PTAB

IPR2015-01446

Samsung Electronics Co Ltd v. IXI IP LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR DOWNLOADING A SOFTWARE COMPONENT TO A DEVICE IN A SHORT DISTANCE WIRELESS NETWORK
  • Brief Description: The ’648 patent discloses methods and systems for downloading customized software to a device in a short-distance wireless network (e.g., Bluetooth). The system uses a gateway device, such as a cellular phone with wide area network (WAN) access, to relay device-specific information (e.g., manufacturer, type) and user preferences from a short-range device to a remote server, which then provides an appropriate software component for download.

3. Grounds for Unpatentability

Ground 1: Obviousness over Marchand and Sears - Claims 1-2, 6-7, 10, 12-16, 21-22, 24, 26-28, and 30 are obvious over Marchand in view of Sears.

  • Prior Art Relied Upon: Marchand (WO 01/76154) and Sears (Application # 2002/0069263).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Marchand discloses the core network architecture claimed in the ’648 patent. Specifically, Marchand teaches an ad-hoc short-range network (a Bluetooth "Piconet") where a cellular phone acts as a gateway, providing access to a wide-area cellular IP network for other non-cellular devices within the Piconet, such as a laptop or PDA. Petitioner contended that Sears remedies a deficiency in Marchand by teaching a system for downloading software customized to a specific device. Sears discloses a repository server that receives device information—including "device manufacturer name" and "device type"—and uses it to provide tailored and optimized software applications. Petitioner asserted that the combination of Marchand's network gateway with Sears's customized download server teaches the claimed method of obtaining device information from a short-range device, transmitting it via a cellular gateway device to a processing device (server), and downloading a software component in response to that information.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Marchand and Sears to achieve the benefits of both systems. A POSITA would have been motivated to integrate Sears's techniques for optimized, device-specific software downloading into Marchand's efficient and inexpensive network architecture. The combination would allow users of non-cellular devices in Marchand's Piconet to conveniently download software tailored to their devices without requiring each device to have its own cellular modem. Petitioner noted that both references contemplate similar technologies (Java, Bluetooth, gateway communications) and devices (cell phones, PDAs), making the integration straightforward and predictable.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The common technological underpinnings and the complementary nature of the disclosures—Marchand providing the network transport and Sears providing the application delivery service—would have made the integration a matter of applying known principles.

Ground 2: Obviousness over Marchand, Sears, and Lee - Claims 9 and 23 are obvious over Marchand in view of Sears and Lee.

  • Prior Art Relied Upon: Marchand (WO 01/76154), Sears (Application # 2002/0069263), and Lee (WO 01/41477).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination of Marchand and Sears from Ground 1 to address the additional limitation in claims 9 and 23, which requires the downloaded software to be an "instant messaging terminal software component." While Marchand and Sears provide the underlying system for customized software downloads, they do not explicitly name instant messaging. Petitioner argued that Lee supplies this missing element by expressly describing the download of an "instant messenger program" to user terminals such as PDAs and cellular phones—the same types of devices discussed in Marchand and Sears.
    • Motivation to Combine: Petitioner contended that a POSITA would have been motivated to incorporate Lee's teaching to enhance the utility of the combined Marchand/Sears system. Lee explains that instant messaging provides a significant benefit over traditional email by allowing for immediate message exchange. To improve the functionality and appeal of the application-downloading platform, a POSITA would have logically sought to include popular and useful applications like instant messaging in the server's repository. The applicability of Lee's teaching was asserted to be clear, as Lee’s system supports similar devices and protocols (e.g., WAP) also contemplated by Sears.
    • Expectation of Success: Including an instant messenger application in the software library of the Sears server would have been a routine implementation for a POSITA. Given that instant messaging was a well-established software category, there would have been a high expectation of successfully making such an application available for download within the proposed system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that this petition, filed concurrently with another petition (IPR2015-01445) against the same patent, should not be denied as redundant or cumulative. Petitioner asserted that the two petitions rely on different prior art combinations that relate to distinct technologies (downloading Java applications via a cellular gateway versus downloading device drivers to a host computer). Furthermore, Petitioner contended that the grounds in each petition are tailored to cover different subsets of the challenged claims, and a finding of redundancy would severely prejudice the Petitioner by leaving certain claims unchallenged for non-substantive reasons.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 6-7, 9-10, 12-16, 21-24, 26-28, and 30 of the ’648 patent as unpatentable.