Twitter Inc v. Summit 6 LLC

1. Case Identification

• Case #: IPR2015-00680
• Patent #: 6,895,557
• Filed: February 4, 2015
• Petitioner(s): Twitter, Inc.
• Patent Owner(s): Summit 6, LLC
• Challenged Claims: 28-29, 33-38, and 41-44

2. Patent Overview

• Title: Web-Based Media Submissions
• Brief Description: The ’557 patent describes a web-based media submission tool that allows a user to upload media, such as photographs, to a website. The core alleged invention is client-side "pre-processing" of the media object, which is configurable to meet the requirements of a third-party website before the object is uploaded.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mayle and Walnum - Claims 28-29 and 33-36 are obvious over Mayle in view of Walnum.

• Prior Art Relied Upon: Mayle (Patent 6,018,774) and Walnum ("Java By Example," 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mayle taught the core functionality of the challenged claims. Mayle disclosed a system for creating electronic postcards where a user selects an image file via a graphical user interface (GUI) on a webpage. This GUI, which Petitioner contended was the claimed "media object identifier," could be implemented as a Java applet. Mayle also taught that client-side software could perform image processing—such as scaling, cropping, and format conversion—before making the final image available. Petitioner asserted that Walnum, an instructional book on Java programming, taught that making Java applets configurable via parameters was a well-known feature. This configurability was particularly useful for allowing third-party website operators to incorporate and customize applets they did not write themselves.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine the teachings of Mayle and Walnum to yield predictable results. Mayle explicitly taught implementing its client software in Java. A POSITA implementing Mayle’s system would have been motivated to incorporate the well-known, flexible features of Java applets described in Walnum, such as configurability, to allow the tool to be easily adapted for use by various third-party websites with different image requirements.
  • Expectation of Success: A POSITA would have had a high expectation of success, as making a Java applet configurable was a routine and well-understood programming task used to achieve the predictable result of greater software flexibility.

Ground 2: Obviousness over Mayle, Walnum, and Hunt - Claims 37-38 and 41-44 are obvious over Mayle in view of Walnum and further in view of Hunt.

• Prior Art Relied Upon: Mayle (Patent 6,018,774), Walnum ("Java By Example," 1996), and Hunt (Patent 5,764,235).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground challenged claims reciting the additional limitation of "checking a file size of the media object and if the file size...is larger than a predetermined maximum...reducing the file size." Petitioner argued that Mayle taught checking a file size against a server's limit but would simply return an error if the file was too large. Hunt, however, explicitly taught the benefits of customizing image data size before transmission to conserve network bandwidth and reduce server load. Hunt taught using compression or other file size reduction techniques if an image file exceeded desired specifications. The combination of Mayle and Walnum provided the base system, while Hunt supplied the missing file-size reduction step.
  • Motivation to Combine: A POSITA would combine Hunt with the Mayle/Walnum system to solve a known problem. Instead of simply rejecting an oversized file as Mayle taught, a POSITA would have been motivated to apply Hunt's solution to improve the system by automatically resizing the image to meet server requirements. This would avoid the user error condition and reduce bandwidth usage, a key advantage articulated in Hunt.
  • Expectation of Success: The expectation of success would have been high. Image compression and file size reduction were well-known techniques, and implementing them on the client-side as suggested by Mayle's architecture was a straightforward task for a POSITA.

Ground 3: Obviousness under Alternative Claim Construction - Claims 28-29, 33-38, and 41-44 are obvious over Mayle, Walnum, and Hunt.

• Prior Art Relied Upon: Mayle (Patent 6,018,774), Walnum ("Java By Example," 1996), and Hunt (Patent 5,764,235).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative based on a narrower claim construction for "pre-processing" adopted in a related district court case: "modifying the [media object]...in preparation for transmission to a remote device." Petitioner argued that even under this narrower construction, the claims were obvious. Mayle taught client-side image processing, and a POSITA would understand that a processed image would then need to be uploaded (transmitted) to the server. Hunt explicitly taught modifying a graphical image file specifically "in preparation for transmission" to another device to control image quality versus size and to save bandwidth.
  • Motivation to Combine: The motivation remained the same as in the previous grounds: to create an efficient and flexible media upload tool. A POSITA implementing Mayle's client-side processing would be motivated by Hunt's teachings to perform that processing specifically to optimize the image for transmission, thereby reducing bandwidth and server load, which Hunt identified as clear advantages.
  • Expectation of Success: Success was reasonably expected because the combination involved applying Hunt's known technique for pre-transmission optimization to Mayle's known client-server architecture to achieve the predictable benefits described in Hunt.

4. Key Claim Construction Positions

• "pre-processing": Petitioner argued this term should be construed broadly as "modifying before further processing." This construction was based on the patent's specification, which described modifications like cropping that are not strictly for transmission purposes. Petitioner contrasted this with a narrower district court construction requiring the modification to be "in preparation for transmission to a remote device," which formed the basis for its alternative argument in Ground 3.
• "media object identifier": Petitioner proposed the construction "a software component that allows a user to select a file (media object)." This was based on examples in the ’557 patent, such as an ActiveX component or a Java applet that provides a GUI for file selection.
• "without user selection": Petitioner argued this should mean "without additional user input affecting what pre-processing occurs." This construction would allow for initial user input (e.g., typing a caption) before the automated pre-processing step begins, which Petitioner contended was consistent with the patent's disclosure.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 28-29, 33-38, and 41-44 of the ’557 patent as unpatentable.