PTAB

IPR2019-00993

General Electric Co v. Monument Peak Ventures LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Sharing Data in a Network
  • Brief Description: The ’910 patent describes a system for sharing digital images and other objects across a network using a portable digital media frame (DMF). The system allows a user in a "share group" to upload a digital file to a network service, which then downloads the file to other members of the group for automatic display on their devices.

3. Grounds for Unpatentability

Ground 1: Obviousness over Toshimitsu - Claims 1, 4-6, 9-10, 22, and 29-30 are obvious over Toshimitsu.

  • Prior Art Relied Upon: Toshimitsu (Akihiro, et al., Design and implementation of computer-aided support for teaching conferences in radiology, SPIE, 1994).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Toshimitsu, which discloses a medical image collaboration system called MedTeaConS, taught all limitations of the challenged claims. Toshimitsu's client-server system for radiological conferences was described as a network service that allowed a group of participants (a "share group") using workstations to view and share data. The system allowed participants to upload comments which were then distributed by a server and automatically displayed on all other participant workstations, satisfying the core method steps of uploading, downloading, and automatically displaying digital files.
    • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner asserted Toshimitsu alone renders the claims obvious because its teachings for sharing text, voice, and video comments could be readily applied to sharing digital image files, which the system was designed to handle.
    • Expectation of Success (for §103 grounds): A POSITA would have found it obvious to configure Toshimitsu's system to share image files among all participants, as the system already shared comments and was built around image review conferences.
    • Key Aspects: The argument hinges on interpreting Toshimitsu's sharing of "comments" as equivalent to sharing "digital files" and its conference participants as a "share group."

Ground 2: Obviousness over Toshimitsu and Ludwig - Claims 1, 4-10, 12, 22, and 29-30 are obvious over Toshimitsu in view of Ludwig.

  • Prior Art Relied Upon: Toshimitsu (SPIE, 1994) and Ludwig (Patent 5,689,641).
  • Core Argument for this Ground:
    • Prior Art Mapping: To the extent Toshimitsu's disclosure of sharing "comments" was not considered an explicit teaching of sharing "digital files," Petitioner argued Ludwig supplied this element. Ludwig discloses a multimedia collaboration system where participants explicitly "load a previously saved image to be shared," teaching the sharing of saved digital image files. Ludwig also teaches selecting session participants from a graphical list, providing a basis for selecting subsets of users to receive shared files (claim 8) and for a user to be a member of multiple groups (claim 12).
    • Motivation to Combine (for §103 grounds): A POSITA would combine the references to improve Toshimitsu's medical collaboration system with Ludwig's more advanced remote conferencing and explicit digital file sharing capabilities. Toshimitsu itself acknowledged its system was ripe for improvement with such remote access technologies. The combination involved applying known remote collaboration techniques to an existing system to achieve a predictable result.
    • Expectation of Success (for §103 grounds): Success was expected because both systems were client-server based, directed to group collaboration, and shared common technological principles, making their features compatible.

Ground 3: Obviousness over Toshimitsu, Ludwig, and Johnson - Claims 1, 4-7, 10, 22, and 29-30 are obvious over Toshimitsu in view of Ludwig and Johnson.

  • Prior Art Relied Upon: Toshimitsu (SPIE, 1994), Ludwig (Patent 5,689,641), and Johnson (Greg, Collaborative Visualization 101, ACM SIGGRAPH, May 1998).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted this combination to address its preferred construction of "share group" as a "set of members referenced in a share list." While Toshimitsu and Ludwig provided the functional group, Johnson explicitly disclosed a "session manager" that provides a new user with a "list of participants" upon joining a collaborative session. Petitioner argued Johnson's session manager could be implemented as an obvious modification to the Toshimitsu/Ludwig system to maintain an explicit share list.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Johnson with the Toshimitsu/Ludwig system to incorporate more recent and robust techniques for real-time collaborative visualization. Johnson described improvements to the exact types of client-server collaboration systems disclosed by Toshimitsu and Ludwig, such as enhanced annotation and control, making it a natural source for a POSITA to consult for improvements.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success as all three references describe compatible client-server architectures for collaborative data sharing.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Sampath-Kumar (a 1997 article on a web-based telepresentation tool) to teach use of the Internet and user authentication (claims 11, 25, 26), and Martinez (a 1995 article on a global PACS environment) to teach receiving images directly from a digital camera (claims 13, 23, 24).

4. Key Claim Construction Positions

  • "share group": Petitioner contended this term should be construed as a "set of members referenced in a share list," based on the specification and prosecution history. This contrasts with the Patent Owner's proposed construction of "any group of users with common access to one or more media or data files."
  • "continuously operating": Petitioner argued this term means "operating without interruption." This contrasts with the Patent Owner's position that it means "operating whether or not it is connected to the network," a construction Petitioner argued was not supported by the specification.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-13, 22-26, and 29-30 of the ’910 patent as unpatentable.