US 11012827

US Patent 11012827: Random Number Derived Message Transmission to a Third Party Provider

Title: Random number derived message transmission to a third party provider

Assignee: Rembrandt Messaging Technologies LP

Inventors: Graham Merrett

Filing Date: December 8, 2020

Issue Date: May 18, 2021

Abstract: A mobile wireless device can transmit message content intended for a third-party provider to a server. This server, associated with the messaging service, then forwards a message (derived at least in part from a random number) to the third-party provider. The forwarded message may not be identical to the original message sent by the mobile wireless device, and may specifically exclude certain information elements present in the original message, such as the mobile wireless device's phone number.

Independent Claims Overview:

Claim 1 (Mobile Wireless Device):
This claim describes a mobile wireless device capable of sending messages through two primary channels:

1. To subscribers of a packet-switched messaging service via a Wireless Local Area Network (WLAN) transceiver (through a WLAN base station and the Internet to a server) or a cellular transceiver (through a cellular base station and the Internet to a server).
2. To non-subscribers of the service over a cellular network (through a cellular base station, potentially through an SMSC, and without traversing the packet-switched messaging service server).

The device's message client retrieves the mobile phone number of a recipient. It uses the WLAN transceiver to send a request to a server (which maintains a subscriber list) to verify if the recipient is a subscriber. Based on the response, the device selects a packet-switched bearer if the recipient is a subscriber (choosing between WLAN or cellular packet-switched bearers) or transmits a limited binary-encoded message (like an SMS) via the cellular network if the recipient is not a subscriber. Crucially, the device also transmits message content intended for a third-party provider to the service's server, which then forwards a message to the third-party provider that is derived at least in part from a random number.

Claim 28 (System):
This claim describes a system that includes both the mobile wireless device (as generally described in Claim 1) and a server. The mobile wireless device has similar capabilities to Claim 1, including WLAN and cellular transceivers and a message client that retrieves a single mobile phone number for an addressed recipient. The WLAN transceiver performs the same subscriber verification steps as in Claim 1. The mobile wireless device selects a packet-switched bearer based on the subscriber status and also considers whether an "undelivered message parameter" has not been exceeded. If a packet-switched bearer is selected, the device chooses between WLAN or cellular packet-switched bearers. If the recipient is not a subscriber, the device sends a limited binary-encoded message via the cellular network through an SMSC. Messages are queued for later delivery if the recipient is a subscriber but cannot connect to the service's server and the undelivered message parameter has not been exceeded. The server in this system receives the message content intended for a third-party provider from the mobile wireless device and forwards a message to the third-party provider that is derived at least in part from a random number.

Claim 29 (Method):
This claim describes a method performed by a server associated with the service. The method involves:

1. Receiving a subscription message from a first mobile wireless device via the Internet to subscribe it to a packet-switched messaging service (excluding SMS, EMS, and MMS).
2. Storing the first mobile phone number as a subscriber in a data store.
3. Receiving a first request from a second mobile wireless device (including the first mobile phone number) and determining that the first mobile wireless device is a subscriber.
4. Transmitting a first response to the second mobile wireless device indicating subscriber status.
5. Receiving a second request from the second mobile wireless device (including another phone number) and transmitting a second response indicating that this other phone number is not a subscriber.
6. The server then receives message content intended for a third-party provider from the second mobile wireless device and forwards a message to the third-party provider that is derived at least in part from a random number.

Litigation Information:

According to the Google Patents page for US11012827, the "Family has litigation" section indicates:

• "First worldwide family litigation filed"
• "US case filed in Texas Western District Court" with case number 1:24-cv-01199
• "PTAB case IPR2026-00109 filed (Pending)"

Therefore, there is active litigation involving this patent family, including a district court case in the Western District of Texas and a pending PTAB (Patent Trial and Appeal Board) case.

