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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`United States Patent No: 7,454,201 B2
`Inventors: Michael Brooking and William H.
`Williams, Jr.
`Formerly Application No.: 11/105,911
`Issue Date: November 18, 2008
`Filing Date: April 13, 2005
`Former Group Art Unit: 2617
`Former Examiner: William D. Cumming
`Patent Owner: Enterprise Systems Technolo-
`gies S.A.R.L.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`
`Attorney Docket No.:
`104677-5013-651
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`Customer No.: 28120
`Petitioner: Apple Inc.
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`
`
`For: SYSTEM FOR PROVIDING MESSAGE SERVICES THROUGH A PRI-
`VATE NETWORK AND MOBILE STATION
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,454,201
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`

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`Inter Partes Review
`
`United States Patent No. 7,454,201
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`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION AND BACKGROUND IN THE ART ............................... 1
`RELATED MATTERS AND MANDATORY NOTICES UNDER 37
`C.F.R. § 42.8; PETITIONER IS A REAL PARTY IN INTEREST
`UNDER RULE 42.8(B)(1) .......................................................................................... 4
`III. PETITIONER HAS STANDING ............................................................................ 5
`IV.
`SUMMARY OF THE ’201 PATENT AND ITS FIELD ..................................... 6
`V.
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’201 PATENT ..................................................................................................... 8
`A.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................... 8
`B.
`Level of Ordinary Skill in the Art and State of the Art .............................. 11
`C.
`Ground 1: Claims 1, 5, 7-11 and 13 Are Obvious Over Carey in
`View of the Knowledge of a POSITA; Ground 2: Claim 13 Is
`Obvious Over Carey in View of Nachman ................................................. 11
`1.
`Overview of Carey ............................................................................... 11
`2.
`Carey Claim Chart for Claims 1, 5, 7-11 and 13 .............................. 12
`3.
`Overview of Nachman & Motivation to Combine Carey
`with Nachman ...................................................................................... 25
`Carey In View of Nachman Claim Chart for Claim 13 .................. 27
`4.
`D. Ground 3: Claims 1, 11 and 13 Are Obvious Over RDSS in View
`of the Knowledge of a POSITA; Ground 4: Claims 5 and 7-10
`Are Obvious Over RDSS in View of Jacobs; Ground 5: Claims 5
`and 7-10 Are Obvious Over RDSS in View of Laurance ......................... 29
`1.
`Overview of RDSS ............................................................................... 29
`2.
`RDSS Claim Chart for Claims 1, 11 and 13 ..................................... 29
`3.
`Overview of Jacobs & Motivation to Combine RDSS with
`Jacobs ..................................................................................................... 38
`RDSS In View of Jacobs Claim Chart for Claims 5, 7-10 ............. 41
`Overview of Laurance & Motivation to Combine RDSS
`with Laurance ........................................................................................ 50
`RDSS In View of Laurance Claim Chart for Claims 5, 7-10 ......... 53
`6.
`VI. CONCLUSION........................................................................................................... 59
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`
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`4.
`5.
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`
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
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`Ex. 1004
`Ex. 1005
`
`Ex. 1006
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`Ex. 1007
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`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
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`Ex. 1015
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`Ex. 1016
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`Ex. 1017
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`Ex. 1018
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`Inter Partes Review
`
`United States Patent No. 7,454,201
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 7,454,201
`U.S. Patent No. 7,454,201 File History
`Declaration of Dr. Nathaniel Polish In Support of the Petition for
`an Inter Partes Review of United States Patent No. 7,454,201
`(“Polish Declaration”)
`U.S. Patent No. 6,714,793 (“Carey”)
`U.S. Patent Application Publication No. 2001/0027474
`(“Nachman”)
`Declaration of Mark Nicholas Cheston and, as Attachment A,
`“Understanding Radio Determination Satellite Service” (“RDSS”)
`Jacobs et al., “The Application of a Novel Two-Way Mobile Satel-
`lite Communications and Vehicle Tracking System to the Trans-
`portation Industry” (“Jacobs”)
`European Patent Application No. 0 203,853 (“Laurance”)
`U.S. Patent No. 6,430,604 (“Ogle”)
`U.S. Patent Application Publication No. 2001/0006889 (“Kraft”)
`U.S. Patent No. 5,825,883 (“Archibald”)
`U.S. Patent No. 6,571,108 (“Otsuka”)
`U.S. Patent No. 7,149,775 (“Goldfinger”)
`Declaration of Asa Wynn-Grant and, as Attachment A, Excerpts
`from Complainant Enterprise Systems Technologies S.A.R.L.’s
`Preliminary Claim Construction Disclosures, Investigation No.
