PTAB

IPR2022-01113

Roku Inc v. Flexiworld Technologies Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Specification of Smart Television for Rendering Digital Content
  • Brief Description: The ’811 patent claims systems and methods related to a "wireless television" that receives and renders digital content. Petitioner argued that while the claims recite a television, the patent’s specification is primarily directed to a universal data output method for printing, describing an "information apparatus" sharing raster image processing operations with an "output device" to eliminate the need for dedicated printer drivers.

3. Grounds for Unpatentability

Ground 1: Claims 20-22 are obvious over Manowitz in view of the 802.11 Standard.

  • Prior Art Relied Upon: Manowitz (Patent 6,614,470) and the IEEE 802.11 Standard (1999 Edition).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Manowitz disclosed a wireless output device for a television, comprising an image processing device (e.g., a set-top box) and a television receiver. This system wirelessly receives digital images from a mobile source (like a digital camera) and processes them for display. The petition contended that Manowitz teaches all limitations of independent claim 20 except for the requirement that the wireless communication link be compatible with the IEEE 802.11 protocol standard. The 802.11 Standard was asserted to teach this missing element, including security features like shared key authentication that meet further limitations of the claim.
    • Motivation to Combine: A POSITA would combine Manowitz with the 802.11 Standard to leverage a well-known, industry-backed wireless protocol. This would provide significant advantages, including interoperability with a wide range of devices, reduced costs due to competition and economies of scale, and access to a full-featured standard with robust security options.
    • Expectation of Success: A POSITA would have had a high expectation of success because the 802.11 Standard supported data rates and ranges sufficient for Manowitz’s image-streaming application and offered flexible network configurations (e.g., simple ad hoc networks) suitable for the described system.

Ground 2: Claims 9, 10, 11, 14, 16, and 19 are obvious over Manowitz and the 802.11 Standard in view of Engeldrum.

  • Prior Art Relied Upon: Manowitz (Patent 6,614,470), the IEEE 802.11 Standard (1999 Edition), and Engeldrum (Patent 5,638,117).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Manowitz and the 802.11 Standard to address limitations in claim 9 related to color processing. Petitioner asserted that Engeldrum teaches a system for characterizing and modifying the color output of a display device, such as a television, to achieve desired characteristics. Engeldrum’s software-based method allows a user to perform color calibration, which Petitioner argued meets the "color correction or a color management operation" limitation recited in claim 9.
    • Motivation to Combine: A POSITA would be motivated to incorporate Engeldrum’s teachings to improve the Manowitz system. Since Manowitz’s system is for displaying images on a television, the quality of color rendition would be important. Engeldrum provides a user-friendly, software-based method to enhance color accuracy, which would be a desirable improvement and a logical addition to the "advanced features for processing images" already suggested by Manowitz.
    • Expectation of Success: Success would be expected because Engeldrum’s method is applicable to televisions and relies on conventional programming that could be implemented on Manowitz’s image processing device, which already included a user interface and processing capabilities.

Ground 3: Claims 9-11, 14, 16, 19, and 20-22 are obvious over Ghori and the 802.11 Standard in view of Garfunkel.

  • Prior Art Relied Upon: Ghori (Patent 6,243,772), the IEEE 802.11 Standard (1999 Edition), and Garfunkel (Patent 6,615,404).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Ghori teaches a system where a computer wirelessly sends audio-visual data to an "appliance unit" containing a television. The appliance unit includes an I/O controller that processes the data (e.g., MPEG decoding) and converts it to a format suitable for the television display. When combined with the 802.11 Standard, this combination was alleged to teach most claim limitations. Garfunkel was added to teach the limitation of an "operating system software...for enabling installation of additional application software." Garfunkel describes methods for updating software on embedded devices via a wireless link to provide new features and improvements.
    • Motivation to Combine: Ghori's appliance unit is an embedded computing device. A POSITA would be motivated to incorporate Garfunkel’s wireless update functionality to improve Ghori's system. This would allow for field updates to support new content formats, address security vulnerabilities, or add new post-processing features, obviating the need to return the device for service.
    • Expectation of Success: There would be a reasonable expectation of success as Ghori’s appliance unit already includes a wireless transceiver that could be used for downloading updates as taught by Garfunkel.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge based on Ghori and the 802.11 Standard alone but relied on similar design modification theories.

4. Key Claim Construction Positions

  • Petitioner argued that the term "color management" (claim 9), which is not defined in the ’811 patent, should be understood according to its ordinary meaning in the art. Citing an external technical publication, Petitioner proposed a construction of "the use of appropriate hardware, software, and methodology to control and adjust color in an imaging system." This construction was important for mapping the teachings of Engeldrum and Ghori to the claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not issue a discretionary denial under Fintiv. The petition asserted that the parallel district court litigation had been effectively stayed pending resolution of pre-answer motions, no scheduling order had been entered, and any potential trial date would be contemporaneous with or after the Board’s Final Written Decision. Petitioner also stipulated that, if review were instituted, it would not pursue the same invalidity grounds in the district court.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 9-11, 14, 16, and 19-22 of the ’811 patent as unpatentable under 35 U.S.C. §103.