Oracle v. Clouding IP LLC

1. Case Identification

• Case #: IPR2013-00088
• Patent #: 7,254,621
• Filed: December 17, 2012
• Petitioner(s): Oracle Corporation
• Patent Owner(s): Clouding IP, LLC
• Challenged Claims: 1-9 and 17

2. Patent Overview

• Title: Technique for Enabling Remote Data Access and Manipulation from a Pervasive Device
• Brief Description: The ’621 patent is directed to methods and systems for enabling pervasive computing devices to access and manipulate remote data. The system uses a series of proxy servers to obtain requested data and subsequently return information, or "references," regarding available data manipulation operations (e.g., printing, faxing) for the obtained data.

3. Grounds for Unpatentability

Ground 1: Anticipation by Schilit - Claims 1-9 and 17 are anticipated 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 prosecution, discloses every limitation of the challenged claims. Schilit teaches a system with a web browser ("m-link") on a mobile device that receives a data access request (for a URL), obtains the requested web document from a server, and then determines "situation, or context-appropriate services" such as printing or faxing. Crucially, Schilit then provides a list of selectable hyperlinks back to the mobile device, which correspond directly to the ’621 patent's claimed step of "providing references" to the determined manipulation operations. Petitioner contended that these hyperlinks are service invocation addresses (URLs), satisfying the limitations of dependent claims as well.

Ground 2: Obviousness over Flynn and Schilit - Claims 1-9 and 17 are obvious over Flynn in view of Schilit.

• Prior Art Relied Upon: Flynn (a 2000 publication titled "The Satchel System Architecture: Mobile Access to Documents and Services") and Schilit (Patent 6,670,968).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Flynn described the "Satchel system," an architecture for allowing pervasive devices to wirelessly access documents and invoke services. Flynn's system used infrared gateways to determine a device's physical location and passed this context information to an "Enquiry Service" to identify available services (e.g., a nearby printer). While Flynn disclosed returning service "forms," Schilit provided a more advanced and specific teaching of providing hyperlinks (URLs) as references to such services. The combination of Flynn's location-aware service discovery architecture with Schilit's web-based service-linking interface was alleged to teach every claim limitation.
  • Motivation to Combine: A POSITA would combine Flynn and Schilit because they shared the common goal of providing a pervasive device with options to execute services on obtained data. Petitioner argued it would have been a commonsensical and predictable step to apply Schilit's more modern web browsing and service-linking techniques to improve the user interface and functionality of Flynn's older architecture.
  • Expectation of Success: Success was expected because the combination merely involved applying a known web-based interface (Schilit) to an existing mobile service discovery system (Flynn), a straightforward integration of known technologies.

Ground 3: Obviousness over Barrett and Schilit - Claims 1-9 and 17 are obvious over Barrett in view of Schilit.

• Prior Art Relied Upon: Barrett (a 1998 publication titled "Intermediaries: New Places For Producing and Manipulating Web Content") and Schilit (Patent 6,670,968).
• Core Argument for this Ground:
  • Prior Art Mapping: Barrett disclosed a programmable proxy server framework for manipulating web content for pervasive devices with limited capabilities, such as a PalmPilot. This proxy could intercept requests and perform data manipulations like "distilling" content (e.g., reducing image color depth) before sending it to the device. Petitioner argued that Barrett taught the initial steps of receiving a request and manipulating data. Schilit supplied the remaining claim limitations: dynamically determining context-appropriate services (printing, faxing) available for the obtained data and providing references (hyperlinks) to those services back to the user.
  • Motivation to Combine: A POSITA would have been motivated to combine the teachings to improve the functionality of Barrett's proxy server. It would have been a natural and expected improvement to enhance Barrett's content-distillation proxy by incorporating the sophisticated service-discovery and linking capabilities taught by Schilit, creating a single, more powerful intermediary.
  • Expectation of Success: The combination involved integrating two known proxy-based functionalities, which a POSITA could have implemented with a reasonable expectation of success.

4. Key Claim Construction Positions

• "reference": Petitioner argued that under the broadest reasonable interpretation, this term should be construed as "an identifier, such as a URL link, that provides a way of locating and accessing the determined data manipulation operations." This construction was central to mapping the hyperlinks disclosed in Schilit and the HTML forms in Flynn to this claim limitation.
• "location": For claim 6, Petitioner asserted that "location" refers to the "physical location of the pervasive device." This construction was used to map prior art teachings of location-aware services (e.g., finding a nearby printer using infrared gateways or GPS) to the claim limitations.

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 1-9 and 17 of Patent 7,254,621 as unpatentable.