Google LLC v. SEVEN Networks, LLC

1. Case Identification

• Patent #: 8,078,158
• Filed: May 18, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): SEVEN NETWORKS, LLC
• Challenged Claims: 10, 19, and 20

2. Patent Overview

• Title: Provisioning Mobile Device Applications
• Brief Description: The ’158 patent relates to systems and methods for provisioning applications on mobile devices. The disclosed invention involves a server-based process of identifying a user and device, determining the requirements for an application to run on that specific device, and then configuring and providing the application based on those requirements.

3. Grounds for Unpatentability

Ground 1: Anticipation over Mehta - Claims 10, 19, and 20 are unpatentable under 35 U.S.C. §102 over Mehta.

• Prior Art Relied Upon: Mehta (Application # 2002/0131404).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mehta discloses every limitation of the challenged claims. Mehta describes a Mobile Application System (MAS), a network server that provisions applications for wireless devices. The MAS performs the claimed method by: (1) detecting a user’s selection of an application to download from their mobile device; (2) identifying user and device information from the incoming request; (3) providing this information to itself (the network server) to determine operational requirements, such as verifying subscriber authorization via a subscriber profile and device capabilities via a device profile; (4) specifying components to be installed (e.g., packaged or modified code); and (5) provisioning the application based on these determined requirements. Dependent claims 19 (user information previously provided) and 20 (requirements include a setting or network service) were also argued to be disclosed in Mehta's description of user registration and application modification processes.

Ground 2: Obviousness over Mehta and Knight - Claims 10, 19, and 20 are obvious over Mehta in view of Knight.

• Prior Art Relied Upon: Mehta (Application # 2002/0131404) and Knight (WO 2006/061587).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that to the extent Mehta is found not to explicitly disclose identifying specific "user information" (like an MSISDN) from the mobile device, Knight teaches this element. Knight describes a system where a mobile device provides its MSISDN in a download request, which is used for functions like user billing and tracking. Similarly, to the extent Mehta fails to teach storing user information in the device's memory or on a SIM card, this was a ubiquitous and obvious design choice, also suggested by Knight.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Knight’s explicit use of MSISDN with Mehta’s provisioning system to improve the user-specific functions, like usage tracking and billing, that Mehta already disclosed as desirable. The combination would have been a simple application of a known user identification technique to an existing system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involved integrating known elements for their established purposes to achieve the predictable result of a provisioning system with enhanced user-specific capabilities.

Ground 3: Obviousness over Mulligan and Byrnes - Claims 10, 19, and 20 are obvious over Mulligan in view of Byrnes.

• Prior Art Relied Upon: Mulligan (WO 03/036491) and Byrnes (Patent 8,346,223).

• Core Argument for this Ground:

  • Prior Art Mapping: Mulligan was presented as an alternative primary reference disclosing a "provisioning Web service" that provisions applications (e.g., a banking app) on a mobile terminal. The service detects an application selection and identifies device information (e.g., terminal type) to configure and deliver appropriate software (a MIDlet) and WAP settings. To the extent Mulligan does not explicitly teach identifying user credentials, Byrnes was argued to disclose the benefit of compiling user credentials (username/password) into an application to improve security.
  • Motivation to Combine: A POSITA would have been motivated to integrate the enhanced security method from Byrnes into Mulligan’s provisioning system. For a sensitive application like Mulligan’s banking example, improving security by requiring user authentication is a common-sense and compelling design objective.
  • Expectation of Success: The combination of a known provisioning system with a known security enhancement would have yielded the predictable result of a more secure application provisioning process.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 10, 19, and 20 based on Mulligan in view of Staack (Application # 2004/0047341). This ground relied on Staack's teachings of using user information (e.g., MSISDN) to determine WAP parameters for a subscribed service, arguing a POSITA would have integrated this into Mulligan's system for predictable improvements.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that institution should be granted on all grounds to account for different potential claim interpretations by the Patent Owner or the Board. It asserted that the grounds relying on Mulligan as the primary reference address the claimed "provisioning" concept from a different technical perspective than the grounds relying on Mehta, providing distinct non-cumulative reasons for unpatentability.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 10, 19, and 20 of Patent 8,078,158 as unpatentable.