PTAB

IPR2018-00305

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 a system where a telephone ring signal is used to trigger the execution of a predetermined program on a remote host computer. The core inventive concept asserted during prosecution was that this triggered program specifically creates a connection between the host system and the Internet.

3. Grounds for Unpatentability

Ground 1: Obviousness over Staples, Sells, and Wilkison

Claims 1-4, 6-8, and 13-15 are obvious over Staples in view of Sells and Wilkison.

  • Prior Art Relied Upon: Staples (Patent 5,764,639), Sells (Patent 5,471,522), and Wilkison (Patent 5,245,654).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Staples taught the core system: a remote computer connected to a virtual presence server that provides Internet access. When the server needs to contact the offline remote computer, it automatically dials the computer to trigger it to establish a connection. Petitioner asserted that Sells provided the necessary implementation details missing from Staples, teaching a "telephone manager program" that detects an incoming call and launches the appropriate application (e.g., a data modem program) based on transmitted tones. To the extent Staples and Sells did not explicitly disclose a "ring detection circuit," Petitioner contended that Wilkison taught a solid-state direct access arrangement (DAA) containing such a circuit, which was a necessary component for any device connecting to a phone line.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing the system in Staples would have needed a method for the remote computer to intelligently handle incoming calls. Sells addressed this exact problem using complementary technology (DSP-based modems and tone detection). A POSITA would combine Wilkison because FCC rules required a DAA for phone line interfacing, and Wilkison's solid-state DAA offered known benefits of lower cost, smaller size, and higher reliability over older transformer-based designs.
    • Expectation of Success: Petitioner asserted the combination would have been straightforward and predictable. The complementary architectures of Staples and Sells, both using programmable DSP-based modems, would havemade integration simple, and adding the necessary DAA from Wilkison was a standard design choice.

Ground 2: Obviousness over Staples, Sells, Wilkison, and Ewing

Claims 4, 5, 9, 12, and 16 are obvious over Staples in view of Sells, Wilkison, and Ewing.

  • Prior Art Relied Upon: Staples (Patent 5,764,639), Sells (Patent 5,471,522), Wilkison (Patent 5,245,654), and Ewing (WO 93/10615).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Ewing to the core combination from Ground 1 to teach the security-related limitations of claims 4, 5, 9, 12, and 16. Petitioner argued that Ewing disclosed an intelligent "response control unit" that interfaced with a modem and could require a calling entity to provide a password via DTMF tones. The unit would authenticate the password before allowing a connection to the host computer, thereby teaching user validation. Ewing also taught transmitting acknowledgment tones back to the caller to indicate success or failure.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Ewing's security features into the Staples/Sells/Wilkison system to gain the predictable benefit of adding security and filtering unwanted calls. Because Sells already relied on DTMF tones to differentiate call types, adding Ewing's DTMF-based password validation would have been a natural and compatible extension of the existing system.
    • Expectation of Success: Petitioner contended that integrating Ewing's teachings would have been a predictable and straightforward modification, yielding the expected result of enhanced security for the remote connection system.

Additional Grounds

Petitioner asserted additional obviousness challenges, including combining the primary references with Klein (Patent 5,596,628) to teach using numeric-only DTMF codes (Ground 3 for claim 7) and with Serrano (Patent 4,570,034) to teach a specific trigger circuit using one-shot timers to prevent false ring signals (Ground 4 for claims 10-11).

4. Key Claim Construction Positions

  • "host [computer] system": Petitioner proposed this term be construed to include a host computer, a ring detection and triggering circuit (which could be internal or external), and a modem. This broad construction was argued as necessary to map the disparate components from the prior art onto a single claimed "system."
  • "creates a connection between the host system and the Internet": Petitioner argued this phrase should be construed to mean establishing presence or availability on a network connected to the Internet, and does not require an actual point-to-point data transfer between two end-users. This construction allows Staples's disclosure of a remote computer connecting to an internet-connected server to satisfy the claim limitation.

5. Arguments Regarding Discretionary Denial

  • This petition was filed concurrently with IPR2018-00304, which challenged the same claims of the ’118 patent. Petitioner argued the grounds were not cumulative because they relied on different primary prior art references (Staples in this petition vs. Crawford in the other). The petitions were further argued to be distinct because they relied on different types of prior art (e.g., patent publications vs. non-patent literature) and presented different substantive mappings, which would likely elicit different arguments from the Patent Owner.

6. Relief Requested

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