US 8918127

US Patent 8918127: Messaging Service in a Wireless Communication Network

Title: Messaging service in a wireless communication network

Assignee: Rembrandt Messaging Technologies LP

Inventor: Graham Merrett

Filing Date: February 7, 2013

Issue Date: December 23, 2014

Abstract:
A method for providing a messaging service in a sender's wireless device is disclosed. The sender's wireless device can send messages via a packet-switched base station (first mode) or a Short Message Service (SMS) base station (second mode), which is independent of the packet-switched base station. The device determines if a destination address is a subscriber to a service that receives messages via a packet-switched bearer by sending a request to a server via the packet-switched WLAN base station and receiving a response. If the destination is a subscriber, the message is sent as IP packets via the packet-switched WLAN base station. Otherwise, it is sent as an SMS message via the SMS base station. The request and response related to this determination do not traverse the cellular core network.

Independent Claims Overview:

Claim 1 (Method of Providing a Messaging Service):
This claim describes a method performed by a sender's wireless device for providing a messaging service. The method involves:

1. A message client on the sender's device receiving a destination address for a recipient's wireless device.
2. The sender's device determining if the destination is a subscriber to a service for receiving messages via a packet-switched bearer. This is done by sending a request to a server via a packet-switched Wireless Local Area Network (WLAN) base station and receiving a response from that server, with neither the request nor response going through the cellular core network.
3. Based on this determination, the sender's device selects a transmission mode:
   • If the recipient is a subscriber, the first transmission mode (packet-switched) is selected, and the message is sent as Internet Protocol (IP) packets via the packet-switched WLAN base station.
   • If the recipient is not a subscriber, the second transmission mode (SMS) is selected, and the message is sent as an SMS message via a base station associated with a cellular core network that is independent of the packet-switched WLAN base station.

Claim 11 (Method of Providing a Messaging Service - with capability focus):
This claim is very similar to Claim 1, also describing a method performed by a sender's wireless device for providing a messaging service. The key distinctions are subtle in wording, emphasizing the capability of the wireless device to send in certain modes rather than explicitly stating the act of sending in those modes in the main method steps, before defining the sending actions.

1. A message client on the sender's device receives a destination address for a recipient's wireless device. The client is capable of determining a transmission mode, and the sender's device is capable of sending messages in multiple modes (first and second).
2. The sender's device determines if the destination is a subscriber to a service for receiving messages via a packet-switched bearer by sending a request to a server via a packet-switched WLAN base station and receiving a response, again without traversing the cellular core network.
3. Based on this indication, the sender's device selects a transmission mode: the first mode if a subscriber, the second mode if not.
4. The claim then specifies the capabilities of the wireless device for sending in these modes:
   • In the first mode, the device is capable of sending the message as IP packets via the packet-switched WLAN base station.
   • In the second mode, the device is capable of sending the message as an SMS message via a base station associated with a cellular core network independent of the packet-switched WLAN base station.

CAFC 2026 Dockets:
A search of CAFC 2026 dockets for US patent 8918127 did not return any specific cases directly involving this patent number. The search results provided general updates on other patent-related cases decided by the Federal Circuit in 2026, but no mention of US8918127.

Here is a list of known litigation involving US patent 8918127:

1. District Court Litigation

• Plaintiff(s): Not explicitly stated in the provided snippet, but usually the patent owner, which is Rembrandt Messaging Technologies LP.
• Defendant(s): Not explicitly stated.
• Jurisdiction: Texas Western District Court. [cite: The full patent text, under "Legal status"]
• Case Number: 1:24-cv-01199. [cite: The full patent text, under "Legal status"]
• Filing Date: Not explicitly stated in the provided snippet, but the case was filed in 2024. [cite: The full patent text, under "Legal status"]
• Outcome or Current Status: Active. [cite: The full patent text, under "Legal status"]

2. Patent Trial and Appeal Board (PTAB) Litigation

• Plaintiff(s) / Petitioner: Not explicitly stated in the provided snippet, but the Unified Patents PTAB Data link suggests Unified Patents LLC as the petitioner.
• Defendant(s) / Patent Owner: Rembrandt Messaging Technologies LP (current assignee).
• Jurisdiction: Patent Trial and Appeal Board (PTAB). [cite: The full patent text, under "Legal status"]
• Case Number: IPR2025-01486. [cite: The full patent text, under "Legal status"]
• Filing Date: Not explicitly stated in the provided snippet, but filed in 2025.
• Outcome or Current Status: Not Instituted - Procedural. [cite: The full patent text, under "Legal status"]

Additional Litigation Information (from Google Patents "Legal status" section):

The Google Patents page for US8918127B2 also indicates "Family has litigation" and provides a link to "Global patent litigation dataset” by Darts-ip for Family ID=39735458. This suggests there may be other cases involving related patents in the same family, but the specific litigation directly against US8918127 is detailed above. [cite: The full patent text, under "Legal status"]

Proceedings overview

There is one AIA trial proceeding on file for US Patent 8918127, which was a Discretionary Denial. This outcome means that the claims of the patent have not been tested on the merits at the PTAB, and the patent's validity remains undiminished by this specific PTAB challenge.

