PTAB

IPR2026-00104

Apple Inc v. HBCU Messaging US LP

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Undelivered Message Threshold
  • Brief Description: The ’183 patent discloses techniques for a sending wireless device to select a transmission mode for an outgoing message. The selection is based on information indicating whether the intended recipient is a subscriber of a packet-switched messaging service (PSMS), allowing the device to choose between a cellular network bearer (e.g., SMS) and a packet-switched bearer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Horvath, Tsampalis, Kansal, and Dorenbosch - Claims 1-30 are obvious over the combination of four prior art references.

  • Prior Art Relied Upon: Horvath (Application # 2007/0254681), Tsampalis (Application # 2004/0203956), Kansal (Application # 2008/0153459), and Dorenbosch (Application # 2002/0173308).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the combination of the four references taught every limitation of the challenged claims. Horvath was asserted to teach the foundational system: a dual-mode mobile device that selects between a circuit-switched network (for SMS) and a packet-data network (for PSMS like instant messaging) based on a recipient's network registration status, which is managed by a server. To this base system, Tsampalis was argued to add the capability for the sending device to query a server to determine a recipient's specific messaging format capabilities (e.g., SMS, MMS) before sending, thereby ensuring compatibility. Petitioner then mapped Kansal’s teaching of a unified messaging user interface that aggregates various message types (SMS, IM) into a single, threaded conversation view onto the combined system. Finally, Dorenbosch was argued to add a critical reliability layer for the PSMS, teaching an IM proxy server that queues, bundles, and retries delivery of undelivered messages, and only changes a recipient's status to "unavailable" after a maximum number of undelivered messages has been exceeded.

    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine these references for several predictable reasons. A POSITA would combine Horvath’s dual-network system with Tsampalis’s capability-checking to solve the known problem of message format incompatibility in a multi-modal environment, improving user experience and system efficiency. Adding Kansal’s unified UI was presented as a straightforward step to further enhance user experience by consolidating disparate message types into a single interface. Finally, a POSITA would integrate Dorenbosch’s IM proxy techniques to address the well-known problem of unreliability and dropped messages in mobile IM services like those contemplated by Horvath, thereby making the system more robust. The combination was framed as the application of known techniques to a known system to yield predictable results.

    • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation of success in implementing the combination. The integration allegedly involved conventional software and hardware techniques and relied on well-defined, commonly implemented messaging protocols (e.g., SMS, SIP/IM) that were fully compatible with one another.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’183 patent as unpatentable under 35 U.S.C. §103.