PTAB

IPR2021-00714

Roku Inc v. Flexiworld Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Wireless Data Output Controller and Method Thereof
  • Brief Description: The ’064 patent describes an "output controller" device that wirelessly receives digital content (e.g., print data, A/V content) from an information apparatus (e.g., PC, mobile device) and relays it via a wired connection to an output device (e.g., printer, television).

3. Grounds for Unpatentability

Ground 1: Obviousness over Ikonen and Beck - Claims 1-3, 5-6, 8-9, 15-18, and 20 are obvious over Ikonen in view of Beck.

  • Prior Art Relied Upon: Ikonen (Application # 2006/0112414) and Beck (Patent 6,604,140).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ikonen disclosed a "link module" (a wireless data output controller) that wirelessly receives A/V content from an external user device (e.g., mobile phone, PDA) and outputs it to a television via a wired SCART connection. This module contained the necessary wireless communication units, processing hardware, and wired interfaces recited in the independent claims. Petitioner contended Beck disclosed the missing service discovery elements, teaching a framework where devices in an ad-hoc network (including Bluetooth) discover each other by broadcasting service descriptors. These descriptors, which function as device profiles, contain information like service names and device location (e.g., IP address).
    • Motivation to Combine: A POSITA would combine Beck’s service discovery framework with Ikonen’s link module to improve usability. The benefits of service discovery were well-known, and it would have been an obvious improvement to allow user devices to automatically discover and interact with Ikonen’s device rather than requiring manual configuration. Beck’s framework was compatible with the Bluetooth networks disclosed in Ikonen.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Beck's framework was designed for remote services on mobile devices, and Ikonen's link module fit this paradigm by providing a remote A/V output service. The combination involved applying a known technique (service discovery) to a similar device (wireless media adapter) to yield predictable results.

Ground 2: Obviousness over Yamaguchi and Gu - Claims 1-4, 5-10, 14-18, and 20 are obvious over Yamaguchi in view of Gu.

  • Prior Art Relied Upon: Yamaguchi (Patent 7,355,732) and Gu (Patent 6,892,230).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Yamaguchi taught a printer "interface box" (a wireless output controller) that receives electronic documents from a wireless device (information apparatus) via Bluetooth or 802.11 and connects via a wire (e.g., USB, Ethernet) to a printer (output device). This interface box met most claim limitations for a printing-focused embodiment. Petitioner argued that Gu, which described the Universal Plug-and-Play (UPnP) framework, taught the claimed discovery and device profile features. Gu disclosed that UPnP devices announce their services on a network and provide "description documents" (device profiles) to other devices upon request.
    • Motivation to Combine: A POSITA would combine Gu's standardized UPnP framework with Yamaguchi's interface box to enhance interoperability. UPnP was a known, widely supported industry standard for device discovery. Applying UPnP to Yamaguchi’s device was an obvious way to allow various user devices to automatically discover and use the printing services without proprietary software.
    • Expectation of Success: Success was expected because the technologies were compatible. UPnP operates on IP networks, which are compatible with the 802.11 wireless LAN disclosed by Yamaguchi. Both references described a control point/controlled device paradigm, making Yamaguchi’s wireless device a natural fit for a UPnP control point and its interface box a natural fit for a UPnP controlled device.

Ground 3: Obviousness over Gu and Yamaguchi - Claims 5-10 and 14 are obvious over Gu in view of Yamaguchi.

  • Prior Art Relied Upon: Gu (Patent 6,892,230) and Yamaguchi (Patent 7,355,732).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground repurposed the same art to target A/V-focused claims. Petitioner argued that Gu disclosed using UPnP to stream A/V data between devices, including to A/V output devices like set-top boxes, TVs, and audio systems. Petitioner proposed modifying Gu’s set-top box concept by incorporating the wireless interface and external connectivity features of Yamaguchi’s interface box. This would result in a wireless controller (a set-top box) that wirelessly receives A/V content from a user device and outputs it to a TV or audio system.
    • Motivation to Combine: A POSITA would combine the references because set-top boxes and Yamaguchi's interface box were analogous devices; both receive content, process it, and output it to a conventional device (TV vs. printer). A POSITA would be motivated to adapt Yamaguchi’s wireless input functionality to Gu’s A/V set-top box to meet the known user demand for playing audio and video from PCs and mobile devices on home entertainment systems.
    • Expectation of Success: A POSITA would expect success as digital set-top boxes that processed and outputted A/V signals were well-known. The combination merely involved replacing a printer with a TV/audio system and adapting the controller to handle A/V data streams instead of print documents, which were known applications for the underlying UPnP technology disclosed in Gu.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Ortiz (Application # 2002/0058499) to add features like content decryption and passcode processing, and Garfunkel (Patent 6,615,404) to add the capability of receiving software updates.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not issue a discretionary denial under Fintiv. Key reasons included that the co-pending district court trial date was over a year away, minimal investment had been made in the litigation regarding invalidity issues, and Petitioner stipulated that it would not pursue in court any invalidity ground raised or that could have been reasonably raised in the IPR.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-10, 12, and 14-20 of the ’064 patent as unpatentable.