LG Electronics Inc v. Pantech Corp

1. Case Identification

• Case #: IPR2023-01271
• Patent #: 7,283,839
• Filed: August 11, 2023
• Petitioner(s): LG Electronics Inc.
• Patent Owner(s): Pantech Corporation
• Challenged Claims: 1-2

2. Patent Overview

• Title: Wireless Communication Terminal Having Integrated Messaging Service Function and Method of Controlling the Same
• Brief Description: The ’839 patent is directed to wireless communication terminals that provide an “integrated messaging service program.” The technology enables the terminal to transmit and receive different kinds of messages, such as text and multimedia messages, through a single integrated user interface (IUI).

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Lemay - Claims 1-2 are anticipated by or obvious over Lemay.

• Prior Art Relied Upon: Lemay (Patent 8,020,105), which incorporates by reference Alfke (Patent 7,765,263).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lemay discloses every element of claims 1 and 2. Lemay teaches a wireless communication terminal (“cellular telephone”) with a “unified user interface” for integrating different message types, such as instant messaging and email. This unified interface, generated by a processor executing software, constitutes the claimed IUI. Petitioner contended Lemay’s processor acts as the claimed controller, which determines the kind of message to be sent (e.g., whether to repackage an email as an instant message based on recipient status), generates an outgoing message with “identification” information tagging it as a specific message type, transmits the message, and displays both message content and description data (e.g., sender name, date, time) for both sent and received messages. For claim 2, Petitioner asserted that Lemay’s display of sender and recipient information in its interface inherently discloses incoming/outgoing data to show whether a message was sent or received.
  • Key Aspects: The core of this ground is that Lemay’s system for converting and sending emails as instant messages, including tagging them for identification, directly maps to the ’839 patent’s claimed controller functions for determining message kind and generating messages with corresponding identification data.

Ground 2: Obviousness over Maguire in view of Kang - Claims 1-2 are obvious over Maguire in view of Kang.

• Prior Art Relied Upon: Maguire (WO 2003/056789) and Kang (Application # 2002/0152220).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Maguire discloses a mobile device with a “unified view” of various communications events (e.g., SMS, email, WAP) on a single interface. Maguire’s processor and software interface module were argued to be the claimed controller and integrated program. Maguire teaches displaying message content alongside description data such as sent/received/unread status, date/time, and contact name. While Maguire teaches a broad system, Petitioner argued it does not detail a specific input mechanism or a method for automatically determining an outgoing message type. Kang was introduced to supply these elements, as it discloses a personal information terminal with a keypad for inputting message content and selecting menu items. Critically, Kang also teaches a “message type checking unit” that automatically determines whether a message should be sent as an SMS or an email based on the format of the entered data (e.g., a numeric address vs. an address with an “@” symbol).
  • Motivation to Combine: A POSITA would combine Maguire’s unified interface with Kang’s teachings to improve usability. Maguire provides the overall framework for integrating multiple message types but is not specific about user input or automatic message type selection. A POSITA would look to a known input and processing method like Kang’s to implement a more streamlined and efficient user experience, avoiding the need for a user to manually select a message type before transmission. Petitioner also noted that a POSITA would be motivated to use Kang’s method of displaying phone numbers or email addresses for unnamed contacts to improve Maguire’s interface.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because combining a known keypad input method and an automatic message-type-checking algorithm (Kang) with a unified messaging display system (Maguire) involves applying predictable and well-understood technologies in the mobile device field.

• Additional Grounds: Petitioner asserted additional obviousness challenges against claims 1-2 by arguing that the combinations of Lemay alone (Ground 3) and Maguire in view of Kang (Ground 4) would be further rendered obvious by RFC2822. Petitioner argued RFC2822 provides standardized teachings for including description data (e.g., addresses, names, date/time) within the header fields of an email message, making it obvious to ensure such data was part of the transmitted message in the systems of Lemay and Maguire.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), contending the grounds are not the same or substantially the same as those considered during prosecution, as the Examiner did not review Lemay, Maguire, Kang, or RFC2822. Petitioner asserted that the new prior art is materially different from the art of record.
• Petitioner also argued against discretionary denial under Fintiv factors. It contended that the co-pending district court case is in its early stages with discovery just beginning, that Petitioner intends to seek a stay if the IPR is instituted, and that the median time to trial for the judge suggests a trial date after the deadline for a Final Written Decision.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2 of the ’839 patent as unpatentable.