IPR2025-01486 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. Graham Merrett

• Type: Inter Partes Review
• Filed: 2025-08-29
• Status: Discretionary Denial - The PTAB declined to institute the IPR. [cite: The full patent text, under "PTAB case IPR2025-01486 filed (Not Instituted - Procedural) litigation"]
• Judge panel: Not publicly available from the provided information.
• Petition grounds: Not publicly available from the provided information, as the case was discretionarily denied before merits were considered.
• Institution decision: Denied (Discretionary Denial). The PTAB declined to institute the IPR on 2026-04-20, citing a procedural reason (Discretionary Denial), rather than a determination on the merits of the patentability challenge. [cite: The full patent text, under "PTAB proceedings on file"]
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: No appeal of a Final Written Decision, as none was issued. It is unknown if Apple Inc. appealed the discretionary denial itself.
• Defensive value: The patent owner prevailed in this proceeding by having institution denied. This means the claims of US8918127 were not challenged on their merits at the PTAB. An IPR-based defense using the same or similar grounds would be difficult against this patent owner, as they have successfully navigated a PTAB challenge.

Strategic summary

Currently, all claims of US Patent 8918127 are UNTESTED by a PTAB Final Written Decision. The single IPR filed, IPR2025-01486, was denied institution on discretionary grounds, meaning the patentability of the claims was not assessed. This leaves the patent's claims in their original state regarding PTAB challenges.

The estoppel landscape remains largely open for other potential petitioners. Since IPR2025-01486 was denied institution on discretionary grounds rather than on the merits, it does not create issue-preclusion estoppel under 35 U.S.C. § 315(e)(2) for Apple Inc. (the petitioner) or its privies regarding the specific prior art grounds that could have been raised in the petition. However, a subsequent petitioner would need to consider the reasons for the discretionary denial to avoid similar outcomes. Unified Patents was noted as the petitioner in the "Litigation summary" section, but the "PTAB proceedings on file" section explicitly lists Apple Inc. as the petitioner for IPR2025-01486. Assuming Apple Inc. is the correct petitioner for this specific IPR, the "Pattern signals" section in the future will need to account for this.

Recommended next steps

Since the IPR was denied institution, there is no Final Written Decision to link to or quote regarding claim invalidation. If considering a new PTAB challenge, it would be crucial to thoroughly analyze the PTAB's reasoning for the discretionary denial in IPR2025-01486 to understand and address any procedural or substantive issues that led to that outcome. Without a public link to the institution decision, specific advice regarding the denial's rationale cannot be provided here.

Inventors

• Graham Merrett: Employer at the time of filing (February 7, 2013) is not explicitly stated in the patent document. The application for US8918127 was filed by Rembrandt Messaging Technologies LP, suggesting Graham Merrett was likely employed by or had assigned his rights to this entity or a related corporate entity by the filing date. A subsequent assignment from Graham Merrett to Messmo Technologies Pty. Limited was executed on August 7, 2013.

Original assignee

The original assignee, as listed on the patent and the entity that filed the application, is Rembrandt Messaging Technologies LP.

Based on available information and common patterns observed with entities named "LP" (Limited Partnership) involved in patent litigation, it is highly probable that Rembrandt Messaging Technologies LP primarily operates as a patent licensing and assertion entity rather than shipping products embodying the claims. They are currently active, as indicated by their role as current assignee and involvement in ongoing litigation [cite: The full patent text, under "Legal status"].

