PTAB

IPR2019-00111

Google LLC 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 discloses a system for remotely updating the software ("operating code") of mobile devices. The system features a central "manager host" that wirelessly transmits discrete software patches to one or more specific mobile units, which then merge the patch with their existing code to create an updated version without a full replacement.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hapka and Parrillo - 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 argued that Hapka disclosed the core framework of the challenged claim. Hapka taught a system with a fixed base site computer (a "manager host") that wirelessly transmits messages to modify the engine algorithm ("operating code") on one or more vehicles in a fleet ("mobile units"). This established the remote management of multiple mobile units from a central host. However, Petitioner contended Hapka did not explicitly describe the specific process of "patching" by merging a partial update rather than replacing the entire code. Parrillo was introduced to supply this missing element. Parrillo described a wireless system for diagnosing and upgrading vehicle software, explicitly teaching the transmission of a "fix" or an "upgrade or complete new program" to a vehicle's microprocessor. The combination of Hapka's fleet management system with Parrillo's specific software modification techniques was alleged to disclose all limitations of claim 1, including the ability to address messages to specific vehicles as taught by both references.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Hapka and Parrillo to add the well-known and beneficial functionality of partial software updates (from Parrillo) to Hapka's remote vehicle management system. Petitioner asserted this combination would predictably improve the versatility and efficiency of updating vehicle software, as both references operate in the same technical field of remote vehicle diagnostics and wireless updates.
    • Expectation of Success: A POSITA would have had a high expectation of success in combining these references. The integration involved applying known software patching techniques to a known remote communication system using standard wireless technologies, representing a predictable implementation.

Ground 2: Obviousness over Hapka, Parrillo, and Wortham - 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 incorporated all arguments from Ground 1 and added Wortham to explicitly address the "portable, battery-powered device" element of Petitioner's proposed construction for "mobile unit." Petitioner argued that to the extent Hapka and Parrillo did not render this limitation obvious, Wortham did. Wortham disclosed an in-vehicle locating and communication system that stored remotely programmable operating instructions and was explicitly powered by the vehicle's battery. This teaching was presented as directly supplying the battery-powered element for the "mobile units" in the Hapka/Parrillo combination.
    • Motivation to Combine: Petitioner argued a POSITA implementing the Hapka/Parrillo system would have been motivated to add a battery power source to ensure the system could operate and receive updates even when the vehicle's engine was off. Wortham provided an express teaching of this solution in a highly analogous in-vehicle system. This would have been a simple and predictable design choice to ensure uninterrupted functionality, a known benefit in the art.
    • Expectation of Success: Powering in-vehicle electronics directly from a vehicle's battery was a routine and well-understood practice at the time. Therefore, a POSITA would have had a high expectation of successfully implementing this modification.

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 was central to Ground 2, where Wortham was introduced specifically to teach the "battery-powered" aspect.
  • "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 critical for distinguishing the claimed invention from prior art that only performed wholesale software replacement, an argument Petitioner supported with the patent's prosecution history.
  • "[manager host operable to] initiate transmission...": Petitioner argued this meant the manager host begins transmission "without first receiving a request for a patch from a mobile unit." This construction emphasized a "push" system for updates, which Petitioner contended was a key feature distinguishing it from interactive "pull" systems.
  • "[manager host is further operable to] address...": Proposed construction was for the manager host to "decide which specific mobile unit to send [the patch message] to before beginning transmission." This interpretation was crucial for the final limitation of claim 1, which requires selectively transmitting a patch to a first mobile unit but not to a second.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claim 1 of Patent 5,699,275 as unpatentable.