PTAB

IPR2022-00890

IBM Corp v. Ebates Performance Marketing Inc

Key Events

Petition

petition

Title: Supporting a Plurality of Application Sessions in a Communication Network
Brief Description: The ’968 patent discloses systems and methods for supporting multiple, simultaneous application sessions (e.g., voice, video, data) for a single subscriber over a packet network. The technology purports to address the need for networks to support multiple services concurrently for a single user on an endpoint device.

Prior Art Relied Upon: Pan (Application # 2004/0081159).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Pan teaches all limitations of the independent claims. Pan discloses a method for establishing a "multi-media session" comprising a first communication session (e.g., text or voice data) and a second, concurrent communication session (e.g., video) using Session Initiation Protocol (SIP). Petitioner asserted that Pan’s SIP proxy, which it equates to a session controller, receives a plurality of session setup requests from a subscriber’s endpoint device and establishes these sessions simultaneously. Pan's disclosure of concurrent first and second sessions was argued to teach the claimed "plurality of active application sessions" that are "active simultaneously for the subscriber."

Prior Art Relied Upon: Pan (Application # 2004/0081159) and Hoshino (Application # 2005/0220039).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that to the extent Pan does not explicitly teach sessions with dedicated "application servers," Hoshino supplies this teaching. Hoshino discloses a SIP-based network where a session management server establishes connections between client terminals and a plurality of application servers that provide information services, such as streaming servers for music and movies, conference call servers, and instant message servers.
- Motivation to Combine: A POSITA would combine Hoshino’s application servers with Pan’s system to provide users with a wider range of "information services provided by content providers," thereby improving the user experience and overall system usability. Pan expressly teaches its system can be used with any suitable communication device, which a POSITA would understand to include application servers like those in Hoshino.
- Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references because their underlying technologies are compatible. Both Pan and Hoshino describe systems that use IP networks, employ SIP for signaling and session establishment, and utilize a central SIP server/proxy, making the integration of Hoshino's application servers into Pan's framework straightforward and predictable.

Prior Art Relied Upon: Kumar (Application # 2005/0021826).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Kumar independently renders the claims obvious. Kumar discloses a multimode gateway controller (MMGC) that uses SIP to allow a user to "interact with different information gateways ... simultaneously." For example, Kumar’s MMGC helps in initiating a data session while a user is already in a voice session. Petitioner contended that Kumar’s MMGC is a session controller that receives SIP INVITE requests from a subscriber's mobile device (an endpoint device) and establishes a plurality of active application sessions with various information gateways, which function as application servers (e.g., a voice gateway and a video streaming gateway).
Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Pan, Hoshino, and Kumar with secondary references Afshar (Application # 2005/0083912) for teaching a call control element and Kuure (Application # 20056/0034202) for teaching a broadcast server.

Petitioner proposed constructions for three key terms, arguing two are means-plus-function limitations under 35 U.S.C. § 112.
"means for receiving..." and "means for establishing..." (claims 16A, 16B): Petitioner identified the function for these terms as receiving session requests and establishing simultaneous sessions, respectively. The corresponding structure was argued to be a processor and an associated module (e.g., software) within the communication network that performs the recited function using a signaling protocol, such as SIP.
"service over internet protocol network" (claim 3): Petitioner proposed this term be construed according to the explicit definition in the ’968 patent’s specification as "a network that is capable of carrying voice, video, and data signals as packetized data over an IP network."

Petitioner argued that discretionary denial under either §314(a) or §325(d) would be inappropriate.
Fintiv Factors (§314(a)): Petitioner contended that the co-pending district court litigation is in a nascent stage. The trial date is set for January 15, 2024, well after the statutory deadline for a Final Written Decision in the IPR, and the court has not yet considered any substantive invalidity arguments.
Advanced-Bionics Factors (§325(d)): Petitioner argued that its challenge relies on prior art that is materially different from the art considered during prosecution. Specifically, Petitioner asserted that Pan and Kumar demonstrate the very limitation ("establishing simultaneously...a plurality of active application sessions") that the patent owner successfully argued was absent from the prior art of record during prosecution.

Petitioner requests the institution of an inter partes review and cancellation of claims 1-20 of Patent 8,072,968 as unpatentable.