Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper No. 9
`
` Entered: January 22, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01033
`Patent 5,894,506
`____________
`
`
`
`Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`Paper No. 9
`
` Entered: January 22, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01033
`Patent 5,894,506
`____________
`
`
`
`Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`
`I. INTRODUCTION
`
`A. Background
`
`Apple, Inc. (“Petitioner”) filed a Corrected Petition requesting inter
`
`partes review of claims 8–14, 19, and 21 (“the challenged claims”) of U.S.
`
`Patent No. 5,894,506 (Ex. 1001, “the ’506 patent”) pursuant to 35 U.S.C.
`
`§ 311–319. Paper 6 (“Pet.”). Mobile Telecommunications Technologies,
`
`LLC (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 8
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`
`provides that an inter partes review may not be instituted “unless . . . the
`
`information presented in the petition . . . shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.”
`
`For the reasons discussed below, we conclude that Petitioner has not
`
`demonstrated that there is a reasonable likelihood that it would prevail with
`
`respect to any of the challenged claims. Institution of an inter partes review
`
`is denied.
`
`
`
`
`
`B. Related Proceedings
`
`The parties indicate that the ’506 patent is involved in numerous
`
`district court cases, including Mobile Telecommunications Technologies,
`
`LLC v. Apple Inc., No. 2:13-cv-258-JRG-RSP (E.D. Tex.). Pet. 1; Paper 4,
`
`2. In addition, the ’506 patent is the subject of another petition for inter
`
`partes review, Apple, Inc. v. Mobile Telecommunications Technologies,
`
`LLC, Case IPR2014-01034 (PTAB). Pet. 1; Paper 4, 2–3.
`
`
`
`2
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`
`C. The ’506 Patent
`
`
`
`The ’506 patent is titled “Method and Apparatus for Generating and
`
`Communicating Messages Between Subscribers to an Electronic Messaging
`
`Network” and issued from an application filed on September 5, 1996.
`
`Ex. 1001, at [22], [54]. The ’506 patent describes an electronic messaging
`
`network that conserves communication link capacity by compressing certain
`
`messages. Id. at col. 1, ll. 37–41. Commonly used phrases are treated as
`
`“canned” messages and replaced by a short message code. Id. at col. 1,
`
`ll. 46–49. Commonly used responses and parameters may also be treated as
`
`“canned” responses and “canned” parameters, and may also be replaced by
`
`response codes and parameter codes. Id. at col. 4, ll. 35–55.
`
`
`
`For example, the compressed message for “Can we meet for lunch at
`
`noon, 12:30 or call me?” is:
`
`<26>10<26>15<29>12:30<31><26>15<31><26>8
`where:
`
`<26> is the ASCII control character serving as the
`canned message and multiple response option indicator[;]
`
`<31> is the ASCII control character servicing as a
`delineator for separating the canned message and multiple
`response options from each other[;]
`
`<29> is the parameter separator[;]
`
`10 is the code associated with the canned message “Can
`we meet for lunch at or ?”[;]
`
`8 is the code associated with the canned parameter and
`response option “call me”[;]
`
`15 is the code associated with the canned parameter and
`response option “noon”[;] and
`
`12:30 is the keyed-in parameter.
`Id. at col. 5, ll. 24–44.
`
`
`
`
`
`A calling terminal sends the compressed message via a network
`
`operation center to a receiving terminal. Id. at Abstract. If the network
`
`3
`
`
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`IPR2014-01033
`Patent 5,894,506
`
`operation center determines that the receiving terminal may receive canned
`
`messages in code form, the network operation center relays the compressed
`
`message to the receiving terminal. Id. at col. 6, ll. 7–15. The calling
`
`terminal, the network operation center, and the receiving terminal have
`
`multiple files of identical canned messages and canned response options. Id.
`
`at col. 6, ll. 3–6. Using these files, the receiving terminal retrieves the
`
`message using the received codes and displays the message for the receiving
`
`party. Id. at col. 6, ll. 33–41.