`337-TA-925 (ITC Jan. 9, 2015)
`Declaration of Roberto J. Gonzalez In Support of the Petition for
`an Inter Partes Review of United States Patent No. 7,454,201 (Gon-
`zalez Declaration)
`Declaration of Jordan M. Rossen In Support of the Petition for an
`Inter Partes Review of United States Patent No. 7,454,201 (“Rossen
`Declaration”)
`Declaration of Matthew R. Shapiro In Support of the Petition for
`an Inter Partes Review of United States Patent No. 7,454,201
`(“Shapiro Declaration”)
`Declaration of Julian D. Moore In Support of the Petition for an
`Inter Partes Review of United States Patent No. 7,454,201 (“Moore
`Declaration”)
`
`ii
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`Inter Partes Review
`
`United States Patent No. 7,454,201
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`Pursuant to §§ 311-319 and Rule § 42.1,1 the undersigned, on behalf of and act-
`
`ing in a representative capacity for Apple Inc. (“Apple” or “Petitioner”) hereby peti-
`
`tions for inter partes review (“IPR”) of claims 1, 5, 7-11 and 13 (the “challenged claims”)
`
`of U.S. Patent No. 7,454,201 (“the ’201 patent”), originally issued to Siemens Com-
`
`munications, Inc., and, according to the USPTO, now assigned to Enterprise Systems
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`Technologies S.a.r.l. (“Enterprise” or “patent owner”). Petitioner hereby asserts that
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`there is a reasonable likelihood that at least one of the challenged claims is unpatenta-
`
`ble for the reasons set forth herein and respectfully requests review of, and judgment
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`against, claims 1, 5, 7-11 and 13 as unpatentable under § 103.
`
`I.
`
`INTRODUCTION AND BACKGROUND IN THE ART
`
`The applicants for the ’201 patent tried to claim, as their exclusive property, a
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`basic mobile messaging system that—by the time of their earliest application—was
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`already well understood in the art. For example, America Online (AOL) is well known
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`for creating a subscriber-only instant text messaging system, AOL Instant Messenger
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`(AIM). Subscribers had user names allowing them to send text messages (after signing
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`on with passwords) to other subscribers. See, e.g., Ex. 1004 at 1:30-41; see also Ex. 1015
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`at ¶5. Prior to the earliest claimed priority date of the ’201 patent (March 22, 2001),
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`AOL filed a patent application (that resulted in an issued U.S. patent) which added the
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`1 All section cites herein are to 35 U.S.C. or 37 C.F.R., as the context indicates, and all
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`emphasis and all red notations herein have been added unless otherwise noted.
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`1
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`capability of connecting the AOL system to mobile phones so that AOL subscribers
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`could register and associate mobile phone numbers with their user names so they
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`could receive messages identified by name. See, e.g., Ex. 1004.
