Samsung Electronics Co Ltd v. DoDots Licensing Solutions LLC

1. Case Identification

• Case #: IPR2023-00621
• Patent #: 8,020,083
• Filed: February 22, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): DoDots Licensing Solutions LLC
• Challenged Claims: 1-16

2. Patent Overview

• Title: System and Methods for Creating and Authoring Internet Content Using Application Media Packages
• Brief Description: The ’083 patent relates to systems and methods for accessing and viewing internet content using software components called "application media packages" or "networked information monitors" (NIMs). These NIMs are defined by templates that specify a graphical user interface and a URL for content to be downloaded and displayed.

3. Grounds for Unpatentability

Ground 1: Obviousness over Brown and Wecker - Claims 1-16 are obvious over Brown, with claims 1-16 also obvious over Brown in view of Wecker.

• Prior Art Relied Upon: Brown (Patent 6,278,448) and Wecker (Patent 6,449,638).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brown alone renders most claims obvious. Brown described a "composite desktop" built from web content using "desktop components," which Petitioner equated to the claimed NIMs. The HTML instructions in Brown that define these components, including their frames, views, and controls, were argued to be the claimed "networked information monitor templates." Brown’s use of Channel Definition Format (CDF) files to retrieve content from a URL was mapped to the claimed "content reference" at a network location. For certain limitations, particularly the explicit storage of a plurality of templates and the client-server request/receipt model in claims 6-8 and 14-16, Petitioner supplemented Brown with Wecker. Wecker disclosed a method for rendering information using script files and templates stored in a "cache memory," which Petitioner argued a POSITA would have readily integrated with Brown’s system to explicitly teach storing multiple templates.
  • Motivation to Combine (for §103 grounds): Petitioner asserted a POSITA would combine Brown and Wecker because both references were assigned to Microsoft, addressed the similar technical problem of accessing internet content, and used compatible technologies like CDF files and the Windows operating system. A POSITA would have been motivated to incorporate Wecker’s caching of templates into Brown’s system to improve data transfer times, enhance usability across devices (including mobile), and reduce client-side storage requirements, yielding only predictable results.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success due to the technical compatibility of the references, their common assignee, and the straightforward application of Wecker’s known caching techniques to Brown’s known desktop component structure.

Ground 2: Obviousness over Shimada and Buchholz - Claims 1-16 are obvious over Shimada in view of Buchholz.

• Prior Art Relied Upon: Shimada (Patent 6,789,263) and Buchholz (Patent 6,088,340).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shimada’s "screen configuration data" (HTML data) defined configurable "screens" or "anchor tags" that functioned as the claimed NIMs. This data specified the frame, content, and controls (e.g., buttons), thereby acting as the claimed "networked information monitor template." Shimada disclosed receiving this data from a server over a network. To meet the plurality limitations and further detail the client-server interactions, Petitioner combined Shimada with Buchholz. Buchholz disclosed a wireless system where a portable unit downloads a "pack" comprising a "bundle of templates" from a server. This was argued to teach storing a plurality of templates, as claimed.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Shimada and Buchholz because both were directed at mitigating long download times and improving content display on devices with limited network capacity. Petitioner argued the references were complementary: Shimada provided a system for displaying configurable content defined by HTML, while Buchholz provided an efficient method for bundling, downloading, and managing multiple templates on a client device. Combining them would improve performance and usability on low-bandwidth networks.
  • Expectation of Success (for §103 grounds): Success was expected because both systems were based on HTML and served a similar purpose. Implementing Shimada’s HTML-based screen configurations within Buchholz’s template-based framework would be a predictable application of known techniques.

4. Key Claim Construction Positions

• "networked information monitor" ("NIM"): Petitioner adopted the construction from a prior IPR, defining this term as "a fully configurable frame, with one or more controls, through which content is presented to the user." This construction was central to mapping Brown's "desktop components" and Shimada's "screens" to the claims.
• "networked information monitor template": Petitioner also adopted a prior construction for this term, defining it as "a data structure that defines the characteristics of a NIM... and that excludes executable applications/compiled code." This was critical for arguing that the HTML instructions in Brown and the "screen configuration data" in Shimada met the template limitations, as HTML is a markup language, not compiled code.

5. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a).
• §325(d) (Prior Petition): Petitioner contended that a prior unsuccessful IPR filed by a different party (Lenovo) should not preclude this petition. The arguments centered on the fact that Samsung was not involved in the prior case, the prior art asserted here is substantially different, and the Patent Owner strategically delayed suing Samsung until years after the Lenovo IPR concluded.
• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv based on a co-pending district court case. Key arguments were that the litigation was in its early stages with minimal investment, the Final Written Decision (FWD) from the IPR would likely issue before or very shortly after the scheduled trial date, and Petitioner stipulated it would not pursue the same invalidity grounds in district court if the IPR is instituted.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of the ’083 patent as unpatentable.