Coinbase Inc v. Modern Font Applications LLC

1. Case Identification

• Case #: IPR2022-00435
• Patent #: 9,886,421
• Filed: January 20, 2022
• Petitioner(s): Coinbase, Inc.
• Patent Owner(s): Modern Font Applications LLC
• Challenged Claims: 1-17

2. Patent Overview

• Title: Techniques for Allowing Non-Standard Fonts to be Displayed
• Brief Description: The ’421 patent describes techniques for displaying characters from fonts not standard to a computer's operating system. The technology involves a server hosting a network document with an associated "font package" and an "exposure module" containing instructions to install the font package on a client computer for rendering.

3. Grounds for Unpatentability

Ground 1: Obviousness over Collins, Gautier, and Schaefer - Claims 1-9

• Prior Art Relied Upon: Collins (Patent 5,781,714), Gautier (Patent 7,127,493), and Schaefer (Patent 7,028,305).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Collins taught the core system of a web server providing a client with an HTML document and associated portable font resource (PFR) files, which act as a "font package," to display web pages with non-standard fonts via a browser extension. Gautier was cited for teaching the adaptation of such web technologies for various client devices, including the claimed hand-held devices. Schaefer allegedly supplied the method for managing these fonts through a temporary installation process using a virtualized layer ("Operating System Guard"), which Petitioner mapped to the claim limitations of installing fonts in a "temporary fonts directory" and updating a "system font table" without permanently altering the client's operating system.
  • Motivation to Combine: A POSITA would combine Collins and Gautier to apply dynamic font technology to the growing market of hand-held devices. A POSITA would further incorporate Schaefer to provide a robust and OS-agnostic mechanism for the temporary font installation that Collins described but did not detail, thereby ensuring cross-platform compatibility and preventing permanent system changes.
  • Expectation of Success: Petitioner asserted success was predictable, as the combination involved integrating known software components for their established and intended purposes.

Ground 2: Obviousness over Collins, Gautier, Schaefer, and Parthasarathy - Claims 1-5 and 11-17

• Prior Art Relied Upon: Collins (Patent 5,781,714), Gautier (Patent 7,127,493), Schaefer (Patent 7,028,305), and Parthasarathy (Patent 6,347,398).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the first, adding Parthasarathy to address the installation of the "exposure module" (i.e., Collins' browser extension). Petitioner argued that Parthasarathy taught a standard, well-known method for automatically downloading and installing browser plug-ins "on demand" using an <OBJECT> tag embedded in an HTML document. This provided the specific mechanism for obtaining and installing the browser extension software that was not detailed in Collins.
  • Motivation to Combine: A POSITA would use Parthasarathy's well-known plug-in technique to distribute Collins' browser extension. This approach would make the font application independent of any specific browser, avoid browser bloat, and allow for efficient, on-demand updates to the font-handling functionality, a known problem when using non-standard HTML tags like those in Collins.
  • Expectation of Success: Petitioner argued that combining these elements was routine, as downloading and installing browser extensions from a remote computer was a common practice by 2001.

Ground 3: Obviousness over Collins, Gautier, Schaefer, and Miller - Claim 10

• Prior Art Relied Upon: Collins (Patent 5,781,714), Gautier (Patent 7,127,493), Schaefer (Patent 7,028,305), and Miller (Patent 7,537,167).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Miller to the primary combination to address the power-saving limitations recited in dependent claim 10. Petitioner contended that Miller taught power management techniques for portable devices, including entering a "sleep mode" where the radio transceiver is powered down to conserve the battery when network connectivity is not required. Petitioner mapped this to the claimed step of disconnecting from the network after receiving the font package but before rendering the display.
  • Motivation to Combine: A POSITA would be strongly motivated to incorporate Miller's power-saving techniques to conserve battery life, a critical and well-understood issue for the hand-held devices of the primary combination. The period after a font package is downloaded is an ideal time to power down the transceiver, as network connectivity is not needed for the local rendering process.
  • Expectation of Success: Petitioner asserted a high expectation of success in implementing such a known power-management strategy to address the widely recognized problem of battery drain in portable electronics.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is inappropriate because the primary prior art references and the specific combinations asserted were never presented to or evaluated by the Examiner during prosecution, making the petition non-cumulative. Petitioner also argued that denial under §314(a) based on Fintiv is inappropriate because there is no co-pending trial date, and the Patent Owner has not filed a counterclaim for infringement in the related district court case.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of Patent 9,886,421 as unpatentable.