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`And well before that, in the late 1980’s and early 1990’s, text messaging was
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`disclosed and used in the Geostar (Radio Determination Satellite Service) and Qual-
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`comm (OmniTRACS) subscriber-only satellite systems. See, e.g., Exs. 1006, 1007, 1008;
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`see also Exs. 1006 at 1; 1015 at ¶7; 1016 at ¶2; 1017 at ¶3. Their portable terminals, of-
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`ten used by the trucking industry, sent and received short text messages using satellites
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`as relays to a central ground facility. See, e.g., Ex. 1006 at 7, 11; 1007 at 2. The central
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`ground facility would then direct the message back through the satellite relays to the
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`addressee on the system or would relay the message to an addressee on a terrestrial
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`public network. See, e.g., Ex. 1006 at 45-46; 1007 at 6-7; 1008 at 41-43. These satellite
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`systems used user identifiers for the addressees, which were associated with the port-
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`able terminal ID number in look-up tables. See, e.g., Ex. 1006 at 25-26. In addition,
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`these systems included support for multiple means of authentication (including pass-
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`word sign-on) and encryption. See, e.g., Ex. 1006 at 19, 55; 1007 at 6; 1008 at 79, 81.
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`It is against this background that the ’201 applicants purported to claim as their
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`exclusive property a new “invention”—but without putting this prior art before the
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`Patent Office. The specification of the ’201 patent states that it relates to “a method
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`and system for providing message services in a communication system” in which
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`“messages may be sent to a mobile station based on an identifier for the user of the
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`2
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`mobile station rather than based on an identifier for the mobile station itself….” Ex.
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`1001 at 1:46-52; see also Ex. 1015 at ¶3. But the challenged claims require elements al-
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`ready well known to any person of ordinary skill in the art (“POSITA”) at the time,
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`arranged in ways well known: a private network; a processor and logic in a memory
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`that can implement an application for generating, and can communicate user notifica-
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`tion messages; a recipient mobile station, such as a cell phone; a mobile station identi-
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`fier corresponding to a mobile station; and a user identifier that identifies the recipient
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`and is assigned to a mobile station identifier. The dependent claims simply add com-
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`monplace authentication features. The “invention” claimed in each of the challenged
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`claims was well known and, at minimum, obvious prior to the earliest filing date listed
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`on the front of the ’201 patent (i.e., March 22, 2001).
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`As summarized briefly above (and detailed below), methods of messaging using
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`mobile communication devices were well known in the art long before March 2001,
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`and a POSITA would have been well aware of instant messaging systems implement-
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`ed on mobile devices—both through subscriber-only terrestrial and satellite-based
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`systems. See, e.g., Exs. 1004, 1006, 1007; see also Ex. 1003 at § V.
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`This Petition relies on two primary references. The first discloses using the
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`AOL AIM system with mobile phones: U.S. Patent No. 6,714,793 (“Carey”) (Ex.
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`1004), concerning mobile instant messaging technology, in view of the knowledge of a
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`POSITA or in combination with U.S. Patent App. Pub. No. 2001/0027474
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`(“Nachman”) (Ex. 1005) (explicitly disclosing an instant messaging system with a
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`“send message” command); see also Ex. 1015 at ¶6. The second primary reference de-
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`scribes the use of the Geostar Radio Determination Satellite Service messaging system:
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`“Understanding Radio Determination Satellite Service” (“RDSS”) (Ex. 1006), concerning
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`messaging via a satellite communication service, in view of the knowledge of a POSI-
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`TA or in combination with “The Application of a Novel Two-Way Mobile Satellite Communi-
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`cations and Vehicle Tracking System to the Transportation Industry” (“Jacobs”) (Ex. 1007)
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`(describing Qualcomm’s OmniTRACS satellite system) or EP 203,853 A2 (“Lau-
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`rance”) (Ex. 1008) (describing authentication enhancements to the Geostar satellite
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`system). None of these references were raised during prosecution of the ’201 patent.
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`As demonstrated in this Petition, each and every element of the Challenged
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`Claims has been disclosed in the prior art and at most the Challenged Claims are at
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`best nothing more than a routine and predictable combination of these well-known
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`elements. Thus, Petitioner respectfully requests that the Board institute trial and find
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`each of the Challenged Claims invalid under § 103.
