PTAB

IPR2022-00729

Enseo LLC v. Wesley Boudville

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Cellphone Changing an Electronic Display That Contains a Barcode
  • Brief Description: The ’542 patent describes a system where a controller retrieves images from a website for display on a monitor along with a scannable barcode. An electronic computing device, such as a cellphone, scans the barcode to access the website, and user inputs on the device are sent to the website, which in turn causes the controller to update the images and/or barcode on the monitor.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yamaguchi and Okada - Claims 1-2, 4, and 13-14 are obvious over Yamaguchi in view of Okada.

  • Prior Art Relied Upon: Yamaguchi (Japan Application # 2008256950A) and Okada (Application # 2007/0016934).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yamaguchi disclosed a system substantially similar to the one claimed, including a display device (controller and monitor) showing video alongside a QR code (barcode). A mobile phone (electronic computing device) scans the code to access a URL, interact with a website, and send information back to a management computer. However, Petitioner contended that Yamaguchi did not explicitly teach updating the monitor display in response to the user's interaction with the website. Okada allegedly supplied this missing element by teaching a system where a user scans a QR code on a television to interact with a management server, which then enables updated content to be viewed on the television.
    • Motivation to Combine: A POSITA would combine Yamaguchi and Okada to improve the user experience of Yamaguchi’s informational system. Petitioner asserted that Okada taught using a mobile device to update a display when a direct two-way communication link is unavailable or too costly. A POSITA would have been motivated to apply Okada’s known technique for responsive display updates to Yamaguchi’s similar barcode-based advertising system to enhance user participation and create a more dynamic and interactive display, which would be an obvious improvement.
    • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success because combining the known and compatible systems of Yamaguchi and Okada involved applying predictable solutions to achieve a more interactive system, an established goal in the art.

Ground 2: Obviousness over Minnick - Claims 1-2, 4, and 13-14 are obvious over Minnick.

  • Prior Art Relied Upon: Minnick (Application # 2012/0130851).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Minnick, as a single reference, rendered the challenged claims obvious. Minnick allegedly disclosed a complete interactive system where a content receiver, such as a television, displays a QR code alongside programming. A user scans the code with a cellular telephone to order content (e.g., a movie) from a programming provider’s server (website). The user interacts with the provider via their phone to confirm the order, and upon confirmation, the provider transmits the ordered content back to the television, thereby updating its display. Petitioner mapped Minnick’s television/programming receiver to the claimed controller and monitor, its QR code to the barcode, its cellular telephone to the electronic computing device, and the programming provider to the website, arguing it disclosed every element of the claimed interactive loop.
    • Motivation to Combine: As a single-reference obviousness ground, no motivation to combine was required. Petitioner’s argument was that all claimed elements and their combination were present or suggested within Minnick itself.

4. Key Claim Construction Positions

Petitioner argued for specific constructions under the Broadest Reasonable Interpretation standard, asserting they were critical to the invalidity analysis.

  • "controller": Petitioner proposed that "controller" should be construed broadly to mean any device with a computer processor that sends instructions, wired or wirelessly, to a monitor. This construction would encompass components like a television, set-top box, or content receiver as described in the prior art.
  • "monitor" vs. "screen": Petitioner highlighted that the patent used these terms in a potentially confusing manner. It argued that in the context of the claims, "monitor" referred to the primary display that shows the barcode (e.g., screen 103 in the specification, like a television). In contrast, "screen" referred to the separate display on the user's electronic computing device (e.g., the cellphone screen) used to view the retrieved website. This distinction was central to mapping the prior art systems, which involved two separate displays.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-2, 4, and 13-14 of the ’542 patent as unpatentable.