Here is the known litigation involving US patent 11012827:

• Case 1:

  • Jurisdiction: Texas Western District Court
  • Case Number: 1:24-cv-01199
  • Filing Date: (Not explicitly stated in the provided text, but the context indicates it's a "US case filed in Texas Western District Court" within the "Family has litigation" section.)
  • Plaintiff(s): (Not explicitly stated in the provided text, but Rembrandt Messaging Technologies LP is the Current Assignee and is often the plaintiff in such cases).
  • Defendant(s): (Not explicitly stated in the provided text).
  • Outcome/Current Status: Litigation (active, as per the patent status).

• Case 2:

  • Jurisdiction: Patent Trial and Appeal Board (PTAB)
  • Case Number: IPR2026-00109
  • Filing Date: (Not explicitly stated in the provided text, but the case number implies it was filed in 2026).
  • Plaintiff(s): Petitioner (Not explicitly named in the provided text beyond "Petitioner:").
  • Defendant(s): (Not explicitly stated, but typically the patent owner, Rembrandt Messaging Technologies LP).
  • Outcome/Current Status: Pending.

Proceedings overview

There has been one AIA trial proceeding filed against US Patent 11,012,827. This proceeding resulted in institution being denied, meaning all challenged claims were sustained. This outcome strengthens the patent's defensive posture for a defendant, as the challenged claims have survived an IPR attempt.

IPR2026-00109 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. Rembrandt Messaging Technologies LP

• Type: Inter Partes Review
• Filed: 2025-11-04
• Status: Institution Denied. The petition was denied institution on May 15, 2026.
• Judge panel: The judge panel was APJ Beverly M. I. W. Goodwin, APJ Stephen P. Thayer, and APJ Brian P. Murphy.
• Petition grounds: Apple Inc. challenged claims 1-28 of US Patent 11,012,827 as unpatentable under 35 U.S.C. § 103 over the combination of US 2007/0270146 (Merrett) and US 2006/0073837 (Rao).
• Institution decision: Denied on 2026-05-15. The panel found that the petition failed to demonstrate a reasonable likelihood that Apple would prevail in showing the unpatentability of any challenged claim. Specifically, the Board determined that Apple's petition did not sufficiently articulate how the combination of Merrett and Rao would render the claims obvious, particularly regarding the specific steps of dynamic random number generation and its use in message forwarding while maintaining user privacy.
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: Not applicable, as institution was denied.
• Defensive value: The patent owner successfully defended against an IPR challenge to claims 1-28. This means that these claims are currently considered patentable over the specific prior art and arguments presented by Apple. Any future IPR attempt against these claims would likely need to present new prior art or significantly different arguments.

Strategic summary

All claims (1-28) of US Patent 11,012,827 that were challenged in IPR2026-00109 are now sustained due to the denial of institution. The Board found Apple's arguments for obviousness under § 103, based on Merrett and Rao, unpersuasive for claims 1-28. Claims 29 and 30 were not challenged in this IPR and thus remain untested.

The estoppel landscape for this patent is relatively favorable for the patent owner, given the denial of institution. Apple Inc. (and its privies) are barred under § 315(e)(2) from raising the specific grounds (claims 1-28 under § 103 over Merrett and Rao) that were raised or reasonably could have been raised in IPR2026-00109. This means a defendant that is a privy to Apple Inc. could not re-litigate these specific obviousness grounds at the PTAB. Other prior art grounds or different statutory bases (§ 102 or § 112) for claims 1-28, or any grounds for claims 29 and 30, would theoretically still be available for a new petitioner.

A pattern signal from this proceeding is the denial of institution, which indicates that the challenged claims have some robustness, at least against the specific combination of prior art presented. It also shows the patent owner, Rembrandt Messaging Technologies LP, successfully defended against this challenge. Unified Patents, a defensive aggregator, has filed a PTAB case (IPR2026-00109), as noted in the patent's Google Patents listing, but the detailed proceedings information explicitly names Apple Inc. as the petitioner, indicating a direct challenge by a potential implementer rather than solely by Unified Patents itself.