`
`
`
`Claims 8, 19, and 21, reproduced below, are illustrative of the subject
`
`matter of the ’506 patent.
`
`8. A method of communicating messages between subscribers
`to an electronic message network, comprising the steps of:
`
`maintaining, at a network operation center, a first file of canned
`messages and message codes respectively assigned to the
`canned messages;
`
`maintaining at a first terminal of a first subscriber, a second file
`of canned messages and message codes corresponding to the
`first file;
`
`maintaining, at a second terminal of a second subscriber, a third
`file of canned messages and message codes corresponding to
`the first file;
`
`selecting an appropriate canned message from the second file
`for transmission to the second terminal;
`
`sending the message code assigned to the selected canned
`message to the network operation center;
`
`relaying the message code assigned to the selected canned
`message from the network operation center to the second
`terminal;
`
`4
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`
`retrieving the selected canned message from the third file using
`the assigned message code received from the network operation
`center; and
`
`displaying the selected canned message retrieved from the third
`file.
`
`
`
`
`
`19. A message terminal for use in an electronic messaging
`network, comprising:
`
`a memory storing a file of canned messages and message codes
`respectively assigned thereto and a file of canned multiple
`response options and response codes respectively assigned
`thereto;
`
`means for retrieving the file of canned messages and the file of
`canned multiple response options from the memory;
`
`a display for displaying the canned messages and the multiple
`response options in the retrieved file;
`
`means for selecting one of the canned messages and at least one
`of the multiple response options appropriate for the selected
`canned message for communication to a designated other
`message terminal; and
`
`a transmitter for transmitting the message code assigned to the
`selected canned message and the response code assigned to the
`at least one multiple response option over a communications
`link of the network.
`
`
`
`21. A message terminal for use in an electronic messaging
`network, comprising:[]
`
`a memory storing a file of canned messages, and message codes
`respectively assigned thereto and a file of canned multiple
`
`5
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`
`response options and response codes respectively assigned
`thereto;
`
`means for retrieving the file of canned messages and message
`codes from the memory;
`
`a display for displaying the canned messages in the retrieved
`file;
`
`means for selecting one of the canned messages for
`communication to a designated other message terminal and for
`selecting multiple response options into a message for
`transmission by the transmitter; and
`
`a message compiler for compiling the assigned message code
`and the response codes assigned to the selected multiple
`response options into a message for transmission by the
`transmitter; and
`
`a transmitter for transmitting the message code assigned to the
`selected canned message over a communications link of the
`network.
`
`
`
`D. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts the following grounds of unpatentability:
`
`Ground Claims
`
`§ 102
`
`8 and 9
`
`Prior Art
`
`Cannon1
`
`§ 103
`
`10, 19, and 21 Cannon and LaPorta2
`
`§ 103
`
`11 and 12
`
`Cannon and Will3
`
`§ 103
`
`13 and 14
`
`Cannon, Will, and LaPorta
`
`
`1 Cannon et al., U.S. Patent No. 5,850,594 (issued Dec. 15, 1998)
`(Ex. 1004).
`2 LaPorta et al., U.S. Patent No. 5,970,122 (issued Oct. 19, 1999) (Ex. 1005).
`3 Will, U.S. Patent No. 5,588,009 (issued Dec. 24, 1996) (Ex. 1006).
`
`6
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`
`
`II. ANALYSIS
`
`A. Availability of Cannon and LaPorta as Prior Art
`
`
`
`Patent Owner argues that neither Cannon nor LaPorta is prior art
`
`because there was actual reduction to practice of the invention of the ’506
`
`patent prior to the effective dates of Cannon and LaPorta. Prelim. Resp. 38–
`
`40. Patent Owner’s argument, however, is moot because, as discussed
`
`below, we determine that Petitioner has not demonstrated a reasonable
`
`likelihood that Cannon anticipates the challenged claims or that the
`
`combination of Cannon and LaPorta renders the challenged claims
`
`unpatentable.
