Trials@uspto.gov
`571.272.7822
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` Paper 7
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` Entered: August 14, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00702
`Patent 7,969,925 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571.272.7822
`
`
` Paper 7
`
`
` Entered: August 14, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00702
`Patent 7,969,925 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-00702
`Patent 7,969,925 B2
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`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–20 of U.S. Patent No. 7,969,925 B2 (Ex. 1001, “the ’925 patent”).
`Paper 1 (“Pet.”). Uniloc 2017 LLC (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition . . . and
`any response . . . 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.” 35 U.S.C. § 314(a). Upon consideration of the Petition and
`Preliminary Response, we conclude the information presented shows that
`there is a reasonable likelihood that Petitioner would prevail in establishing
`the unpatentability of at least one of claims 1–20 of the ’925 patent.
`
`A. Related Matters
`Petitioner and Patent Owner indicate that the ’925 patent is the subject
`of the following currently pending court proceedings: Uniloc USA, Inc., et
`al. v. Apple Inc., Case No. 1:18-cv-00166-LY (W.D. Tex.); and Uniloc USA,
`Inc. et al. v. Apple Inc., Case No. 4-19-cv-01696 (N.D. Cal.). Pet. 1–2;
`Prelim. Resp. 6.
`
`B. The ’925 Patent
`The specification of the ’925 patent describes “a method for
`establishing a direct data transfer session between mobile devices over a
`digital mobile network system that supports data packet-based
`communications.” Ex. 1001, 1:61–64. According to the ’925 patent, a
`separate data server is not required to provide a known location from which
`a recipient retrieves data. Id. at 1:64–67. Rather, “a mobile device initiating
`a data transfer opens a listening port defined by an underlying data packet
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`based network protocol.” Id. at 1:67–2:2. Initiating mobile device sends an
`invitation message containing the network address, including the listening
`port of the initiating device, to a target mobile device through a page-mode
`messaging service supported by the digital mobile network system. Id. at
`2:2–7. Initiating mobile device further utilizes and incorporates a unique
`identification number associated with the target mobile device into the
`invitation message to locate and contact the target mobile device within the
`wireless mobile network. Id. at 2:7–11. “Once the initiating mobile device
`receives a response from the target mobile device at the listening port, the
`two mobile devices are able to establish a reliable virtual connection through
`the underlying data packet-based network protocol in order to transfer data
`directly between the two mobile devices.” Id. at 2:12–17.
`An example digital mobile network system is illustrated in Figure 1
`reproduced below.
`
`Figure 1 is a diagram of a Global System for Mobile communications
`(GSM) mobile networking system 100 including a first mobile device 105
`and a second mobile device 110. Id. at 2:21–27. As disclosed in the
`
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`’925 patent, each of the mobile devices 105 and 110 includes a Subscriber
`Information Module (SIM) card that contains unique identification
`information that enables the GSM system 100 to locate the mobile devices
`within the network and route data to them. Id. at 2:40–44. The ’925 patent
`further discloses that the GSM system 100 supports a page-mode messaging
`service, such as Short Message Service (SMS), that relies upon the
`underlying GSM mechanisms to resolve routing information to locate
`destination mobile devices. Id. at 3:14–18. Through use of a page-mode
`messaging service, such as SMS, an initiating mobile device transmits its IP
`address (and a listening port) in an invitation message to a target mobile
`device through the target device’s telephone number. Id. at 4:26–31. When
`the target device receives the invitation message, it is able to contact the
`initiating mobile device through the received IP address and the two devices
`can establish a connection for a data transfer session. Id. at 4:31–35.
`An example flow chart for establishing a data transfer session is
`illustrated in Figure 2 reproduced below.
