Facebook Inc v. Skky LLC

1. Case Identification

• Case #: CBM2017-00006
• Patent #: 9,215,310
• Filed: October 14, 2016
• Petitioner(s): Facebook, Inc., Instagram, LLC
• Patent Owner(s): Skky, LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: MEDIA DELIVERY PLATFORM
• Brief Description: The ’310 patent describes a method and system for wirelessly transmitting a data file between a cellular phone and a server. The system uses a server-based "virtual storage locker" and employs orthogonal frequency-division multiplex (OFDM) modulation for data transmission over a cellular network.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 are Unpatentable under 35 U.S.C. § 101

• Core Argument for this Ground: Petitioner argued that claims 1-14 are directed to patent-ineligible subject matter under the two-step framework from Alice Corp. v. CLS Bank Int’l.
  • Abstract Idea (Step 1): Petitioner contended the claims are directed to the abstract idea of storing and retrieving items from a remote location. This concept was analogized to longstanding, real-world practices such as renting a physical self-storage locker or using a bank safety deposit box, where a user stores items at a remote facility and later retrieves them. The claims merely computerize this fundamental economic practice.
  • Lack of Inventive Concept (Step 2): Petitioner asserted the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The additional claim elements—a cellular phone, a server-based "virtual storage locker," a receiver, a digital signal processor (DSP), and the use of OFDM—were all described as well-understood, routine, and conventional technologies at the time of the invention. Petitioner argued that merely applying an abstract idea using generic computer and network components, without improving the functioning of the technology itself, does not confer patent eligibility. The recitation of OFDM was characterized as merely confining the abstract idea to a particular technological environment, not as an inventive application.

Ground 2: Claims 1-14 are Invalid under 35 U.S.C. § 112(b)

• Core Argument for this Ground: Petitioner argued the claims are invalid for failing to claim the subject matter that the inventor "regards as the invention," as required by the pre-AIA version of 35 U.S.C. § 112.
  • Inventor's Stated Invention: The argument centered on a declaration submitted by inventor Robert Freidson during the prosecution of a parent application (the "Freidson Declaration"). In that declaration, the inventor explicitly distinguished between two aspects of his work: (1) a method for data transmission over an audio channel of a wireless phone that employed OFDM, and (2) a method for delivery over a data channel of a wireless phone that does not employ OFDM.
  • Claim Scope Mismatch: Petitioner contended that the challenged claims, under their broadest reasonable construction, are not limited to using OFDM over an audio channel and would also cover its use over a cellular data channel. Because the inventor's own sworn statements established a clear dichotomy and stated that OFDM was not used for data channels, the broader claims impermissibly overreach the scope of what the inventor actually regarded as his invention, rendering them invalid under § 112.

Ground 3: Claims 1-14 are Invalid under 35 U.S.C. § 112(a)

• Core Argument for this Ground: Petitioner argued the claims are invalid for lacking an adequate written description, as the specification fails to demonstrate that the inventor was in possession of the full claimed scope at the time of filing.
  • Limited Disclosure: The petition asserted that the ’310 patent’s specification only describes a single embodiment for using OFDM: a method to convert digital data into a "special sequence of sounds" for transmission over a telephone's audio channel. This is described as being "based on a voice mode connection."
  • Failure to Support Broad Claims: The specification explicitly states that in the context of a digital network with a dedicated data channel, "no modulation [OFDM] is required on the mobile phone side." Petitioner argued that this limited disclosure, which describes only an audio channel embodiment and expressly disclaims the use of OFDM for data channels, cannot support the broad claims that generically recite OFDM transmission without limitation to an audio channel. Therefore, the specification fails to show the inventor possessed an invention involving OFDM transmission over a modern cellular data channel, invalidating the claims for lack of written description.

4. Key Claim Construction Positions

• "orthogonal frequency-division multiplex [OFDM] modulation": Petitioner argued that for the purposes of a Covered Business Method (CBM) review, this term should be given its broadest reasonable construction. Under this standard, the claims are not limited to the specific embodiment described in the specification (i.e., transmitting data as sound over an audio channel). Instead, the claims should be construed to cover the use of OFDM more generally, including for transmissions over modern cellular data channels (e.g., LTE). This broad construction was presented as critical to Petitioner's arguments under § 112, as it creates the alleged mismatch between the broad claim scope and the narrow disclosure.

5. Relief Requested

• Petitioner requested institution of CBM patent review and cancellation of claims 1-14 of the ’310 patent as unpatentable.