PTAB

IPR2026-00109

Apple Inc v. HBCU Messaging US LP

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1. Case Identification

2. Patent Overview

  • Title: Random Number Derived Message Transmission to a Third Party Provider
  • Brief Description: The ’827 patent discloses techniques for a mobile wireless device to select a message transmission bearer (e.g., packet-switched or circuit-switched) based on whether the intended recipient is a subscriber to a particular packet-switched messaging service.

3. Grounds for Unpatentability

Ground 1: Claims 1, 7, 17-21, 23, and 25-27 are obvious over Horvath in view of Tsampalis and Tumminaro.

  • Prior Art Relied Upon: Horvath (Application # 2007/0254681), Tsampalis (Application # 2004/0203956), and Tumminaro (Application # 2007/0233615).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary references collectively disclose all limitations of the challenged claims. Horvath taught a dual-mode wireless device capable of sending messages over either a packet data network (e.g., an IP Multimedia Subsystem, or IMS) or a traditional circuit-switched network. The device in Horvath selected the network based on its registration status with the IMS, effectively choosing between a packet-switched service and a cellular service. Tsampalis taught a method for a sending device to determine a recipient's messaging capabilities (e.g., SMS, MMS) by querying a network server before sending a message to ensure compatibility. Tumminaro disclosed using various mobile messaging formats (SMS, MMS, IM) to conduct mobile payment transactions with a third-party provider, including sending messages containing transaction details to a payment server. The combination allegedly taught a mobile device that determines a recipient’s subscription status for a packet-switched service (per Tsampalis), selects the appropriate network bearer (packet or circuit, per Horvath), and transmits messages, including those for third-party services like mobile payments (per Tumminaro).
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Horvath and Tsampalis to enhance the user experience by ensuring messages were sent in a format compatible with the recipient's device, a known problem in multi-modal messaging environments. A POSITA would further incorporate Tumminaro's teachings to add the convenient and increasingly popular functionality of mobile payments to the versatile messaging system of Horvath and Tsampalis. This would allow the system to handle both user-to-user communications and user-to-service transactions efficiently.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these teachings, as the integration involved applying known messaging and transaction techniques using conventional mobile device hardware and software.

Ground 2: Claim 9 is obvious over Horvath, Tsampalis, and Tumminaro in view of Kansal.

  • Prior Art Relied Upon: Horvath (Application # 2007/0254681), Tsampalis (Application # 2004/0203956), Tumminaro (Application # 2007/0233615), and Kansal (Application # 2008/0153459).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of claim 9, which added a display for showing "presence information associated with the wireless device of the addressed recipient." Petitioner argued that Kansal supplied this missing element. Kansal disclosed a "unified messaging UI" that aggregated different message types (SMS, IM, email) into a single, threaded conversation. Critically, Kansal taught displaying an "IM icon" within this interface to indicate a contact's real-time status, such as whether they are online and available to receive an IM. Petitioner asserted this online status indicator is precisely the "presence information" recited in claim 9.
    • Motivation to Combine: A POSITA would have been motivated to integrate Kansal's unified interface and presence features into the base combination to further improve user experience. This combination would provide valuable contextual information about a recipient's availability directly within the messaging interface, meeting the known industry goal of creating more powerful and efficient mobile messaging applications. Displaying presence would allow a user to make a more informed choice about which messaging format to use.
    • Expectation of Success: Petitioner argued there was a high expectation of success, as integrating a presence display feature into a multi-modal messaging client was a well-understood and common practice in the art before the patent's critical date.

4. Relief Requested

  • Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1, 7, 9, 17-21, 23, and 25-27 of the ’827 patent as unpatentable under 35 U.S.C. §103.