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`Figure 2 is a flow chart depicting the steps taken by an initiating and target
`mobile device to establish a direct data transfer session. Id. at 4:35–38. At
`210, the initiating mobile device opens a TCP port to listen for
`communications from the target mobile device. Id. at 4:38–40. At 220, the
`target mobile device similarly opens an SMS listening port to receive
`invitation SMS text messages at the specified SMS port. Id. at 4:40–42. At
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`230, the initiating mobile device transmits its IP address and TCP port in an
`invitation SMS text message to the telephone number and a specified SMS
`port of the target mobile device. Id. at 4:43–46. At 240, the target mobile
`device receives the SMS text message containing the initiating mobile
`device’s IP address and TCP port at the specified SMS port. Id. at 4:46–48.
`At 250, the target mobile device extracts the IP address and TCP port from
`the SMS text messages and opens its own TCP port. Id. at 4:48–50. At 260,
`the target mobile device transmits a request to establish a TCP connection to
`the initiating mobile device’s IP address and TCP port. Id. at 4:50–53. At
`270, the initiating mobile device receives the request and a TCP connection
`is established between the IP addresses and TCP ports of the initiating and
`listening mobile devices. Id. at 4:53–56. At 280, the initiating and listening
`mobile devices engage in a data transfer session over a reliable virtual
`connection. Id. at 4:56–57.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–20 of the ’925 patent. Claims 1, 8, and
`15 are independent. Claims 2–7 depend directly from claim 1; claims 9–14
`depend directly from claim 8; and claims 16–20 depend directly from claim
`15. Claim 1 is reproduced below.
`1. A method of establishing a direct data transfer
`session between mobile devices that support a data packet-based
`communications service over a digital mobile network system,
`the method comprising:
`opening a listening software port on an initiating mobile
`device to receive communications through the data packet-based
`communications service;
`transmitting an invitation message to a target mobile
`device through a page-mode messaging service, wherein the
`invitation message comprises a network address associated with
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`the initiating mobile device, and wherein the target mobile device
`is located by providing a unique identifier to the page-mode
`messaging service;
`receiving a response from the target mobile device at the
`listening software port on the initiating mobile device;
`establishing a data transfer session through the data
`packet-based communications service between the initiating
`mobile device and the target mobile device, wherein the data
`transfer session is established in a peer-to-peer fashion without a
`server intermediating communications through the established
`data transfer session between the initiating mobile device and the
`target mobile device.
`Ex. 1001, 5:45–67.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–20 are unpatentable based on the
`following grounds. Pet. 6:
`References
`Alos2 and RFC7933
`
`Basis1
`§ 103
`
`Challenged Claims
`1, 3–8, 10–15, and
`17–20
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’925
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`2 Translation of EP Application Publication No. 1009153 A1, published June
`14, 2000 (Ex. 1005, “Alos”).
`3 RFC 793, “Transmission Control Protocol,” DARPA Internet Program
`Protocol Specification, September 1981, and Declaration of Sandy Ginoza
`(Ex. 1010, “RFC793”).
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`Basis1
`§ 103
`
`References
`Alos, RFC793, SMS Specification4,
`and WMA5
`§ 103
`Cordenier6 and RFC793
`Cordenier, RFC793, and Dorenbosch7 § 103
`Lee8, RFC793, and SMS Specification § 103
`Lee, RFC793, SMS Specification, and
`WMA
`
`§ 103
`
`Challenged Claims
`2, 9, and 16
`1, 3–8, 10–15, and
`17–20
`2, 9, and 16
`1, 3–8, 10–15, and
`17–20
`2, 9, and 16
`
`II. DISCUSSION
`
`A. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019). The claim
`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005).
`For purposes of this decision, we need not expressly construe any
`claim term at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`4 3GPP TS 23.040 version 3.5.0, “Universal Mobile Telecommunication
`System (UMTS), Technical Realization of the Short Message Service
`(SMS),” and Information Disclosure Statement citing aforementioned
`specification, submitted August 15, 2002 (Ex. 1014, “SMS Specification”).
`5 Wireless Messaging API (WMA) for Java™ 2 Micro Edition Version 1.0,
`August 21, 2002, and Declaration of Harold Ogle (Ex. 1018, “WMA”).
