PTAB

IPR2025-01493

Apple Inc v. HBCU Messaging US LP

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petition

1. Case Identification

2. Patent Overview

  • Title: Messaging Service in a Wireless Communications Network
  • Brief Description: The ’450 patent discloses methods for a mobile device to determine an appropriate message format for an outgoing message. The system checks if the recipient is a subscriber to a packet-switched messaging service and formats the message accordingly, distinguishing between standard formats (SMS, MMS) and service-specific formats.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-4, 7, 9-13, 15, 22, 24, and 26-29 are obvious over Horvath, Tsampalis, and Chatterjee.

  • Prior Art Relied Upon: Horvath (Application # 2007/0254681), Tsampalis (Application # 2004/0203956), and Chatterjee (an IEEE article, June 2005).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the core combination discloses all limitations of the challenged claims. Horvath taught a system for transmitting messages, including SMS, over either a circuit-switched or a packet-data network (e.g., an IMS network for instant messaging). Tsampalis taught a sending device querying a recipient device to determine its messaging format capabilities (e.g., SMS, MMS) before sending a message to ensure compatibility. Chatterjee described the widespread use and technical details of instant messaging (IM) and presence services. The combination of these references, Petitioner asserted, taught a method where a device (Horvath) subscribes to a packet-switched IM service (Horvath, Chatterjee), requests the recipient's messaging capabilities to determine if they are also an IM subscriber (Tsampalis), and upon receiving a positive response, formats a subsequent message as an IM (a format distinct from SMS/MMS).
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Horvath and Tsampalis to solve the known problem of sending messages in an incompatible format. Implementing Tsampalis’s pre-emptive capability check into Horvath’s multi-modal system would improve reliability, enhance user experience, and reduce network load from failed transmissions. A POSITA would further add the teachings of Chatterjee because Horvath already contemplated IM services; Chatterjee provided the necessary, well-known implementation details to integrate popular IM and presence features, thereby expanding the system's capabilities to include real-time communication.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved integrating well-understood messaging protocols (SMS, IM) and applying a known technique (capability checking) to a known system (multi-modal messaging) to achieve predictable results. The underlying technologies were mature and compatible.

Ground 2: Claims 6, 8, 17-18, 21, 23, and 25 are obvious over Horvath, Tsampalis, and Chatterjee in view of Kansal.

  • Prior Art Relied Upon: Horvath (’681 application), Tsampalis (’956 application), Chatterjee (IEEE article), and Kansal (Application # 2008/0153459).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the core combination from Ground 1 and added Kansal to address claims related to the user interface. Kansal disclosed a unified messaging user interface that displayed different message types (e.g., IM, MMS, SMS) from a single contact within a single, chronologically sorted thread. Petitioner argued this directly taught the limitation of displaying the second message (the IM from the primary combination) and another message type (like MMS or SMS) in a single interface, as required by claims 6 and 21. Kansal also taught adding attachments like voice recordings, addressing limitations in claims 8 and 23.
    • Motivation to Combine: A POSITA would be motivated to incorporate Kansal's user interface into the primary combination to improve user experience. Consolidating disparate message types into a single thread was a known technique for making communication history easier to follow and providing better contextual information, predictably achieving Kansal's stated goal of an improved mobile messaging apparatus.
    • Expectation of Success: The integration was a predictable design choice, as Kansal’s interface was explicitly designed to handle the exact message types (SMS, MMS, IM) already present in the Horvath-Tsampalis-Chatterjee combination.

Ground 3: Claims 2 and 16 are obvious over Horvath, Tsampalis, and Chatterjee in view of Ribaudo.

  • Prior Art Relied Upon: Horvath (’681 application), Tsampalis (’956 application), Chatterjee (IEEE article), and Ribaudo (Application # 2007/0030824).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground added Ribaudo to the core combination to address claims requiring transmission over a wireless personal area network (WPAN). Ribaudo taught using Bluetooth (a WPAN technology) for proximity-based, decentralized IM between devices, leveraging the same XMPP protocol discussed in Chatterjee. Petitioner asserted this taught formatting and transmitting the second message (the IM) over a WPAN.
    • Motivation to Combine: A POSITA would integrate Ribaudo’s teachings to reduce overhead on the primary packet-switched network by offloading traffic to a direct P2P connection when devices were in close proximity. This would also provide a messaging capability in situations where cellular or Wi-Fi networks were unavailable, a clear and desirable improvement.
    • Expectation of Success: Success was expected because Ribaudo used the same underlying IM protocols (XMPP) discussed in Chatterjee, ensuring technical compatibility with the core combination.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the core Horvath-Tsampalis-Chatterjee combination in view of Ben-Yoseph (Patent 7,472,163) for claim 5 (adding policies for undeliverable messages) and Lin (Application # 2005/0233737) for claims 14, 19-20, and 30 (adding authentication via SMS and OTA configuration).

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial is unwarranted. It noted its intent to use the bifurcated briefing process introduced by the USPTO to rebut any contentions raised by the Patent Owner regarding discretionary denial factors.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’450 patent as unpatentable.