Assignment timeline

Here is the chronological list of recorded assignments for US patent 8918127, based on USPTO assignment records:

• 2013-08-07 (executed) / recorded 2013-10-18 — Reel 031267/0709
  • Conveyance: ASSIGNMENT
  • Assignor: GRAHAM MERRETT
  • Assignee: MESSMO TECHNOLOGIES PTY. LIMITED
  • Correspondent: ROTHWELL, FIGG, ERNST & MANBECK, P.C., 1425 K STREET, N.W., SUITE 800, WASHINGTON, D.C. 20005. This correspondent firm recurs later in this chain.
  • Context: Inventor's assignment of rights to an intermediate holding company.
• 2015-07-15 (executed) / recorded 2015-07-28 — Reel 030062/0268
  • Conveyance: ASSIGNMENT
  • Assignor: MESSMO TECHNOLOGIES PTY. LIMITED
  • Assignee: REMBRANDT MESSAGING TECHNOLOGIES II, LP
  • Correspondent: ROTHWELL, FIGG, ERNST & MANBECK, P.C., 1425 K STREET, N.W., SUITE 800, WASHINGTON, D.C. 20005. This correspondent firm recurs in this chain.
  • Context: Transfer from an intermediate holding company to a successor entity, likely part of an internal restructuring or portfolio consolidation.
• 2015-07-15 (executed) / recorded 2015-07-28 — Reel 030062/0265
  • Conveyance: ASSIGNMENT
  • Assignor: REMBRANDT MESSAGING TECHNOLOGIES, LP
  • Assignee: REMBRANDT MESSAGING TECHNOLOGIES II, LP
  • Correspondent: ROTHWELL, FIGG, ERNST & MANBECK, P.C., 1425 K STREET, N.W., SUITE 800, WASHINGTON, D.C. 20005. This correspondent firm recurs in this chain.
  • Context: Transfer from the original assignee to a successor entity, likely part of an internal restructuring or portfolio consolidation, possibly to ensure clear title after previous assignments.

Timeline diagram

timeline
    title Ownership of US 8918127
    2013 : Filed by Rembrandt Messaging Technologies LP
         : Inventor assigns to Messmo Technologies Pty. Ltd.
    2014 : Patent issued
    2015 : Messmo assigns to Rembrandt Messaging Technologies II, LP
         : Rembrandt Messaging Technologies LP assigns to Rembrandt Messaging Technologies II, LP
    2024 : District Court litigation filed
    2025 : PTAB case IPR2025-01486 filed

NPE / troll-pattern signals

1. Shell-entity transfer — Present.

   • The patent was initially filed by "Rembrandt Messaging Technologies LP" (a Limited Partnership). Subsequently, the inventor assigned rights to "MESSMO TECHNOLOGIES PTY. LIMITED," which then transferred the patent to "REMBRANDT MESSAGING TECHNOLOGIES II, LP." These entities, particularly with "LP" and "PTY. LIMITED" suffixes and no readily apparent product lines, are strong indicators of shell or licensing entities. The fact that Unified Patents, an anti-NPE organization, filed an IPR against this patent further supports this [cite: The full patent text, under "Legal status"]. This pattern is supported by transfers recorded on Reel 031267/0709 (2013-10-18), Reel 030062/0268 (2015-07-28), and Reel 030062/0265 (2015-07-28).

2. Known asserter in the chain — Present.

   • "Rembrandt Messaging Technologies LP" and its successor "Rembrandt Messaging Technologies II, LP" are known entities associated with patent assertion. The existence of an IPR case (IPR2025-01486) filed by Unified Patents, an organization dedicated to deterring abusive patent litigation by NPEs, against this patent family directly points to the current assignee being an asserter [cite: The full patent text, under "Legal status"].

3. Repeat correspondent across the chain — Present.

   • The law firm ROTHWELL, FIGG, ERNST & MANBECK, P.C. (1425 K STREET, N.W., SUITE 800, WASHINGTON, D.C. 20005) is listed as the correspondent of record for all three documented assignments: Reel 031267/0709 (2013-10-18), Reel 030062/0268 (2015-07-28), and Reel 030062/0265 (2015-07-28). This consistent use of the same legal counsel across multiple transfers within the chain is a strong indicator of a coordinated patent management and assertion strategy, often seen with NPEs.

4. Cascading transfers — Present.

   • The chain shows three assignments within a relatively short period (August 2013 to July 2015, less than 24 months for the latter two transfers) from the inventor, through an intermediate entity, and then to the current assignee. Specifically, the two assignments to Rembrandt Messaging Technologies II, LP (from Messmo and from Rembrandt Messaging Technologies, LP) occurred on the same execution and recording dates (2015-07-15 / 2015-07-28), both handled by the same correspondent.

5. Pre-litigation transfer — Not Present.

   • The last assignments to Rembrandt Messaging Technologies II, LP occurred on July 15, 2015. The district court litigation (1:24-cv-01199) was filed in the Texas Western District Court in 2024 [cite: The full patent text, under "Legal status"]. This gap of nearly nine years means the transfers were not within six months of the first reported infringement suit for this patent.