`6 EP Application Publication No. 1385323 A1, published January 28, 2004
`(Ex. 1007, “Cordenier”).
`7 U.S. Patent Application Publication No. 2003/0217174 A1, published
`November 20, 2003 (Ex. 1011, “Dorenbosch”).
`8 U.S. Patent No. 6,847,632 B1, issued January 25, 2005 (Ex. 1006, “Lee”).
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`F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;9 and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`
`9 Relying on the testimony of Dr. Henry H. Houh, Petitioner offers an
`assessment as to the level of skill in the art at the time of the ’925 patent.
`Pet. 9 (citing Ex. 1002 ¶ 35). At this time, Patent Owner does not propose
`an alternative assessment. Prelim. Resp. 6. To the extent necessary, and for
`purposes of this Decision, we accept the assessment offered by Petitioner as
`it is consistent with the ’925 patent and the asserted prior art.
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`C. Asserted Obviousness of Claims 1, 3–8, 10–15, and 17–20 over Alos and
`RFC793
`Petitioner contends claims 1, 3–8, 10–15, and 17–20 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Alos and RFC793. Pet. 23–35. In
`support of its showing, Petitioner relies upon the declaration of Dr. Houh.
`Id. (citing Ex. 1002).
`
`1. Alos
`Alos describes a method for establishing communication through an
`Internet-type computer network with two Internet information transmission
`elements. Ex. 1005 ¶ 6. An example network including two information
`transmission elements is illustrated in Figure 1 reproduced below.
`
`
`Figure 1 shows two information transmission elements in a GSM cellular
`radio telephone network connected to the Internet. Id. ¶ 13. Alos describes
`that the information transmission elements are two mobile telephone stations
`1 and 2 connected to a direct communication network (i.e., GSM cellular
`radio telephone network) 4 via radio links 14 and 24. Id. ¶ 14. Stations 1
`and 2 are further connected to a computer network (i.e., the Internet) 3. Id.
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`¶ 15. More specifically, station 1 is connected by a connector to a line 13 of
`a switched telephone network (STN) with which it can reach an access
`server provider 31. Id. Station 2 is similarly connected by line 23 to an
`access provider 32. Id. ¶ 16.
`An example flow diagram is illustrated in Figures 2A and 2B
`reproduced below.
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`permanent?
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`52
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`Canned to
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`Internal 3 and
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`[seeming |P1
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`Internet 3 and
`receiving IP2
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`FIGURE 2A
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`Figures 2A and 2B collectively show a flow chart illustrating various
`possible cases for establishing communication through the Internet 3. Id.
`¶ 23. In step 41, two call numbers N1 and N2 are obtained for respective
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`stations 1 and 2 in GSM network 4. Id. ¶ 24. In step 42, it is determined
`whether the calling station 1 has a permanent IP address. Id. ¶ 25. If the
`calling station 1 does not have a permanent IP address, then in step 43, the
`provider 31 is called over the line 13, and, in step 44, the station 1 is
`connected to the Internet 3 and provided with a required temporary IP
`address. Id. ¶ 25. Further: in step 52, an SMS signaling channel is opened
`from the calling station 1; in step 53, a called number N2 is sent over the
`GSM network 4; and, in step 54, a message is sent over the channel to the
`called station 2 with a message specifying that the station 2 must connect to
`the Internet 3, and providing an identifier for station 1. Id. ¶ 26. After
`subsequent steps, the communication between the stations 1 and 2 is
`established. Id. ¶¶ 27–34.
`
`2. RFC793
`RFC793 is a technical specification that describes the functions
`performed by the Transmission Control Protocol (TCP). Ex. 1010, 10.10
`RFC793 describes that TCP segments are sent as Internet Protocol (IP)
`datagrams, where an IP datagram includes a header and a field, where an IP
`header carries several information fields (including source and destination
`host addresses), and a TCP header follows the IP header format and
`additionally supplies information specific to the TCP protocol. Id. at 24. A
`TCP header format is illustrated in Figure 3 reproduced below.
