PTAB

IPR2022-00826

WebinarNet Inc v. ON24 Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Communication Console with Component Aggregation
  • Brief Description: The ’480 patent discloses a system for providing online presentations where an "application framework" on an audience computing device receives and executes a "communication manager object" and at least two "communications components" (e.g., for slides or media). The system operates entirely online, such as within a browser, to generate and display the presentation without requiring a user to download and install a dedicated application.

3. Grounds for Unpatentability

Ground 1: Anticipation by Deutscher - Claims 1-20 are unpatentable under 35 U.S.C. §102 over Deutscher.

  • Prior Art Relied Upon: Deutscher (Application # 2003/0174160).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Deutscher, which discloses an "interactive, multi-media presentation viewing system," anticipates every limitation of the challenged claims. Petitioner asserted that Deutscher’s browser-based presentation viewing system is the claimed "application framework." The system’s modules for providing "synchronized presentation graphics, video, and text displays" are argued to be the claimed "communication manager object." Further, Deutscher's graphical user interface, which includes a video sector, a slide presentation sector, and control buttons, were identified as the claimed "media communications component," "slide communications component," and "menu ribbon component," respectively. Petitioner contended that this entire system is received and executed on a client computer via a network to present media without downloading or installing an application, thus meeting the core limitations of independent claims 1, 10, 11, 16, 17, and 20.

Ground 2: Anticipation by Welch - Claims 1-3, 5, and 7-20 are unpatentable under 35 U.S.C. §102 over Welch.

  • Prior Art Relied Upon: Welch (WO 01/35056).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Welch discloses a system for providing coordinated multi-media presentations displayed within a browser on a client computer. Welch's viewer program (e.g., Internet Explorer) was mapped to the claimed "application framework." A "document replacement function" that manages the display of new content was argued to be the "communication manager object." Petitioner asserted that Welch explicitly teaches displaying sequential slide shows, audio/video files, and using pointers to track progress and pause/stop the presentation, which directly correspond to the claimed slide, media, and menu ribbon communications components. The system is explicitly described as being pre-configured for display in a standard browser "without the need for additional software," thus anticipating the challenged claims.

Ground 3: Anticipation by Marchon - At least claim 1 is unpatentable under 35 U.S.C. §102 over Marchon.

  • Prior Art Relied Upon: Marchon (Application # 2005/0015719).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Marchon's system for remote conferencing anticipates the limitations of at least claim 1. It was contended that the web page transmitted to and displayed by a user's web browser in Marchon constitutes the "application framework." The various interactive elements of the user interface, such as the video display element and control buttons, were asserted to be the claimed "communications components." Petitioner argued that this system presents information to a user within a browser without requiring the download and installation of a separate application, thereby meeting the limitations of claim 1.

  • Additional Grounds: Petitioner asserted an additional anticipation challenge (Ground 3) against at least claim 1 based on Dunlap (Patent 6,560,637), arguing its web-enabled presentation device that sends presentation images to conventional web browsers taught the claimed invention.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate for several reasons. First, it was asserted that a stay in the parallel district court proceeding is highly likely, citing an 89% stay grant rate in the Northern District of California, which would weigh against denial. Second, Petitioner argued that the district court trial date was not yet set but was estimated to be close to the statutory deadline for a Final Written Decision (FWD), making the timing factor neutral or weighing against denial. Third, Petitioner noted that investment in the parallel case was low, as no claim construction orders had been issued. Finally, Petitioner contended that the merits of the petition are exceptionally strong, further weighing against exercising discretion to deny institution.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’480 patent as unpatentable.