Oracle v. Clouding IP LLC

1. Case Identification

• Case #: IPR2013-00075
• Patent #: 6,925,481
• Filed: December 10, 2012
• Petitioner(s): Oracle Corporation
• Patent Owner(s): Clouding IP, LLC
• Challenged Claims: 1, 2, 25, 28, 32, and 50-57

2. Patent Overview

• Title: Technique for Enabling Remote Data Access and Manipulation from a Pervasive Device
• Brief Description: The ’481 patent discloses methods and systems for enabling pervasive computing devices to access and manipulate data. The technology uses a series of proxy servers to obtain data requested by a pervasive device and return that data along with information about available data manipulation operations, such as printing or faxing.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 25, 28, and 50-57 by Schilit under 35 U.S.C. § 102(e)

• Prior Art Relied Upon: Schilit (Patent 6,670,968).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schilit, which was not considered during the original prosecution, discloses every limitation of the challenged claims. Schilit’s "m-link" system uses a server that functions as a proxy to receive a data access request from a mobile device, obtain the requested web documents, parse the content, and determine context-appropriate services (e.g., printing, faxing). The system then returns the requested data to the mobile device along with a list of these available services, presented as selectable hyperlinks. Petitioner asserted this directly maps to the method steps of independent claim 1 and the system elements of independent claim 50.
  • Key Aspects: Petitioner emphasized that Schilit discloses providing the location of available services in the form of URLs for each service link, satisfying the "location" limitation of the claims. Furthermore, Schilit teaches that the availability of services can be made dependent on factors like content type (claim 25) and user preferences (claim 28).

Ground 2: Obviousness of Claim 32 over Schilit in view of Hutsch under 35 U.S.C. § 103

• Prior Art Relied Upon: Schilit (Patent 6,670,968) and Hutsch (Patent 7,269,664).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically targeted dependent claim 32, which adds the limitation of determining available manipulation operations for a "user group." Petitioner contended that while Schilit teaches determining services based on an individual user’s preferences, Hutsch explicitly discloses a system that stores user profiles, application profiles, and settings for "specific user groups or devices." Hutsch’s system uses this group information to determine how to format and manipulate content for a client device.
  • Motivation to Combine: A POSITA would combine the teachings of Schilit and Hutsch because they share the similar purpose of enabling pervasive devices to access and manipulate data via remote proxies. Petitioner argued that incorporating Hutsch’s well-known concept of user-group profiles into Schilit's service determination framework would have been a predictable and simple design choice to enhance its functionality for devices shared by multiple users.
  • Expectation of Success: The combination was presented as the predictable implementation of a known design choice (user group settings) into an existing system (Schilit's), ensuring an expectation of success.

Ground 3: Obviousness of Claims 1, 2, 25, 28, and 50-57 over Flynn in view of Schilit under §103

• Prior Art Relied Upon: Flynn (The Satchel System Architecture: Mobile Access to Documents and Services, Dec. 2000) and Schilit (Patent 6,670,968).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Flynn's "Satchel system" provides a basic framework for the claimed invention, disclosing a browser on a pervasive device that accesses remote documents and invokes services like printing. Flynn’s system includes a "Fetch Service" to obtain data and an "Enquiry Service" to determine available services at a specific location. Schilit was presented as teaching improvements to this basic framework, such as more advanced web browsing techniques and dynamic service determination based on content type or user, which were known advancements at the time.
  • Motivation to Combine: A POSITA would combine these references to improve the functionality of the older Satchel system described by Flynn. Petitioner argued it would have been commonsensical to apply the known, more advanced web browsing and service-selection techniques from Schilit to enhance Flynn’s system. Flynn itself suggested organizing services by "any other appropriate organization," providing an explicit motivation to incorporate Schilit's teachings on organization by content type and user.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 32 is obvious over Flynn in view of Schilit and Hutsch, and that claims 1, 2, 25, 28, and 50-57 are obvious over Barrett (Intermediaries: New Places For Producing And Manipulating Web Content, Apr. 1998) in view of Schilit.

4. Key Claim Construction Positions

• Petitioner argued that under the broadest reasonable interpretation standard applicable in IPR proceedings, key claim terms should be construed broadly.
• "location": Petitioner contended this term should encompass both the physical location of a service (e.g., a nearby printer) and a network location (e.g., a URL for invoking a service). This construction was critical for mapping prior art like Schilit, which disclosed service invocation via hyperlinks (URLs).
• "means for..." limitations: For the means-plus-function limitations in system claim 50 (e.g., "means for receiving," "means for determining"), Petitioner identified corresponding structures in the ’481 patent’s specification, such as a "protocol proxy" and a "data manipulation server." Petitioner then argued that components in the prior art, like Schilit’s "m-link browser" and "services portal database," were structurally equivalent to these disclosed structures and performed the identical claimed functions.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, 25, 28, 32, and 50-57 of the ’481 patent as unpatentable.