Facebook Inc v. Skky LLC

1. Case Identification

• Case #: IPR2017-00641
• Patent #: 9,203,956
• Filed: January 10, 2017
• Petitioner(s): Facebook, Inc., Instagram LLC
• Patent Owner(s): Skky, LLC
• Challenged Claims: 1-3

2. Patent Overview

• Title: Media Delivery Platform
• Brief Description: The ’956 patent relates to a method for wirelessly delivering compressed media files to a cell phone over a cellular network. The method involves providing a selectable library of files associated with visual images and transmitting a selected file to the phone using orthogonal frequency-division multiplex (OFDM) modulation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Rolf/Forta/Gould/Gatherer/Frodigh - Claims 1-3 are obvious over Rolf in view of Forta, Gould, Gatherer, Frodigh, and Hacker.

• Prior Art Relied Upon: Rolf (Patent 7,056,342), Forta (a 2000 book on WAP development), Gould (Patent 6,693,236), Gatherer (a 2000 IEEE article), Frodigh (Patent 5,726,978), and Hacker (a 2000 book on MP3 technology).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rolf taught the core system of a cell phone downloading compressed music files (e.g., MP3s) from a remote server functioning as a library. To meet the limitation of providing a "library with a visual image," Petitioner combined Rolf with Forta, which taught using Wireless Application Protocol (WAP) to display menus with graphical icons on cell phones, and Gould, which specifically disclosed a music interface displaying album cover graphics. To meet the "digital signal processor" (DSP) limitation, Petitioner cited Gatherer, which established that DSPs were pervasive and well-known components in cell phones for tasks like media processing. Critically, Petitioner asserted that Frodigh supplied the key element missing from Rolf: the use of Orthogonal Frequency-Division Multiplex (OFDM) modulation for transmitting data in cellular systems. For dependent claim 2, Petitioner argued Rolf explicitly disclosed storing the downloaded files on the cell phone. For dependent claim 3, Petitioner cited Hacker to show that optimizing MP3 files via psychoacoustic models or user-selectable trade-offs between file size and quality was a known optimization scheme.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Rolf with Forta and Gould to improve the user experience with a more intuitive, visual interface. A POSITA would incorporate a DSP as taught by Gatherer because it was a standard, flexible, and power-efficient component for handling media processing in cell phones. A POSITA would have been motivated to use the OFDM modulation taught by Frodigh to implement Rolf’s system to gain significant, known advantages in cellular data transmission, including more efficient bandwidth use and reduced interference. Finally, a POSITA implementing Rolf's MP3 system would naturally consult a guide like Hacker to optimize files for efficient storage and transmission.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success, as the combination involved implementing known technologies (WAP interfaces, DSPs, OFDM) for their recognized purposes in their respective, analogous fields of mobile communication and computing.

Ground 2: Alternative Obviousness over Rolf et al. with O'Hara/Tagg/Pinard - Claims 1-3 are obvious over Rolf, Forta, Gould, and Gatherer in further view of O'Hara, Tagg, Pinard, and Hacker.

• Prior Art Relied Upon: Rolf (Patent 7,056,342), Forta, Gould, Gatherer, Hacker, and an alternative combination of O'Hara (an IEEE 802.11 handbook), Tagg (Patent 8,996,698), and Pinard (Patent 5,815,811).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented a non-redundant alternative for satisfying the OFDM and "cellular network" limitations. Rather than adding OFDM to a traditional cellular system per Frodigh, this combination proposed using an IEEE 802.11 (Wi-Fi) network. Petitioner argued O'Hara established that the IEEE 802.11a standard uses OFDM. Tagg was cited to show it was known to incorporate IEEE 802.11 functionality into a cell phone for data transfer. Pinard was cited for the proposition that a network of multiple IEEE 802.11 access points can form a "cellular network." The teachings of Rolf, Forta, Gould, Gatherer, and Hacker for the remaining claim limitations were applied as in Ground 1.
  • Motivation to Combine: The primary motivation was to leverage the significant speed and cost advantages of IEEE 802.11 networks compared to the traditional cellular data networks available at the time. A POSITA would have been strongly motivated to incorporate IEEE 802.11a technology into the cell phone of Rolf to provide the high-speed data transfer necessary for a viable multimedia delivery service, while also reducing costs for the user.
  • Expectation of Success: Petitioner argued success was predictable because the combination involved integrating an industry-standard technology (IEEE 802.11a) using commercially available chipsets into a cell phone, which was a known and straightforward engineering task.

4. Key Claim Construction Positions

• "cellular network": Petitioner argued for the construction: "a network in which wireless communications are provided through a series of ‘cells,’ each cell providing network access for a particular geographic area." This technology-neutral construction was asserted to be critical for the alternative grounds (Ground 2 in this summary), as it would encompass an IEEE 802.11 (Wi-Fi) network composed of multiple access points and not be limited to a conventional telecommunications network (e.g., AT&T).

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), asserting the presented grounds were not the same or substantially the same as those previously considered by the USPTO. While the primary reference, Rolf, was listed in a large Information Disclosure Statement during prosecution, Petitioner contended it was not substantively applied by the Examiner against the claims of the ’956 patent. Crucially, the petition introduced new prior art combinations (specifically, adding Frodigh or the O'Hara/Tagg/Pinard combination) that directly addressed the lack of an OFDM teaching in Rolf, an issue previously raised by the patent owner in related proceedings.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of Patent 9,203,956 as unpatentable.