`
`
`10 Petitioner cites to page numbers added by Petitioner in the lowest right
`corner. We cite to the same.
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`Figure 3 shows a TCP header format. Id. RFC793 describes that the TCP
`header format includes a source port number and a destination port number.
`Id. RFC793 further describes that the operation of the TCP involves a
`connection progressing through a series of states during its lifetime, where
`one of the states is “LISTEN,” and where the “LISTEN” state represents
`waiting for a connection request from any remote TCP and port. Id. at 30,
`32 (Figure 6).
`
`3. Discussion
`Claim 1 recites “establishing a direct data transfer session between
`mobile devices that support a data packet-based communications service
`over a digital mobile network system.” Ex. 1001, 5:45–48. Petitioner
`contends that Alos describes a method of establishing a direct data transfer
`session between mobile devices (mobile phones 1 and 2) that support a data
`packet-based communications service (IP) over a digital mobile network
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`system (Internet 3 accessed over wireless network 4). Pet. 29–31 (Ex. 1005
`¶¶ 1, 15, 35–36, Figs. 2A, 2B).
`Claim 1 further recites “opening a listening software port on an
`initiating mobile device to receive communications through the data packet-
`based communications service.” Ex. 1001, 5:49–51. Petitioner contends
`that Alos in combination with RFC793 renders the limitation obvious.
`Pet. 31. Petitioner contends that Alos describes that a response from phone
`2 is sent to phone 1 as an IP-based response message over Internet 3, but
`does not specify a transport layer protocol for that message. Id. (citing
`Ex. 1005 ¶ 28, Fig. 2A). Petitioner further contends that it would have been
`obvious to use TCP as the transport layer because TCP/IP was well-known
`at the time of the invention. Petitioner argues, directing attention to the
`teachings of RFC793, that it would have been obvious to a person having
`ordinary skill in the art “to configure phone 1 to passively open a TCP port
`in a listening state with an unspecified foreign host so that the TCP/IP
`response message from the as-yet unknown socket address at phone 2 could
`be received at phone 1.” Pet. 28, 31 (citing Ex. 1010, 45; Ex. 1002 ¶¶ 65,
`69).
`
`Patent Owner argues that RFC793 discloses using “well-known
`sockets” that are “permanently assigned to a particular socket” and made
`available “a priori,” and that one of the “well-known sockets” is “reserved
`for File Transfer.” Prelim. Resp. 14 (quoting Ex. 1010, 20). Patent Owner
`further argues that because of such disclosure from RFC793, “there is no
`reason for . . . the hypothetical combination[] of Alos . . . with RFC793 to
`not simply use one of the ‘well-known sockets’ which are ‘permanently
`assigned’ and made available ‘a priori’, and specifically include a socket that
`is specifically ‘reserved’ for ‘file transfer’.” Id. at 14–15. Patent Owner
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`contends that using the pre-existing “permanently assigned” socket reserved
`for file transfer would be the simplest and most common sense solution,
`which would not require “opening a listening software port” because “there
`is nothing to open.” Id. at 15–16. Patent Owner faults Petitioner for not
`addressing RFC793’s description of such well-known sockets, such as for
`file transfer, and argues that Petitioner “provides no evidence or analysis that
`a POSITA would ignore this ‘well-known socket.’” Id.
`Patent Owner’s attorney arguments are unpersuasive. In contrast,
`Petitioner provides reasons for modifying Alos with RFC793. Pet. 26–29.
