Oracle Corp v. Parking World Wide LLC

1. Case Identification

• Case #: IPR2023-00385
• Patent #: 10,438,421
• Filed: January 18, 2023
• Petitioner(s): Oracle Corporation
• Patent Owner(s): Parking World Wide LLC
• Challenged Claims: 1-7

2. Patent Overview

• Title: Parking Status System
• Brief Description: The ’421 patent discloses a system for assisting with parking enforcement by displaying the payment status (paid or unpaid) of parking spaces. The system overlays this status information upon a real-time camera view on a user's portable electronic device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ivey, Matsumoto, and Tillotson - Claims 1-3 and 5-6

• Prior Art Relied Upon: Ivey (Application # 2006/0059037), Matsumoto (Japanese Patent Publication No. JP2008-217835), and Tillotson (Application # 2006/0250278).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ivey disclosed the core method for enforcing remotely managed parking systems, including a handheld device for a parking officer that displays paid (green) and unpaid (red) status of parking spaces on a map. However, Ivey’s display is a map, not a real-time camera view. Matsumoto was argued to supply this missing element, as it taught a parking guidance system that generates a "vacant space-highlighted live-action image," superimposing visual indicators of parking space status over a live camera feed. Finally, Petitioner asserted that Tillotson taught the claimed reservation and subscription payment features, disclosing a parking information system where users can reserve spaces and pay via various methods, including monthly subscriptions.
  • Motivation to Combine: A POSITA would combine Ivey and Matsumoto to improve the efficiency and usability of Ivey’s enforcement tool. Replacing Ivey's static map with Matsumoto's augmented reality, real-time camera view would allow an officer to more intuitively and quickly verify the payment status of vehicles in their direct line of sight. A POSITA would incorporate Tillotson's teachings to add well-known and desirable subscription and reservation functionalities, making the parking system more versatile and commercially appealing.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success because all three references were from the same field of parking management, addressed complementary problems, and used conventional technologies. Integrating a live video feed with data overlays was a known technique, as was adding subscription services to a payment system.

Ground 2: Obviousness over Ward, Haynes, and Tillotson - Claims 1-3 and 5-6

• Prior Art Relied Upon: Ward (Application # 2008/0114675), Haynes (Patent 7,123,166), and Tillotson (Application # 2006/0250278).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted an alternative combination where Ward provided the base system. Ward taught a parking payment system using a mobile device that displays a graphical user interface identifying multiple parking spaces and indicia indicating whether a fee has been paid. Similar to Ivey, Ward’s display was a map-based view. Petitioner argued that Haynes taught the claimed real-time camera view, disclosing a system for displaying parking information on a personal device that includes an "actual representation (i.e., a video image) of the parking lot," which could be enhanced with additional data in real time. As in the first ground, Tillotson was cited for its disclosure of reservation and subscription-based payment models.
  • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA would have been motivated to enhance the enforcement capabilities of Ward's system by incorporating the more intuitive augmented reality approach from Haynes. Displaying payment status directly over a real-time video of the street would streamline an officer's workflow. Adding Tillotson's reservation and subscription features was presented as a predictable modification to improve the system's functionality for consumers.
  • Expectation of Success: Petitioner argued for a high expectation of success because the combination involved applying known technologies within the same field to achieve a predictable result. Ward already displayed payment indicia, which would be straightforward to overlay onto the real-time video taught by Haynes.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 2 and 4) that added Slemmer (Application # 2006/0170566) to the primary combinations. Slemmer was argued to teach the audible recitation of unpaid status required by dependent claims 4 and 7, as it disclosed converting digital parking space data into an audible message for a user.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d) because the primary prior art references (Ward, Matsumoto, Haynes, Slemmer, Tillotson) were not considered by the Examiner during prosecution. While Ivey was cited in an IDS, Petitioner contended there was no evidence it was substantively considered.
• Petitioner also argued against discretionary denial under Fintiv (§314(a)), stating that the co-pending district court litigations were in their very early stages, with no trial dates scheduled or claim construction orders issued. Furthermore, Petitioner Oracle is not a party to those pending cases, and the petition presents compelling evidence of unpatentability that warrants review.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7 of the ’421 patent as unpatentable.