PTAB

IPR2018-01503

LG Electronics Inc v. Uniloc 2017 LLC

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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 methods for using a palm-sized computer, which has limited processing capabilities, to control network services. The patent's own specification acknowledges that the core steps of locating services in a directory, downloading associated code, and sending control commands via middleware like Sun Microsystems' Jini technology were already well known.

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 1998 COMPUTERWORLD article), Arnold (Patent 6,393,497), and McCandless (a 1997 IEEE EXPERT article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the prior art combination teaches every limitation of the challenged claims. Jini-QS, which describes Sun's Jini platform, explicitly disclosed using a PalmPilot (a palm-sized computer) to discover network services via a "Lookup Service," download "proxy code," and issue instructions to control those services. Arnold, a patent by a Jini architect, provided technical details omitted from the high-level Jini-QS article, such as using Remote Method Invocation (RMI) to send control commands and the specifics of service registration. McCandless taught the known concept of using a resource-limited PDA to control applications that are too compute-intensive to run on the PDA itself, instead running them on a remote high-performance computer.
    • Motivation to Combine: A POSITA reviewing the general description of the Jini platform in Jini-QS would combine it with Arnold to understand the underlying implementation details, such as the specific communication protocol (RMI) used. Because Jini-QS expressly mentioned Jini's use on low-memory devices like PalmPilots, a POSITA would also have been motivated to consult McCandless, which described the known advantages of using such devices to offload computation and control applications they could not run locally.
    • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success. The combination simply applied the well-known Jini framework, as detailed by its own architect in Arnold, to the exact use case (controlling remote, resource-intensive applications from a PDA) that was already being contemplated in the industry, as shown by McCandless.

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 contended that Riggins disclosed a method for a "roaming user" to remotely control computer services (e.g., an email application) using a generic "network computer." Riggins taught accessing a directory of services, downloading a corresponding "applet," and using the applet to control the service. Devarakonda supplied the missing details, teaching that a personal digital assistant (PDA)—a palm-sized computer—is an example of a "network computer" and that such devices lack the resources to run full-featured applications, making them suitable for controlling services hosted elsewhere. Devarakonda also disclosed a service registration method similar to that used in Riggins' system.
    • Motivation to Combine: A POSITA would combine the references to improve Riggins' system. Specifically, a POSITA would implement Riggins' generic "network computer" as the PDA taught by Devarakonda, as this would be an advantageous and predictable choice to support the "roaming user" described in Riggins. Devarakonda provided the rationale for this architecture: PDAs are portable but resource-limited, making them ideal for remotely controlling more powerful applications.
    • Expectation of Success: A POSITA would have reasonably expected success in combining these systems. Both Riggins and Devarakonda described similar Java-based architectures that used web browsers and downloadable applets to access and control network services, making their integration straightforward.

4. Key Claim Construction Positions

  • “palm sized computer” (Claims 1-2, 6-9, 12, 14-15): Petitioner contended this term should be construed to include examples from the specification, such as Personal Digital Assistants (PDAs) and 3Com's Palm Platform computers.
  • “means for accessing a description of a service” (Claim 20): This means-plus-function term, per Petitioner, corresponds to the structure of a palm-sized computer executing Jini middleware from Sun Microsystems, or equivalents.
  • “means for downloading the program code” (Claim 20): Petitioner argued the corresponding structure for this function is also a palm-sized computer executing Jini middleware.
  • “means for executing at least a portion of the program code” (Claim 20): Petitioner identified the corresponding structure as a palm-sized computer executing a Java Virtual Machine (JVM).
  • “means for sending control commands...” (Claim 20): Petitioner argued the corresponding structure is a palm-sized computer executing a control protocol, such as Java’s Remote Method Invocation (RMI) protocol.

5. Relief Requested

  • Petitioner requested the 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.