PTAB

IPR2025-01488

Apple Inc v. HBCU Messaging US LP

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Server That Sends a Response When a Mobile Phone Has an Active Status with a Packet Switched Message Service
  • Brief Description: The ’182 patent describes a messaging system where a sending mobile phone queries a server to determine if a recipient is a subscriber to a packet switched message service (PSMS). Based on the recipient’s subscription and active status, the system selects the appropriate message delivery method, such as PSMS or traditional Short Message Service (SMS).

3. Grounds for Unpatentability

Ground 1: Claims 1-30 are obvious over the combination of Horvath, Tsampalis, Chatterjee, and Kansal.

  • Prior Art Relied Upon: Horvath (Application # 2007/0254681), Tsampalis (Application # 2004/0203956), Chatterjee (an IEEE Network article, May/June 2005), and Kansal (Application # 2008/0153459).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references taught every limitation of the challenged claims.
      • Horvath was asserted to disclose the foundational system of a dual-mode mobile device that selects between a packet data network (for services like Instant Messaging, or IM) and a circuit services network (for traditional SMS) based on the device's registration status. This reference provided the core architecture of querying a server system (e.g., a Home Subscriber Server, or HSS) to determine the appropriate delivery network.
      • Tsampalis was introduced for its teaching of improving such systems by having the sending device first query a remote server to obtain the recipient device's "messaging format capabilities information" (MFCI). Petitioner argued this MFCI check, which reveals if a recipient can handle formats like SMS, MMS, or EMS, directly maps to the ’182 patent's concept of checking a recipient’s subscription status before sending a message.
      • Chatterjee was cited for its extensive disclosure of IM and presence ("IM&P") services, which were common by the patent's critical date. Petitioner contended that Chatterjee taught the benefits of integrating IM&P, including checking a user's online status ("presence") to ensure they are available to receive a message. This maps to the claim limitation of checking the recipient's "active status" with the PSMS.
      • Kansal was used to address the claim limitation requiring that different message types (e.g., SMS and packet-switched messages) be displayed by the "same messaging client." Kansal explicitly discloses a unified messaging user interface that correlates and displays messages of different types (SMS, MMS, IM, email) within a single, threaded view.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine these references to achieve predictable improvements.
      • A POSITA would combine Horvath with Tsampalis to enhance Horvath’s network-selection system. By checking the recipient's capabilities first, as taught by Tsampalis, the system could avoid failed deliveries and reduce network traffic, directly addressing a known problem in multi-format messaging environments.
      • A POSITA would further incorporate Chatterjee into the Horvath/Tsampalis system because Horvath already acknowledged IM services. Chatterjee provided the necessary details for implementing a robust IM&P service, including checking a recipient's presence, which was a logical and necessary step to improve the reliability of real-time messaging. This would extend the capability check of Tsampalis to include not just format compatibility but also real-time availability.
      • Finally, a POSITA would integrate Kansal's unified UI as an obvious design choice to improve user experience. With a system supporting multiple message types (SMS, IM), presenting them in a single, coherent interface, as taught by Kansal, was a well-known technique for simplifying mobile messaging for the end-user.
    • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success because the combination involved applying well-known techniques (capability checks, presence information, unified UIs) to a known type of system (dual-mode messaging). The technologies were mature and fully compatible, and their integration would yield predictable results without disturbing the underlying functionality of Horvath's network-selection architecture.

4. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-30 of the ’182 patent as unpatentable under 35 U.S.C. §103.