PTAB

CBM2016-00019

Apple Inc v. Mirror Worlds Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Document Stream Operating System
  • Brief Description: The ’227 patent describes methods and systems for chronologically organizing digital documents and data on a general-purpose computer. The system organizes data units into time-ordered "streams" that function as a diary of a user's electronic life, which can be dynamically updated.

3. Grounds for Unpatentability

Ground 1: Unpatentable as Patent-Ineligible Subject Matter under 35 U.S.C. §101

  • Core Argument for this Ground: Petitioner argued that the challenged claims are directed to the abstract idea of chronologically organizing information and lack an inventive concept sufficient to transform the idea into patent-eligible subject matter. The argument followed the two-step framework from Alice Corp. v. CLS Bank Int'l.
    • Step 1 (Abstract Idea): Petitioner contended that independent claim 13, and all dependent claims, are directed to the abstract idea of organizing items of information in chronological order. The petition asserted this is a fundamental, long-standing human practice, analogous to keeping a diary or organizing case files. Petitioner argued that each step recited in claim 13—such as creating a main sequence ("main stream"), creating sub-sequences ("substreams"), receiving data, and assigning timestamps—represents a conventional and abstract concept for organizing data. Petitioner further supported this by noting the method could be performed entirely with pen and paper or in the human mind.
    • Step 2 (Lacks Inventive Concept): Petitioner argued the claims fail to provide an inventive concept beyond the abstract idea itself. The recitation of a generic "computer system" to perform the organizing steps was asserted to be insufficient, as it amounts to merely implementing a well-known, routine, and conventional activity on a general-purpose computer. Petitioner noted the specification itself states the invention can be implemented on any available platform (e.g., UNIX, Macintosh, PDA), confirming the lack of a specific technological improvement. The limitations added by dependent claims, such as displaying data in a "stack" using "perspective" (claim 42) or archiving old data (claim 22), were also characterized as conventional computer functions that do not supply an inventive concept.

Ground 2: Invalid as Indefinite under 35 U.S.C. §112

  • Core Argument for this Ground: Petitioner argued the challenged claims are invalid for indefiniteness because the term "data unit" fails to inform a person of ordinary skill in the art about the scope of the invention with reasonable certainty.
    • Subjective Scope: The argument centered on the construction of "data unit" adopted during prosecution and in district court litigation, which defined the term as "an item of information that is of direct user interest in the user's timeline." Petitioner contended that what constitutes "direct user interest" is purely subjective and depends on the opinion of any given user or developer, providing no objective boundaries.
    • Lack of Guidance: The petition asserted that the patent's specification offers no objective standard for determining when an item of information meets the "direct user interest" criterion. This forces the public to guess the scope of the claims, which could vary from user to user and over time. Petitioner cited testimony from the named inventor, Dr. Gelernter, who allegedly admitted that the determination is a "subjective issue" and that they "didn't want to pin this...down." This subjectivity, Petitioner argued, renders the claims fatally indefinite.

4. Key Claim Construction Positions

  • "Data Unit": Petitioner argued that the term, as defined during prosecution and construed by a district court, means "an item of information that is of direct user interest in the user's timeline." This construction was central to Petitioner's indefiniteness argument under §112, as "user interest" is presented as a wholly subjective measure.
  • "Stream" / "Main Stream" / "Substream": Petitioner asserted these terms should be construed based on their specification definitions and district court constructions. A "stream" is a "time-ordered sequence of data units," a "main stream" includes every data unit received or generated by the system, and a "substream" is a filtered subset of the main stream. These constructions supported the argument that the claims merely recite abstract organizational concepts.
  • "Computer System": Petitioner argued for a broad construction of "a processing device programmed to carry out a set of logical operations," consistent with a district court ruling. This construction was used to support the §101 argument that the claims are not tied to any specific machine or technology but rather a generic computer, which cannot supply an inventive concept.

5. Arguments for CBM Eligibility

  • Financial Product or Service: Petitioner argued that the ’227 patent is eligible for Covered Business Method (CBM) review because it claims methods used in the practice, administration, or management of a financial product or service. The specification was cited as expressly disclosing embodiments for organizing a user's personal finances, balancing a "stream-based checking account," managing stock portfolios, and tracking "billable hours" for creating billing statements.
  • Not a Technological Invention: Petitioner contended that the patent does not fall under the "technological invention" exception to CBM review. The argument was that the claims do not recite a novel and unobvious technological feature, nor do they solve a technical problem with a technical solution. Instead, the claims were said to apply the abstract idea of organization to conventional, generic computer hardware, which does not constitute a technological invention.

6. Relief Requested

  • Petitioner requested institution of a CBM review and cancellation of claims 13-14, 17, 20, 22, 42, 44, and 55 of the ’227 patent as unpatentable under §101 and invalid as indefinite under §112.