`Those reasons are supported by testimony that is in turn supported by record
`evidence. For example, Petitioner argues that it would have been obvious to
`a person having ordinary skill in the art “to configure phone 1 to passively
`open a TCP port in a listening state with an unspecified foreign host so that
`the TCP/IP response message from the as-yet unknown socket address at
`phone 2 could be received at phone 1.” Id. at 28, 31 (citing Ex. 1010, 45;
`Ex. 1002 ¶¶ 65, 69). Dr. Hough opines that a person having ordinary skill in
`the art would have understood that a passively opened listening port would
`be required to receive any messages, otherwise any incoming message
`would be rejected. Ex. 1002 ¶¶ 44–45 (citing Ex. 1010, 18–21, 32, 45–46,
`54, 79; Ex. 1015, 84–85). He further explains that a person having ordinary
`skill in the art would have been motivated to configure phone 1 to make a
`passive OPEN call to open a TCP port in a listen mode; otherwise a message
`from phone 2 could not be received and processed. Id. ¶ 65 (citing
`Ex. 1010, 20, 45).11
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`11 Patent Owner argues that paragraph 65 of Dr. Hough’s testimony is
`conclusory, but it is not because it is supported by RFC793 itself. See, e.g.,
`Ex. 1010, 20, 45.
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`Patent Owner, however, has failed to explain why a person having
`ordinary skill in the art (1) would have understood that a well-known socket
`would not require “opening a listening port,” or (2) would have only used
`well-known sockets. Patent Owner relies only on attorney argument, which
`cannot take the place of record evidence. Patent Owner fails to direct us to a
`description in RFC793 that supports its assertions that a well-known socket
`would not require opening a listening software port or that a person having
`ordinary skill in the art would have only used well-known sockets in
`combining Alos with RFC793. Accordingly, at this juncture of the
`proceeding, we are not persuaded by Patent Owner’s arguments.
`Claim 1 further recites “transmitting an invitation message to a target
`mobile device through a page-mode messaging service, wherein the
`invitation message comprises a network address associated with the
`initiating mobile device, and wherein the target mobile device is located by
`providing a unique identifier to the page-mode messaging service.”
`Ex. 1001, 5:52–57. Petitioner contends that Alos describes initiating mobile
`device (phone 1) transmitting an invitation message (an SMS message) to a
`target mobile device (phone 2) through a page-mode messaging service (the
`SMS service on the GSM network 4). Pet. 32 (citing Ex. 1005 ¶¶ 20, 26,
`Figs. 2A, 2B; Ex. 1002 ¶ 70). Petitioner further contends that Alos describes
`that SMS message includes IP1, the network address of phone 1 on Internet
`3. Id. (citing Ex. 1005 ¶¶ 20, 26, Figs. 2A, 2B; Ex. 1002 ¶ 71). Petitioner
`argues that Alos discloses that phone 2 is located by providing a unique
`identifier (telephone number N2) to the page-mode messaging service
`(SMS). Id. (citing Ex. 1005 ¶¶ 18, 26; Ex. 1014, 42–43, 48–51; Ex. 1002
`¶ 72). Petitioner contends that it would have been obvious to a person
`having ordinary skill in the art to include a TCP port number in the SMS
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`invitation message along with the network address IP1 to ensure that the
`TCP/IP response message from phone 2 was directed to the correct TCP port
`on phone 1. Id. at 32–33 (citing Ex. 1002 ¶ 73).
`Claim 1 recites “receiving a response from the target mobile device at
`the listening software port on the initiating mobile device.” Ex. 1001, 5:58–
`60. Petitioner contends that Alos in combination with RFC793 renders this
`limitation obvious. Pet. 33. In particular, Petitioner argues that Alos
`describes phone 1 receiving, at IP1, a response to the SMS invitation
`message from phone 2 via the Internet 3. Id. (citing Ex. 1005 ¶¶ 20–21, 28–
`29, Figs. 2A, 2B). Petitioner contends that it would have been obvious to
`implement the response using TCP/IP and to receive the response at the
`previously opened TCP listening port. Id. (citing Ex. 1002 ¶ 74).
