PTAB

IPR2023-00701

Samsung Electronics Co Ltd v. DoDots Licensing Solutions LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Displaying Time-Varying Internet Based Data Using Application Media Packages
  • Brief Description: The ’407 patent discloses a system for accessing and viewing internet content using software components called "networked information monitors" (NIMs). These NIMs are defined by templates and are presented as configurable frames on a user's display, separate from other applications, to show time-varying web content.

3. Grounds for Unpatentability

Ground 1: Obviousness over Brown and Wecker - Claims 1-4, 7-16, and 19-24 are obvious over Brown, with Wecker providing additional support for certain limitations.

  • 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 taught all key limitations of the independent claims. Brown disclosed a "composite desktop" built from web content using "desktop components," which Petitioner asserted were analogous to the claimed "networked information monitors." These components were defined by HTML instructions (the "template"), displayed in floating frames, lacked user navigation controls, and presented time-varying content (e.g., stock tickers) from a web server. To the extent Brown was not explicit about storing templates, Petitioner argued that Wecker disclosed storing "script templates" in a "cache memory," which a person of ordinary skill in the art (POSITA) would have found obvious to incorporate.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Brown and Wecker because both references addressed accessing internet content, used Microsoft's Channel Definition Format (CDF), and were assigned to Microsoft, suggesting compatibility. Brown also explicitly directed a POSITA to additional references discussing CDF, which would have led to Wecker. The combination would have predictably yielded a system that caches templates to improve performance.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success due to the technical similarities, common operating system environment (Windows 95), and common assignee, which would motivate creating compatible, interoperable products.

Ground 2: Obviousness over Brown and Wecker in view of Beer - Claims 5-6 and 17-18 are obvious over the combination of Brown and Wecker, further in view of Beer.

  • Prior Art Relied Upon: Brown (’448 patent), Wecker (’638 patent), and Beer (Patent 5,793,368).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground focused on dependent claims directed to modifying a GUI feature, such as adjusting frame size (claim 5) or changing a frame's color (claim 6). Petitioner asserted that Beer's "Programmable Graphical User Interface" (PGUI) taught dynamically changing the visual style of a UI, including size and color, in response to events. Beer's style templates ("UILs") were described as text files similar to HTML, making them analogous to the templates in Brown.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Beer with the Brown/Wecker system to add known, desirable visual customization features. Incorporating Beer's PGUI parser into Brown’s client would be a straightforward application of a known technique (dynamic styling) to a known system (Brown's composite desktop) to improve the user experience.
    • Expectation of Success (for §103 grounds): Success was expected because Beer's style language was analogous to the HTML templates used by Brown, ensuring that Beer's dynamic styling capabilities could be incorporated without substantial modification.

Ground 3: Obviousness over Shimada and Buchholz - Claims 1-24 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 defining content and layout) corresponded to the claimed "networked information monitor template," and its displayed "screens" corresponded to the "NIMs." Buchholz taught a system for displaying data on a portable unit using a "bundle of templates" in a "pack," which was stored in a "pack cache." The combination of Shimada's screen definitions with Buchholz's template caching and delivery mechanism disclosed all limitations of the challenged claims.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Shimada and Buchholz because both were directed at solving the same problem: reducing data transfer times and latency on networks with limited bandwidth. Both references used HTML-based templates, making their technologies highly compatible. The combination would leverage Shimada's content formatting with Buchholz's efficient template management for low-capacity networks.
    • Expectation of Success (for §103 grounds): A high chance of success was predictable because it involved applying a known technique (Buchholz's template caching) to a known system (Shimada's HTML-based screen configuration) to achieve the foreseeable result of improved performance.

4. Key Claim Construction Positions

  • "networked information monitor" ("NIM"): Petitioner adopted the Patent Owner's prior construction, defining a NIM as "a fully configurable frame, with one or more controls, through which content is presented to the user." This construction was central to mapping prior art "desktop components" (Brown) and "screens" (Shimada) to the claimed NIMs.
  • "networked information monitor template": Petitioner proposed construing this term as "a data structure that defines the characteristics of a NIM... and that excludes executable applications/compiled code." This construction was critical for arguing that prior art HTML files, which are data structures and not compiled code, met the "template" limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued strongly that discretionary denial would be inappropriate.
    • Under General Plastic: Petitioner contended this was its first IPR against the ’407 patent and that it should not be penalized for a prior, unsuccessful challenge by a different company (Lenovo) that relied on entirely different prior art and arguments.
    • Under Fintiv: Petitioner argued for institution, noting the co-pending litigation was in its early stages. It projected that the PTAB's Final Written Decision (FWD) would likely issue before the district court trial, especially considering median time-to-trial statistics. Petitioner also stipulated it would not pursue the primary references from the petition (Brown and Shimada) in the parallel litigation if IPR was instituted.
    • Under Advanced Bionics: Petitioner asserted that its petition raised new and compelling invalidity arguments based on prior art (Wecker, Shimada, Buchholz, Beer) that the patent examiner never considered during prosecution.

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-24 of the ’407 patent as unpatentable under 35 U.S.C. §103.