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`II. RELATED MATTERS AND MANDATORY NOTICES UNDER §
`42.8; PETITIONER IS A REAL PARTY IN INTEREST UNDER
`RULE 42.8(B)(1)
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`The real party-in-interest is Petitioner, Apple Inc. Enterprise has asserted
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`the ’201 patent against Petitioner in Enterprise v. Apple, 14-cv-00765 (DDel) and claims
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`1, 5, 7-11 and 13 of the ’201 patent against Petitioner, Samsung Elecs. Co. Ltd., Sam-
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`sung Elecs. Am., Inc., Samsung Telecommc’ns Am., HTC Corp., HTC Am., Inc., LG
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`Elecs. Inc., LG Elecs. USA, Inc., and LG Elecs. MobileComm U.S.A., Inc. in In re
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`Commc’ns or Computing Devices and Components Thereof, Investigation No. 337-TA-925
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`(ITC, filed July 16, 2014) (“ITC litigation”). Enterprise has also asserted the ’201 pa-
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`tent in the following matters, to which Petitioner is not a party: Enterprise v. Ama-
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`zon.com Inc., 14-cv-0053 (EDTX); Enterprise v. Motorola Mobility Holdings Inc., 14-cv-0054
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`(EDTX); Enterprise v. Samsung Elecs. Co., Ltd., 14-cv-00555 (EDTX); Enterprise v. HTC
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`Corp., 14-cv-00614 (EDTX); and Enterprise v. LG Elecs. Inc., 14-cv-00615 (EDTX).
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`Parent to the ’201 patent, U.S. Patent No. 6,920,318, has not been litigated. Lead and
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`backup counsel, and service information are designated in the signature block.
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`III. PETITIONER HAS STANDING
`Grounds for Standing Under Rule 42.104(a): Petitioner certifies, pursuant to
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`37 C.F.R. § 42.104(a), that the ’201 patent is eligible for IPR and that Petitioner is not
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`barred or estopped from requesting IPR. Petitioner was served with a Complaint as-
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`serting infringement of the ’201 patent on or after July 23, 2014. Neither Petitioner
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`nor any other real party-in-interest or privy of Petitioner was served with a complaint
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`before that date, or has initiated a civil action challenging validity of the ’201 patent.
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`Claims and Statutory Grounds Under Rules 42.22 and 42.104(b): Petition-
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`er requests IPR of ’201 claims 1, 5, 7-11 and 13 and asserts that the claims are un-
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`patentable based on one or more grounds under § 103: Ground 1: Claims 1, 5, 7-11
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`and 13 are obvious under § 103 over Carey in view of the knowledge of a person of
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`ordinary skill in the art (“POSITA”); Ground 2: Claim 13 is obvious under § 103 over
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`Carey in view of Nachman; Ground 3: Claims 1, 11 and 13 are obvious under § 103
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`5
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`over RDSS in view of the knowledge of a POSITA; Ground 4: Claims 5 and 7-10 are
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`obvious under § 103 over RDSS in view of Jacobs; Ground 5: Claims 5 and 7-10 are
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`obvious under § 103 over RDSS in view of Laurance. None of the art cited in grounds
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`1-5 was considered by the Patent Office during prosecution of the ’201 patent. Sec-
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`tions V.C-D. below provide claim charts specifying how the relied upon prior art ren-
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`ders obvious the challenged claims. In further support of the proposed grounds of
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`rejection, the Declaration of technical expert Nathaniel Polish is attached as Ex. 1003.
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`IV. SUMMARY OF THE ’201 PATENT AND ITS FIELD
`The ’201 patent is titled “System for Providing Message Services Through a
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`Private Network and Mobile Station,” and purports to claim priority to App. No.
