PTAB

IPR2019-00416

Ingenico Inc v. IOEngine LLC

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1. Case Identification

2. Patent Overview

  • Title: Apparatus, Method and System for a Tunneling Client Access Point
  • Brief Description: The ’047 patent describes a portable apparatus, containing a processor and memory, that is configured to communicate through a separate terminal device (e.g., a computer). The portable apparatus executes program code to present an interactive user interface on the terminal's display and, in response to user input, communicates with a remote node on a communications network.

3. Grounds for Unpatentability

Ground 1: Anticipation by Iida - Claims 1, 3-4, 6-21, 23-25, 27, and 28 are anticipated by Iida.

  • Prior Art Relied Upon: Iida (Application # US2003/0020813).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Iida, which discloses a portable digital camera that communicates with a separate "portable terminal" (e.g., a PDA or mobile phone), teaches every limitation of the challenged claims. Iida's camera (the "portable device") contains a processor and ROM storing program code. It communicates with the terminal to display menu screens and, based on user selections, transfers image data through the terminal to a remote image server (a "network node"). Petitioner asserted that Iida's detailed flow charts (Figs. 4A-4D) explicitly disclose the three distinct program code steps required by independent claim 1. Dependent claims were also alleged to be anticipated, with Iida disclosing wireless communication (claim 3), the Bluetooth protocol (claim 4), and ROM (Read Only Memory) as the device memory (claim 6).

Ground 2: Obviousness over Iida and Genske - Claims 1-4, 6-21, 23-25, 27, and 28 are obvious over Iida in view of Genske.

  • Prior Art Relied Upon: Iida (Application # US2003/0020813), Genske (Application # US2002/0065872).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative to anticipation, particularly if the "interactive user interface" of claim 1 were construed to require a graphical user interface (GUI) beyond the menu screens of Iida. Petitioner argued that all other limitations are disclosed by Iida. Genske, like Iida, discloses a portable camera that communicates with host devices like PDAs and cellular phones. Crucially, Genske explicitly teaches that these host terminals can include a GUI, and it describes using technologies like Java to present interactive display elements (buttons, menus) on such interfaces. The addition of a Universal Serial Bus (USB) interface for claim 2 was also taught by Genske as a common "contact-type communication method" for such devices.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Iida's system would combine it with Genske's teachings to ensure compatibility with the wide variety of user terminals available, many of which featured GUIs. Accommodating GUIs would be a logical and necessary step to broaden the usability and marketability of Iida's camera, which was a stated goal of the reference.
    • Expectation of Success: A POSITA would have a high expectation of success, as adapting program code to display menus on a GUI instead of a simpler screen was a well-understood task using standard programming toolkits available at the time.

Ground 3: Obviousness over Iida and Imbrie - Claim 5 is obvious over Iida in view of Imbrie.

  • Prior Art Relied Upon: Iida (Application # US2003/0020813), Imbrie (Application # US2002/0169002).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground specifically addresses claim 5, which requires the wireless communication interface to employ a WiFi connectivity protocol. Iida discloses using either Bluetooth or HomeRF protocols for its wireless communication.
    • Motivation to Combine: Petitioner argued that by the priority date of the ’047 patent, the HomeRF protocol taught by Iida was obsolete. Imbrie explicitly lists numerous connectivity protocols for portable devices like digital cameras, including IEEE 802.11b (WiFi). A POSITA seeking a practical wireless protocol for Iida's device would have been motivated to replace the defunct HomeRF with a common, high-performance, and readily available alternative like WiFi, as taught by Imbrie.
    • Expectation of Success: The substitution of one known wireless protocol for another was a simple design choice that would have predictably yielded a functional device.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that combined Iida with Aganovic (Patent 6,105,042) to teach the use of a "redundant array of independent disks" (RAID) for the data storage system of claims 10 and 17. Further grounds combined Iida and Genske with Imbrie or Aganovic.

4. Key Claim Construction Positions

  • "interactive user interface": Petitioner argued this term, not defined in the specification, should be given its plain and ordinary meaning: a display with which a user may interact to cause a responsive action by the computer. This construction would encompass the menu screens disclosed in Iida, supporting the anticipation ground.
  • "redundant array of independent disks": Petitioner contended that because this term is not used in the specification, it should be interpreted according to its common meaning in the art, which is a RAID system. This construction was central to the obviousness arguments involving the Aganovic reference, which teaches RAID for large-capacity storage.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-21, 23-25, 27, and 28 of the ’047 patent as unpatentable.