
    • Expectation of Success: A POSITA would have had a high expectation of success, as implementing port-based addressing is a fundamental and standardized aspect of both TCP/IP and SMS communications, leading to the predictable result of routing messages to the intended applications.

Ground 2: Obviousness over Charbonnier, RFC793, the SMS Specification, and TURN - Claims 1, 3, 5, 6, 8, and 10

  • Prior Art Relied Upon: The combination of Ground 1, further in view of TURN (“Traversal Using Relay NAT,” a draft IETF RFC).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground modifies the combination in Ground 1 by using TURN to enable communication when devices are behind a Network Address Translation (NAT) router. Instead of sending its own (potentially private) IP address, the initiating device in Charbonnier would first request a public IP address and port number from a TURN server. This publicly accessible socket (address and port) would then be sent in the SMS invitation, allowing the responding device to establish a connection via the TURN relay server.
    • Motivation to Combine: Petitioner argued that a POSITA would recognize that service providers often assign private, non-routable IP addresses, which would prevent the direct connection taught in Charbonnier from working. To solve this known problem, a POSITA would be motivated to search for and implement a standard NAT traversal technique. TURN was a well-known technique that provided a reliable solution by allocating a public relay address, ensuring connectivity regardless of the network configuration.
    • Expectation of Success: Adding NAT traversal functionality was a well-understood practice in network engineering to ensure robust connectivity, and TURN provided a standardized protocol for achieving this, leading to a predictable outcome.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining the Ground 1 art with DECT Speakerphone (a product publication) to address a potential narrow construction of "stationary terminal" that requires a user interface. Further grounds added Lee (Patent 6,847,632) to the prior combinations to explicitly teach that the cellular (GSM) network supported TCP/IP communications, as required by dependent claims 4 and 9.

4. Key Claim Construction Positions

  • "terminal": Petitioner argued that "terminal" should be given its ordinary meaning in computer networking—a point where data enters or leaves a network—and should not be narrowly construed to require a user interface. This construction allows the DECT base station in Charbonnier, which lacks a user interface, to qualify as the claimed "stationary terminal."
  • Antecedent Basis for "the listening port comprises a TCP port" (claims 4 and 9): Petitioner contended that the independent claims recite two listening ports: one on the mobile device for receiving SMS messages and a second "listening port related to the initiating remote device" that is included in the SMS message. Petitioner argued that the intrinsic record makes clear that the TCP port limitation in the dependent claims must refer to this second port, as a port for receiving page-mode SMS messages cannot be a TCP port.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) and §325(d) was improper because none of the asserted prior art references (Charbonnier, RFC793, SMS Specification, TURN, DECT Speakerphone, or Lee) were considered during the original prosecution of the ’298 patent. Therefore, the petition raised new arguments based on references that were not cumulative of the prior art of record.

6. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1, 3-6, and 8-10 of the ’298 patent as unpatentable.