PTAB

IPR2021-00698

ZTE Corp v. WSOU Investments LLC

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1. Case Identification

2. Patent Overview

  • Title: Data Synchronization between Terminal Devices
  • Brief Description: The ’505 patent describes a method and system for synchronizing data between a first terminal device (e.g., a personal server or PDA) and a second, remote terminal device. The synchronization occurs via an intermediate mobile terminal that receives data from the first device via a short-range connection, formats the data into at least one SMS message, and transmits the SMS message to the second device over a cellular network.

3. Grounds for Unpatentability

Ground 1: Anticipation by Haller - Claims 1, 3, 10-12, 14, 20, 21, 23, 25, 32, 33, 34, 38, 39, 43, and 44 are anticipated by Haller under 35 U.S.C. §102.

  • Prior Art Relied Upon: Haller (Patent 7,295,532).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Haller disclosed every element of the challenged claims. Haller described a system for a traveling professional to synchronize a PDA with a corporate exchange server. This system comprised a first terminal (terminals 107, including a PDA), an intermediate terminal (device 106, a cellular handset), and a second remote terminal (server 101 or 102). Haller disclosed transmitting data packets from the PDA to the cellular handset via a short-range Bluetooth connection. The handset included an "SMS software component plug-in" (406h) that functioned as an SMS server to format the received data packet into an SMS message and transmit it over a cellular network to the remote corporate server. This architecture, Petitioner contended, directly maps to the limitations of independent claims 1, 14, and 23.

Ground 2: Obviousness over Haller and Yu - Claims 4, 5, 13, 22, 26, 27, 35, 36, 37, 40, 41, 42, and 45 are obvious over Haller in view of Yu.

  • Prior Art Relied Upon: Haller (Patent 7,295,532) and Yu (Patent 7,058,036).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Haller taught the base system for data synchronization via SMS as detailed in Ground 1. For claims requiring transmission of an SMS message to a "message center," Petitioner argued that Yu explicitly disclosed this feature. Yu described a wireless messaging system where a mobile station sends and receives SMS messages via a Short Message Service Center (SMSC), which provides a store-and-forward function.
    • Motivation to Combine: A POSITA would combine Haller's synchronization system with Yu's explicit teaching of using an SMSC to enhance the system's reliability. Routing messages through an SMSC, as taught by Yu, provides flexibility and prevents data loss if the recipient is unavailable, a well-known advantage that would have been desirable to implement in Haller's system.
    • Expectation of Success: Combining a standard SMSC routing mechanism (from Yu) with a system that already uses SMS for data transmission (Haller) was a predictable and straightforward integration with a high expectation of success.

Ground 3: Obviousness over Haller and Singhal - Claims 2, 6, 7, 8, 15, 16, 17, 18, 24, 28, 29, and 30 are obvious over Haller in view of Singhal.

  • Prior Art Relied Upon: Haller (Patent 7,295,532) and Singhal (Patent 6,925,481).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds on Haller's base system by adding teachings from Singhal for specific data formatting and compression techniques. Singhal disclosed using specific synchronization protocols like SyncML, which was a well-known standard for seamlessly synchronizing data. Singhal also taught compressing data and using formats like WBXML (Wireless Application Protocol Binary Extensible Markup Language) and MIME (Multipurpose Internet Mail Extensions) to augment and structure data transmission.
    • Motivation to Combine: A POSITA would combine the teachings of Singhal with Haller's system to improve efficiency and interoperability. Using a standard protocol like SyncML would ensure Haller's system could seamlessly synchronize data between different devices. Likewise, applying Singhal's teachings on data compression and WBXML encoding would augment the transmission of SMS messages in Haller's system, allowing more data to be sent in fewer messages and enhancing transmission capacity.
    • Expectation of Success: Implementing well-known, standard data formats and compression techniques into an existing data transmission framework was a routine design choice for a POSITA at the time.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 9, 19, and 31 based on the combination of Haller, Singhal, and Oueslati (Patent 7,191,250). This ground added Oueslati's teachings on specific data type identifiers, such as vCard and vCalendar formats, to the MIME formats disclosed by Singhal.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be improper. Key factors favoring institution included: the scheduled trial in the parallel district court litigation was over a year away and subject to delay; investment in the district court case had been minimal; and the prior art references asserted in the petition were never considered during prosecution, weighing in favor of the Board resolving the invalidity questions.
  • Petitioner also contended that denial under §325(d) would be improper because the asserted prior art (Haller, Yu, Singhal, Oueslati) was materially different from and not cumulative to the art considered by the Examiner. Petitioner specifically noted that the prosecution history art, such as Kobayashi, failed to disclose the key claimed feature of formatting data into an SMS message for transmission from an intermediate device, a limitation squarely taught by the newly presented references.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-45 of the ’505 patent as unpatentable.