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`09/815,858, filed Mar. 22, 2001. Ex. 1001. The ’201 patent specification describes a
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`system in which “messages may be sent to a mobile station based on an identifier for
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`the user of the mobile station rather than based on an identifier for the mobile station
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`itself, such that a sender need not have knowledge of the identifier for the mobile sta-
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`tion.” Id. at 1:50-54. The specification explains that a mobile station “may comprise
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`any wireless device operable to communicate with and roam within [a] private net-
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`work,” such as a “mobile telephone, pager, or other suitable mobile device,” id. at
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`6:22-24, 18:57-59, and a mobile station has a corresponding mobile station identifier,
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`such as “a telephone number, pager number, or other suitable identifier operable to
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`distinguish [one] mobile station from other mobile stations.” Id. at 18:60-62. The
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`specification describes examples in which a user identifier, such as “a user’s first name,
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`6
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`last name, [or] nickname,” is assigned to the mobile station identifier. Id. at 18:56-57.
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`“In this way, a sender may send a message to a user through the user’s mobile station
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`based on an easily remembered identifier for the user rather than based on the mobile
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`station identifier.” Id. at 17:24-27. All of the elements claimed by the ’201 patent were
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`well-known in the art prior to March 22, 2001. See, e.g., Ex. 1003 at § VI.C-D.
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`During prosecution, the Examiner rejected the pending claims (a) based on
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`double patenting, (b) under § 112 as failing to comply with the written description re-
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`quirement and/or indefinite, (c) under § 101 as being directed to non-statutory subject
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`matter, and (d) under § 103 as obvious over U.S. Patent No. 5,825,883 to Archibald et
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`al (“Archibald”) (Ex. 1011) in view of U.S. 6,571,108 to Otsuka et al. (“Otsuka”) (Ex.
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`1012). Ex. 1002 at 72-79, 104-05, 128-39, 167-78; see also Ex. 1015 at ¶¶4, 10, 11. In
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`response to the Examiner’s rejections, Applicants made various amendments to the
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`drawings, specification, and claims, and filed a terminal disclaimer. See id. at 83-102,
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`106-24, 150-65. To respond to the § 101 and 112 rejections, Applicants amended the
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`claims to add “processor” and “logic” limitations, and to specify that the claimed logic
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`is contained in a memory and operable when executed by the processor. Id. at 116-17,
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`159-60. Applicants argued, inter alia, that the claims were allowable because the cited
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`references failed to disclose every element required by the claims, and that the Exam-
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`iner failed to establish a motivation to combine the references. Id. at 118-20, 160-64.
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`After the Examiner made certain indefiniteness and obviousness rejections fi-
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`nal, Applicants requested pre-appeal review, in which they argued again that the cited
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`7
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`references failed to disclose all the elements required by the claims. Id. at 167-78, 183-
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`87. For example, Applicants argued that to the extent Otsuka disclosed a “mobile sta-
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`tion identifier” and Archibald disclosed a “user identifier,” neither reference alone or
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`in combination disclosed the “specific interrelation between the user identifier and the
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`mobile station identifier,”—i.e., “logic operable to … assign a user identifier to a first
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`mobile station identifier corresponding to a first mobile station in a private network.”2
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`Id. at 184-86; see also id. at 160-63 (asserting this argument with respect to a similar lim-
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`itation of application claim 27, which issued as claim 1). Following these arguments,
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`the claims were allowed in July 2008. Id. at 190.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’201 PATENT
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`Petitioner submits there is at least a reasonable likelihood that Petitioner will
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`prevail with respect to at least one of the claims challenged in this Petition. § 314(a).
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`Indeed, all of the challenged claims of the ’201 patent claims are obvious under § 103
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`in light of the prior art, as explained below.
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`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
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`A.
`Pursuant to 37 C.F.R. § 42.100(b), for the purposes of this review, the claim
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`language is construed such that it is “given its broadest reasonable construction in
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`2 This is a limitation of issued claim 3 of the ’201 patent; it was mistakenly identified
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`in Applicants’ brief as a limitation of application claim 27, which issued as claim 1.
