PTAB

IPR2020-00491

Apple Inc v. Seven Networks LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Device Configured for Communicating with Another Mobile Device Associated with an Associated User
  • Brief Description: The ’986 patent describes a system for providing network services through a mobile virtual network. The claimed invention involves a first device that authenticates a user, accesses content, and transmits a representation of that content to a second device associated with the same user after the second device is also authenticated.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wieder - Claims 1-29 are obvious over Wieder.

  • Prior Art Relied Upon: Wieder (Patent 8,001,612).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wieder discloses all limitations of the challenged claims. Wieder teaches a method for automatically managing and transferring a user's digital content and usage rights across multiple user-devices. Petitioner mapped Wieder’s multiple “user-devices” for a single user to the claimed first and second devices. Wieder’s disclosure of “login-Info” for user identification and authentication was mapped to the claim limitation of authenticating the first device. The system’s ability to automatically make a user’s history and collection available on all active devices was argued to teach transmitting a "representation of the accessed content" to the second device. For device-to-device authentication, Petitioner contended it would be obvious to authenticate a direct connection (e.g., Bluetooth, which Wieder discloses) to ensure the “secure information transfers” that Wieder’s system is designed to provide.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner argued that all claim limitations were either expressly taught or would have been obvious to a person of ordinary skill in the art (POSITA) from Wieder's disclosure alone. For example, a POSITA would have understood that secure device-to-device communication, as taught by Wieder, inherently requires authentication between the devices before transferring content.
    • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success in implementing the claimed features, as they represented predictable applications of known technologies for managing content across a user's multiple devices as disclosed by Wieder.

Ground 2: Obviousness over Weel - Claims 1-29 are obvious over Weel.

  • Prior Art Relied Upon: Weel (Application # 2005/0251566).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Weel, which teaches a system for playing music by communicating between devices and a content server, renders the claims obvious. Weel’s disclosed "first device" and "second device" within a user's home network were mapped to the claimed devices. The petition argued that Weel teaches transmitting "information representative of the selected song(s)" from the first device to the second, satisfying the limitation of transmitting a representation of content. Weel’s system also discloses authentication via passwords for devices to communicate within a local area network and suggests using standard protocols like Bluetooth for direct device-to-device connections. Petitioner argued a POSITA would find it obvious to apply these authentication methods to both network-based and direct connections to establish secure communication.
    • Motivation to Combine (for §103 grounds): This is a single-reference ground. Petitioner argued a POSITA would have been motivated to implement standard, known authentication protocols over the mobile network and for direct device connections within Weel's system to enhance security, an implementation detail left to the skilled artisan.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in configuring Weel’s system as claimed, as it involved applying conventional authentication techniques to a known music-sharing architecture.

  • Additional Grounds: Petitioner asserted additional obviousness challenges against claims 1-29 based on Wieder in view of Griffiths (Patent 7,136,999) and Weel in view of Griffiths. In these grounds, Griffiths was cited for its explicit teaching of a "robust authentication mechanism" for device-to-device Bluetooth communication, which Petitioner argued would motivate a POSITA to explicitly add this feature to the systems of Wieder or Weel to further secure the data transmissions.

4. Key Claim Construction Positions

  • "processor configured for": Petitioner noted an ongoing dispute in parallel district court litigation regarding whether this term invokes 35 U.S.C. §112, paragraph 6. However, for the purpose of the IPR, Petitioner stated it was relying on the rebuttable presumption that §112/6 does not apply. Petitioner therefore applied the plain and ordinary meaning of the term, consistent with the Patent Owner's asserted position in the litigation, arguing the claims are unpatentable even under that broader construction.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §314(a) was unwarranted because the parallel district court proceeding was at an early stage. Key arguments included that final invalidity contentions and claim construction orders had not been filed or issued, discovery was not scheduled to close for several months, and the Markman hearing had not yet occurred. Petitioner also noted that its expert in the IPR was different from its expert in the district court, providing new evidence for consideration. Finally, Petitioner asserted that any delay in filing was due to the Patent Owner's strategic forum selection in a fast-paced venue (E.D. Tex.), not a lack of diligence by the Petitioner.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-29 of the ’986 patent as unpatentable.