PTAB

IPR2018-00361

Apple Inc v. Uniloc Luxembourg SA

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1. Case Identification

2. Patent Overview

  • Title: Controlling Network Services with a Palm-Sized Computer
  • Brief Description: The ’158 patent discloses a method for a palm-sized computer to control a service over a network. The method comprises accessing a description of the service from a directory, downloading program code associated with the service, executing the code, and sending control commands to the service.

3. Grounds for Unpatentability

Ground 1: Obviousness over Jini-QS, Arnold, and McCandless - Claims 1-2, 6-9, 12, 14-15, and 20 are obvious over Jini-QS in view of Arnold and McCandless.

  • Prior Art Relied Upon: Jini-QS (a COMPUTERWORLD article, Dec. 1998), Arnold (Patent 6,393,497), and McCandless (an IEEE EXPERT article, Dec. 1997).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination teaches every limitation of the challenged claims. Jini-QS, which described Sun Microsystems’ Jini platform, explicitly taught using a PalmPilot (a palm-sized computer) to discover network services via a "Lookup Service" (directory) and control them by downloading "proxy code." Arnold, a patent by a Jini architect, supplied known implementation details for the Jini platform, such as using Java's Remote Method Invocation (RMI) protocol to send control commands and a formal process for registering services with the lookup service. McCandless taught the contemporary rationale for using a PDA to control a remote application that is too compute- or space-intensive to run on the PDA itself.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) reviewing the general overview of the Jini platform in Jini-QS would combine its teachings with Arnold's detailed technical description to understand its implementation. This combination would fill in details like the specific protocol for sending commands (RMI). A POSITA would further be motivated to apply this combined Jini system to the use case described in McCandless—offloading intensive applications from a PDA—because Jini-QS itself states Jini was designed for low-memory devices like PDAs. This would achieve the known and predictable benefits of portability and leveraging remote processing power.
    • Expectation of Success: A POSITA would have a high expectation of success. Jini was a Java-based platform, and RMI (from Arnold) was a standard, integral part of Java for communication between programs. The underlying concept of using a "thin client" like a PDA to control applications on a powerful remote server was a well-established computing model.

Ground 2: Obviousness over Riggins and Devarakonda - Claims 1-2, 6-9, 12, and 14-15 are obvious over Riggins in view of Devarakonda.

  • Prior Art Relied Upon: Riggins (Patent 6,131,116) and Devarakonda (Patent 6,757,729).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Riggins taught a method for a "roaming user" with a "network computer" to access a directory of services, download a corresponding "applet," and control a remote service like an email application. Devarakonda taught that a Personal Digital Assistant (PDA) is a prime example of such a "network computer" and explained that these devices inherently lack the resources to run complex applications, making them reliant on network services. Devarakonda also disclosed a formal service registration process via a "Service Directory Manager."
    • Motivation to Combine: A POSITA would combine the references to improve Riggins' system. Specifically, a POSITA would use Devarakonda's PDA as the "network computer" in Riggins' framework to enhance portability for the claimed "roaming user." The combination would predictably result in the PDA controlling a remote application (like Riggins' email service) that it could not run itself, achieving the known benefit of offloading computation as taught by Devarakonda. The POSITA would also integrate Devarakonda's service registration method to implement the service directory described in Riggins, as this was a conventional technique.
    • Expectation of Success: Success would be predictable, as both Riggins and Devarakonda described similar Java-based systems that used web browsers and downloaded applets to control remote services. The combination represented a simple substitution of a known device type (a PDA) into Riggins' system for its known benefits and the use of a standard service registration technique.

4. Key Claim Construction Positions

  • “palm sized computer” (claims 1-2, 6-9, 12, 14-15): Petitioner argued this term is not indefinite and should be understood through the specification's explicit examples, namely a "personal digital assistant (PDA)" and a "3Com Palm Platform™ computer."
  • “means for...” limitations (claim 20): Petitioner asserted constructions for several means-plus-function terms, tying them directly to the Jini technology disclosed in the prior art.
    • The structures for "means for accessing a description of a service" and "means for downloading the program code" were argued to be a palm-sized computer executing Sun's Jini middleware.
    • The structure for "means for executing at least a portion of the program code" was argued to be a palm-sized computer executing a Java Virtual Machine (JVM).
    • The structure for "means for sending control commands" was argued to be a palm-sized computer executing a control protocol like Java's Remote Method Invocation (RMI).

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 6-9, 12, 14-15, and 20 of the ’158 patent as unpatentable.