PTAB

IPR2019-00083

GREE Inc v. Supercell Oy

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Upgrading Application
  • Brief Description: The ’520 patent discloses a method for upgrading software applications, particularly on mobile devices, by managing installation packages that contain both a primary data portion and a separate customized information portion (e.g., user settings or channel information). The purported invention involves removing the customized portion, applying a patch only to the data portion, and then adding the customized portion back to create the new installation package.

3. Grounds for Unpatentability

Ground 1: Obviousness over Waldmann, Schuelein, and APA - Claims 1, 7-8, 10, 15-16, and 18 are obvious over Waldmann in view of Schuelein and Applicant Admitted Prior Art (APA).

  • Prior Art Relied Upon: Waldmann (WO 2007/020300), Schuelein (Application # 2006/0271925), and Applicant Admitted Prior Art (APA) from the ’520 patent specification.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that APA establishes the background art, admitting that installation packages comprise a "data portion" and a "customized information portion," and that patching tools like "bsdiff" were known to operate only on the data portion. Waldmann was cited for disclosing a method of updating software using a "delta-update package" that preserves user data and preferences. Schuelein was asserted to explicitly teach the core inventive concept: "securing" (i.e., identifying and saving) "customer specific data" before an upgrade and "reinputting" that data into the revised application after the upgrade is complete.
    • Motivation to Combine: A POSITA would combine Waldmann's efficient delta-update system with Schuelein's specific method for preserving customized data. Schuelein's technique of separating and later reintegrating user data was presented as a known and improved method for achieving the data preservation goal mentioned in Waldmann. This combination would predictably result in a more robust and reliable software update process that avoids installation problems while preserving user customizations.
    • Expectation of Success: Petitioner asserted a high expectation of success, as the references address the common problem of software updating and data preservation using compatible, well-understood techniques.

Ground 2: Obviousness over Waldmann, Schuelein, APA, and ZIP Format - Claims 6, 14, 19, and 20 are obvious over Waldmann, Schuelein, APA, and the ZIP Format.

  • Prior Art Relied Upon: Waldmann (WO 2007/020300), Schuelein (Application # 2006/0271925), APA, and the .ZIP File Format Specification Version 6.3.0 (ZIP Format).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon Ground 1 by adding the ZIP Format to teach the limitations of dependent claims requiring the installation package to be a zip file (or similar apk file) and the customized information to be stored in a comment field. The ZIP Format specification was shown to disclose a dedicated comment field that is not subject to encryption or data authentication, making it an ideal location for metadata.
    • Motivation to Combine: A POSITA implementing the update system of Waldmann (which suggests using compressed files) would naturally select the ZIP format, a de facto industry standard. Storing the customized information in the ZIP comment field was argued to be an obvious design choice. This would solve the exact problem described in the ’520 patent: it allows customized information to be stored within the package without interfering with signature verification of the core data payload, thus reducing the need for multiple patch versions.
    • Expectation of Success: Success would have been expected because using a standard file format's metadata field for its intended purpose is a routine and predictable step in software development.

Ground 3: Obviousness over Waldmann, Schuelein, APA, and O'Neill - Claims 2-5 and 11-13 are obvious over Waldmann, Schuelein, APA, and O'Neill.

  • Prior Art Relied Upon: Waldmann (WO 2007/020300), Schuelein (Application # 2006/0271925), APA, and O'Neill (Patent 6,832,373).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added O'Neill to the base combination of Ground 1 to address dependent claims related to verifying and selecting the correct patch for download. O'Neill was argued to disclose a complete "update query, retrieval, and installation process" where a client device polls a server manifest containing an "update signature" (such as an MD5 hash) to identify the correct software version and verify its integrity before downloading.
    • Motivation to Combine: While Waldmann disclosed that multiple different update packages could exist, it did not specify a mechanism for a client to select the correct one. O'Neill provided a known, standard solution to this exact problem. A POSITA would combine O'Neill's manifest and signature verification method with the update system of Waldmann and Schuelein to create a complete, functional, and reliable update process.
    • Expectation of Success: This combination was presented as the application of a known technique (O'Neill's verification) to improve a similar system (Waldmann/Schuelein's patching method), which would have yielded predictable results.

4. Key Claim Construction Positions

  • "removing" / "remove" / "being removed": Petitioner argued that, based on the applicant's statements during prosecution to overcome prior art, this term must be construed to require an affirmative action of separating the customized information. It cannot merely encompass ignoring the information during a comparison or patching process.
  • "the information of the installation package" and "information of the patch" (claims 3, 12): Petitioner contended that these terms lack a proper antecedent basis in their parent independent claims (1 and 10). It was proposed that claims 3 and 12 should be construed as depending from claims 2 and 11, respectively, to correct this apparent drafting error.
  • "the md5 for the current installation" (claims 4, 13): Petitioner argued this phrase is ambiguous. Based on the specification and claim context, it was submitted that the broadest reasonable interpretation should be "performing the md5 for the current installation package."

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-8, 10-16, and 18-20 of the ’520 patent as unpatentable.