throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 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 IPR2014-01034
`Patent 5,894,506
`____________
`
`
`
`Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2014-01034
`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 claims 8–14 and 21, and that Petitioner has demonstrated that
`
`there is a reasonable likelihood that it would prevail with respect to claim
`
`19. For the reasons described below, we institute an inter partes review as
`
`to claim 19.
`
`
`
`
`
`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 IPR2014-01033 (PTAB). Pet. 1; Paper 4, 2–3.
`
`2
`
`

`

`IPR2014-01034
`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” response 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
`
`

`

`IPR2014-01034
`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
`
`

`

`IPR2014-01034
`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
`
`

`

`IPR2014-01034
`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
`
`Prior Art
`
`§ 103
`
`8–14
`
`LaPorta1 and Deluca2
`
`§ 103
`
`11–14
`
`LaPorta, Deluca, and Will3
`
`§ 102
`
`19 and 21
`
`Will
`
`
`
`
`
`
`1 LaPorta et al., U.S. Patent No. 5,970,122 (issued Oct. 19, 1999) (Ex. 1004).
`2 Deluca et al., U.S. Patent No. 5,784,001 (issued Jul. 21, 1998) (Ex. 1006).
`3 Will, U.S. Patent No. 5,588,009 (issued Dec. 24, 1996) (Ex. 1005).
`
`6
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`
`II. ANALYSIS
`
`A. Availability of LaPorta and Deluca as Prior Art
`
`
`
`Patent Owner argues that neither LaPorta nor Deluca is prior art
`
`because there was actual reduction to practice of the invention of the ’506
`
`patent prior to the effective dates of LaPorta and Deluca. Prelim. Resp. 42–
`
`44. Patent Owner’s argument, however, is moot because, as discussed
`
`below, we determine that Petitioner has not demonstrated a reasonable
`
`likelihood that the combination of LaPorta and Deluca or the combination of
`
`LaPorta, Deluca, and Will render 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).
`
`
`
`i. “transmitter for transmitting the message code . . . and the response
`
`code”
`
`Claim 19 recites “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.”
`
`Patent Owner argues that this limitation means that the transmitter
`
`transmits the message code together with the response code because the
`
`plain and ordinary meaning of the word “and” requires that “the message
`
`7
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`code is transmitted together with the response code.” Prelim. Resp. 13. For
`
`support, Patent Owner argues that the ’506 patent’s Specification describes
`
`that the message code is transmitted together with the response code. Id. at
`
`13–15. Petitioner did not propose a construction of this limitation.
`
`Upon this record, we disagree with Patent Owner. When given the
`
`broadest reasonable construction in light of the ’506 patent, we see nothing
`
`in the limitation or the use of term “and” that restricts the transmitter to be
`
`capable of transmitting the message code only together with the response
`
`code. Further, we decline to read such a limitation from the specification of
`
`the ’506 patent into the claim. Limitations appearing in the specification but
`
`not recited in the claim are not read into the claim. E-Pass Techs., Inc. v.
`
`3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be
`
`interpreted “in view of the specification” without importing limitations from
`
`the specification into the claims unnecessarily).
`
`
`
`
`
`ii. “a message compiler for compiling the assigned message code and
`
`the response codes . . . into a message”
`
`Claim 21 recites “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.” Patent
`
`Owner argues that this limitation means that the compiler compiles the
`
`assigned message code together with the response codes. Prelim. Resp. 13.
`
`Petitioner did not propose a construction of this limitation.
`
`Upon this record, we agree with Patent Owner. When given the
`
`broadest reasonable construction in light of the ’506 patent, the plain
`
`language of this limitation requires that the compiler is capable of compiling
`
`the message code together with the response codes into a message.
`
`8
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`
`
`
`
`iii. Other Terms
`
`Both Petitioner and Patent Owner propose constructions for various
`
`other claim terms. Pet. 3–7; Prelim. Resp. 2–13. Based upon our review of
`
`the record before us, however, no express construction of any other claim
`
`term is needed at this time.
`
`
`
`C. Grounds Under 35 U.S.C. § 103
`
`i. Unpatentability over LaPorta and Deluca
`
`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. 1004, 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. 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
`
`9
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`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.
`
`
`
`
`
`
`
`b. Overview of Deluca
`
`Deluca is a patent titled “Method and Apparatus for Presenting
`
`Graphic Messages in a Data Communication Receiver,” which issued from
`
`an application having an effective filing date of November 20, 1995. Ex.
`
`1006, at [22], [54], [63]. Deluca discloses a data communication receiver
`
`that receives messages from an originator that may contain codes
`
`representative of a predetermined graphic image. Id. at col. 2, ll. 51–60.
`
`The receiver then determines a corresponding graphic image from a database
`
`and displays the image. Id. at col. 4, ll. 52–60.
`
`
`
`c. Analysis of Unpatentability of Claims 8–14
`
`Petitioner combines the teachings of LaPorta and Deluca to meet
`
`independent claim 8’s requirement that the message code be relayed from
`
`the first terminal to the second terminal by the network operation center.
`
`Pet. 10–12, 17–18. Petitioner states that “it would be obvious for a person of
`
`ordinary skill in the art, at the time of the filing date of the ’506 Patent
`
`application, to apply the teachings of Deluca to that of LaPorta to extend
`
`LaPorta’s sending of message numbers corresponding to a message to the
`
`recipient messaging device.” Pet. 11 (citing Ex. 1003, Decl. of Dr. Surati
`
`¶¶ 108–110). Patent Owner argues that Petitioner fails to provide some
`
`articulated reasoning with rational underpinning to support the legal
