Google Inc v. eDigital Corp

1. Case Identification

• Case #: IPR2015-01472
• Patent #: 8,306,514
• Filed: June 24, 2015
• Petitioner(s): Google Inc., Nest Labs, Inc., and Dropcam, Inc.
• Patent Owner(s): E.Digital Corporation
• Challenged Claims: 1, 3-6, 30, and 32-33

2. Patent Overview

• Title: System for Automatically Providing Differing Levels of Information According to a Social Hierarchy
• Brief Description: The ’514 patent discloses systems and methods for automatically providing different levels of a user's status information to others based on a sensed context. The system uses sensors on a mobile device (e.g., optical, acoustic) to determine a user's activity, matches this to a stored "social signature," and shares corresponding information with different groups according to a "predetermined social hierarchy."

3. Grounds for Unpatentability

Ground 1: Obviousness over Jolliff, Jager, and Luo - Claims 1 and 3-4 are obvious over Jolliff in view of Jager and further in view of Luo.

• Prior Art Relied Upon: Jolliff (Application # 2009/0300525), Jager (Application # 2009/0094179), and Luo ("On Protecting Private Information in Social Networks: A Proposal," a 2009 conference paper).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jolliff discloses the core of the claimed invention: a system that uses sensor data (light, noise) to automatically update a user's status (via a virtual "avatar") and provides different versions of that status to different groups based on their "authorization level" (the claimed "social hierarchy"). Jolliff's "avatar selection logic table" was equated with the claimed "social templates" storing "social signatures" (sensor data ranges). Petitioner contended Jolliff's data structure was inefficient, as multiple table entries could share the same sensor data. Jager was introduced to cure this deficiency by teaching a more efficient storage scheme where each context profile has a unique set of attributes (a "unique social signature"). Finally, while Jolliff suggests displaying avatars on social networks, it doesn't solve the associated privacy issues. Luo was introduced to teach a privacy model where different social networks correspond to different privacy disclosure sets.
  • Motivation to Combine: A POSITA would combine Jolliff with Jager to improve Jolliff's system by implementing a more efficient data storage method, which saves memory and speeds up processing. A POSITA would have been motivated to incorporate Luo's teachings into the Jolliff/Jager system to solve the known problem of managing privacy when sharing context-based status updates across multiple social networks used for different purposes (e.g., professional vs. personal).
  • Expectation of Success: The combination was presented as a predictable application of known techniques. Combining a system for efficient data storage (Jager) and a known privacy model for social networks (Luo) with a context-aware status-sharing system (Jolliff) would have yielded predictable results.

Ground 2: Obviousness over Jolliff and Jager - Claims 5-6, 30, and 32-33 are obvious over Jolliff in view of Jager.

• Prior Art Relied Upon: Jolliff (Application # 2009/0300525) and Jager (Application # 2009/0094179).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on the same core combination as Ground 1 but addressed claims reciting emergency-related features (claims 5-6) and method/computer-readable medium claims (30, 32-33). Petitioner argued that Jolliff expressly teaches using its system in emergency medical settings, where an avatar could efficiently communicate a patient's critical information (e.g., from a pacemaker) to an emergency room or doctor. The combination with Jager provides the unique social signature as argued in Ground 1. For dependent claim 6, Jolliff was cited for disclosing that avatars could be sent proactively via SMS or email.
  • Motivation to Combine: The motivation was identical to that for combining Jolliff and Jager in Ground 1: improving data storage efficiency.
  • Expectation of Success: Success was expected for the same reasons as in Ground 1. Applying the combined system to the emergency context explicitly contemplated by Jolliff was argued to be obvious.

Ground 3: Obviousness over Miluzzo, Robarts, and Luo - Claims 1 and 3-4 are obvious over Miluzzo in view of Robarts and further in view of Luo.

• Prior Art Relied Upon: Miluzzo (WO 2009/043020), Robarts (Application # 2006/0004680), and Luo (a 2009 conference paper).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to the Jolliff-based arguments. Petitioner asserted that Miluzzo teaches the broad concept of sensing a user's context with a smartphone (using microphones and cameras) and sharing that presence information with others according to "group membership policies." However, Miluzzo did not detail how to infer status from sensor data or how to organize the privacy settings. Robarts was introduced to supply these missing details, teaching the use of "themes" (the claimed "social templates") that contain sensor value ranges ("attributes") to determine a user's context and also include privacy settings for different social hierarchies ("Work, Family, Friends"). Luo was added for the same reason as in Ground 1: to teach mapping different privacy levels to different social networks.
  • Motivation to Combine: A POSITA would combine Robarts with Miluzzo to provide a specific, well-known implementation (Robarts' "themes") for Miluzzo's more general disclosure of an inference engine and group policies. This would be a simple substitution of a known component to achieve a predictable result. The motivation to add Luo was identical to Ground 1.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 5-6, 30, and 32-33 over Miluzzo in view of Robarts, arguing that Robarts explicitly teaches specialized "themes" for health crises that can alert emergency personnel and family.

4. Key Claim Construction Positions

• "social template": Petitioner argued this term, not expressly defined in the patent, should be construed as "data that associates a social signature with information provided to one or more levels of a social hierarchy." This construction was based on the claim language requiring the template to be selectable based on a signature and to provide information according to a hierarchy. The purpose was to characterize the term as a label for a conventional data structure, like a privacy profile, that was well-known in the prior art.
• "social hierarchy": Petitioner proposed this term be construed as "groupings of people receiving different information." This broad construction was based on the specification's flexible examples (e.g., "Father," "Friend," "Strangers") and was intended to show that the term simply described common user-defined groups for privacy settings, a concept ubiquitous in social networking and context-aware applications.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 3-6, 30, and 32-33 of the ’514 patent as unpatentable.