PTAB

IPR2018-01552

Samsung Electronics Co Ltd v. Iron Oak Technologies LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and method for remote patching of operating code located in a mobile unit.
  • Brief Description: The ’275 patent describes a system for remotely updating software on mobile devices. A central "manager host" creates software patches and transmits them as discrete messages over a wireless network to targeted mobile units, which then merge the patch with their existing operating code to create an updated version.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claim 1 under 35 U.S.C. §102 by Sugita

  • Prior Art Relied Upon: Sugita (Japanese Application # 1993-128022).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sugita disclosed every element of claim 1. Sugita described a system for remotely updating terminal software on multiple mobile communication terminals mounted in vehicles. Its base station (the "manager host") transmitted software update information (the "patch") in multiple packets ("discrete patch messages") over wireless channels to the mobile terminals ("mobile units"). The petition asserted Sugita’s system was operable to address updates to specific groups or individual terminals, thereby transmitting a patch to a first mobile unit but not a second. The terminals received the packets and incorporated the update into the software program where it was operating, which Petitioner contended met the "merging" and "switch execution" limitations.
    • Key Aspects: Petitioner argued Sugita’s disclosure of updating "all or part of the software" taught the claimed "merging" limitation, as it inherently involved incorporating a patch without replacing the entire operating code.

Ground 2: Obviousness of Claim 1 under 35 U.S.C. §103 over Sugita in view of Wortham

  • Prior Art Relied Upon: Sugita (Japanese Application # 1993-128022) and Wortham (Patent 5,155,689).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to Ground 1. To the extent Sugita’s vehicle-mounted terminals were found not to meet the Petitioner's proposed construction of "mobile unit" as a "portable, battery-powered device," Wortham supplied this teaching. Wortham described an in-vehicle locating and communication system that included components powered directly by the vehicle's battery.
    • Motivation to Combine: A POSITA implementing Sugita's system would combine its teachings with Wortham to ensure reliable operation. Software updates could be interrupted by a loss of power if the terminal relied solely on the vehicle's engine running. Powering the terminal from the vehicle's battery, as taught by Wortham, was a known and simple solution to ensure the terminal remained powered regardless of vehicle state (e.g., parked or idling), thus preventing failed software updates.
    • Expectation of Success: A POSITA would have had a high expectation of success, as modifying an in-vehicle electronic device to draw power from the vehicle's battery was a common and predictable design choice.

Ground 3: Obviousness of Claim 1 under §103 over Ballard in view of Shimizu

  • Prior Art Relied Upon: Ballard (Australian Application # 77395/91) and Shimizu (Japanese Application # 05-66937).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Ballard disclosed a system for remotely downloading software updates ("patching") to mobile radiophones ("mobile units") over a telecommunication network. The network or its base station served as the "manager host" that initiated the transmission. However, Ballard did not explicitly disclose transmitting the update as "at least one discrete patch message." Shimizu was argued to cure this deficiency by teaching a remote software patching system where a patch file is segmented into multiple "patch commands" for wireless transmission. The combination of Ballard's system with Shimizu's transmission method rendered claim 1 obvious.
    • Motivation to Combine: A POSITA implementing Ballard’s system would have recognized the challenge of transmitting large software updates over the limited-bandwidth wireless networks of the time. Shimizu addressed this exact problem by teaching the segmentation of a patch file into smaller, more manageable messages. A POSITA would combine Shimizu's technique with Ballard's system to improve the integrity and reliability of patch transmissions, for instance by using hash values as taught by Shimizu to verify successful receipt of all segments.
    • Expectation of Success: The combination involved applying a known data transmission technique (segmentation) from Shimizu to improve a known wireless update system (Ballard), which was a predictable implementation yielding no unexpected results.

4. Key Claim Construction Positions

  • "merging the at least one patch with current operating code": Petitioner proposed this term meant "incorporating the at least one patch into the current operating code, without replacing the entire current operating code." This construction, based on prosecution history, was used to distinguish the claimed invention from prior art that performed full software replacement.
  • "[manager host operable to] initiate transmission...": The proposed construction was to "begin transmission... without first receiving a request for a patch from a mobile unit." This interpretation aimed to limit the claim to systems that "push" updates, as opposed to systems where a device "pulls" an update upon request.
  • "mobile unit": Petitioner proposed this term meant a "portable, battery-powered device for use while in motion." This construction was central to the obviousness argument in Ground 2, which used the Wortham reference to teach the battery-powered element if Sugita was found deficient.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued for institution by noting it was concurrently filing two separate petitions against claim 1 of the ’275 patent. It asserted that both should be instituted because they relied on different prior art references qualifying under different statutory provisions of pre-AIA §102, presented different strengths, and addressed different potential claim constructions asserted by the Patent Owner in co-pending litigation.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claim 1 of the ’275 patent as unpatentable on all asserted grounds.