Google LLC v. BoccOne LLC

1. Case Identification

• Case #: IPR2020-00850
• Patent #: 10,027,726
• Filed: April 17, 2020
• Petitioner(s): Google LLC, LG Electronics Inc., and LG Electronics U.S.A, INC.
• Patent Owner(s): Boccone, LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: Sharing Media Using Face Recognition Information
• Brief Description: The ’726 patent discloses computer-implemented methods for finding and sharing images using face recognition. The claimed device performs two primary functions: (1) displaying a first set of images containing a face selected by a user, based on locally generated face recognition information, and (2) displaying or sharing a second set of images containing a face recognized using face recognition information received from a third party's device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Krupka - Claims 1-30 are obvious over Krupka.

• Prior Art Relied Upon: Krupka (Application # 2011/0148857).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Krupka, which was not considered during prosecution, discloses all limitations of the challenged claims. Krupka teaches a system with a graphical user interface (GUI) for building "face models" (the '726 patent's "face recognition information") by tagging faces in images. The system then uses these locally created face models to find and display other photos of the same person from the user's collection, meeting the limitations related to the "first set of images." Critically, Krupka also expressly discloses sharing these face models between different users and devices. A second user can receive a face model from a first user and use it to find photos of the first user within the second user's own photo collection, which can then be shared back. Petitioner asserted this directly teaches the core functionality of using third-party face recognition information to find and share a "second set of images," which was the basis for the patent's allowance. Krupka also disclosed the conventional hardware (processor, memory, screen, input) recited in the claims.
  • Key Aspects: Petitioner contended that Krupka alone teaches both key inventive concepts alleged in the ’726 patent: local face model creation/use and remote face model reception/use.

Ground 2: Obviousness over Perlmutter and Krupka - Claims 1-30 are obvious over Perlmutter in view of Krupka.

• Prior Art Relied Upon: Perlmutter (Patent 7,783,085) and Krupka (Application # 2011/0148857).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Perlmutter discloses a conventional photo management system that performs the first primary function of the ’726 patent. Perlmutter teaches a user selecting a "query face" from their photo album, building a "face feature vector" (equivalent to a face model), and using it to find and display all other photos of that person within the user's own local photo album. This maps to the claims' limitations regarding finding and displaying a "first set of images" based on a user-selected face. Perlmutter, however, is limited to a single user's photo collection. Krupka remedies this deficiency by teaching a system for sharing face models between users to find and share photos across different users' photo collections.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have recognized that Perlmutter’s system was limited to a single user's photo library, a shortcoming explicitly identified by Krupka. A POSITA would combine Krupka’s teachings on sharing face models with Perlmutter’s system to overcome this limitation. This combination would allow users to leverage Perlmutter's face recognition capabilities not only on their own photos but also to find photos of interest in friends' and family's collections, as taught by Krupka.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Krupka discloses that its image finding/sharing module can be implemented as a "plug-in module" for an existing photo management application, such as the system described in Perlmutter. This provides a clear and predictable path for integrating the two systems.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d) because the primary prior art references, Krupka and Perlmutter, were not before the examiner during prosecution.
• Petitioner also argued against discretionary denial under Fintiv (§314(a)), asserting that the parallel district court litigation was not at an "advanced state." It was noted that no trial date had been set, and pending motions to transfer venue could significantly alter the case schedule, making an IPR the more efficient path to resolution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’726 patent as unpatentable.