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
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`terms not specifically listed and construed below, Petitioner interprets them for pur-
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`poses of this review in accordance with their plain and ordinary meaning under the
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`required broadest reasonable interpretation consistent with the specification of
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`the ’201 patent. Because the standard for claim construction at the PTO is different
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`than that used in litigation, see In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364,
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`1369 (Fed. Cir. 2004); MPEP § 2111, Petitioner expressly reserves the right to argue in
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`litigation constructions for any term in the ’201 patent, as appropriate to that proceed-
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`ing. Petitioner proposes the following claim constructions relevant to this proceeding:
`
`-“private network” (cls. 1, 7-10, 13)—For review purposes, this term should be con-
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`strued to mean “a network or portion of a network that communicates with and that
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`can be managed apart from a public network.”3 See, e.g., Ex. 1001 at 1:61-63, 3:32-56,
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`5:62-6:5.
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`-“application” (cls. 1, 13)—For review purposes, this term should be construed to
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`mean “a set of instructions, procedures, functions, objects, classes, instances, and/or
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`related data adapted for implementation in hardware, software, firmware, or a combi-
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`3 A “[p]ublic network 104 may comprise any hardware, software, firmware, or combi-
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`nation thereof operable to facilitate communication between telephones … and/or
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`mobile stations,” such as a GSM network or public switched telephone network. Ex.
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`1001 at 4:1-6, 9:42-43.
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`nation thereof.” See, e.g., id. at 4:7-34, 17:46-49.
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`Inter Partes Review
`United States Patent No. 7,454,201
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`-“user notification message” (cls. 1, 10)—For review purposes, this term should be
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`construed to mean “a message operable to deliver textual and/or visual information
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`to a mobile station to be provided to the subscriber using the mobile station.” See, e.g.,
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`id. at 4:13-19.
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`-“user identifier” (cls. 1, 11, 13)—For review purposes, this term should be con-
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`strued to mean “any suitable identifier operable to identify at least one recipient of a
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`message.” See, e.g., id. at cl. 1, 1:58-65, 2:1-14, 9:34-40, 17:24-31, 18:53-65, 19:18-38.
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`-“mobile station identifier” (cl. 1)—For review purposes, this term should be con-
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`strued to mean “any suitable identifier operable to identify and distinguish a mobile
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`station from other mobile stations.” See, e.g., id. at cl. 1, 1:58-65, 2:1-14, 9:34-40, 18:53-
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`65, 19:18-38.
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`-“mobile station” (cl. 1)—For review purposes, this term should be construed to
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`mean “a wireless device operable to communicate with and roam within a private
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`network, which provides voice and/or data services to a subscriber of the private
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`network.” See, e.g., id. at cl. 1, 6:19-36.
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`-“authentication information” (cls. 5, 7)—For review purposes, this term should be
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`given its plain and ordinary meaning—“a user name, password and/or any other suit-
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`able identifying information operable to authenticate a user.” See, e.g., id. at 15:55-58.
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`See also Ex. 1003 at § IV. Petitioner’s constructions are similar or identical to the broad
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`constructions proposed by Enterprise in the ITC litigation. See Ex. 1014; see also Exs.
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`10
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`Inter Partes Review
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`United States Patent No. 7,454,201
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`1014 at ¶2, 1018 at ¶2. Because Enterprise has offered such broad constructions, it
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`should be held constructions that are at least that broad for purposes of the IPR.
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`Level of Ordinary Skill in the Art and State of the Art
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`B.
`Petitioner submits that the applicable person of ordinary skill in the art would
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`have a minimum of a bachelor’s degree in electrical engineering, computer engineer-
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`ing, computer science, or a comparable field, and approximately two years of profes-
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`sional experience with wireless communications, communications networks, distribut-
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`ed systems, directory services, or other relevant industry experience. Additional gradu-
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`ate education could substitute for professional experience, or significant experience in
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`the field could substitute for formal education. See Ex. 1003 at § III. A POSITA is
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`presumed to have knowledge of all relevant prior art, and therefore would have been
`
`familiar with each of the references cited herein and the full range of teachings they
`
`contain. Id. at ¶19. Thus, a POSITA reviewing Carey would have been familiar with
`
`the Nachman reference, as discussed below, as well as the RDSS, Jacobs and Laurance
`
`references, and the full range of teachings they contain. Id. Likewise, a POSITA re-
`
`viewing RDSS would have been familiar with the Jacobs and Laurance references, as
`
`discussed below, as well as the Carey and Nachman references. Id.
