PTAB

IPR2019-00110

Google LLC v. Iron Oak Technologies LLC

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Key Events
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 relates to a system for remotely updating the operating code of mobile units. The technology describes a central "manager host" that initiates wireless transmission of software patches, which are then received by targeted mobile units and merged with their existing code to create a patched version.

3. Grounds for Unpatentability

Ground 1: Anticipation by Sugita - Claim 1 is anticipated by Sugita under 35 U.S.C. §102.

  • Prior Art Relied Upon: Sugita (Japanese Application # 1993-128022).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sugita discloses every limitation of claim 1. Sugita describes a system for remotely updating software on mobile communication terminals installed in vehicles. In this system, a base station, acting as the claimed "manager host," initiates the transmission of software update information via wireless channels. The update information is sent in packets, which Petitioner mapped to the claimed "at least one discrete patch message." Sugita's mobile terminals are operable to receive these packets, incorporate the update into the existing software program ("merging"), and subsequently execute the updated code. Petitioner further argued that Sugita meets the final limitation because its base station can address updates to specific groups of terminals or to individual terminals, thereby teaching the transmission of a patch to a "first mobile unit but not to the second mobile unit."

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

  • 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 a contingent argument. Petitioner asserted that if Sugita's vehicle-mounted terminals are deemed not to meet the proposed construction of a "mobile unit" as a "portable, battery-powered device," then Wortham supplies this teaching. Wortham discloses an in-vehicle locating and communication system that is explicitly powered by the vehicle's battery.
    • Motivation to Combine: A POSITA would combine Wortham's battery-powering feature with Sugita's remote update system to enhance reliability. Using a battery ensures that the terminals remain operational and can complete software updates regardless of the vehicle's status (e.g., parked with the engine off), preventing failed updates due to power loss. This known method of ensuring constant power would also facilitate the portability of the terminals for maintenance.
    • Expectation of Success: Petitioner contended that powering an in-vehicle electronic device with a battery was a simple, well-known, and predictable design choice at the time, leading to a high expectation of success.

Ground 3: Obviousness over Ballard and Shimizu - Claim 1 is obvious over Ballard in view of Shimizu under §103.

  • 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 that Ballard discloses a system for remotely downloading software updates to a mobile radiophone, teaching most elements of claim 1. Ballard's network initiates the download (acting as a "manager host") and supports "partial" downloading to upgrade software, which maps to the "merging" limitation. To the extent Ballard does not explicitly teach transmitting the software update as "at least one discrete patch message," Petitioner asserted Shimizu remedies this. Shimizu describes a remote software patching system where a patch file can be segmented into multiple smaller "patch commands" for wireless transmission.
    • Motivation to Combine: A POSITA implementing Ballard's system over the bandwidth-limited wireless networks of the era would have been motivated to use Shimizu's segmentation technique. Transmitting a large software update as multiple smaller, discrete messages improves the reliability and integrity of the data transfer, as it allows for easier error checking and retransmission of smaller pieces.
    • Expectation of Success: Applying the known data-segmentation technique from Shimizu to the software download system of Ballard was presented as a straightforward application of conventional engineering principles to solve the known problem of reliable data transmission over wireless networks.

4. Key Claim Construction Positions

  • "mobile unit": Petitioner proposed this term be construed as a "portable, battery-powered device for use while in motion," based on descriptions and figures in the specification.
  • "[manager host operable to] initiate transmission...": Petitioner proposed this phrase means the manager host begins transmission "without first receiving a request for a patch from a mobile unit." This construction was argued to capture the patent's asserted departure from interactive, bidirectional prior art systems.
  • "merging the at least one patch with current operating code": Proposed construction was "incorporating the at least one patch into the current operating code, without replacing the entire current operating code." This was based on statements made during prosecution to distinguish the invention from systems that perform a full software replacement.
  • "[manager host is further operable to] address...": Petitioner proposed this means the manager host decides "which specific mobile unit to send [the message] to before beginning transmission," arguing the host pre-determines the recipients.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claim 1 of Patent 5,699,275 as unpatentable on all asserted grounds.