Apple Inc v. CText IP LLC

1. Case Identification

• Case #: IPR2025-01113
• Patent #: 10,009,304
• Filed: July 7, 2025
• Petitioner(s): Apple Inc.
• Patent Owner(s): Ctext IP LLC
• Challenged Claims: 1-17

2. Patent Overview

• Title: Correlating Conversations in a Messaging Environment
• Brief Description: The ’304 patent discloses methods and systems for managing multiple, simultaneous conversations within a single chat interface. The technology uses visual cues, such as colors or symbols, to visually associate messages belonging to the same conversation thread, thereby helping users track different dialogues.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chang - Claims 1-4, 6-7, and 14-16 are obvious over Chang.

• Prior Art Relied Upon: Chang (Patent 9,130,893)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chang teaches every limitation of the challenged claims. Chang discloses a mobile terminal with a messaging application that displays multiple conversations (e.g., a "group chat" and a "private chat") in a single chat window. To help users distinguish between conversations, Chang teaches using different visual cues, such as distinct background colors, for each chat thread. Critically, when a user selects a specific conversation to reply to (e.g., by touching the private chat area), Chang discloses changing a visual element of the message input window—its background color—to match the visual cue of the selected conversation. This directly teaches the core inventive concept of the ’304 patent.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference. Petitioner asserted that Chang alone renders the claims obvious.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Obviousness over Chang, Oh, and Stochosky - Claims 8-10 and 17 are obvious over Chang in view of Oh and Stochosky.

• Prior Art Relied Upon: Chang (Patent 9,130,893), Oh (Application # 2014/0143684), and Stochosky (Patent 9,965,132).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Chang provides the foundational system of visually distinguishing multiple chat threads on a single device, as detailed in Ground 1. The combination with Oh and Stochosky addresses limitations related to multi-user interactions and user preferences. Oh teaches a messaging system where "context-linking" information is sent between devices, allowing a receiving user to see how a new message correlates with a prior conversation. Stochosky discloses a messaging system that allows users to define and control the visual characteristics (e.g., bubble color, font style) of messages, including "reformatting incoming messages" to override a sender's chosen style with the recipient's own preferences.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Chang with Oh to extend the benefit of conversation correlation to all participants in a chat, not just the user organizing the threads on their own device. Sending context-linking information, as taught by Oh, is a logical improvement to Chang’s system. A POSITA would further incorporate Stochosky's teachings to enhance user experience by allowing each participant to customize the appearance of conversations according to their own preferences, rather than being forced to adopt the sender’s visual cues. This provides predictable improvements in usability.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success, as all three references operate in the same technical field of mobile messaging and describe systems with similar components (processors, displays, memory). Combining these known elements for their intended purposes would yield predictable results.

Ground 3: Obviousness over Oh - Claims 1-2, 5-7, and 11-15 are obvious over Oh.

• Prior Art Relied Upon: Oh (Application # 2014/0143684)
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative based on a broad claim construction allegedly asserted by the Patent Owner in co-pending litigation. Petitioner argued that Oh alone renders the claims obvious under this broader interpretation. Oh discloses a mobile messaging system where conversations are correlated using "context-linking items" or "link symbols" (e.g., text, color, shapes). When a user selects a message to reply to, Oh teaches that the message entry location can change to display the name of the intended recipient (e.g., "TO AHN CS"). Petitioner contended this change constitutes "changing a visual element of the message entry location." This visual element (the recipient's name) "matches" a "first visual cue" (the name of the participant associated with the original message), thereby teaching the core claim limitation.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference.
  • Expectation of Success (for §103 grounds): Not applicable.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d).
• Fintiv Factors: Petitioner asserted that the parallel district court litigation is at a very early stage. No scheduling order has been entered, no trial date is set, discovery has not commenced, and no claim construction has occurred. These factors weigh heavily against discretionary denial under Fintiv.
• Advanced Bionics/General Plastic: Petitioner contended that denial is not warranted because this is the first IPR filed against the ’304 patent. Furthermore, the prior art references and combinations presented in the petition were never considered by the USPTO during the original prosecution.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-17 of the ’304 patent as unpatentable.