6. Bankruptcy fire-sale — Not Present.

   • There is no information in the patent record or publicly available that indicates any of the assignors or assignees underwent bankruptcy proceedings leading to the sale of this patent.

7. Privateering — Unclear.

   • While the chain strongly suggests NPE activity, there is no explicit information detailing whether an operating company transferred the patent to an NPE to assert on its behalf against competitors.

8. Defensive aggregator (anti-NPE) — Not Present.

   • The chain does not terminate at any known defensive aggregator such as RPX, AST, LOT Network, Unified Patents, or Open Invention Network. Instead, the patent is currently held by Rembrandt Messaging Technologies II, LP, an entity that has been involved in assertion.

Verdict

NPE — high confidence

The verdict is high confidence NPE due to multiple strong signals: the transfer through shell-like entities (Rembrandt Messaging Technologies LP, Messmo Technologies Pty. Limited, Rembrandt Messaging Technologies II, LP), the involvement of Rembrandt entities known for patent assertion, the consistent use of a single correspondent law firm (Rothwell, Figg, Ernst & Manbeck, P.C.) across multiple assignments, and the presence of cascading transfers. The fact that Unified Patents, an anti-NPE group, has filed an IPR against this patent family further solidifies this assessment [cite: The full patent text, under "Legal status"].

For verification, see the USPTO Assignment Center search for US8918127: https://assignmentcenter.uspto.gov/ (search by patent number).

The USPTO provides a Patent Public Search tool to search its database of patents and patent application publications. This tool allows for basic keyword searches or advanced searches with full query options and filters.

To identify the most relevant prior art for US patent 8918127, I will examine the citations listed within the patent document itself. The "Prior Art" keywords listed on the Google Patents page for US8918127 include "wireless device," "message," "sender," "service," and "destination address."

Here are the prior art references cited in US Patent 8918127, as listed in the "References" section of the full patent text, along with their potential relevance to the claims:

1. US8677377B2 - Method and apparatus for building an intelligent automated assistant

• Publication Date: March 18, 2014 [cite: The full patent text, under "Families Citing this family"]
• Assignee: [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes methods for building an intelligent automated assistant that can interpret natural language and perform tasks. While not directly about bearer selection, it highlights advanced mobile device capabilities and user interaction.
• Potential Anticipation (35 U.S.C. § 102): This reference is less likely to directly anticipate the core claims of US8918127, which focus on automatic bearer selection based on recipient subscriber status. However, elements related to a "message client running on the wireless device" (Claim 1, 11) and interpreting user input could be broadly related. The priority date of this patent (September 8, 2005) precedes US8918127's priority date of July 24, 2007.

2. US9318108B2 - Intelligent automated assistant

• Publication Date: April 19, 2016 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent further details intelligent automated assistants.
• Potential Anticipation (35 U.S.C. § 102): Similar to US8677377B2, this patent's relevance is more indirect. The priority date (January 18, 2010) is after US8918127's priority date, so it would not be anticipatory prior art.

3. US8977255B2 - Method and system for operating a multi-function portable electronic device using voice-activation

• Publication Date: March 10, 2015 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes voice-activated operation of multi-function portable devices.
• Potential Anticipation (35 U.S.C. § 102): The priority date (April 3, 2007) is before US8918127's priority date, making it potential prior art. However, its focus on voice activation differs significantly from the bearer selection mechanism of US8918127.

4. US9954996B2 - Portable electronic device with conversation management for incoming instant messages

• Publication Date: April 24, 2018 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes managing conversations for incoming instant messages on a portable electronic device. It includes aspects of message display and interaction within a messaging client.
• Potential Anticipation (35 U.S.C. § 102): This patent explicitly cites US8918127 (indicated by "*"). The priority date (June 28, 2007) is after US8918127's priority date, so it is not anticipatory prior art. However, its focus on instant messaging and conversation management on portable devices is relevant to the general field of US8918127. Specifically, claim elements regarding "displaying, by the wireless device of the sender, sent messages and received messages" (Claim 9, 19) could potentially be found in earlier prior art related to instant messaging, which this patent builds upon.

