PTAB

IPR2015-00969

Apple Inc v. OpenTV Inc

Key Events

Petition

petition Intelligence

Title: Internet Filtering System for Filtering Data Transferred over the Internet Utilizing Immediate and Deferred Filtering Actions
Brief Description: The ’033 patent discloses a method for filtering Internet traffic by comparing messages against a database of filters to selectively allow or deny access to Internet resources. The system’s key feature is its use of two distinct types of filters: "immediate action" filters that operate based on network address or port information, and "deferred action" filters that operate based on other message content like keywords or data patterns.

Prior Art Relied Upon: Baker (Patent 5,961,645).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Baker '645 discloses every element of the challenged claims. Baker describes a filter system that maintains a database to control access to network resources. This system performs "immediate action" filtering by comparing a requested URL against a permission list of URLs. It also performs "deferred action" filtering by examining additional data within a message, such as content ratings or keywords, to determine whether to grant access. Petitioner contended that Baker also discloses applying these filters to both outgoing requests and incoming server responses, thereby anticipating the full scope of the challenged claims, including those directed at outgoing (claim 1), incoming (claim 23), and direction-agnostic (claim 15) messages.

Prior Art Relied Upon: Baker ('898 patent) and Baker ('645 patent).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Baker '898, from the same inventor as Baker '645, discloses a system that anticipates claims 1, 2, and 15. The system uses a relational database to unconditionally allow or deny access based on matching a specific URL (immediate action). It further discloses using regular expressions (e.g., *answer*) and lists of disallowed words to filter resources, which constitutes "deferred action" filtering.
- Motivation to Combine (for §103 grounds on claims 9 & 23): Petitioner argued a person of ordinary skill in the art (POSITA) would find it obvious to apply the filtering method of Baker '898 to incoming messages (claim 23) and to implement the filter on a client computer (claim 9). The motivation was strong because Baker '645 explicitly references Baker '898, addresses the identical problem, and expressly teaches filtering incoming responses and optionally embodying the filter in software on the client machine. This explicit cross-reference and overlapping subject matter provided a clear reason to combine the teachings.
- Expectation of Success: A POSITA would have a high expectation of success in combining the references because they share an inventor, address the same technical problem, and Baker '645 expressly directs the reader to the embodiment disclosed in Baker '898.

Prior Art Relied Upon: Pitcher (Patent 5,790,554).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Pitcher '554 teaches an improved Internet filtering system that performs both types of filtering claimed in the ’033 patent. Pitcher describes known prior art methods of address-based filtering, such as dropping data packets based on their IP header, which meets the "immediate action" limitation. Pitcher's improvement adds the capability of performing multi-stage pattern matching on other content within data packets to make forwarding decisions. This content-based analysis, using a flexible filter table to match patterns at specific offsets, constitutes the claimed "deferred action" filtering. Pitcher discloses that these filters can be applied to data packets "entering or exiting" a port, thus anticipating claims directed to both incoming and outgoing messages.
Additional Grounds: Petitioner asserted additional obviousness challenges against claim 9 based on Pitcher '554 alone or in combination with Baker '645, and also asserted that all challenged claims are anticipated by Schloss (Patent 5,706,507).

"filters specifying immediate action": Petitioner proposed this term be construed as "filters specifying whether transmission of the message should be allowed or blocked based on a port number or network address specified in the message." This construction is based on the patent's description of "direct actions" that unconditionally block or allow transmission based on matching an IP address or port number.
"filters specifying deferred action": Petitioner proposed this term be construed as "filters specifying whether transmission of the message should be allowed or blocked based on information in the message other than a port number or network address." This construction captures the patent's disclosure of performing additional pattern matching on message content, such as keywords or character strings.
Key Aspects: Petitioner argued that these constructions are critical because the patentee overcame prior art during prosecution by adding limitations requiring both types of filters. Petitioner's invalidity case rests on showing that single prior art references taught systems using both address-based (immediate) and content-based (deferred) filtering rules.

Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1, 2, 9, 15, and 23 of Patent 5,884,033 as unpatentable.