PTAB

IPR2021-01191

Unified Patents LLC v. WSOU Investments LLC

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1. Case Identification

2. Patent Overview

  • Title: Device and Method for Broadcasting Information in an Access Network
  • Brief Description: The ’770 patent relates to systems for distributing broadcast data to users based on specific criteria. The invention describes installing a device with filtering capabilities at a network node to target information to specific downstream users based on objective criteria (e.g., location) or subjective criteria (e.g., interests).

3. Grounds for Unpatentability

Ground 1: Obviousness over Tso and Haber - Claims 1-2, 4-6, and 16-18 are obvious over Tso in view of Haber.

  • Prior Art Relied Upon: Tso (Patent 6,047,327) and Haber (Patent 5,896,379).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tso disclosed a communication system for broadcasting information ("InfoCasts") from servers to clients based on filtering criteria, meeting most limitations of independent claims 1 and 16. Tso’s system included interconnected nodes (servers, clients), a mechanism for conveying information streams, and a "schedule/resource controller" coupled with a "subscriber database" that functions as the claimed "node profile management circuit." This circuit managed user profiles based on objective (location) and subjective (user interests) criteria. Tso, however, did not explicitly disclose its filtering mechanism controlling a switch. Haber allegedly cured this deficiency by teaching a switching node with a data processor that performs broadcast functions, including controlling a switch to route packets to specific destinations.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Tso's targeted content filtering system with Haber's efficient switching architecture. Haber taught that moving data processing functions into a processor within a network switch improves network efficiency by reducing the transport of redundant information. A POSA would have been motivated to implement Tso’s filtering logic within a Haber-like switching node to selectively route broadcast data, thereby improving network performance, a key goal discussed in Haber.
    • Expectation of Success: A POSA would have expected success in this combination because it involved applying Tso's known filtering application to Haber's known switching architecture using routine programming techniques. The result—more efficient, targeted data broadcasting—was predictable.

Ground 2: Obviousness over Tso, Ericsson, and Haber - Claims 1-2, 4-6, and 16-18 are obvious over Tso in view of Ericsson and Haber.

  • Prior Art Relied Upon: Tso (Patent 6,047,327), Ericsson (International Publication No. WO 97/41654), and Haber (Patent 5,896,379).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative or supplemental argument to Ground 1. Petitioner asserted that if Tso’s "schedule/resource controller" and "subscriber database" were deemed insufficient to teach the claimed "node profile management circuit," Ericsson explicitly disclosed this element. Ericsson described a "profile management system" connected to a customer database for disseminating information to mobile subscribers based on customer-defined profiles. This system served as an explicit hardware-based circuit for managing user profiles. The combination with Haber remained the same as in Ground 1, providing the teaching of a filter controlling a switch.
    • Motivation to Combine: The motivation to combine Tso and Haber was identical to Ground 1. A POSA would have been motivated to incorporate Ericsson’s profile management system into Tso's broadcast framework as a straightforward implementation of database management functionality. Both Tso and Ericsson addressed the same problem of targeted information delivery based on user profiles. Using Ericsson's dedicated system to manage profiles in Tso's server was presented as a simple substitution of one known element (Tso’s database management method) for another (Ericsson’s profile management system) to achieve a predictable result.
    • Expectation of Success: A POSA would have expected success in integrating Ericsson’s system, as it involved combining prior art elements according to known methods (e.g., standard database and programming techniques like ODBC and SQL) to perform their intended functions.

4. Key Claim Construction Positions

  • "mechanism configured for filtering..." (Claim 1) and "Filter Mechanism" (Claim 16): Petitioner contended these terms should be construed as a "filter" that performs the recited function. In the alternative, if construed under pre-AIA 35 U.S.C. §112, ¶6, Petitioner proposed that the corresponding structure was a computer-executable algorithm or special-purpose hardware configured to: (1) receive profile and broadcast criteria, (2) compare them, and (3) command a switch whether to transmit an information item.
  • "mechanism configured for synthesizing..." (Claim 2) and "synthesizing mechanism" (Claim 18): Petitioner argued these terms should be construed to mean "a synthesizer" performing a synthesis function. Alternatively, under §112, ¶6, Petitioner asserted the corresponding structure was a circuit or software algorithm that: (1) receives profile information from downstream nodes, (2) synthesizes it, and (3) supplies the results to the node profile management circuit to automatically update it.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not deny institution under 35 U.S.C. §325(d) because the petition raised new issues not previously considered by the USPTO. During prosecution, the examiner relied on prior art (Minborg) that the applicant distinguished as teaching "pull" technology. In contrast, Petitioner's primary references, Tso and Ericsson, were not of record and, like the challenged patent, relied on "push" broadcast technology, presenting a new and more relevant body of prior art.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-6, and 16-18 of the ’770 patent as unpatentable.