`
`conclusion of obviousness. Prelim. Resp. 38–39.
`
`
`
`Upon this record, we agree with Patent Owner. Although both
`
`Petitioner and Petitioner’s Declarant state that it would be obvious to
`
`10
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`combine LaPorta and Deluca to “extend LaPorta’s sending of message
`
`numbers corresponding to a message to the recipient messaging device”
`
`(Pet. 10; see Ex. 1003 ¶ 108), both fail to provide some reason why a person
`
`of ordinary skill in the art would have been prompted to make the proposed
`
`combination. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
`
`Accordingly, we determine that Petitioner has not demonstrated that there is
`
`a reasonable likelihood that claim 8, and claims 9–14, dependent thereon,
`
`are unpatentable over LaPorta and Deluca.
`
`
`
`ii. Unpatentability of Claims 11–14 over LaPorta, Deluca, and Will
`
`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)(i)(c), we determine that Petitioner has failed to establish that
`
`one of ordinary skill in the art would have been led to the relaying step of
`
`claim 8 by LaPorta and Deluca. Petitioner does not rely upon Will or
`
`provide any other rationale to cure this deficiency. See Pet. 35. On this
`
`record, we determine that Petitioner has not demonstrated that there is a
`
`reasonable likelihood that claims 11–14 are unpatentable for being obvious
`
`over the combination of LaPorta, Deluca, and Will.
`
`
`
`
`
`D. Grounds Under 35 U.S.C. § 102 by Will
`
`Will is a patent titled “Personal, Paging, Communications, and
`
`Locating System,” which issued from an application filed on February 3,
`
`1994. Ex. 1005, at [22], [54]. Will describes a system “for sending paging
`
`signals and messages to individuals within a building and accepting
`
`responses to the messages.” Id. at Abstract. Figure 1 of Will is reproduced
`
`below.
`
`11
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`
`
`Figure 1 depicts a block diagram of the hardware of the communications
`
`
`
`system.
`
`
`
`Figure 1 depicts that central communication station 3 transmits
`
`messages to communications units 6 via radio and that communication units
`
`6 transmit message back to central communication station 3’s remote
`
`stations 7, 8, or 9 by infrared or ultrasound. Id. at col. 7, l. 49–col. 8, l. 27.
`
`Will describes that both central communication station 3 and communication
`
`units 6 contain Preprogrammed Response Lists and Preprogrammed
`
`Message Lists. Id. at col. 12, ll. 62–65, Fig. 30. Communication units 6 can
`
`send messages which contain preprogrammed responses or a
`
`preprogrammed message list to central communications station 3. Id. at col.
`
`11, l. 63–col. 13, l. 12, col. 27, ll. 49–66, Figs. 12, 33.
`
`
`
`
`
`12
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`
`i. Analysis of Anticipation of Claim 19
`
`
`
`Petitioner argues that Will anticipates claim 19. Pet. 52–59. In
`
`particular, Petitioner argues that Will’s communication unit 6 includes a
`
`transmitter for transmitting the message code or the response codes. Pet. 58.
`
`
`
`Patent Owner argues that Will does not anticipate claim 19 because,
`
`although Will describes communication unit 6 transmitting the message code
`
`or response codes, Will does not describe the transmitter transmitting the
`
`message code together with the response codes. Prelim. Resp. 48–52.
`
`Patent Owner’s argument is unpersuasive from the outset because it is based
`
`upon a limitation not required by claim 19. As discussed above in section
`
`II(B)(i), nothing in claim 19 requires that the message code and the response
`
`code be transmitted together. Will discloses that communication unit 6
`
`includes a transmitter capable of transmitting messages that contain
`
`preprogrammed responses or a preprogrammed message list to central
`
`communications station 3. Ex. 1005, col. 11, l. 63–col. 13, l. 12, col. 27, ll.
`
`49–66, Figs. 12, 33.
`
`
`
`On this record, we determine that Petitioner has demonstrated that
`
`there is a reasonable likelihood of showing that claim 19 is anticipated by
`
`Will.
`
`
`
`
`
`ii. Analysis of Anticipation of Claim 21
`
`Petitioner argues that Will anticipates claim 21. Pet. 52–59. In
`
`particular, Petitioner argues that Will’s communication unit 6 includes a
`
`compiler for compiling the message code and the response codes into a
`
`message. Pet. 56–57. Patent Owner argues that Will does not anticipate
`
`claim 21 because, although Will describes that communication unit 6
`
`transmits messages with the message code or the response codes, Will does
`
`13
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`not describe a compiler capable of compiling the message code together with
`
`the response code. Prelim. Resp. 51–52. Will describes communication unit
`
`6 creating and transmitting messages with message codes, and, separately,
`
`describes communication unit 6 creating and transmitting messages with
`
`response codes. Ex. 1005, col. 11, l. 63–col. 13, l. 12, col. 27, ll. 49–66,
`
`Figs. 12, 33. Will is silent as to whether the communications unit has a
`
`compiler that is capable of compiling both the message code and the
`
`response codes into a message. “A claim is anticipated only if each and
`
`every element as set forth in the claim is found, either expressly or
`
`inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
`
`v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
`
`
`
`On this record, we determine that Petitioner has not demonstrated that
`
`there is a reasonable likelihood that claim 21 is anticipated by Will.
`
`
`
`III. CONCLUSION
`
`We determine that Petitioner has not demonstrated a reasonable
`
`likelihood that claims 8–14 and 21 are unpatentable and that Petitioner has
`
`demonstrated a reasonable likelihood of showing that claim 19 is
`
`unpatentable. The Board has not yet made a final determination as to the
`
`patentability of any claim.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claim 19 of the ’506 patent as anticipated by
`
`Will;
`
`14
`
`

`

`IPR2014-01034
`Patent 5,894,506
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`commencing on the entry date of this Order.
`
`
`
`
`
`
`
`15
`
`

`

`IPR2014-01034
`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
`
`16
`
`

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