`Claim 1 recites “establishing a data transfer session through the data
`packet-based communications service between the initiating mobile device
`and the target mobile device, wherein the data transfer session is established
`in a peer-to-peer fashion without a server intermediating communications
`through the established data transfer session between the initiating mobile
`device and the target mobile device.” Ex. 1001, 5:61–67. Petitioner
`contends that Alos in combination with RFC793 renders this limitation
`obvious. Pet. 33. Petitioner contends that Alos describes establishing voice
`and data transfer sessions through Internet 3 using the respective IP
`addresses of the mobile phones. Id. at 33–34 (citing Ex. 1005 ¶¶ 1, 6–8, 21,
`28, 30–35). Petitioner argues that in the combination of Alos and RFC793,
`the data transfer session uses TCP/IP as explained earlier in the Petition and
`that because the devices address the TCP/IP packets to each other using their
`actual IP addresses, this is a peer-to-peer communication without an
`intermediating server. Id. (citing Ex. 1005 ¶ 8; Ex. 1002 ¶ 75).
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`Independent claims 8 and 15 are similar to claim 1. Petitioner’s
`showings for claims 8 and 15 are nearly the same as that for claim 1, while
`sufficiently accounting for differences between claims 8 and 15 and claim 1.
`See Pet. 23–34. Patent Owner’s arguments for claims 8 and 15 are the same
`as its arguments for claim 1, which we have addressed above. We also have
`reviewed Petitioner’s showing for dependent claims 3–7, 10–14, and 17–20.
`Id. at 34–35. Patent Owner does not contest those claims separately.
`Prelim. Resp. 16.
`Based on the current record before us, we are persuaded by
`Petitioner’s showing that the asserted prior art references teach or suggest
`each limitation of claims 1, 3–8, 10–15, and 17–20, and that a person of
`ordinary skill in the art would have had reason, with rational underpinning,
`to combine the references in the manner Petitioner proposes. See Pet. 23–
`35. Accordingly, we determine the information presented shows a
`reasonable likelihood that Petitioner would prevail in establishing that
`claims 1, 3–8, 10–15, and 17–20 are unpatentable under § 103 as obvious
`over Alos and RFC793.
`
`D. Asserted Obviousness of Claims 2, 9, and 16 over Alos, RFC793, SMS
`Specification, and WMA
`
`
`Petitioner contends claims 2, 9, and 16 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Alos, RFC793, SMS Specification, and
`WMA. Pet. 35–41. In support of its showing, Petitioner relies upon the
`declaration of Dr. Houh. Id. (citing Ex. 1002).
`
`1. SMS Specification
`SMS Specification is a technical specification that describes the Short
`Message Service (SMS), where the SMS provides a means of sending
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`messages to and from GMS/UTMS mobiles. Ex. 1014, 12.12 SMS
`Specification describes that SMS comprises two basic services: Short
`Message Mobile Terminated (SM MT) and Short Message Mobile
`Originated (SM MO). Id. at 17. SM MT denotes the capability of the
`GSM/UMTS system to transfer a short message from a service center (SC)
`to a mobile station (MS), and to provide information about the delivery of
`the short message either by a delivery report or a failure report with a
`specific mechanism for later delivery. Id. SM MO denotes the capability of
`the GSM/UMTS system to transfer a short message submitted by the MS to
`a short message entity (SME) via an SC, and to provide information about
`the delivery of the short message either by a delivery report or a failure
`report. Id. The SM MT and SM MO services are illustrated in Figures 1
`and 2 reproduced below.
`
`
`
`
`12 Petitioner cites to page numbers added by Petitioner in the lowest right
`corner. We cite to the same.
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`Figure 1 illustrates the SM MT service, where a short message can be
`transmitted from an SC to an MS, and Figure 2 illustrates the SM MO
`service, where a short message can be transmitted from an MS to an SME
`via an SC. Id. at 17–18.
`
`2. WMA
`WMA is a technical specification that describes a messaging
`application programming interface (API) that is part of an overall
`specification for the Java programming language. Ex. 1018, 11.13 WMA
`describes that the API provides the functionality of opening a connection
`based on a string address, and further provides message sending and
`receiving functionality. Id.