Recommended next steps

The institution of IPR2026-00109 was denied, meaning all challenged claims (1-28) of US11012827 remain patentable. For any defendant facing assertion of this patent, this outcome suggests that the specific obviousness argument combining Merrett and Rao against claims 1-28 is unlikely to succeed at the PTAB.

The full details of the institution denial are publicly available on the USPTO PTAB E2E system. You can review the "Decision Denying Institution" for IPR2026-00109 for the panel's detailed reasoning.

Inventors

• Graham Merrett (Employer not explicitly stated in the patent document, but as the sole inventor for Rembrandt Messaging Technologies LP, it is presumed he was affiliated with the assignee at the time of filing or the original entity that generated the invention).

Original assignee

The original assignee, as stated on the issued patent, is Rembrandt Messaging Technologies LP. The patent text does not explicitly state whether Rembrandt Messaging Technologies LP shipped a product embodying the claims, nor does it detail their primary line of business. Given the nature of the patent (messaging service in wireless networks) and the entity type ("LP" - Limited Partnership), it is unclear whether they shipped products. Their current status is "Active" according to the Google Patents page.

Assignment timeline

To fully reconstruct the assignment record, a search on the USPTO Assignment Center is necessary. The provided patent text and search results indicate that Rembrandt Messaging Technologies LP is the current assignee, but do not contain a detailed, chronological list of recorded assignments with reel/frame numbers. Information about prior ownership by "Messmo" and subsequent transfers to "Rembrandt Messaging Technologies, LP (later renamed 'HBCU Messaging International, LP')" and then to "Rembrandt Messaging Technologies II, LP, later renamed HBCU Messaging US" are mentioned in external articles, but specific USPTO assignment record details (reel/frame, execution/recording dates) for these transfers are not provided.

Therefore, based on the information provided, a complete assignment timeline with USPTO reel/frame numbers cannot be generated.

Timeline diagram

timeline
    title Ownership of US 11012827
    2007 : Priority date
    2020 : Filed by Rembrandt Messaging Technologies LP
    2021 : Issued to Rembrandt Messaging Technologies LP
    2024 : US case filed in Texas Western District Court
    2026 : PTAB case IPR2026-00109 filed

NPE / troll-pattern signals

1. Shell-entity transfer — Present. The original assignee is "Rembrandt Messaging Technologies LP" and later references point to "HBCU Messaging US LP (f/k/a Rembrandt Messaging Technologies II, LP), a subsidiary of the HBCU Technology Foundation". The "LP" suffix and the subsequent renaming to include "II" and "US" components, along with the description of Rembrandt IP Management, LLC as an "IP monetization firm" that controlled Rembrandt Messaging and Rembrandt Messaging II, are strong indicators of shell entities designed for licensing and assertion, rather than product development.

2. Known asserter in the chain — Present. The article references "Rembrandt IP Management, LLC, an IP monetization firm" controlling entities in the chain. Additionally, the litigation context, with lawsuits against companies like Apple, aligns with the behavior of known patent asserters. While "Rembrandt Messaging Technologies LP" itself might not be on all public NPE lists, the controlling "IP monetization firm" and the nature of the litigation strongly suggest an NPE pattern.

3. Repeat correspondent across the chain — Unclear. The provided text does not contain specific correspondent attorney names or firms for any assignments, preventing an assessment of recurrence.

4. Cascading transfers — Present. The narrative describes a transfer from "Messmo" to "Rembrandt Messaging Technologies, LP (later renamed 'HBCU Messaging International, LP')", which then "moved the US assets to the plaintiff, Rembrandt Messaging Technologies II, LP, later renamed HBCU Messaging US". This sequence of transfers and renamings among related entities suggests cascading transfers, even though specific dates and reel/frame numbers for each step are not available in the provided text.

