Google LLC v. BoccOne LLC

1. Case Identification

• Case #: IPR2020-00851
• Patent #: 10,019,136
• Filed: April 20, 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: Media Sharing Based on Facial Recognition
• Brief Description: The ’136 patent discloses a device with a graphical user interface (GUI) for managing and sharing media. The system allows a user to select a face in an image, search for other images containing that same face, associate an identifier (e.g., a name) with the face, and share the resulting collection of images.

3. Grounds for Unpatentability

Ground 1: Obviousness over Perlmutter and Krupka - Claims 1-4, 10-11, 14-16, and 18-30 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 argued that Perlmutter disclosed the core functionality of the challenged claims, including a GUI for selecting a query face in an image, searching for other images containing that face, grouping the results into folders, labeling the folders with names, and providing options to share the images via email. However, Perlmutter did not explicitly describe certain implementation details. Krupka, which addresses similar face-based image finding and sharing systems, was alleged to supply these details, such as using a touch screen for GUI interaction, providing a GUI for selecting individual images to share, and including an address book for selecting email recipients. The combination was argued to teach all limitations of the independent claims, including displaying indicia with faces, receiving user selections, displaying resulting image sets, suggesting identifiers, storing a correspondence between the face and identifier, and providing sharing options.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Perlmutter and Krupka to improve Perlmutter’s known device with the conventional implementation details disclosed in Krupka. This combination represented an obvious use of known techniques to enhance a known device for predictable results. Specifically, a POSA would have been motivated to implement Krupka’s more detailed sharing interface (e.g., email address entry) and automatic sharing capabilities to address shortcomings in Perlmutter’s system.
  • Expectation of Success: A POSA would have had a reasonable expectation of success in combining the references because it would have required no more than ordinary software design skills to integrate Krupka’s well-understood GUI features into Perlmutter’s system.

Ground 2: Obviousness over Perlmutter/Krupka and Pantalone - Claim 5 is obvious over Perlmutter in view of Krupka and Pantalone.

• Prior Art Relied Upon: Perlmutter (Patent 7,783,085), Krupka (Application # 2011/0148857), and Pantalone (Patent 7,836,134).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Perlmutter/Krupka combination from Ground 1. Claim 5 recites suggesting an email address in response to a user entering a partial email address (i.e., auto-completion). Petitioner asserted that Pantalone taught this exact feature, describing a "predictive text input feature" for email programs that suggests destination email addresses from a contacts database as a user types.
  • Motivation to Combine: A POSA would combine Pantalone’s teachings with the email sharing functionality of the Perlmutter/Krupka system to add a well-known and desirable convenience feature. This would achieve "time sav[ings]" while reducing the risk of sending an email to the wrong recipient, a known problem that Pantalone explicitly addresses.
  • Expectation of Success: Integrating a standard auto-complete email feature into the combined Perlmutter/Krupka device’s email composition interface was presented as a straightforward task for a POSA.

Ground 3: Obviousness over Perlmutter/Krupka and Ganong - Claims 6-7 are obvious over Perlmutter in view of Krupka and Ganong.

• Prior Art Relied Upon: Perlmutter (Patent 7,783,085), Krupka (Application # 2011/0148857), and Ganong (Application # 2010/0287053).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also builds on the Perlmutter/Krupka combination. Claims 6 and 7 require sharing images that include faces corresponding to a search query using Boolean "AND" and "OR" operators, respectively. Petitioner argued that Ganong taught using Boolean operators via checkboxes to narrow face search results and create specific albums based on combined criteria.
  • Motivation to Combine: A POSA would be motivated to add Ganong’s Boolean search functionality to the Perlmutter/Krupka system to provide for more "sophisticated organization and presentation" of images, especially in large photo albums with many different people. This modification would make the process of finding and sharing specific image collections less "time consuming," a recognized problem addressed by Ganong.
  • Expectation of Success: Implementing text-based Boolean search, a well-known technique, into the search functionality of the Perlmutter/Krupka system would have been a routine task for a POSA with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 8-9, 12-13, and 17 based on adding Johnson (Patent 8,798,401) to the Perlmutter/Krupka combination to provide for time- and location-based image filtering and searching.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d) because none of the prior art references asserted in the petition were before the examiner during the original prosecution.
• Petitioner also argued that discretionary denial under Fintiv (§314(a)) was unwarranted because the parallel district court litigation was not at an "advanced state." Key factors cited included that no trial date was set, pending transfer-of-venue motions could upend the schedule, and a final election of prior art in the litigation was still months away.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’136 patent as unpatentable.