PTAB

IPR2018-01553

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 units. It discloses a central "manager host" that creates and transmits discrete patch messages over a wireless network to one or more mobile units, which then merge the patch with their existing operating code to create a new, patched version.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Hapka in view of Parrillo.

  • Prior Art Relied Upon: Hapka (Patent 5,619,412) and Parrillo (Patent 5,442,553).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Hapka discloses the core system of the ’275 patent, including a "manager host" (Hapka's fixed base computer) that remotely and wirelessly transmits messages to modify an engine algorithm on a "mobile unit" (Hapka's vehicle engine control system). While Hapka teaches modifying an algorithm, Petitioner argued it does not explicitly detail the "patching" process. Parrillo, which teaches a wireless system for diagnosing and upgrading vehicle software, was argued to supply this missing element by disclosing the transmission of an "upgrade or complete new program" or software "fix" to a vehicle's microprocessor, which constitutes the claimed "patching."
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve upon Hapka's system. Both Hapka and Parrillo relate to remote vehicle software management. A POSITA would be motivated to incorporate Parrillo’s more specific software patching and upgrade capabilities into Hapka’s general remote modification framework to provide greater versatility and achieve the predictable result of a more robust remote software update system.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination involves applying known software patching techniques (from Parrillo) to a known remote vehicle control system (from Hapka) using conventional technologies like wireless communications, processors, and memory, which both references utilize.

Ground 2: Claim 1 is obvious over Hapka and Parrillo in view of Wortham.

  • Prior Art Relied Upon: Hapka (Patent 5,619,412), Parrillo (Patent 5,442,553), and Wortham (Patent 5,155,689).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Hapka-Parrillo combination. It is presented as an alternative in the event the primary combination is found insufficient to teach the "mobile unit" limitation, particularly the "battery-powered" aspect of Petitioner's proposed construction. Wortham, which discloses a remotely programmable, in-vehicle communication system, explicitly teaches a "power supply...connected to the vehicle battery to provide electrical energy." Petitioner argued that adding this teaching renders the "mobile unit" limitation obvious.
    • Motivation to Combine: A POSITA would be motivated to incorporate Wortham's teaching of a direct battery power source into the Hapka-Parrillo system to ensure uninterrupted operation. This would allow the mobile unit to receive and process software patches even when the vehicle's engine is off, preventing a loss of power that would interrupt the update process. This is a common-sense modification to enhance system reliability.
    • Expectation of Success: The modification is a predictable solution using a well-known component (a battery) for a known purpose (powering vehicle electronics). Given the ubiquity of battery-powered engine control systems, a POSITA would have readily understood how to implement this change with a high likelihood of success.

4. Key Claim Construction Positions

  • "mobile unit": Petitioner proposed this term be construed as a "portable, battery-powered device for use while in motion." This construction is central to the petition, as it frames the need for the Wortham reference in Ground 2 to explicitly teach a battery-powered system, in case Hapka is deemed insufficient on this point.
  • "merging the at least one patch with current operating code": Petitioner argued this means "incorporating the at least one patch into the current operating code, without replacing the entire current operating code." This construction was based on prosecution history where the applicant distinguished the invention from prior art that replaced the entire code, making "patching" (modification) rather than "downloading" (replacement) a key feature.
  • "[manager host operable to] initiate transmission...": Petitioner proposed this means the manager host begins transmission "without first receiving a request for a patch from a mobile unit." This construction characterizes the system as a "push" system, where the host decides when to send updates, a feature Petitioner argued was already known in the prior art.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that institution is proper because it concurrently filed two separate petitions challenging claim 1 of the ’275 patent. It contended that both should be instituted because they rely on different prior art grounds (qualifying under different pre-AIA §102 provisions) and disclose the claimed limitations in different ways with varying strengths. Furthermore, Petitioner noted that it and the Patent Owner have proposed different claim constructions in a related district court case, and each petition demonstrates unpatentability under these different constructions, warranting a full review of both.

6. Relief Requested

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