PTAB

IPR2016-00443

RPX Corp v. Rothschild Connected Devices Innovations LLC'S

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1. Case Identification

2. Patent Overview

  • Title: System for Customizing a Product
  • Brief Description: The ’090 patent relates to a system and method that uses a computer network to transmit stored user preferences to customize a product. The system comprises a remote server with a database that stores user preferences for a product and communicates these preferences to a module within the product itself.

3. Grounds for Unpatentability

Ground 1: Obviousness over Zimmerman, Lggulden, and DeBourke - Claim 1 is obvious over Zimmerman in view of Lggulden and DeBourke.

  • Prior Art Relied Upon: Zimmerman (Patent 7,933,968), Lggulden (Application # US 2001/0043686), and DeBourke (Patent 7,477,950).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zimmerman disclosed the core elements of claim 1: a system for personalizing appliances ("products") based on user preferences stored on a remote "profile server." Zimmerman’s server retrieves user-profile data and transmits it to an appliance. Petitioner contended two features were not explicit in Zimmerman but were rendered obvious by other art. First, Lggulden was cited to teach incorporating a communication module (a modem) directly within an appliance for two-way communication. Second, DeBourke was cited to teach assigning a unique identifier (like an IP address) to each networked appliance. While Petitioner argued the claims do not require a unique identifier, DeBourke was presented to show this would have been an obvious modification if such a requirement were read into the claims.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Lggulden with Zimmerman to provide a known, integrated method for enabling network communication in an appliance, yielding predictable results. A POSITA would combine DeBourke's teaching of unique identifiers with Zimmerman to allow for more efficient and accurate routing of preferences, especially in a network with multiple identical appliances, which was a well-understood protocol for addressing individual networked devices.
    • Expectation of Success: Incorporating a modem (Lggulden) into a networked appliance (Zimmerman) and assigning it a unique IP address (DeBourke) were routine design choices in network systems that employed known technology for its intended purpose and would have yielded only predictable results.

Ground 2: Obviousness over Zimmerman, Lggulden, DeBourke, and Gutwein - Claims 2-7 are obvious over Zimmerman, Lggulden, and DeBourke, as applied to claim 1, and further in view of Gutwein.

  • Prior Art Relied Upon: Zimmerman (’968 patent), Lggulden (’686 application), DeBourke (’950 patent), and Gutwein (WO 01/12038).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1 to address limitations in dependent claims 2-7. Petitioner argued that while Zimmerman’s system was for customizing "any device," it did not explicitly detail the preferences. Gutwein, which discloses a networked coffee maker, was introduced to supply these missing details. Gutwein taught that a "product preference" could be a "formulation" with predetermined amounts of elements (claim 2), such as fluids and solids like cream or coffee (claim 3). Gutwein also taught a system where a remote server prompts a user with questions via a terminal to determine preferences (claim 4), issues a "user identification" code cross-referenced to the formulation (claim 5), stores this code in a database (claim 6), and receives the code from the terminal (claim 7).
    • Motivation to Combine: A POSITA would combine Gutwein with the Zimmerman system because Zimmerman expressly stated its system could be used with "any device that can be customized," including kitchen appliances. Gutwein’s networked coffee maker was precisely such a device. Adding Gutwein's features would have increased the functionality and usability of Zimmerman’s general system by applying it to a specific, known type of customizable appliance, achieving only predictable results.
    • Expectation of Success: Integrating Gutwein's specific preference formulation and user interaction methods into Zimmerman's broader customizable appliance network required only routine skill and would have predictably enhanced the system's capabilities.

Ground 4: Obviousness over Omnisphere I, Omnisphere II, and Isomura - Claim 1 is obvious over Omnisphere I in view of Omnisphere II and Isomura.

  • Prior Art Relied Upon: Omnisphere I (a 2003 conference proceeding), Omnisphere II (a 2003 journal article), and Isomura (Application # US 2002/0052966).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Omnisphere I and Omnisphere II (collectively "Omnisphere") described a personal communication environment for wireless appliances that met the limitations of claim 1. Omnisphere disclosed a remote server running an "Omnisphere service" that instantiates a "user avatar" to mediate communications based on user preferences, device capabilities, and context. The system received a User ID and Appliance ID and retrieved corresponding preferences. Petitioner argued these references inherently taught a database for storing preferences. To the extent they did not, Isomura was cited for its explicit disclosure of a service discovery server that uses a common database to store service information for various appliances. Omnisphere also disclosed appliances with internal communication modules (e.g., WLAN, Bluetooth) that communicate with the remote server.
    • Motivation to Combine: A POSITA would combine Omnisphere I and II because they describe the same system, were written by the same authors, and explicitly reference each other. A POSITA would have been motivated to combine Isomura's database with the Omnisphere system to implement a known and efficient method for storing and managing the service and preference information that the Omnisphere system used.
    • Expectation of Success: Combining a database structure for service discovery (Isomura) with a service-oriented network architecture (Omnisphere) was a standard and predictable approach to organizing system data, which would improve performance and management.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 2-8 based on the Omnisphere and Zimmerman combinations, further adding Webb (Application # US 2002/0083342) for its teaching of using an Internet cookie to store an identity code on a terminal (addressing claim 8).

4. Key Claim Construction Positions

  • "predetermined product": Petitioner argued this term should be construed as "a type of product determined before use of the system to obtain preferences for that product." This construction was critical because it meant the claims did not require identifying a single, unique product. Instead, identifying a product by its make and model would suffice, which aligned with the disclosures in prior art like Zimmerman that described personalizing types of appliances rather than specific, unique units.

5. Relief Requested

  • Petitioner requested institution of inter partes review and cancellation of claims 1-8 of the ’090 patent as unpatentable.