PTAB

IPR2018-00304

RPX Corp v. SpycUrity LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System And Method For Triggering Actions At A Host Computer By Telephone
  • Brief Description: The ’118 patent discloses systems and methods for remotely triggering the execution of a program on a host computer. The trigger is initiated by a telephone signal, such as a ring signal, and the executed program causes the host system to establish a connection to the Internet.

3. Grounds for Unpatentability

Ground 1: Obviousness over Crawford, Ewing, and Dial-Up IP - Claims 1-9 and 13-16 are obvious over Crawford in view of Ewing and Dial-Up IP.

  • Prior Art Relied Upon: Crawford (Patent 5,771,354), Ewing (WO 93/10615), and Dial-Up IP (a 1989 USENIX publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of references teaches all limitations of the challenged claims. Crawford disclosed the core concept: using a telephone ringing pattern to trigger a remote customer computer to execute a program that initiates a "dial back" connection to an online service provider, which Crawford equated with an Internet provider. Ewing, a remote-control device patent, supplied the specific ring detection circuitry and trigger signal generation details that Crawford lacked. Dial-Up IP taught the well-known software and protocols (specifically, Serial Line IP or "SLIP") for establishing the type of dial-up Internet connection that Crawford’s system was intended to create.
    • Motivation to Combine: A POSITA implementing Crawford’s system would have been motivated to look to Ewing to fill in the missing implementation details for the ring detection and trigger circuitry. Ewing offered a known, off-the-shelf solution for detecting rings and generating a trigger signal, and also provided the added benefit of password-based security to prevent unauthorized connections. Similarly, because Crawford described its online service as providing Internet access using SLIP but did not detail the software, a POSITA would combine it with Dial-Up IP, which explicitly taught how to use SLIP software to connect to an Internet gateway over a phone line.
    • Expectation of Success: The combination involved applying predictable technologies to their intended purposes. Ewing’s microcontroller was disclosed as being easily programmable to detect specific ring patterns as taught by Crawford, and Dial-Up IP represented a standard, well-documented method for creating the exact type of Internet connection Crawford envisioned.

Ground 2: Obviousness over Crawford, Ewing, Dial-Up IP, and Wilkison - Claim 12 is obvious over the combination of Ground 1 in further view of Wilkison.

  • Prior Art Relied Upon: Crawford (Patent 5,771,354), Ewing (WO 93/10615), Dial-Up IP (a 1989 USENIX publication), and Wilkison (Patent 5,245,654).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on dependent claim 12, which added the limitation of a "solid-state data access arrangement (DAA)" to the system of claim 6. While the base combination (Crawford/Ewing/Dial-Up IP) taught the other elements of claim 12, Ewing’s telephone interface was composed of discrete components. Wilkison taught a solid-state DAA, including a ring detector, and explained its benefits over older, bulkier, and less reliable transformer-based designs.
    • Motivation to Combine: A POSITA would have been motivated to substitute the discrete telephone interface components in Ewing’s device with the integrated solid-state DAA taught by Wilkison. The motivation was simple design choice, driven by Wilkison’s explicit teachings that solid-state DAAs were cheaper, lighter, smaller, and more reliable than the alternative. This substitution would have been a predictable improvement.
    • Expectation of Success: Integrating Wilkison's solid-state DAA into Ewing's circuitry was presented as a straightforward task for a POSITA, as Wilkison's device was designed for precisely this type of telephone line interface equipment.

Ground 3: Obviousness over Crawford, Ewing, Dial-Up IP, and Serrano - Claims 10-11 are obvious over the combination of Ground 1 in further view of Serrano.

  • Prior Art Relied Upon: Crawford (Patent 5,771,354), Ewing (WO 93/10615), Dial-Up IP (a 1989 USENIX publication), and Serrano (Patent 4,570,034).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted claims 10 and 11, which added limitations requiring the trigger circuit to include a "one-shot timer" to generate a trigger signal of a predetermined pulse width. The base combination of Crawford and Ewing taught a trigger circuit but did not explicitly disclose a one-shot timer for conditioning the signal. Serrano taught a ring detection circuit that used one-shot timers specifically to solve the known problem of spurious noise on a phone line causing "false" ring signals, ensuring a clean trigger signal of a consistent duration.
    • Motivation to Combine: A POSITA building the Crawford/Ewing system would have recognized the potential for telephone line noise to cause false triggers. To improve the system's reliability, it would have been obvious to incorporate the noise-filtering solution from Serrano. Using one-shot timers for signal conditioning was a well-known technique to solve a known problem.
    • Expectation of Success: The circuit taught by Serrano was designed for the exact purpose of conditioning a ring detection signal, making its incorporation into the Ewing-based trigger circuit a predictable and routine design modification.

4. Key Claim Construction Positions

  • "host [computer] system": Petitioner argued this term should be construed to include a host computer, a modem, and a ring detection and triggering circuit, regardless of whether the circuit is internal or external to the host computer itself. This construction was critical to mapping Ewing’s external "response control unit" (RCU) to the claimed "host system."
  • "creates a connection between the host system and the Internet": Petitioner contended these terms should encompass any connection to the Internet, including connecting to an ISP server that is itself connected to the Internet. The connection only required presence or availability on the network, not active point-to-point data transfer. This was crucial for equating Crawford's "online service" with the claimed "Internet" connection.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-16 of the ’118 patent as unpatentable.