`
`3. Discussion
`Claim 2 depends from claim 1. Claim 9, which depends from claim 8,
`and claim 16, which depends from claim 15, are similar in scope to claim 2.
`Petitioner accounts for the limitations of these claims. Pet. 35–41. For
`example, claim 2 recites “opening a second listening software port on the
`initiating mobile device to receive invitation messages through the page-
`mode messaging service.” Ex. 1001, 6:2–4. Claim 2 further recites
`“receiving, at the second listening software port and through the page-mode
`messaging service, a message from another mobile device inviting the
`initiating mobile device to establish a data transfer session, wherein such
`message comprises a network address associated with the other mobile
`device.” Ex. 1001, 6:5–10.
`
`
`13 Petitioner cites to page numbers added by Petitioner in the lowest right
`corner. We cite to the same.
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`Petitioner contends that Alos describes that phone 1 (initiating mobile
`device) can receive invitation messages (SMS invitations) through the page-
`mode messaging service and that the invitation can order the recipient to
`respond, but does not disclose how the functionality would have been
`implemented between SMS application and other software. Id. at 39 (citing
`Ex. 1005 ¶¶ 20, 22; Ex. 1002 ¶¶ 86–87, 89). Petitioner further contends that
`Alos describes wherein the SMS invitation comprises a network address (IP
`address IP2) associated with phone 2. Id. at 40 (citing Ex. 1005 ¶ 22;
`Ex. 1002 ¶ 90). Petitioner contends that it would have been obvious to
`configure Alos’ phones to open a passive listener on an SMS port (e.g.,
`WDP Port) as taught in the SMS Specification and WMA to ensure that an
`incoming SMS invitation message is received by the standard SMS
`application and routed to the Alos application configured to respond to such
`invitation messages. Id. at 39–40 (citing Ex. 1014, 66–69, 72–73; Ex. 1018,
`21, 27, 30–34, 37–45; Ex. 1002 ¶¶ 88–89).
`Petitioner also accounts for the claim 2 limitation of “transmitting a
`response to the network address associated with the other mobile device,
`wherein the response acknowledges the ability to establish a data transfer
`session.” Id. at 40–41 (citing Ex. 1005 ¶¶ 20–22, 28–29, Figs. 2A, 2B;
`Ex. 1010, Fig. 7; Ex. 1002 ¶ 92). Patent Owner does not contest claims 2, 9,
`and 16 separately. Prelim. Resp. 16.
`Based on the current record before us, we are persuaded by
`Petitioner’s showing that the asserted prior art references teach or suggest
`each limitation of claims 2, 9, and 16, and that a person of ordinary skill in
`the art would have had reason, with rational underpinning, to combine the
`references in the manner Petitioner proposes. Pet. 35–41. Accordingly, we
`determine the information presented shows a reasonable likelihood that
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`Petitioner would prevail in establishing that claims 2, 9, and 16 are
`unpatentable under § 103 as obvious over Alos, RFC793, WMA, and the
`SMS Specification.
`
`E. Asserted Obviousness of Claims 1, 3–8, 10–15, and 17–20 over
`Cordenier and RFC793
`Petitioner contends claims 1, 3–8, 10–15, and 17–20 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Cordenier and RFC793. Pet. 41–
`51. In support of its showing, Petitioner relies upon the declaration of
`Dr. Houh. Id. (citing Ex. 1002).
`
`1. Cordenier
`Cordenier describes a system for exchanging information between a
`first and a second terminal. Ex. 1007 ¶ 6. An example network including
`two terminals is illustrated in Figure 6 reproduced below.
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`Figure 6 illustrates a telecommunications network 4 including a first and a
`second terminal 1, 2. Id. ¶ 16. The terminals 1 and 2 (e.g., wireless
`telephones) are connected to the telecommunications network 4 via
`communication channels 8 and 9. Id. The telecommunications network 4
`provides access to a data network 3 via a first communication channel 10
`and second communication channel 11 for the first terminal 1 and second
`terminal 2 respecti
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