`
`
`
`B. Claim Construction
`
`We interpret claims using the broadest reasonable construction in light
`
`of the Specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b). Under the broadest reasonable construction standard, claim
`
`terms are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`Both Petitioner and Patent Owner propose constructions for various
`
`claim terms. Pet. 3–7; Prelim. Resp. 4–15. Based on our review of the
`
`record before us, however, no express construction of any claim term is
`
`needed at this time.
`
`7
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`
`
`
`C. Grounds Under 35 U.S.C. § 102 by Cannon
`
`i. Overview of Cannon
`
`
`
`Cannon is a patent titled “Method and Apparatus for Efficiently
`
`Transmitting Addresses and Messages from Portable Messaging Units Over
`
`a Wireless Communication Channel,” which issued from an application filed
`
`August 26, 1996. Ex. 1004, at [22], [54]. Cannon describes communication
`
`system 100, which provides communication between portable messaging
`
`units (PMUs) 105 via system controller 110. Id. at col. 2, ll. 8–11.
`
`Communication system 100 uses short aliases to send frequently transmitted
`
`information from PMUs 105 to and from the system controller 110. Id. at
`
`col. 2, ll. 19–26. System controller 110 has central processing unit (CPU)
`
`515 which stores subscribers database 530 having message lists associated
`
`with each subscribing PMU (id. at Fig. 12, col. 7, ll. 35–40), and each
`
`subscribing PMU 105 has database 230, which stores its message list, which
`
`includes frequently transmitted information and its associated alias (id. at
`
`Fig. 2, col. 2, ll. 49–51, col. 3, ll. 11–34).
`
`
`
`PMU 105 can send a message having frequently transmitted
`
`information by sending the corresponding message alias, along with
`
`recipient information, to system controller 110. Id. at col. 6, ll. 46–49.
`
`When CPU 515 receives the message, CPU 515 retrieves the frequently
`
`transmitted information associated with the message alias from the sending
`
`subscriber’s message list in database 530, and, then, sends the frequently
`
`transmitted information and recipient information to router 540. Id. at
`
`Fig. 13, steps 584, 586, 587, col. 8, ll. 30–42. Router 540 uses the
`
`frequently transmitted information and recipient information to reference a
`
`8
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`message list for a receiving subscriber to determine that subscriber’s
`
`corresponding message alias. Id. at col. 8, ll. 50–54, Fig. 14, step 630. The
`
`receiving subscribing’s message alias is then sent in a message to the
`
`receiving PMU 105. Id. at col. 8, ll. 55–58, Fig. 14, step 645.
`
`
`
`ii. Analysis of Anticipation of Claims 8 and 9
`
`Independent claim 8 recites “relaying the message code assigned to
`
`the selected canned message from the network operation center to the second
`
`terminal.” Ex. 1001, col. 10, ll. 5–7. Petitioner contends that Cannon’s
`
`description of a router receiving a message alias from a source terminal and
`
`sending a message alias to a receiving terminal meets this limitation.
`
`Pet. 16–17 (citing Ex. 1004, Fig. 14, col. 1, ll. 65–66, col. 8, ll. 30–58,
`
`col. 9, ll. 38–53).
`
`Patent Owner argues that Cannon does not meet this limitation
`
`because the same message alias that is received by the CPU is not sent to the
`
`receiving terminal. Prelim. Resp. 15–22, 33–38. According to Patent
`
`Owner, the received message alias (“message alias A”) is not the same as the
`
`sent message alias (“message alias B”), because Cannon’s system first
`
`converts message alias A to the full message, and, then, uses the full
`
`message to determine a different message alias B. Prelim. Resp. 21–22
`
`(citing Ex. 1004, col. 8, ll. 41–42, 50–58, Fig. 14).