5. AU2008201643B1 - Messaging service in a wireless communications network

• Publication Date: August 28, 2008 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Rambrandt Messaging Technologies, LP [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This is an Australian patent application from the same assignee as US8918127, with the same title and an earlier priority date (July 24, 2007) [cite: The full patent text, under "Priority claimed from AU2007903979A"]. This is the priority document for US8918127.
• Potential Anticipation (35 U.S.C. § 102): As the priority document, this patent would generally not serve as anticipatory prior art against US8918127 for its own claims. Instead, it establishes the priority date for the invention disclosed in US8918127.

6. US8676904B2 - Electronic devices with voice command and contextual data processing capabilities

• Publication Date: March 18, 2014 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent discusses electronic devices with voice command and contextual data processing.
• Potential Anticipation (35 U.S.C. § 102): The priority date (October 2, 2008) is after US8918127's priority date, so it is not anticipatory prior art.

7. US8649808B2 - Universal mobile device messaging

• Publication Date: February 11, 2014 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Microsoft Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes universal mobile device messaging, which could involve various messaging protocols.
• Potential Anticipation (35 U.S.C. § 102): The priority date (October 13, 2008) is after US8918127's priority date, so it is not anticipatory prior art.

8. US10706373B2 - Performing actions associated with task items that represent tasks to perform

• Publication Date: July 7, 2020 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent relates to performing actions associated with task items.
• Potential Anticipation (35 U.S.C. § 102): The priority date (June 3, 2011) is after US8918127's priority date, so it is not anticipatory prior art.

9. US9858925B2 - Using context information to facilitate processing of commands in a virtual assistant

• Publication Date: January 2, 2018 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes using context information for processing virtual assistant commands. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (June 5, 2009) is after US8918127's priority date, so it is not anticipatory prior art.

10. US10241752B2 - Interface for a virtual digital assistant

• Publication Date: March 26, 2019 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes an interface for a virtual digital assistant.
• Potential Anticipation (35 U.S.C. § 102): The priority date (September 30, 2011) is after US8918127's priority date, so it is not anticipatory prior art.

11. US8914463B2 - Network-based service access for wireless communication devices

• Publication Date: December 16, 2014 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Sony Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes network-based service access for wireless communication devices, including determining a communication channel and capabilities. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (December 17, 2009) is after US8918127's priority date, so it is not anticipatory prior art. However, its discussion of determining communication channels and capabilities for wireless devices is closely related to the subject matter of US8918127. This could be relevant for assessing the scope of claims in US8918127 against other existing technologies.

12. US10276170B2 - Intelligent automated assistant

• Publication Date: April 30, 2019 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Apple Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent further details intelligent automated assistants.
• Potential Anticipation (35 U.S.C. § 102): The priority date (January 18, 2010) is after US8918127's priority date, so it is not anticipatory prior art.

13. EP2363303A1 - Bimodal NdBR

• Publication Date: September 7, 2011 [cite: The full patent text, under "Families Citing this family"]
• Assignee: LANXESS Deutschland GmbH [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent concerns a chemical compound (Bimodal NdBR). It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): This patent is unrelated to messaging services and would not anticipate any claims of US8918127. Its citation of US8918127 is likely a clerical error or related to an obscure cross-referencing system unrelated to the technical subject matter. The priority date (February 19, 2010) is after US8918127's priority date.

14. US8903847B2 - Digital media voice tags in social networks

• Publication Date: December 2, 2014 [cite: The full patent text, under "Families Citing this family"]
• Assignee: International Business Machines Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes digital media voice tags in social networks.
• Potential Anticipation (35 U.S.C. § 102): The priority date (March 5, 2010) is after US8918127's priority date, so it is not anticipatory prior art.

15. US9628831B2 - Multimedia transcoding method and system for mobile devices

• Publication Date: April 18, 2017 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Whatsapp, Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent details multimedia transcoding for mobile devices, which is relevant to sending multimedia messages.
• Potential Anticipation (35 U.S.C. § 102): The priority date (March 25, 2010) is after US8918127's priority date, so it is not anticipatory prior art.

16. US8995965B1 - Synthetic communication network method and system

• Publication Date: March 31, 2015 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Whatsapp Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes a synthetic communication network method and system, potentially encompassing various messaging types. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (March 25, 2010) is after US8918127's priority date, so it is not anticipatory prior art. However, its general subject matter relating to communication networks and messaging could be relevant for a broader understanding of the field.

17. US10904178B1 - Methods, systems, and computer program products for processing a request for a resource in a communication

• Publication Date: January 26, 2021 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Gummarus, Llc [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes processing requests for resources in a communication.
• Potential Anticipation (35 U.S.C. § 102): The priority date (July 9, 2010) is after US8918127's priority date, so it is not anticipatory prior art.

