Coinbase Inc v. Modern Font Applications LLC

1. Case Identification

• Case #: IPR2022-00436
• Patent #: 9,892,093
• Filed: January 20, 2022
• Petitioner(s): Coinbase, Inc.
• Patent Owner(s): Modern Font Applications LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Methods, Systems and Computer Program Products for Allowing Characters of Fonts that are not Standard to an Operating System of a Computer to be Displayed
• Brief Description: The ’093 patent discloses methods for allowing non-standard fonts to be displayed and used by a computer's operating system. The system involves a server that provides a network document and an associated font package to a browsing computer, which then installs the font for rendering.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7-10, and 14-21 are obvious over Collins, Gautier, and Schaefer.

• 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 the combination of references teaches all limitations of the challenged claims. Collins, the primary reference, disclosed a client-server system for displaying web documents with non-standard fonts by downloading portable font resource (PFR) files and installing them into the client’s operating system font manager. Gautier supplied the missing teaching of applying such a system to the claimed "hand-held device," as Gautier explicitly addressed delivering web content to clients with varying capabilities, including PDAs and cellular phones. Schaefer provided the specific implementation details for the claimed "installation module" that "copies the font file to a temporary font directory" and "updates a system font table." Schaefer disclosed an operating system abstraction layer that manages fonts for applications "on the fly," including installing them to temporary locations and registering them with a system font table via API calls to ensure availability.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Collins and Gautier to extend Collins' dynamic font technology to the growing market of hand-held devices, ensuring consistent document display across platforms. A POSITA would further incorporate Schaefer's teachings to solve the technical problem of integrating Collins' font installation across different operating systems in a clean, temporary manner. Schaefer’s abstraction layer provided a known method for managing on-demand software components, like fonts, without permanently altering the client's system configuration, which was directly applicable to Collins' "on-demand" browser extension.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination. It involved integrating known software components (a font system, handheld device support, and an OS abstraction layer) to achieve the predictable result of displaying documents with custom fonts on a mobile device.

Ground 2: Claims 6 and 11-13 are obvious over Collins, Gautier, Schaefer, and Parthasarathy.

• 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 built upon the combination in Ground 1 and added Parthasarathy to address the limitations in dependent claims 6 and 11, which specified that the font file is exposed to the operating system using a "plugin, a browser extension, or an Active X Control." While Collins disclosed an "extended Web browser program," it did not specify its implementation. Parthasarathy explicitly taught a technique for automatically downloading and installing software components—including ActiveX controls and plugins—using standard HTML tags like <OBJECT>. Petitioner asserted that Parthasarathy provided the well-known mechanism for implementing the functionality described in Collins.
  • Motivation to Combine: A POSITA would be motivated to implement the font-handling functionality of the Collins/Gautier/Schaefer combination using the plugin architecture taught by Parthasarathy. This approach would avoid creating bloated, monolithic browsers and instead allow for dynamic, on-demand installation of features. Since Collins already used non-standard HTML tags, a POSITA would find it logical to use another standard tag, as taught by Parthasarathy, to trigger the download of the necessary browser extension, thereby streamlining updates and improving portability.
  • Expectation of Success: The expectation of success was high, as downloading and installing browser plugins was a routine and well-understood practice by the priority date. Combining Parthasarathy’s method with the system of Collins was a straightforward application of a known software distribution technique to deliver a specific functionality.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the asserted prior art combinations were not presented to or evaluated by the Examiner during prosecution. While a related Collins patent was of record, Petitioner argued its arguments relied on a specific WWW embodiment not present in the cited reference.
• Petitioner also contended that discretionary denial under Fintiv was not warranted. Although a co-pending district court case existed, the Patent Owner had not filed a counterclaim for infringement against the Petitioner, and no trial date was set, suggesting the PTAB proceeding would not be duplicative of an imminent court resolution.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-21 of the ’093 patent as unpatentable.