PTAB

IPR2019-00929

Ingenico Inc v. IOEngine LLC

Key Events

Petition

petition

Case #: IPR2019-00929
Patent #: 9,774,703
Filed: April 5, 2019
Petitioner(s): Ingenico Inc.
Patent Owner(s): IOEngine, LLC
Challenged Claims: 55-63, 65-72, 74, 75, 77, 78, 81-87, 89, 90, 92-98, 100, 101, 103-112, 114-121, 123, 124, 126-129

Title: Apparatus, Method and System for a Tunneling Client Access Point
Brief Description: The ’703 patent describes a system where a portable device (lacking a full user interface) communicates with a terminal (e.g., a mobile phone). The portable device executes program code to use the terminal's display for an interactive user interface and its network connection to communicate with a remote network node.

Prior Art Relied Upon: Iida (Application # 2003/0020813).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Iida discloses every element of the challenged claims. Iida describes a portable digital camera (the claimed "portable device") that wirelessly communicates with a portable terminal like a PDA or mobile phone (the claimed "terminal"). The camera lacks its own display and uses the terminal's display to present an interactive user interface for functions like viewing images and transferring them over the internet to an image server (the claimed "network node").
- Petitioner mapped Iida's camera control unit and memory to the claimed processor and memory, and its wireless communication unit to the claimed external interface. Likewise, Iida's terminal, with its processor, display, keypad, and network interfaces, was mapped to the claimed terminal components.
- The various method steps of independent claims 55, 78, and 93, which involve executing different program codes on the portable device and terminal for presenting a user interface, establishing communication links, and sending data to a network node, were all argued to be explicitly taught by Iida's detailed flowcharts (Figs. 4A-4D). These flowcharts show the camera instructing the terminal to display menus and the camera responding to user selections by initiating data transfers to the remote image server.

Prior Art Relied Upon: Iida (Application # 2003/0020813) and Yang (Patent 6,467,087).
Core Argument for this Ground:
- Prior Art Mapping: Iida discloses downloading content (image data) from a network node. These claims, however, recite downloading program code. Yang teaches a method for updating firmware on a peripheral device (a printer) by downloading it from the Internet, noting this is a widely accepted and beneficial practice.
- Motivation to Combine: A POSITA would be motivated to combine Yang's teaching of firmware updates with Iida’s system to provide a well-known method for updating the program code on Iida's portable camera. This would allow for easy feature additions and bug fixes, a known advantage of network-based updates.
- Expectation of Success: A POSITA would have a high expectation of success, as modifying Iida's existing data download request to instead request program code would be a simple and predictable implementation based on Yang's teachings.

Prior Art Relied Upon: Iida (Application # 2003/0020813) and Shaffer (Patent 5,784,461).
Core Argument for this Ground:
- Prior Art Mapping: Iida discloses all limitations of these claims except for the transmission of encrypted communications from the network node to the terminal. Shaffer is directed to a secure method for granting customer access to images over a public network like the Internet and explicitly teaches encrypting communications and image data to prevent hacking.
- Motivation to Combine: A POSITA would be motivated to incorporate Shaffer's security measures into Iida's system. Given that Iida's system transmits potentially private photographs and user data over the Internet, adding encryption as taught by Shaffer would be a common-sense solution to a known security problem.
- Expectation of Success: Encryption techniques for network communications were well-known and their application to Iida’s system would have been straightforward and predictable.

Prior Art Relied Upon: Iida (Application # 2003/0020813) and Davis (Patent 6,088,805).
Core Argument for this Ground:
- Prior Art Mapping: Iida teaches authenticating the camera to the image server using a user ID and password stored on the camera. These claims require the data stored on the portable device to comprise a digital certificate. Davis is directed to client-server authentication and explicitly teaches using digital certificates as a more secure alternative to user names and passwords.
- Motivation to Combine: A POSITA would be motivated to substitute the user ID/password authentication in Iida with the more secure digital certificate method taught by Davis. Davis explains the advantages of digital certificates, such as being difficult to forge and reliably identifying clients and servers, which would be desirable for enhancing the security of Iida's system.
- Expectation of Success: Davis presents digital certificates as a simple, known substitute for passwords, meaning a POSITA would have found it obvious and predictable to implement this substitution in Iida’s authentication process.

"Interactive User Interface": Petitioner argued that this term, which is not defined in the specification, should be given its plain and ordinary meaning: an interface enabling a user to interact with a computer, such as through menus and screen designs that elicit a responsive action. This construction is central to arguing that Iida's system, where the terminal displays menus from the camera that a user can interact with, meets this limitation.
"Memory": Petitioner contended that based on the patent's specification, "memory" on the portable device should be construed broadly to include all memory components, such as ROM, RAM, and other storage devices. This construction supports the argument that the program code described in Iida, which is stored in ROM, meets the claim limitation of code stored in "memory."

Petitioner requested the institution of an inter partes review and the cancellation of claims 55-63, 65-72, 74, 75, 77, 78, 81-87, 89, 90, 92-98, 100, 101, 103-112, 114-121, 123, 124, and 126-129 of the ’703 patent as unpatentable.