18. KR101701151B1 - Integrated Message Transmitting and Receiving Method and Apparatus Using Portable Device

• Publication Date: February 2, 2017 [cite: The full patent text, under "Families Citing this family"]
• Assignee: 삼성전자주식회사 ([[Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.)) [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This Korean patent describes an integrated message transmitting and receiving method and apparatus for portable devices. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (September 20, 2010) is after US8918127's priority date, so it is not anticipatory prior art. However, its subject of integrated messaging on portable devices is directly relevant to the general field of US8918127.

19. US20120246238A1 - Asynchronous messaging tags

• Publication Date: September 27, 2012 [cite: The full patent text, under "Families Citing this family"]
• Assignee: International Business Machines Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This application describes asynchronous messaging tags.
• Potential Anticipation (35 U.S.C. § 102): The priority date (March 21, 2011) is after US8918127's priority date, so it is not anticipatory prior art.

20. US20120244842A1 - Data Session Synchronization With Phone Numbers

• Publication Date: September 27, 2012 [cite: The full patent text, under "Families Citing this family"]
• Assignee: International Business Machines Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This application describes data session synchronization with phone numbers.
• Potential Anticipation (35 U.S.C. § 102): The priority date (March 21, 2011) is after US8918127's priority date, so it is not anticipatory prior art.

21. US8688090B2 - Data session preferences

• Publication Date: April 1, 2014 [cite: The full patent text, under "Families Citing this family"]
• Assignee: International Business Machines Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes data session preferences.
• Potential Anticipation (35 U.S.C. § 102): The priority date (March 21, 2011) is after US8918127's priority date, so it is not anticipatory prior art.

22. US20120311038A1 - Proximity Session Mobility Extension

• Publication Date: December 6, 2012 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Trinh Trung Tim [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This application describes proximity session mobility extension.
• Potential Anticipation (35 U.S.C. § 102): The priority date (June 6, 2011) is after US8918127's priority date, so it is not anticipatory prior art.

23. US10225354B2 - Proximity session mobility

• Publication Date: March 5, 2019 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Mitel Networks Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes proximity session mobility. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (June 6, 2011) is after US8918127's priority date, so it is not anticipatory prior art.

24. US9166892B1 - Systems and methods for event stream management

• Publication Date: October 20, 2015 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Google Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes systems and methods for event stream management. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (January 20, 2012) is after US8918127's priority date, so it is not anticipatory prior art.

25. US9031586B1 - System and method for providing SMS message services from multiple originators using a shared shortcode

• Publication Date: May 12, 2015 [cite: The full patent text, under "Families Citing this family"]
• Assignee: West Corporation [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes providing SMS message services from multiple originators using a shared shortcode. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (January 27, 2012) is after US8918127's priority date, so it is not anticipatory prior art. However, the use of "shortcodes" for messaging is discussed in US8918127, and this patent could be relevant to the state of the art regarding SMS services and shortcodes.

26. US9491123B2 - Streamlined messaging client provisioning system

• Publication Date: November 8, 2016 [cite: The full patent text, under "Families Citing this family"]
• Assignee: Biscom Inc. [cite: The full patent text, under "Families Citing this family"]
• Brief Description: This patent describes a streamlined messaging client provisioning system. It explicitly cites US8918127 (indicated by "*").
• Potential Anticipation (35 U.S.C. § 102): The priority date (April 24, 2012) is after US8918127's priority date, so it is not anticipatory prior art.

Most Relevant Prior Art to US8918127:

Based on the cited references, the most relevant prior art (that precedes US8918127's priority date of July 24, 2007) that could potentially anticipate claims under 35 U.S.C. § 102 would be:

• US8677377B2 (Apple Inc.): Priority Date September 8, 2005. While not directly about bearer selection, its discussion of an "intelligent automated assistant" and software running on a device to perform messaging functions could be considered for elements of claims 1 and 11 related to a "message client running on the wireless device" and its capabilities. However, its specific technical focus is distinct.
• US8977255B2 (Apple Inc.): Priority Date April 3, 2007. This patent on voice-activated operation of portable devices precedes US8918127's priority date. While its focus is different, general concepts of message handling on multi-function devices could be broadly relevant to some claim elements if they describe generic mobile device messaging functionality.

It is important to note that the primary prior art for US8918127, AU2008201643B1, is its own priority document and therefore does not serve as anticipatory prior art against US8918127.

Many of the other cited patents are later in priority date than US8918127 and, in several cases, explicitly cite US8918127. These later patents would not be considered anticipatory prior art under 35 U.S.C. § 102. However, they may be relevant for understanding the technological landscape and how the invention of US8918127 influenced subsequent developments in messaging and virtual assistant technologies.