`
`
`
`We agree with Patent Owner. Independent claim 8 requires that the
`
`message code that is relayed to the second terminal be the same as the
`
`messaged code sent to the network operation center. Ex. 1001, col. 9, l. 62–
`
`col. 10, l. 7 (“sending the message code assigned to the selected canned
`
`message to the network operation center; relaying the message code
`
`9
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`assigned to the selected canned message”) (emphases added). As discussed
`
`in Section II(C)(i) above, Cannon’s CPU 515 converts the message alias that
`
`it received from sending PMU 105, to the full message (i.e., frequently
`
`transmitted information), and, then, router 540 coverts the full message to a
`
`different message alias that is then sent to receiving PMU 105. In other
`
`words, Cannon does not describe relaying the same message alias that was
`
`received from a source terminal to a receiving terminal. Accordingly, we
`
`determine that Petitioner has not demonstrated that there is a reasonable
`
`likelihood that claim 8, and claim 9, dependent thereon, are anticipated by
`
`Cannon.
`
`
`
`
`
`
`
`D. Grounds Under 35 U.S.C. § 103
`
`i. Unpatentability over Cannon and LaPorta
`
`a. Overview of LaPorta
`
`LaPorta is a patent titled “Two-Way Wireless Messaging System
`
`Having User Agent,” which issued from an application filed on July 24,
`
`1996. Ex. 1005, at [22], [54]. LaPorta describes a messaging system where
`
`uplink messages are sent between wireless messaging devices and user
`
`agents in code so that bandwidth usage is reduced because the coded
`
`messages are shorter than the full-text message. Id. at col. 1, ll. 62–66,
`
`col. 2, ll. 29–31. The coded uplink messages include: a message number
`
`that identifies a full text message that is stored at both an originating
`
`message device and at the user agent, modifiers that represent
`
`customizations to the message, and address aliases. Id. at col. 1, l. 66–col. 2,
`
`l. 4; see also id. at Fig. 6 (depicting a coded message “PG2BS-NEW”). The
`
`customizations can be dynamic components, such as replies and choices. Id.
`
`10
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`at col. 2, ll. 13–28, col. 13, ll. 25–38. LaPorta discloses that “[t]he message
`
`is coded by indicating a message number and any dynamic component
`
`values.” Id. at col. 14, ll. 11–12. The user agent expands the coded message
`
`into the full-text message based on the message number and dynamic
`
`component values received before the message is sent to its destination. Id.
`
`at col. 2, ll. 5–12, col. 7, ll. 38–42, col. 14, ll. 25–27.
`
`
`
`LaPorta’s Figure 3 is reproduced below.
`
`
`
`Figure 3 depicts an example of the two-way wireless messaging system 10.
`
`Figure 3 depicts Thomas using two-way messaging device 50a to send the
`
`pre-canned message “Let’s Go to Lunch” with embedded responses (e.g.,
`
`“A) McDonalds”) to Dan, Mary, and Paul. The pre-canned message is sent
`
`as an uplink message “contain[ing] a short group identifier and a message
`
`number.” Id. at col. 5, ll. 38–40. Figure 3 depicts the coded message as
`
`including the group identifier “lunch group” and the message number “8.”
`
`Thomas’s user agent then expands the message, using a message table,
`
`11
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`before it is sent to Dan, Mary, and Paul’s devices. Id. at col. 6, ll. 51–54.
`
`
`
`
`
`
`
`b. Analysis of Obviousness of Claims 19 and 21
`
`Claims 19 and 21 both require a memory storing a file of canned
`
`multiple response options and assigned response codes, where the response
`
`codes are transmitted over a communications link of the network. To meet
`
`these requirements, Petitioner combines Cannon with LaPorta to modify
`
`Cannon’s frequently used messages to include LaPorta’s dynamic
`
`components, and to include “sen[ding] the embedded dynamic component to
`
`the destination with [Cannon’s] message alias.” Pet. 21. Petitioner equates
`
`LaPorta’s dynamic component (e.g., Ex. 1004, Fig. 3 (“A) McDonalds”))
`
`with the claimed response codes. Pet. 27; see also Ex. 1003 ¶ 88 (Decl. of
`
`Dr. Surati (Annotation 1 of LaPorta’s Fig. 3)). Patent Owner argues that
`
`neither Cannon nor LaPorta teaches these requirements because neither
`
`discloses the claimed response codes. Prelim. Resp. 45–48.