`
`C. Ground 1: Claims 1, 5, 7-11 and 13 Are Obvious Over Carey in View
`of the Knowledge of a POSITA; Ground 2: Claim 13 Is Obvious
`Over Carey in View of Nachman
`1.
`U.S. Patent No. 6,714,793 (“Carey”), “Method and System for Instant Messag-
`
`Overview of Carey
`
`
`
`11
`
`

`

`Inter Partes Review
`
`
`United States Patent No. 7,454,201
`
`
`ing Across Cellular Networks and a Public Data Network,” was filed Mar. 6, 2000,
`
`and issued to America Online, Inc. on Mar. 30, 2004. Ex. 1004. Carey is prior art to
`
`the ’201 patent under at least § 102(e). Carey discloses a mobile instant messaging sys-
`
`tem. To send an instant message, a subscribing user selects the recipients’ instant mes-
`
`sage names and enters message content information. This information is received by
`
`the user’s mobile device and provided to the instant message routing system for pro-
`
`cessing, routing and transfer to the recipient. Id. at 5:8-20, 23–25, 37–43. The instant
`
`message routing system includes a routing server and a database. Id. at 1:9-11, Fig. 1.
`
`Each instant message name corresponds to a destination address, e.g. phone number,
`
`which is stored in the database. Id. at 4:22–28; see Ex. 1003 at ¶58.
`
`2.
`As detailed herein, Carey, in view of the knowledge of a POSITA, at minimum
`
`Carey Claim Chart for Claims 1, 5, 7-11 and 13
`
`renders obvious each of the challenged claims based on the disclosures identified be-
`
`low.4 See also Ex. 1003 at ¶¶61-108. Petitioner has provided additional explanations
`
`and argument below the corresponding claim chart.
`
`Carey
`Claim 1
`[Preamble]
`Carey discloses a system for providing message services (e.g., “in-
`A system
`stant messaging system”) through a private network (e.g., “instant
`for provid-
`message routing system 22 that includes a routing server 24 and a
`ing mes-
`database 26”) and a mobile station (e.g., “mobile unit device 36”)
`sage ser-
`at, e.g., Ex. 1004 at 1:9-13, 3:18-58, 4:11-15, Fig. 1.
`
`4 Petitioner submits that that Carey discloses each of the challenged claims and invites
`
`the Board to find each of the challenged claims anticipated by Carey under §102.
`
`
`
`12
`
`

`

`Inter Partes Review
`
`United States Patent No. 7,454,201
`
`“The present invention is an integrated wireless and traditional instant messag-
`ing system and method. As shown in FIG. 1, the system 20 includes a in-
`stant message routing system 22 that includes a routing server 24 and a database 26
`for storing a profile for each subscribing user.” Id. at 3:18-22.
`
`
`
`vices
`through a
`private
`network
`and a mo-
`bile station,
`comprising:
`
` Id. at Fig. 1.
`“The routing server 24 is in communication with one or more short message service
`centers (SMSC) 32 that is in communication with one or more wireless
`mobile carriers 34. Each wireless mobile carrier 34 supports subscribing
`users operating mobile unit devices 36, such as a hand-held cell phone, a bag phone
`or a vehicle phone. The routing server 24 is also coupled to a public or private data
`network 30, such as the Internet. Also coupled to the public or private data net-
`work 30 are an instant message server 40 and one or more traditional systems 42,
`such as a personal computer. [¶] The communication link between the routing
`server 24 and the short message service center 32 is also either a public or private data
`network, such as the Internet or a private dedicated circuit.” Id. at 3:24-38.
