EMC Corp v. Clouding Corp

1. Case Identification

• Case #: IPR2014-01217
• Patent #: 6,925,481
• Filed: July 29, 2014
• Petitioner(s): EMC Corporation, EMC International U.S. Holdings, Inc., and VMware, Inc.
• Patent Owner(s): Clouding IP, LLC
• Challenged Claims: 1-5, 25, 28, 30, 40, 48-49, and 52-53

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 users of resource-limited "pervasive devices," such as mobile phones, to access and manipulate remote information. The invention describes a protocol proxy that receives a data request from a device, obtains the requested data from a source like the World-Wide Web, determines what data manipulation operations (e.g., printing, emailing) are available for that data, and returns the data along with a list of the available operations and their network locations to the user's device.

3. Grounds for Unpatentability

Ground 1: Anticipation by Schilit - Claims 1-5, 25, 28, 30, 40, 48-49, and 52-53 are unpatentable as anticipated under 35 U.S.C. §102(e) by Schilit.

• Prior Art Relied Upon: Schilit (Patent 6,670,968).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schilit discloses every limitation of the challenged claims. Schilit describes an "m-link" web browser system for mobile devices that converts HTML documents for display on a small screen. Petitioner asserted that this system performs the exact method claimed in the ’481 patent. Specifically, Schilit's mobile device browser requests a document via a user-selected URL (the claimed "receiving a data access request"), and the system retrieves the document from a server (the claimed "obtaining the requested data"). Schilit then determines a list of "content-appropriate services" such as reading, printing, or faxing available for that document from a services database and provides this list to the mobile device display. Petitioner contended this directly teaches "determining what data manipulation operations are available" and "returning the determined data manipulation operations and locations to the pervasive device."
  • Key Aspects: Petitioner heavily emphasized the procedural history of the ’481 patent, noting that the Patent Trial and Appeal Board had already instituted inter partes review (IPR) on two prior occasions (IPR2013-00075 and IPR2014-00299) against other claims of the same patent based on anticipation by Schilit. This petition was filed to challenge additional claims that Patent Owner began asserting in district court litigation after the initial IPRs were filed, arguing that Schilit likewise anticipates these newly asserted claims.

4. Key Claim Construction Positions

• Petitioner argued that for the purposes of the IPR, three key claim terms should be given the same construction previously adopted by the Board in the prior IPR proceedings involving the ’481 patent.
  • "receiving a data access request": Proposed construction does not preclude receiving additional data access requests or having steps performed in response to other requests. This is consistent with the open-ended "comprising" language of the independent claims.
  • "location of each available data manipulation operation": Proposed construction means "a location identified by an address, such as a URL, an e-mail address, or a combination... specifying where on a computer network a data manipulation operation or service may be invoked."
  • "data": Proposed construction means "virtually any type of information, including Web content, email messages, or files in various formats," based on an explicit definition in the ’481 patent's specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution of this IPR would not be cumulative to the Board's pending IPR proceeding (IPR2014-00299). It was contended that this petition was necessary to "curtail piecemeal disputes" because it included additional claims (claims 30 and 48-49) that the Patent Owner had recently asserted in litigation but were not part of the earlier petitions. Therefore, instituting this review would allow for a more complete and efficient resolution of the patentability of the asserted claims.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-5, 25, 28, 30, 40, 48-49, and 52-53 of Patent 6,925,481 as unpatentable.