PTAB

IPR2019-00879

Ingenico Inc v. IOEngine LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus, Method and System for a Tunneling Client Access Point
  • Brief Description: The ’969 patent describes a system where a portable device, containing its own processor and memory, communicates through a separate terminal (e.g., a personal computer) to interact with a network node. The claims focus on a specific distribution of executable program code between the portable device and the terminal to manage communications and present a user interface.

3. Grounds for Unpatentability

Ground 1: Anticipation by Iida - Claims 1-8, 10-16, 19-21, and 24-29 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 describes a portable device (digital camera 12) that communicates with a terminal (portable terminal 14, such as a PDA or PC) to connect with a network node (image server 18). Petitioner asserted that Iida’s camera contains a processor and memory with stored program code, and the terminal also contains its own processor and program code for presenting a user interface and facilitating communications, mapping directly to the claimed architecture. The detailed flow charts in Iida allegedly disclose the specific functions of the "third program code" and "fourth program code" recited in independent claim 1, which control coordination between the devices and communications with the network.
    • Key Aspects: Petitioner contended that Iida’s disclosure of a user ID and password transmission for authentication anticipates the "verification" limitation in claim 3. For claim 4's "encrypted communications" limitation, Petitioner argued that Iida’s camera is disclosed as being capable of receiving encrypted information, thereby facilitating such transmissions, even if the primary example transmission is not encrypted.

Ground 2: Obviousness over Iida and Fuji Guide - Claims 1-8, 10-16, 19-21, and 24-29 are obvious over Iida in view of the Fuji Guide under 35 U.S.C. §103.

  • Prior Art Relied Upon: Iida (Application # 2003/0020813) and Fuji Guide (FujiFilm Software Quick Start Guide, published 2001).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Iida does not explicitly disclose program code residing on the terminal for presenting a graphical user interface (GUI), the Fuji Guide supplies this teaching. The Fuji Guide describes software (FinePixViewer) loaded from a CD-ROM onto a terminal to create a GUI for managing the camera, displaying images, and connecting to the "FinePix Internet Service." This combination allegedly discloses the claimed "first program code" and "second program code" for presenting an interface and establishing the terminal as a communication node. The Fuji Guide also explicitly teaches using a wired USB connection, which Iida suggests as an alternative to wireless, addressing claim 26’s USB interface limitation.
    • Motivation to Combine: The motivation was exceptionally strong, as Iida explicitly suggests "employing the [FinePix6800Z] camera" as the portable device for its invention. The Fuji Guide is the user manual that was sold with the FinePix6800Z camera. A person of ordinary skill in the art (POSITA) implementing Iida’s system with the suggested camera would have naturally and necessarily consulted the Fuji Guide and used its accompanying software.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining the software from the Fuji Guide with the camera system of Iida was the intended use. This represents combining familiar elements according to known methods to yield predictable results.

Ground 3: Obviousness of Claim 4 over Iida and Shaffer - Claim 4 is obvious over Iida in view of Shaffer.

  • Prior Art Relied Upon: Iida (Application # 2003/0020813) and Shaffer (Patent 5,784,461).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground specifically addressed the limitation in claim 4 requiring the portable device to facilitate the "transmission of encrypted communications from the communication network node to the terminal." While Iida discloses the full system architecture, Shaffer teaches the missing element of encryption in the same technical context. Shaffer is directed to securely ordering and transmitting photographic images over a public network like the Internet and explicitly discloses encrypting image data to address security concerns from hackers.
    • Motivation to Combine: A POSITA implementing Iida’s system for transferring images over the Internet would have been motivated by well-known security concerns to incorporate encryption. Shaffer directly addresses these same concerns and provides a clear solution. It would have been obvious to apply Shaffer's established encryption techniques to the image data being transmitted from the network node (image server) in Iida’s system to enhance security.
    • Expectation of Success: Applying well-known encryption techniques to an existing data transmission system was a straightforward modification that would have predictably resulted in a more secure system without altering the underlying functionality taught by Iida.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 4 based on the combination of Iida, the Fuji Guide, and Shaffer, relying on the same motivations to address security concerns in the combined Iida/Fuji Guide system.

4. Key Claim Construction Positions

  • "interactive user interface": Petitioner proposed this term, which is not defined in the specification, should be construed according to 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 the functionality of Iida's system and the Fuji Guide's software to the claims.
  • "graphic user interface": For claim 21, Petitioner argued this term should be construed as an interface that "includes a graphic element," distinguishing it from purely text-based interfaces. This was used to show that the thumbnail image displays in the Fuji Guide's FinePixViewer software met the limitation.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-8, 10-16, 19-21, and 24-29 of Patent 9,059,969 as unpatentable.