PTAB

IPR2022-01311

Google LLC v. Motion Offense LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Sharing a Data Object via Communication without an Attachment
  • Brief Description: The ’353 patent discloses methods for sharing a data object (e.g., a folder) stored at a first node with a second node by sending a communication, such as an email, that references the object without attaching the object itself. The recipient at the second node can then interact with a representation of the data object created on their local file system.

3. Grounds for Unpatentability

Ground 1: Obviousness over Houston and Garcia - Claims 1-7 and 16 are obvious over Houston in view of Garcia.

  • Prior Art Relied Upon: Houston (Patent 8,825,597) and Garcia (Patent 9,633,125).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Houston taught a file synchronization system where a user at a first node could share a folder with a user at a second node, who then receives a local copy of the folder. However, Petitioner contended Houston did not explicitly disclose sending an email with a reference (e.g., a link) to the shared folder without an attachment, nor did it teach delaying the storage of files on the second node until they are specifically requested by the user. Petitioner asserted that Garcia supplied these missing elements. Garcia disclosed a file synchronization system using a "virtual drive," which creates representations of remote folders and files within a user's local file explorer interface without storing the actual data locally. Garcia further taught sharing these virtual folders by sending an email containing a web link, which allows the recipient to access the content on-demand. Petitioner argued that combining Houston's core sharing framework with Garcia's virtual drive and link-based sharing mechanism would render the key limitations of the challenged claims obvious. Specifically, Garcia's teachings on creating representations in a file explorer (claim 1), not storing files until requested (claims 2, 3, 5), and sending a link without an attachment (claims 1, 5) were used to supplement Houston's disclosures.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that a person of ordinary skill in the art (POSITA) would be motivated to combine Houston and Garcia because they address similar problems in the same technical field of network-based file sharing. A POSITA would have sought to improve Houston's system, which required creating full local copies of shared folders, by incorporating Garcia’s more efficient methods. The combination would yield the predictable benefits of conserving client-side storage and network bandwidth by avoiding the transfer of potentially large files until necessary, and simplifying the sharing process for users by replacing cumbersome attachments with simple links, thereby "enabling greater control and file management."
    • Expectation of Success (for §103 grounds): Petitioner argued that a POSITA would have had a reasonable expectation of success in this combination, as it involved modifying Houston's existing software architecture using well-known programming principles to implement the virtual folder and link-based sharing features taught by Garcia.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under the Fintiv factors would be inappropriate and that the petition presented compelling evidence of unpatentability. The key arguments asserted were:
    • Factor 1 (Stay): This factor was argued to be neutral or favor institution, as Petitioner intended to file a motion to stay the parallel district court litigation pending the outcome of the inter partes review (IPR).
    • Factor 2 (Proximity of Trial): This factor was presented as neutral. While the Final Written Decision (FWD) was expected approximately five months after the scheduled trial date, Petitioner argued that court-scheduled trial dates are unreliable and often change, citing significant docket congestion in the relevant district court.
    • Factor 3 (Investment): This factor was argued to favor institution because the parallel litigation was in its early stages, with minimal investment by the parties and the court. Fact discovery was not advanced, and a Markman hearing had not yet occurred.
    • Factor 6 (Other Circumstances): This factor was argued to weigh strongly in favor of institution because the asserted prior art (Houston and Garcia) was not considered during the original prosecution of the ’353 patent.

5. Relief Requested

  • Petitioner requested the institution of an IPR and the cancellation of claims 1-7 and 16 of the ’353 patent as unpatentable.