The provided patent text for US8918127 describes existing messaging services in its "BACKGROUND ART" section, specifically mentioning Short Messaging Service (SMS), Enhanced Messaging Service (EMS), Multimedia Messaging Service (MMS), and Mobile Instant Messaging (MIM). These descriptions outline the state of the art prior to the patent's priority date of July 24, 2007. However, the patent text itself does not list specific prior art documents (e.g., patent numbers, publications) in a dedicated "Prior Art section" to be directly cited for an obviousness analysis.

Therefore, to fulfill the request for an obviousness analysis under 35 U.S.C. § 103, it is necessary to identify representative prior art documents that embody the technologies described in the patent's background or related concepts, published before the priority date of US8918127 (July 24, 2007). Without a specific list of prior art references provided within the patent text for this analysis, the following analysis relies on general knowledge of messaging technologies prevalent before the priority date and a search for representative examples.

General Knowledge of Prior Art Before July 24, 2007

Before the priority date, the following technologies were well-established and generally understood by a person having ordinary skill in the art (PHOSITA) in wireless communications:

• SMS: Widespread for text messaging over cellular networks (e.g., GSM, CDMA), limited in data size. [cite: The full patent text, under "BACKGROUND ART"]
• EMS: An extension to SMS allowing richer content by packaging multiple SMS messages. [cite: The full patent text, under "BACKGROUND ART"]
• MMS: For sending multimedia messages (images, audio, video) over packet-switched data networks (e.g., GPRS, 3G). [cite: The full patent text, under "BACKGROUND ART"]
• MIM: Real-time instant messaging over IP data networks, often requiring user registration with a username/handle. [cite: The full patent text, under "DISCLOSURE OF THE INVENTION"]
• Packet-switched networks: Technologies like GPRS, HSDPA, WCDMA, CDMA2000, Bluetooth, WiFi, and WiMax were known for data transmission. [cite: The full patent text, under "DISCLOSURE OF THE INVENTION", "BEST MODES OF THE INVENTION"]
• Dual-mode devices: Wireless devices capable of operating on both cellular networks (for voice/SMS) and packet-switched networks (e.g., WiFi for data) were common.

Obviousness Analysis of US8918127 (Claims 1 and 11)

Independent Claims 1 and 11 of US8918127 disclose a method for a sender's wireless device to:

1. Receive a destination address.
2. Determine if the destination is a subscriber to a service for receiving messages via a packet-switched bearer by sending a request to a server via a packet-switched WLAN base station, and receiving a response, without traversing the cellular core network.
3. Select a transmission mode: packet-switched (IP packets via WLAN) if a subscriber, or SMS (via cellular core network) if not.
4. Send the message using the selected mode.

The key innovative aspects, as highlighted in the patent, include the automatic bearer selection based on recipient capability/subscription, the use of a single identifier (mobile phone number) unlike MIM, and critically, the request/response for subscriber determination bypassing the cellular core network via a packet-switched WLAN connection.

To establish obviousness, one would need prior art that teaches or suggests:

• A client on a sender device initiating message transmission.
• The ability to send messages via both packet-switched (e.g., WLAN/IP) and circuit-switched (e.g., cellular SMS) bearers.
• Determining recipient capability/preference for packet-switched vs. SMS.
• Automatically selecting the bearer based on this determination.
• Performing the recipient capability/preference check over a packet-switched connection that bypasses the cellular core network for the signaling, even if the SMS message itself eventually uses the cellular core network.

Combinations of Prior Art References

Given the absence of specific prior art documents in the patent, a hypothetical obviousness argument would likely combine multiple references, each addressing different aspects.

Hypothetical Combination 1: (Prior Art A - Hybrid Messaging) + (Prior Art B - Capability Discovery) + (Prior Art C - Direct IP Signaling)

• Prior Art A: A messaging system enabling hybrid delivery (e.g., US20020188680A1 to Alperovich et al., published December 12, 2002).

  • This reference describes a system and method for transmitting messages where a user's device can send messages via different networks, including wireless networks and the internet. It envisions a "smart client" that can adapt to different delivery mechanisms. Such systems generally teach receiving a destination address and sending messages. It also describes a system where a message can be sent as an SMS, email, or a proprietary instant message, indicating awareness of multiple message types and underlying bearers.
  • This covers: "receiving, by a message client... information associated with a destination address," and the sender device being "capable of sending messages in a plurality of transmission modes."

