« Exceptional? | Main | Another Round »

July 6, 2009

Not Called Out

4,924,496 claims caller ID, using means-plus-function claims: look up a name for a number while the phone is ringing. There's a claimed "means for comparing the detected incoming telephone number with said directory of telephone numbers to identify the party associated with the incoming call number." Not exactly rocket science there, even back in 1988 when the patent was filed. Sued for '496 over its iPhone, Apple wanted summary judgment indefiniteness, for failing to disclose an algorithm for comparing. Unconvinced, the Massachusetts magistrate judge on the case blew that off. Tell it to the jury, she wrote.

Posted by Patent Hawk at July 6, 2009 8:01 PM | ยง 112


One wonders if this patent would get a 101 rejection if filed today...

Posted by: Michael Feigin, Patent Attorney at July 7, 2009 5:40 AM

I had a look through the magistrate judge's analysis. (I happen to have a fair amount of knowledge about this subject matter, having worked in exactly this field for many years.)

I think Apple ought to be able to successfully defend against the infringement accusation - but I'm not sure which of several strategies would work best.

1) As Hawk points out, there is an obviousness issue. In 1988, telephone companies routinely provided the telephone number of a caller as the call arrived. It is an obvious step to take that number and compare it to a list of parties whose identities you already know. My company demonstrated software at a major international telecoms show in Geneva in 1987 that did exactly that. There is absolutely nothing inventive here.

2) The specification (as quoted by the magistrate judge) describes only one form of caller ID - namely, when a telephone company transmits the caller's telephone number as coded digits in the pause between ring cycles. This is the method that your typical analog home telephone uses, but it is NOT the technology used by cell phones such as the iPhone. I haven't read the entire patent, so I don't know whether this represents a limitation or just an exemplary embodiment.

3) Apple points out that attempting to match one piece of data (the caller's telephone number) with some entry in a data base (the list of known parties) requires some non-trivial design decisions. Many different techniques may be chosen depending on the size and nature of the data base, the speed of retrieval required, and the specific equipment used to store the data and to do the search. The patent is silent on these matters, and thus may be at risk of indefiniteness.

4) If, on the other hand, the patentee asserts that the claims cover all possible methods of searching and matching, that sounds like a mathematical concept and therefore unpatentable material.

Anyhow... I think strategy #1 is Apple's best bet - especially since I can supply invalidating prior art! :-)

Posted by: Carl Strathmeyer at July 7, 2009 5:45 AM

Re: my previous entry, point #2:

I have now read the specification. It appears to read in such a way as to make one specific method of receiving the telephone number a limitation, not an exemplary embodiment:

"The present invention is accomplished by an incoming telephone number display system which utilizes a special service offered by the telephone company called Automatic Number Identification. The special feature of this service is that a caller's telephone number is transmitted by the telephone company to the customer during the silent period between rings."

This "special service" does not apply to cell phones generally nor to the iPhone specifically, since cell phones do not use the digits-between-rings method to send the caller's telephone number.

Posted by: Carl Strathmeyer at July 7, 2009 10:18 AM

Mind telling us how they do accomplish it?

Posted by: 6000 at July 7, 2009 12:00 PM

Modern mobile phones are all digital. (See the Wikipedia article on GSM at http://en.wikipedia.org/wiki/GSM for information on the most popular of these digital standards.)

In a digital network, both the voice stream (now digitized) and the call-information (aka 'signaling') data stream are sent in digital form. In a digital phone, there is no "pause between ring cycles" because all the ringing is done locally at your phone. The phone just gets a single digital command from the telco to start making its "incoming call alert" sound. The sound is stored locally right at the phone, which is how you get the custom ring tones.

Posted by: Carl Strathmeyer at July 7, 2009 12:54 PM