Ingenico Inc v. IOEngine LLC

1. Case Identification

• Case #: IPR2019-00584
• Patent #: 9,774,703
• Filed: January 22, 2019
• Petitioner(s): Ingenico Inc.
• Patent Owner(s): IOEngine, LLC
• Challenged Claims: 1-54

2. Patent Overview

• Title: Apparatus, Method and System for a Tunneling Client Access Point
• Brief Description: The ’703 patent relates to a portable device containing a processor and memory that communicates with network nodes through an external terminal, such as a computer. The device stores distinct sets of program code that, when executed, present an interactive user interface on the terminal's display and facilitate communication with the network in response to user interaction.

3. Grounds for Unpatentability

Ground 1: Anticipation by Iida - Claims 1-17, 19, 20, 23-25, 27-29, 32-48, and 50-54 are anticipated by Iida under 35 U.S.C. §102.

• Prior Art Relied Upon: Iida (Application # 2003/0020813).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Iida, which was not before the examiner during prosecution, discloses every element of the challenged claims. Iida teaches a portable digital camera that communicates with a terminal (e.g., a mobile phone or PDA) and uses the terminal’s display for an interactive user interface. The camera contains its own processor and memory storing program code, which corresponds to the claimed first, second, and third program codes. Specifically, Iida’s program code, detailed in flowcharts, directs the camera to: (1) present a menu screen on the terminal’s display; (2) facilitate communication with a network node (an image server) through the terminal; and (3) transmit communications to the network node in response to user selections on the menu screen. Petitioner asserted that Iida’s disclosure of hardware (camera, terminal, server) and software (program code for UI, network communication, and user response) fully anticipates the limitations of the independent claims and their dependents.

Ground 2: Obviousness over Iida and Yang - Claims 19-22 and 26 are obvious over Iida in view of Yang.

• Prior Art Relied Upon: Iida (Application # 2003/0020813) and Yang (Patent 6,467,087).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that while Iida teaches downloading image data, it does not explicitly mention downloading program code. Yang addresses this element by teaching a system for updating firmware on a peripheral device (a printer) by downloading the new code from the Internet. Yang further teaches storing such updateable code in nonvolatile memory instead of ROM. The challenged claims require downloading program code (claims 19, 20), storing updated code (claim 21), and synchronizing code (claim 26).
  • Motivation to Combine: A POSITA would combine Iida's camera system with Yang's well-known method for updating program code to realize the significant and widely accepted advantages of providing remote firmware updates. Modifying Iida's system, which already downloads data from a server, to download program code instead of or in addition to image data would have been a simple and logical extension.
  • Expectation of Success: The combination involved applying a conventional updating technique (Yang) to a known type of device (Iida's camera), which would have yielded the predictable result of an updateable camera.

Ground 3: Obviousness over Iida and Genske - Claims 1-20, 23-25, and 27-54 are obvious over Iida in view of Genske.

• Prior Art Relied Upon: Iida (Application # 2003/0020813) and Genske (Application # 2002/0065872).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground primarily addresses the "graphic user interface" (GUI) limitation of claim 27 and an alternative method of code execution. Genske, like Iida, discloses a portable camera that communicates with host devices. Crucially, Genske explicitly describes these host devices as having GUIs (e.g., a Palm PDA). Genske also teaches an alternative operational mode where program code (drivers or applications) is "injected" from the camera's memory for execution by the more powerful processor of the host terminal.
  • Motivation to Combine: A POSITA would combine the teachings of these highly similar systems for two main reasons. First, it would have been obvious to implement Iida's user interface on a GUI-equipped terminal, as taught by Genske, to ensure compatibility with the large and growing number of such devices. Second, a POSITA would have been motivated to execute the UI code on the terminal, as taught by Genske, to leverage its superior processing power for faster performance and broader device compatibility.
  • Expectation of Success: Petitioner argued that choosing to implement a known UI on a common platform like a GUI, or choosing to execute code on a terminal instead of a peripheral, were simple matters of design choice for a POSITA that would lead to predictable results.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Iida with Imbrie to teach a wireless communication interface (Ground 3), and three-way combinations of Iida, Genske, Yang, and Imbrie (Grounds 5-7), which relied on similar principles of combining known elements for their predictable functions.

4. Key Claim Construction Positions

• "interactive user interface": As this term is not defined in the specification, Petitioner proposed it be construed under its plain and ordinary meaning as "a display with which a user may interact to result in the computer taking action responsively." This construction was central to mapping Iida's menu-driven screens, which elicit responsive actions, to the claim language.
• "network interface": For this component of the portable device, Petitioner proposed the construction "a device or software program on the portable device that may accept, communicate, and/or connect with a network." This construction was critical to arguing that Iida's camera—which connects to a network through an intermediate terminal—meets the claim limitation.
• "graphic user interface": Petitioner proposed this term from claim 27 be construed as "a display with which a user may interact, facilitated by a graphic element displayed thereon, to result in the computer taking action responsively." This construction was used to apply prior art like Genske that explicitly discloses GUIs.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-54 of Patent 9,774,703 as unpatentable.