`Carey discloses at least one processor (e.g., “mobile unit device”
`“receives” and “executes” a program) at, e.g., Ex. 1004 at 2:52-54,
`3:27-30, 4:11-19, 4:49-61.
`“At the mobile unit device the executable address loading program is executed,
`thereby entering the associated instant message name and address into
`memory.” Id. at 2:52-54.
`“[T]he user’s mobile unit device 36 receives and executes the program, thus saving
`the instant message name list in an address book stored in memory. In
`other words, the mobile unit device is programmed in an over-the-air-
`programming manner.” Id. at 4:57-61.
`Carey discloses logic in a memory, the logic operable when exe-
`cuted by the processor to receive a user notification message (e.g.,
`“message content information” or “text message”) in an applica-
`
`[1.1] at
`least one
`processor;
`and
`
`[1.2] logic
`in a
`memory,
`
`13
`
`
`
`
`
`
`

`

`Inter Partes Review
`
`United States Patent No. 7,454,201
`
`tion (e.g., “create message display screen”) at, e.g., Ex. 1004 at
`2:52-54, 4:57-63, 5:8-20, 8:50-55, Fig. 10.
`“At block 72, the user’s mobile unit device 36 receives and executes the program,
`thus saving the instant message name list in an address book stored in
`memory. In other words, the mobile unit device is programmed … to include the
`instant message name list within the mobile unit device’s instant message
`listings (i.e. address book).” Id. at 4:57-63.
`“[T]he user enters message content information (either function related infor-
`mation or a message accordingly). Alternatively, the message content infor-
`mation is entered first, then an instant message function or an instant mes-
`sage name is selected.” Id. at 5:16-20.
`“In order for a user to send an instant message, the user selects a create message dis-
`play screen, enters a text message using the mobile unit device’s keypad, such as the
`T9® enabled keypad produced by Tegic Communications™, and then
`selects a recipient (an instant message name) from the address book ui
`screen.” Id. at 8:50-55.
`Carey discloses the logic operable when executed by the processor
`to receive a user identifier (e.g., “instant message name”) for at
`least one recipient of the message (e.g., “recipient”) in the
`application, the user identifier operable to identify the recipient at,
`e.g., Ex. 1004 at 4:19-22, 4:57-63, 5:8-20, 6:22-32, 6:48-60, 8:50-59.
`“[T]he user selects an instant message function or an instant message name(s)
`from the mobile unit device’s address book based on the latest stored instant
`message name status information received from the instant message
`name routing server 24 as a result of a sign on, a status update or the last
`communication with the instant message routing server 24 (see FIG. 5
`below). Then, the user enters message content information (either func-
`tion related information or a message accordingly). Alternatively, the
`message content information is entered first, then an instant message
`function or an instant message name is selected.” Id. at 5:8-20.
`“In order for a user to send an instant message, the user selects a create message
`display screen, enters a text message using the mobile unit device’s key-
`pad, such as the T9® enabled keypad produced by Tegic Communica-
`tions™, and then selects a recipient (an instant message name) from the address
`book ui screen. User activation of the ‘Select’ function allows the user to select a user
`identified (e.g. highlighted) instant message name in the name list as the recipient of
`the entered instant message.” Id. at 8:50-59.
`Carey discloses logic operable when executed by a processor to
`provide the message and the user identifier (e.g., “entered infor-
`mation”) from the application to the private network (e.g., “rout-
`ing server 24”) operable to transmit the message to the mobile sta-
`
`the logic
`operable
`when exe-
`cuted by
`the proces-
`sor to re-
`ceive a user
`notification
`message in
`an applica-
`tion
`
`[1.3] to re-
`ceive a user
`identifier
`for at least
`one recipi-
`ent of the
`message in
`the applica-
`tion, the
`user identi-
`fier opera-
`ble to iden-
`tify the re-
`cipient
`
`[1.4] and to
`provide the
`message
`and the us-
`
`14
`