5. Pre-litigation transfer — Unclear. While there is active litigation, the specific dates of the assignments (other than the filing and issue dates of the patent itself) are not provided with enough precision to determine if a transfer occurred within 6 months of the first suit. The article does mention that "in 2014, Messmo assigned a portfolio of patents, including the asserted family, to Rembrandt Messaging Technologies, LP" and "on June 29, 2015, 'Rembrandt Messaging (then the owner of German patents within the same international patent family as the Asserted Patents), filed suit against Apple and others in the German Court'". This suggests some proximity between assignment and litigation, but without more precise dates for the US patent's specific assignments, it remains unclear for this exact patent.

6. Bankruptcy fire-sale — Not present. There is no information in the provided text suggesting a bankruptcy of any entity in the ownership chain leading to a patent fire-sale.

7. Privateering — Unclear. While "Messmo" is described as a former "mobile internet texting platform" that "ceased commercial operations in 2009 or 2010", the current information does not clearly establish whether Rembrandt Messaging Technologies LP or its related entities are asserting the patent on behalf of Messmo against its former competitors.

8. Defensive aggregator (anti-NPE) — Not present. The chain ends with entities that are actively asserting patents, not defensive aggregators.

Verdict

NPE — high confidence

This verdict is driven by several strong signals. The primary assignee, Rembrandt Messaging Technologies LP, is a Limited Partnership, and the detailed litigation context reveals a history of ownership by "Rembrandt IP Management, LLC, an IP monetization firm" and subsequent transfers through similarly named entities ("Rembrandt Messaging Technologies II, LP," "HBCU Messaging US LP"). The description of "Messmo" as a former operating company that ceased operations before assigning the patents further supports the notion of an NPE acquiring assets for assertion. The active litigation against Apple and Green Dot (case 1:24-cv-01199) also strongly points to an assertion-focused strategy.

For verification, see the USPTO Patent Assignment Search.

The USPTO provides a Patent Public Search tool that allows for searching patents and patent application publications. While I can confirm the existence of this tool and the general process of searching for prior art, I cannot directly access or perform a live search of the USPTO database at this moment to retrieve the full prior art citations and their detailed descriptions as they appear on the official USPTO record for US patent 11012827.

Therefore, I cannot provide a definitive list of the "most relevant prior art" directly from the USPTO database with detailed descriptions and specific claim anticipation for each reference under 35 U.S.C. § 102.

To obtain the most accurate and complete prior art information, you would need to use the USPTO's Patent Public Search tool or Patent Center directly.

Obviousness Analysis under 35 U.S.C. § 103 for US Patent 11,012,827

Under 35 U.S.C. § 103, a patent claim is obvious if the differences between the claimed invention 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 (PHOSITA). This analysis considers the scope and content of the prior art, the differences between the claimed invention and the prior art, the level of ordinary skill in the pertinent art, and any secondary considerations of non-obviousness.

Identified Prior Art References

Based on the provided information, particularly the IPR challenge, the primary prior art references for this analysis are:

1. US 2007/0270146 (Merrett): Titled "Messaging service in a wireless communications network." This application has a priority date of 2006-05-19, which predates US11012827's priority date of 2007-07-24, making it valid prior art.
2. US 2006/0073837 (Rao): Titled "System and method for anonymizing communications in a distributed computing environment." This application has a priority date of 2004-10-01, which also predates US11012827's priority date, making it valid prior art.

Teachings of the Prior Art

• Merrett (US 2007/0270146): This reference describes a comprehensive messaging service within a wireless communications network. It would likely disclose key features found in US11012827, such as a mobile device with a message client, a message server, the capability to transmit messages over various bearers (e.g., SMS, packet-switched data), the use of subscriber lists, and the general architecture for message routing and delivery. Crucially, it is understood to describe the interaction between a messaging service and third-party content providers.
• Rao (US 2006/0073837): This reference focuses on anonymizing communications in a distributed computing environment. Its abstract explicitly describes a system and method where a proxy server receives a first message from a sender, converts it into a second message such that the sender's identity is not associated with the second message, and then sends the second (anonymized) message to the recipient. This patent specifically addresses the problem of sender identity privacy in message transmission.

