PTAB

IPR2022-01313

Google LLC v. Motion Offense LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Processing a data object identification request in a communication
  • Brief Description: The ’215 patent relates to methods and systems for sharing a data object, such as a folder, without sending a file attachment. Instead, a communication is sent that includes a reference (e.g., a link) allowing the recipient to access the remotely stored file.

3. Grounds for Unpatentability

Ground 1: Obviousness over Houston, Garcia, and Wu - Claims 1, 13-15, 19, 20, 50, and 51 are obvious over Houston in view of Garcia and Wu.

  • Prior Art Relied Upon: Houston (Patent 8,825,597), Garcia (Patent 9,633,125), and Wu (Application # 2007/0011246).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Houston, the primary reference, teaches a client-server system for creating and synchronizing shared folders between different users. Houston discloses most elements of the challenged claims, including user interfaces for selecting a folder to share and entering recipient email addresses. However, Petitioner contended Houston does not explicitly teach sharing via an email containing an HTTP link that provides access to the folder without an attachment.
    • Garcia was argued to supply these missing features. Garcia discloses a "virtual drive" system where remotely stored folders can be shared by sending an email with a web link. Clicking the link allows a recipient to access the folder via a web interface or a local file explorer interface that represents the remote folder. Garcia also teaches synchronizing metadata between the client and server to keep the folder representation current and configuring access permissions to be "read-only." Petitioner mapped Garcia’s teachings to claim limitations requiring receipt of an email with an HTTP link, the absence of a file attachment, and the creation of both web-based (first representation) and client-based file explorer (second representation) views of the shared folder.
    • Wu was introduced to supply the "at least partially pre-written" email limitation. Wu describes producing emails efficiently using "predetermined subject templates" and "predetermined content templates," which Petitioner argued would have been an obvious feature to add to the Houston/Garcia combination.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Houston and Garcia because they address similar problems in the same technical field of sharing and synchronizing files across multiple devices. The motivation was to improve Houston's system with Garcia's more efficient method of sharing via links, which avoids sending large files, conserves client resources by storing files virtually on a server, and allows users to access shared content without creating an account in the synchronization system. A POSITA would add Wu's teachings to the combined system to quickly generate sharing invitation emails, a predictable improvement for a system designed for frequent sharing.
    • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success because combining the references involved applying well-known programming principles. Modifying Houston’s system to send a link-based email (per Garcia) instead of a direct folder share invitation was a straightforward extension. Similarly, implementing email templates (per Wu) was a known and simple technique for improving efficiency.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is inappropriate because the key secondary references, Garcia and Wu, were not considered during the original prosecution of the ’215 patent.
  • Petitioner further contended that denial under Fintiv is unwarranted. It asserted that the petition presents compelling evidence of unpatentability, which, under recent USPTO guidance, weighs strongly against discretionary denial. The analysis of the Fintiv factors also favored institution, as Petitioner intended to file a motion to stay the co-pending litigation, the district court trial date was unreliable and likely to be delayed, and investment in the parallel proceeding was minimal.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 13-15, 19, 20, 50, and 51 of the ’215 patent as unpatentable under 35 U.S.C. §103.