`
`
`
`We agree with Patent Owner that the combination of Cannon and
`
`LaPorta does not teach the claimed response code that is assigned to and
`
`stored with a response option and that is transmitted over a communication
`
`link of the network. Cannon does not teach the claimed response options or
`
`the assigned response codes because, as Petitioner admits, Cannon is
`
`unconcerned with customizing its messages with reply choices. See Pet. 20
`
`(“Cannon is silent about sending messages that are customized with . . .
`
`reply choices or other parameters, such that the options are sent along with
`
`the message aliases”).
`
`
`
`Although LaPorta discloses that a coded message can include a
`
`modifier representing or indicating a dynamic component values (e.g., list of
`
`selections or a reply choice), as discussed above in section II(D)(i)(a),
`
`12
`
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`IPR2014-01033
`Patent 5,894,506
`
`LaPorta is silent as to how the dynamic component values are represented by
`
`the modifier in the coded message, and fails to teach that the modifier is
`
`represented by an assigned code, which is stored in a file along with the
`
`dynamic component. In particular, we note that the coded message in the
`
`example depicted in Figure 3 of LaPorta, reproduced above in section
`
`II(D)(i)(a) and relied upon by Petitioner, does not include a code
`
`representing the dynamic component values or modifier. Petitioner provides
`
`no other evidence or explanation as to the obviousness of these claim
`
`requirements.
`
`
`
`Accordingly, we determine that Petitioner has not demonstrated that
`
`there is a reasonable likelihood that claims 19 and 21 are unpatentable over
`
`Cannon and LaPorta.
`
`
`
`
`
`Claim 10 depends from claim 8, and, therefore, includes all of the
`
`c. Claim 10
`
`limitations of claim 8. As discussed above in section II(C)(ii)), we
`
`determine that Cannon does not disclose the relaying limitation of claim 8.
`
`Petitioner does not rely upon LaPorta to cure this deficiency of Cannon.
`
`Accordingly, we determine that Petitioner has not demonstrated that there is
`
`a reasonable likelihood that claim 10 is unpatentable for being obvious over
`
`Cannon and LaPorta.
`
`
`
`ii. Unpatentability over Cannon and Will and Unpatentability over Cannon,
`Will, and LaPorta
`
`Claims 11–14 depend, directly or indirectly, from claim 8, and,
`
`therefore, include all of the limitations of claim 8. As discussed above in
`
`section II(C)(ii), we determine the Cannon does not disclose the relaying
`
`13
`
`
`
`IPR2014-01033
`Patent 5,894,506
`
`limitation of claim 8. Petitioner does not rely upon LaPorta or Will to cure
`
`this deficiency of Cannon. Accordingly, we determine that Petitioner has
`
`not demonstrated that there is a reasonable likelihood that claims 11–12 are
`
`unpatentable for being obvious over the combination of Cannon and Will or
`
`that claims 13–14 are unpatentable for being obvious over the combination
`
`of Cannon, Will, and LaPorta.
`
`
`
`III. CONCLUSION
`
`We determine that Petitioner has not demonstrated a reasonable
`
`likelihood that any of the challenged claims are unpatentable.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`
`14
`
`
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`IPR2014-01033
`Patent 5,894,506
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`FISH & RICHARDSON P.C.
`axf@fr.com
`IPR3952-0002IP1@fr.com
`
`PATENT OWNER:
`
`John R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`Craig Steven Jepson
`Kirk D. Dorius
`REED & SCARDINO LLP
`cjepson @reedscardino.com
`kdorius@reedscardino.com
`
`15
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