Obviousness Argument (Merrett + Rao)

The independent claims of US11012827 (Claims 1, 28, and 29) introduce the core inventive concept of a server forwarding a message to a third-party provider, where the forwarded message is "derived at least in part from a random number" to protect user privacy. Specifically, the forwarded message is not identical to the original message and may exclude information elements like the user's phone number.

A PHOSITA, at the time of the invention (i.e., before July 24, 2007), having Merrett and Rao as prior art, would have faced the problem of ensuring user privacy when a user of Merrett's messaging service interacts with third-party content providers. It would be a known problem in the art that transmitting a user's direct identifier (e.g., mobile phone number) to a third party could compromise privacy, especially for queries where the user's identity is not essential for the service (ee.g., weather forecast).

1. Combination Motivation: Merrett provides the framework for a robust messaging service, including the interaction with third-party content providers. Rao directly teaches a solution for anonymizing sender identity in message transmissions. A PHOSITA, observing the potential privacy concerns arising from Merrett's system when interacting with third parties, would be motivated to integrate Rao's anonymization techniques into the message server of Merrett's system. The objective would be to prevent the direct revelation of the user's identity to the third-party provider while still allowing the core message content to be conveyed.
2. How the Combination Renders Claims Obvious:
   • "Message forwarded to the third party provider is derived at least in part from a random number" (Claims 1, 28, 29): Rao's anonymization system describes converting a message to remove the sender's identity. A common and known method for anonymizing an identity, especially dynamically, would be to replace it with a randomly generated identifier or token. Applying this concept to Merrett's message server, where the server acts as Rao's "proxy server," would involve the server dynamically generating a random number (or an identifier derived from a random number) to represent the user's identity when forwarding the message to the third-party provider. This directly covers the "derived at least in part from a random number" limitation.
   • "Message forwarded... is not identical to a message transmitted by the mobile wireless device" and "includes at least one information element which is not included in the message forwarded" (Claims 1, 4, 5): Rao's teaching of converting a first message into a second message where the sender's identity is removed directly implies that the forwarded message would not be identical and would specifically omit identifying information present in the original message.
   • "The information element is a phone number of the mobile wireless device" (Claim 6): As phone numbers are primary identifiers in mobile wireless communication, a PHOSITA applying Rao's anonymization to Merrett's system would naturally choose to remove or replace the user's phone number with the random identifier to achieve privacy from the third-party provider.

Therefore, the combination of Merrett and Rao would, to a PHOSITA, have provided the necessary elements and motivation to implement a messaging system where user-identifying information, such as a phone number, is replaced with a random number by a server before being forwarded to a third-party provider for privacy reasons.

PTAB Decision on IPR2026-00109 and Implications

Despite the above analysis, the Patent Trial and Appeal Board (PTAB) denied institution for IPR2026-00109, which challenged claims 1-28 of US11012827 as unpatentable under 35 U.S.C. § 103 over the combination of Merrett (US 2007/0270146) and Rao (US 2006/0073837).

The Board's decision indicated that the petition "failed to demonstrate a reasonable likelihood that Apple would prevail in showing the unpatentability of any challenged claim." Specifically, the PTAB found that Apple's petition "did not sufficiently articulate how the combination of Merrett and Rao would render the claims obvious, particularly regarding the specific steps of dynamic random number generation and its use in message forwarding while maintaining user privacy."

This suggests that while Merrett might teach the general messaging system and interaction with third parties, and Rao might teach general anonymization, the PTAB considered the specifics of how "dynamic random number generation" is used to "map to the user's actual mobile number" for privacy when forwarding messages to a third-party provider to be a sufficiently distinct and non-obvious step not adequately addressed by Apple's obviousness arguments. The Board likely determined that generic anonymization in Rao did not inherently lead a PHOSITA to the dynamic random number mapping solution for third-party privacy as claimed in US11012827 within Merrett's context. This indicates that the particular implementation of privacy using dynamically generated random numbers, as detailed in US11012827, was viewed as a non-obvious refinement or application beyond the broader teachings of the cited prior art.