Apple Inc v. Blix Inc

1. Case Identification

• Case #: IPR2020-01635
• Patent #: 9,749,284
• Filed: October 2, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Blix Inc.
• Challenged Claims: 1-38

2. Patent Overview

• Title: Facilitating Communications While Concealing Private Addresses
• Brief Description: The ’284 patent discloses methods and systems for "controlled reciprocating communication" that safeguard user privacy by concealing private interaction addresses (e.g., real phone numbers) from other participants. The system uses manageable public interaction addresses and a "reverse list" to associate parties before initiating communication.

3. Grounds for Unpatentability

Ground 1: Obviousness over Leung and PHOSITA Knowledge - Claims 1-5, 7-10, 12-18, 21-30, 33-35, and 37-38 are obvious over Leung in view of the knowledge of a POSITA.

• Prior Art Relied Upon: Leung (Application # 2010/0020952).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Leung discloses all key limitations of the independent claims. Leung describes a privacy-protecting communication system for social networks that uses "unique member IDs" (the claimed "manageable public interaction address") to conceal users' "real phone numbers" (the claimed "private interaction address"). A central server stores this association in a "member profile" (the claimed "record"). When a call is received, the system can use the caller's member ID to check an "accept call list" (the claimed "reverse list") before connecting the call, thereby performing a "pre-interaction act." The knowledge of a person of ordinary skill in the art (POSITA), particularly regarding the well-known Session Initiation Protocol (SIP), would supply the standard incoming and outgoing communication handshaking steps.
  • Motivation to Combine (for §103 grounds): The combination is with the general knowledge of a POSITA. Petitioner contended a POSITA would naturally apply well-known communication protocols like SIP to implement the privacy-focused calling system described in Leung.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in applying standard protocols like SIP to Leung’s system, as Leung itself suggests compatibility with such technologies.

Ground 2: Obviousness over Leung in view of Klein - Claims 7, 8, 13, and 21 are obvious over Leung in view of Klein.

• Prior Art Relied Upon: Leung (Application # 2010/0020952) and Klein (Patent 8,594,298).
• Core Argument for this Ground:
  • Prior Art Mapping: While Leung taught basic call filtering (accept/reject lists), Petitioner argued Klein teaches more advanced and granular call management rules. Klein discloses applying filters based on factors like time of day or caller identity to trigger various actions, including forwarding a call, sending it to voicemail, or converting the communication to another format, such as an SMS or email notification. This directly teaches the limitations in claims 7, 8, 13, and 21 related to applying predefined rules and converting communication formats.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Klein’s advanced filtering rules with Leung’s privacy-centric communication system to create a more robust and feature-rich service. This would be a predictable improvement, using known techniques to enhance an existing system.
  • Expectation of Success (for §103 grounds): Success would be expected, as it would involve implementing known software-based filtering logic into the server-side processing already disclosed by Leung.

Ground 3: Obviousness over Leung in view of Rozenblit - Claims 6 and 11 are obvious over Leung in view of Rozenblit.

• Prior Art Relied Upon: Leung (Application # 2010/0020952) and Rozenblit (Patent 5,832,072).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rozenblit remedies a deficiency in Leung by teaching the use of a "partial interaction address." Rozenblit discloses a system that preserves a caller's privacy by delivering only partial calling line information (e.g., the NPA-NXX portion of a phone number) to the called party. This allows for call screening without revealing the caller’s full number, directly mapping to the "partial interaction address" limitation of claim 6.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to modify Leung's caller ID feature with Rozenblit's technique to further enhance user privacy. This would prevent a user's full public member ID—which might be linked to a public profile—from being revealed, aligning with the core privacy-preserving goal of Leung's system.
  • Expectation of Success (for §103 grounds): Petitioner argued for a high expectation of success, as Rozenblit itself states its invention can be implemented with "relatively simple software modifications" to existing communication networks.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on Leung in view of Trandal (Application # 2013/0078971) to add automated callback notifications, and Leung in view of Kirchhoff (Patent 7,839,987) to add functionality for obtaining a caller's interaction addresses from third-party databases.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, contending that the factors strongly favor institution. Key arguments included:
  • No trial date had been set in the parallel district court litigation, and proceedings were in the very early stages with minimal investment by the parties or the court.
  • The presiding district court judge routinely grants stays pending IPR, making it likely that a stay would be granted upon institution and thus avoid duplicative efforts.
  • There was no overlap in invalidity contentions, as Petitioner had not yet served its contentions in the district court case.
  • The petition presented strong evidence of unpatentability, and the challenged patent had never before been subject to a post-issuance review at the PTAB.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-38 of the ’284 patent as unpatentable.