PTAB

IPR2017-02053

Google Inc v. Alex Is Best LLC

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Internet Direct Device
  • Brief Description: The ’197 patent relates to an integrated Internet camera system designed to be simple to install and maintain. The system enables a device to seamlessly and automatically transmit, store, and archive media like images and audio to and from a remote web server or monitor center over the Internet.

3. Grounds for Unpatentability

Ground 1: Obviousness over Inoue and Nair - Claims 1-4 and 7-19 are obvious over Inoue in view of Nair.

  • Prior Art Relied Upon: Inoue (Application # 2004/0109066), Nair (Application # 2004/0127208).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Inoue discloses a mobile digital camera that automatically connects to a file server upon power-up to transmit and receive images, teaching most limitations of independent claim 1. However, Petitioner contended Inoue fails to explicitly disclose automatically switching to a secondary communication mode when the primary mode is unavailable.
    • Motivation to Combine: Nair was argued to cure this deficiency by teaching a system for wireless devices to "automatically and seamlessly" hand off communications from a primary network (like a WLAN) to a secondary one (like a WWAN) upon connection loss. A person of ordinary skill in the art (POSITA) would combine Nair’s network switching with Inoue’s camera to enhance connectivity and reliability for mobile users, such as photojournalists, who require timely and secure uploads from various locations.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in integrating Nair's well-understood network-switching functionality into Inoue’s camera system to predictably achieve more robust network access.

Ground 2: Obviousness over Yamazaki and Nicholas - Claims 1-4, 7-12, 16, 17, and 19 are obvious over Yamazaki in view of Nicholas.

  • Prior Art Relied Upon: Yamazaki (Application # 2004/0105008), Nicholas (Application # 2004/0133668).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Yamazaki discloses an internet-connected camera that automatically uploads captured images to a server and can connect on power-up. Similar to Inoue, Yamazaki was argued to lack an explicit teaching of automatically switching to an alternate mode of connection when the primary mode becomes unavailable.
    • Motivation to Combine: Nicholas was presented as teaching an end-user device that not only connects automatically on power-up but also selectively determines the most optimal communication channel and seamlessly transitions between networks. A POSITA would be motivated to modify Yamazaki’s camera with Nicholas’s automatic switching to achieve benefits crucial for a portable device, including improved reliability, speed, power conservation, and overall performance by ensuring continuous connectivity.
    • Expectation of Success: The combination was asserted to be predictable, as implementing Nicholas's known method for network management in Yamazaki’s camera would simply add a desirable layer of connectivity logic without altering the camera's core function.

Ground 3: Obviousness over Kusaka and Nicholas - Claims 1-4 and 7-19 are obvious over Kusaka in view of Nicholas.

  • Prior Art Relied Upon: Kusaka (Application # 2004/0109063), Nicholas (Application # 2004/0133668).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner noted that Kusaka was considered during prosecution of the ’197 patent family. The Examiner acknowledged that Kusaka taught an internet camera that automatically uploads images to a server. However, the Examiner found Kusaka did not disclose the key limitations of (a) automatically connecting on power-up and (b) automatically switching to another communication mode when the primary is unavailable.
    • Motivation to Combine: Petitioner argued that Nicholas, which was not before the Examiner, explicitly teaches both missing elements. A POSITA would have been motivated to combine Nicholas’s automatic connection and switching features with Kusaka’s camera to enhance usability and performance. For a portable camera with limited user interfaces, the simplified startup and robust connectivity offered by Nicholas would be a significant advantage.
    • Expectation of Success: Integrating Nicholas's network management system with Kusaka's camera was presented as a straightforward application of known technologies to achieve the predictable result of a more reliable and user-friendly internet-connected camera.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that add Nair or Narayanaswami (a 2004 article from Computer) to the primary combinations. These grounds targeted dependent claims by arguing a POSITA would have been further motivated to incorporate known features like VoIP (from Nair) or web browsing capabilities to add functionality and meet market demands for integrated mobile devices.

4. Key Claim Construction Positions

  • "Internet direct device (IDD)": Petitioner proposed that this term should be construed to mean "at least a device that is capable of connecting to the Internet without the necessity of connecting to another device, such as a PC." This construction emphasizes the standalone nature of the claimed device, which is central to distinguishing it from prior art systems requiring a tethered computer.
  • Preambles: Petitioner took the position that the preambles of the challenged claims are not limiting because they merely state the intended purpose of the device and are not necessary to give life to the claim body.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Filing Date: A central contention of the petition was that the challenged claims are not entitled to the filing date of their provisional application. Petitioner argued the provisional application fails to provide written description support for the key limitations of an IDD that "automatically connects to said communications network on power-up" and "automatically switches to another available mode of connection" when the primary is unavailable. This argument, if successful, establishes that the asserted prior art references (all published in 2004) pre-date the invention's effective filing date (argued to be no earlier than July 11, 2006).

6. Relief Requested

  • Petitioner requests institution of an inter partes review for each of the asserted grounds and cancellation of claims 1-4 and 7-19 of the ’197 patent as unpatentable.