The patent board turns Apple down

Blix’s U.S. Patent No. 9,749,284 covers what the patent calls “controlled reciprocating communication”: letting people communicate through a public address they can manage, while their private address stays hidden. It is the patent Blix asserted against “Sign in with Apple”.

On October 2, 2020, Apple filed a petition for inter partes review (IPR) with the Patent Trial and Appeal Board, the part of the US Patent and Trademark Office that hears challenges to issued patents. Apple asked the board to cancel all 38 claims, arguing they were obvious in light of an earlier patent application by Leung, alone or combined with other references.

What the board decided

On April 19, 2021, a panel of three Administrative Patent Judges – Michelle N. Wormmeester, Jessica C. Kaiser and Kara L. Szpondowski – denied Apple’s petition and refused to open a trial.

“We determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one claim in its challenges to claims 1–38 of the ’284 patent.”

Patent Trial and Appeal Board, IPR2020-01635, Paper 12

This was a decision on the merits. The board didn’t turn Apple away on a procedural or discretionary ground; it looked at Apple’s evidence and found it fell short on every claim.

Why Apple lost

The decision turned on the patent’s “reverse list”: a record that lists the other party’s address alongside the user’s public address, together with the association between them. Apple argued that Leung’s “accept call list” was the same thing. Blix showed that Leung’s list holds only the addresses of callers to accept, with neither the user’s own address nor any association between the two.

The board sided with Blix:

“Patent Owner contends that in Leung, the accept call list includes only second party addresses … and does not include first party (caller) addresses or any association between the member IDs of the two parties. … We agree with Patent Owner.”

Patent Trial and Appeal Board, IPR2020-01635, Paper 12

The board also noted that Apple’s expert did not explicitly address that part of the claim. Independent claims 17 and 27 contain the same requirement, every other claim depends on claim 1, 17 or 27, and Apple’s other references did not fill the gap. So the whole petition failed.