Google LLC v. Motion Offense LLC

1. Case Identification

• Case #: IPR2022-01312
• Patent #: 10,613,737
• Filed: July 26, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): Motion Offense, LLC
• Challenged Claims: 1-5, 13, and 14

2. Patent Overview

• Title: Sharing a Data Object in a Data Store via a Communication
• Brief Description: The ’737 patent describes methods and systems for sharing a data object, such as a folder, stored in a data store by sending a communication to a recipient without attaching the data object itself. The recipient can then interact with a representation of the data object to retrieve it from the data store.

3. Grounds for Unpatentability

Ground 1: Obviousness over Houston and Garcia - Claims 1-5, 13, and 14 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 discloses the foundational system for sharing and synchronizing folders between client devices over a network via a central host system. In Houston, a user at a "first node" can select a folder, identify recipients via email addresses, and initiate a sharing process that results in the recipient ("second node") receiving a synchronized copy of the folder. However, Petitioner contended that Houston does not explicitly teach key limitations, such as sending an email that includes a reference (e.g., a link) to the folder instead of an attachment, or creating a representation of the folder on the second node where the underlying files are not stored locally until specifically requested.

    Petitioner asserted that Garcia supplies these missing elements. Garcia teaches a system for sharing remote folders using a "virtual drive" that appears in the user's local file explorer interface. A user can share a folder by sending an email containing a link. The recipient who clicks the link can then access the shared folder via their virtual drive. Critically, the files in this virtual folder are not stored on the recipient's local storage until they are accessed (e.g., by double-clicking), at which point they are downloaded on demand. Petitioner argued that combining Garcia's virtual drive and link-sharing functionality with Houston's core synchronization framework renders the challenged claims obvious. For dependent claims, Houston was argued to teach using aliases for email addresses and accessing shared folders through a client application rather than a web page.

  • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Houston and Garcia because both references address the same problem of sharing folders and files across a network. A POSITA would have been motivated to modify Houston's system with Garcia's teachings to achieve recognized benefits, such as avoiding the cumbersome process of attaching and emailing large files, conserving storage resources on client devices by only downloading files on demand, and providing greater overall control and simplified file management for the user. Garcia's approach was presented as a predictable improvement to Houston's system.

  • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a reasonable expectation of success in making the combination. The modification would involve implementing Garcia's known software principles into Houston's existing framework for sharing and synchronization. Since Houston already taught sharing folders with users identified by email, programming the system to instead send an email with a link to a synchronized virtual folder was argued to be a straightforward extension of Houston's teachings.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and the Fintiv factors.
• Denial under §325(d) was argued to be improper because the core combination of Houston and Garcia was never considered during the prosecution of the ’737 patent. While Houston was cited on the face of the patent, it was never applied in a rejection, let alone in combination with Garcia.
• Petitioner contended that the Fintiv factors weigh in favor of institution. It argued the petition presents compelling evidence of unpatentability; a motion to stay the parallel district court litigation would be filed; the trial date is unreliable and distant; investment in the parallel case is minimal at this early stage; and the substantial similarity of the unconsidered prior art to the challenged patent serves the public interest against leaving potentially invalid patents in force.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-5, 13, and 14 of the ’737 patent as unpatentable.