PTAB

IPR2017-02058

Google Inc. v. ALEX IS THE BEST, LLC

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1. Case Identification

2. Patent Overview

  • Title: Integrated Internet Camera System and Method
  • Brief Description: The ’991 patent discloses a system and method for an "Internet direct device" (IDD), such as a camera, that is simple to operate. The IDD can automatically connect to a communications network on power-up, transmit images to a "website archive and review center" (WSARC), and automatically switch to a secondary communication mode if the primary mode becomes unavailable.

3. Grounds for Unpatentability

Ground 1: Obviousness over Inoue and Nair - Claims 1-3, 10-14, and 21 are obvious over Inoue in view of Nair.

  • Prior Art Relied Upon: Inoue (Application # 2004/0109066) and Nair (Application # 2004/0127208).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Inoue taught nearly all limitations of independent claim 1, including a digital camera (an IDD) that automatically connects to a network on power-up to transmit images to and receive images from a file server (a WSARC). However, Petitioner asserted Inoue did not explicitly teach automatically switching to a different communication mode when the primary mode is unavailable. Nair was argued to supply this missing element by disclosing a system for any wireless device to "automatically and seamlessly" hand off communications from a primary network (e.g., WLAN) to a secondary network (e.g., WWAN) when the primary connection is lost.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Inoue's camera with Nair's seamless roaming technology to provide a more reliable connection for mobile users, such as travelers or photojournalists, who need to upload images from various locations. The combination would predictably result in a camera that maintains connectivity by switching networks as needed.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Nair's teachings were expressly applicable to any wireless device, including a digital camera like that in Inoue, and involved implementing known network switching protocols.

Ground 2: Obviousness over Yamazaki and Nicholas - Claims 1-3, 12-14, and 21 are obvious over Yamazaki in view of Nicholas.

  • Prior Art Relied Upon: Yamazaki (Application # 2004/0105008) and Nicholas (Application # 2004/0133668).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Yamazaki disclosed an internet-direct camera that connects to a server (WSARC) to upload, store, and retrieve images, meeting most limitations of the challenged claims. Like Inoue, Yamazaki was argued to lack the automatic network switching limitation. Petitioner asserted that Nicholas, which describes an end-user device that automatically selects an optimal network on power-up and performs seamless transitions between different networks (e.g., wired LAN to wireless WLAN), taught the missing element.
    • Motivation to Combine: A POSITA would be motivated to incorporate the automatic connection and switching features of Nicholas into Yamazaki's camera to enhance usability, particularly for portable devices with limited user interfaces. The combination would simplify the startup connection process and ensure continuity of connection by switching to the most advantageous network based on factors like cost, speed, reliability, or signal strength, which are known benefits described by Nicholas.
    • Expectation of Success: Combining the known software-based network management functions from Nicholas with the hardware of Yamazaki's camera was presented as a straightforward application of known technologies to achieve predictable benefits in performance and user convenience.

Ground 5: Obviousness over Kusaka and Nicholas - Claims 1-3, 12-14, and 21 are obvious over Kusaka in view of Nicholas.

  • Prior Art Relied Upon: Kusaka (Application # 2004/0109063) and Nicholas (’668 application).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Kusaka disclosed an electronic camera that automatically transmits captured images to a gateway server (a WSARC) over various communication links, including a wireless telephone link. The petition asserted that during prosecution of a parent application, the Examiner found Kusaka taught most claim elements but not (a) automatically connecting on power-up or (b) automatically switching modes when the primary is unavailable. Petitioner argued that Nicholas, as detailed in Ground 2, explicitly taught both of these missing elements.
    • Motivation to Combine: The motivation to combine Kusaka and Nicholas was argued to be the same as for Ground 2: to achieve the benefits of automatic-switching, including lower cost transmission, improved speed and reliability, and power conservation. A POSITA would have sought to improve Kusaka's camera by adding the simplified and intelligent network connection management taught by Nicholas.
    • Expectation of Success: A POSITA would have expected success in combining these references, as it involved integrating the well-understood network selection and switching logic of Nicholas into the established framework of Kusaka's network-enabled camera to create a more robust and efficient device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including: Ground 3 (Yamazaki in view of Nair); Ground 4 (Yamazaki in view of Nicholas and Nair); and Ground 6 (Kusaka in view of Nicholas and Nair). These grounds relied on the same core prior art mappings and motivations, adding Nair primarily to reinforce the teaching of seamless wireless network switching.

4. Key Claim Construction Positions

  • Petitioner proposed a construction for one key term and argued that all other terms should be given their plain and ordinary meaning.
  • "Internet direct device" (IDD): Petitioner argued this term should be construed as "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 was central to establishing that the cameras in the prior art references qualified as IDDs under the patent.

5. Relief Requested

  • Petitioner requested institution of an inter partes review for each of Grounds 1-6 and requested that the Board cancel claims 1-3, 10-14, and 21 of the ’991 patent as unpatentable.