PTAB

IPR2022-00727

Enseo LLC v. Wesley Boudville

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Cellphone changing an electronic display that contains a barcode
  • Brief Description: The ’632 patent describes a system where a controller retrieves images from a website and displays them on a monitor along with a barcode. A user’s electronic device (e.g., a cellphone) scans the barcode to access the website via an encoded URL, and user inputs on the device can then cause the controller to update the images or barcode displayed on the monitor.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yamaguchi and Okada - Claims 1-3, 7, and 14-15 are obvious over Yamaguchi in view of Okada.

  • Prior Art Relied Upon: Yamaguchi (Japan Application Publication No. 2008256950A) and Okada (Application # 2007/0016934).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yamaguchi disclosed the core system of the ’632 patent. Yamaguchi taught a display device (monitor) showing advertising video alongside a QR code (barcode), which a user’s mobile phone could scan to access a website. The system included a management computer (controller) that provided the video and QR code data to the display via the Internet. Petitioner asserted that Okada supplied the missing element of updating the monitor based on user interaction. Okada disclosed a system where a television displayed a QR code for a program, which a user’s cellphone scanned to interact with a server (e.g., for payment). Following this interaction, the user’s viewing of the program on the television was enabled. The combination of Yamaguchi's display system and Okada's user-interaction-based update functionality was alleged to render the challenged claims obvious.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Yamaguchi and Okada to improve user participation and system efficiency. A POSITA would have recognized that applying Okada’s interactive, transactional functionality to Yamaguchi’s informational advertising system was a known technique to improve a similar device. This combination would predictably enhance user engagement by making the displayed content responsive to user actions on the associated website, thereby coordinating the on-site display with backend server interactions.
    • Expectation of Success: Given that both references employed similar technologies (QR codes on a main display scanned by a mobile device to access web services), a POSITA would have had a reasonable expectation of success in integrating Okada’s interactive features into Yamaguchi’s system to create a more dynamic and responsive user experience.

Ground 2: Obviousness over Minnick - Claims 1-3, 7, and 14-15 are obvious over Minnick.

  • Prior Art Relied Upon: Minnick (Application # 2012/0130851).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Minnick, as a single reference, disclosed all elements of the challenged claims. Minnick taught a system where a television (monitor and controller) displayed a commercial for a movie along with a dynamically generated QR code (barcode). A user scanned the code with a cellular telephone (electronic computing device) to access a server (website) to order the movie. The user confirmed the order via an input on their phone, and after receiving confirmation, the programming provider transmitted the movie to the television, thereby updating the monitor. Petitioner argued this single reference taught a controller, a website, a monitor displaying a barcode, a mobile device for scanning and interacting, and a mechanism for updating the monitor based on user inputs sent to the website. The system and method claims were alleged to be fully taught or rendered obvious by this disclosure.

4. Key Claim Construction Positions

Petitioner argued that several claim terms required construction under the broadest reasonable interpretation standard, highlighting a critical inconsistency in the patent’s use of "monitor" and "screen."

  • "monitor" vs. "screen": The petition emphasized that while the specification referred to the main display as "screen 103," the claims used the term "monitor" to refer to this main display. Conversely, the term "screen" in the claims referred to the separate screen of the user's electronic computing device (e.g., a cellphone). Petitioner described this usage as "baffling and can be misleading," asserting that a clear understanding of this distinction was critical to properly mapping the prior art to the claim limitations.
  • "controller": Petitioner proposed construing "controller" broadly to mean any device with a computer processor that sends instructions, either wired or wirelessly, to a monitor. This would encompass the management computers, television receivers, and broadcast apparatuses disclosed in the prior art.
  • "website": This term was argued to mean a webserver that stores, processes, and delivers webpages to users, consistent with its function in the claimed invention and the prior art systems.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-3, 7, and 14-15 of Patent 8,532,632 as unpatentable.