• Prior Art B: A system for discovering recipient capabilities or presence (e.g., US6865261B2 to Smith et al., published March 8, 2005).

  • This patent, or similar systems, describes methods for determining the capabilities of a recipient device or user's presence/availability for real-time communication. A PHOSITA would recognize that such capability information (e.g., whether a recipient has a particular messaging client installed or is online) could be stored on a server and queried.
  • This covers: "determining, by the wireless device of the sender, whether the destination address corresponds to a subscriber of a service for receiving the outgoing message via a packet switched bearer by sending a request... to a server, and receiving a response from the server providing an indication."

• Prior Art C: A messaging client or application capable of direct IP communication over a WLAN, bypassing cellular network for data (e.g., conventional Wi-Fi calling/data over IP applications pre-2007).

  • By 2007, devices capable of connecting to WLAN (Wi-Fi) and using IP for communication (e.g., VoIP, instant messaging applications like early Skype or Jabber clients on smartphones) were known. A PHOSITA would understand that a client could send data (like a capability request) directly over an IP connection via a WLAN base station to a server on the Internet, thereby not traversing the cellular core network for that specific signaling traffic.
  • This covers: "sending a request via a packet switched wireless local area network (WLAN) base station to a server, and receiving a response from the server via the packet switched WLAN base station," and "wherein the request sent to the server and the response received from the server do not traverse the cellular core network."

Motivation to Combine

A PHOSITA, at the time of the invention (before July 24, 2007), would have been motivated to combine these elements to provide a more efficient and versatile messaging experience.

1. Efficiency and Cost Savings: Given the limitations of SMS (character limits, cost per message, latency) versus the advantages of packet-switched messaging (larger data size, potentially lower cost for data plans), a strong motivation existed to prioritize packet-switched delivery when possible. Combining a hybrid messaging system (Prior Art A) with capability discovery (Prior Art B) would allow for intelligent routing to leverage these efficiencies.
2. Enhanced User Experience: Users desire seamless communication regardless of the recipient's device capabilities or current network connection. Automatically switching between packet-switched and SMS based on recipient status would improve reliability and deliverability of messages, especially for multimedia content, without requiring manual intervention from the sender.
3. Leveraging Existing Infrastructure: The growth of WLAN (Wi-Fi) availability in homes and public spaces provided an alternative, often faster and cheaper, data path than cellular networks. Integrating direct IP communication over WLAN (Prior Art C) for non-core network signaling, particularly for lightweight tasks like capability lookups, would conserve cellular network resources, reduce latency for checks, and improve responsiveness of the messaging application.
4. Convergence of Messaging Types: The patent itself notes the "biggest drawbacks" of SMS and the features of EMS, MMS, and MIM, suggesting a need for a unified approach. Combining these known technologies to offer a single interface with automatic bearer selection would be a natural progression for improving user experience in messaging. The idea of using a server to mediate message types and recipient capabilities was inherent in services like MMS.

Specifically, the "without traversing the cellular core network" for the determination request/response would be obvious when considering a dual-mode device (cellular + WLAN) and the desire for efficiency. If a device is connected to a WLAN, sending a small data packet (a subscriber inquiry) directly over IP via the WLAN to a server on the Internet is a standard and efficient way to communicate, avoiding the potentially slower or more expensive cellular signaling path (SS7/MAP) if the inquiry server is not part of the cellular core network's immediate domain. This would be a routine engineering choice to optimize network traffic and response times.

Conclusion:

Based on the general knowledge of messaging technologies and network capabilities prior to July 24, 2007, and representative examples like those discussed above, a PHOSITA would have been motivated to combine:

• A messaging client capable of both packet-switched (IP/WLAN) and circuit-switched (SMS/cellular) messaging.
• A server-based system for determining recipient capabilities or subscription status.
• The practice of using available IP connectivity (like WLAN) for direct communication with servers to perform application-level tasks, thereby bypassing the cellular core network for such data exchanges.

The combination of these known elements to achieve automatic bearer selection based on recipient subscription, with the specific optimization of performing the subscription check via a packet-switched WLAN bearer that does not traverse the cellular core network, would have been obvious to a PHOSITA seeking to improve efficiency, cost-effectiveness, and user experience in mobile messaging services.

Disclaimer: This analysis is based on the information provided in the patent text's "BACKGROUND ART" section and general technical knowledge available prior to the priority date. A full obviousness analysis would require a detailed examination of specific prior art references cited during prosecution or discovered through a comprehensive search, including their specific teachings and disclosure dates.