PTAB

IPR2022-00434

Coinbase Inc v. Modern Font Applications LLC

Key Events

Petition

Title: System for Displaying Non-Standard Fonts in Network Documents
Brief Description: The ’127 patent describes techniques for displaying characters of fonts not standard to a computer’s operating system. The system involves a server providing a browsing computer with a network document, a separate “font package” containing formatting data, and an “exposure module” with instructions to install or temporarily expose the non-standard fonts to the browsing computer’s operating system.

Prior Art Relied Upon: Collins (Patent 5,781,714) and Parthasarathy (Patent 6,347,398).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Collins taught a system for displaying web documents with dynamic, non-standard fonts by using a browser extension and separate portable font resource (PFR) files. Collins’ PFR files corresponded to the claimed “font package,” and its browser extension corresponded to the “exposure module.” However, Collins did not specify how its browser extension was installed. Parthasarathy supplied this missing element by teaching a method to automatically download and install software components, such as browser plug-ins, using a standard HTML <OBJECT> tag that points to the component’s location.
- Motivation to Combine: A POSITA would combine these references to implement an efficient, on-demand installation mechanism for the font-rendering functionality. Using Parthasarathy’s well-known technique to download Collins’ browser extension only when needed would avoid browser bloat, simplify software updates, and address the known problem of handling non-standard HTML tags, which Collins employed.
- Expectation of Success: Success was predictable because combining modular software components and using standard HTML tags like <OBJECT> to trigger plug-in downloads were routine and well-understood practices at the time.

Prior Art Relied Upon: Collins (Patent 5,781,714) and Schorr (Patent 6,608,697).
Core Argument for this Ground:
- Prior Art Mapping: This ground focused on claims requiring an “adaptation module” for the “translation of function calls and returns” to provide communication with other applications. Petitioner asserted that while Collins disclosed the browser extension for font rendering, it did not explicitly describe an adaptation module for cross-application communication. Schorr disclosed this feature with its “enabler module,” a browser-specific plug-in manager that acts as an interface, translating function calls between a browser and various application plug-ins to ensure compatibility.
- Motivation to Combine: A POSITA would be motivated to integrate Schorr’s enabler module with Collins’ system to enhance the portability and interoperability of the dynamic font technology. This combination would allow a single version of Collins’ browser extension (as an application plug-in) to function across different browsers, each equipped with its specific Schorr enabler. This approach would eliminate the need to develop multiple browser-specific versions of the font plug-in, a known challenge in web development.
- Expectation of Success: The combination used well-known plug-in and interface technology to achieve the predictable result of enhanced compatibility.

Prior Art Relied Upon: Collins (Patent 5,781,714), Parthasarathy (Patent 6,347,398), and Schorr (Patent 6,608,697).
Core Argument for this Ground:
- Prior Art Mapping: This ground combined the teachings of the previous two grounds to render claims covering a complete, flexible, and browser-agnostic system. Petitioner argued Collins provided the core dynamic font technology. Parthasarathy provided the on-demand download and installation mechanism via the <OBJECT> tag. Schorr provided the "adaptation module" (its enabler module) to ensure the font plug-in could communicate with different browsers and other plug-ins.
- Motivation to Combine: A POSITA would have been motivated to combine all three references to create a superior system for distributing and rendering dynamic fonts. The motivation from Ground 1 (efficient, on-demand installation) and Ground 2 (browser compatibility) would lead a POSITA to use Parthasarathy's method to deliver both Collins' font extension and Schorr's enabler module. This would create a flexible, efficient, and universally compatible system, leveraging the distinct advantages of each prior art reference.
- Expectation of Success: Given that each component addressed a known problem using conventional techniques (on-demand downloads, plug-in interfaces), a POSITA would have reasonably expected that integrating them would successfully result in a comprehensive and robust system.

§325(d) Arguments: Petitioner argued that discretionary denial under §325(d) was inappropriate because the core prior art references (Collins, Parthasarathy, Schorr) and the specific combinations asserted in the petition were never presented to or evaluated by the Examiner during the original prosecution.
§314(a) Arguments: Petitioner argued that discretionary denial under the Fintiv factors was inappropriate because, in the co-pending district court litigation, the Patent Owner had not filed a counterclaim for infringement against the Petitioner, and no trial date had been set, indicating the PTAB proceeding would not be duplicative of an imminent court proceeding.

Petitioner requested institution of an inter partes review and cancellation of claims 1-28 of Patent 8,522,127 as unpatentable.