Samsung Electronics Co Ltd v. DoDots Licensing Solutions LLC

1. Case Identification

• Case #: IPR2023-00756
• Patent #: 9,369,545
• Filed: March 28, 2023
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): DoDots Licensing Solutions LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Accessing and Displaying Network Content
• Brief Description: The ’545 patent relates to methods for accessing and displaying internet content using software constructs called “networked information monitors” (NIMs). These NIMs are defined by templates and are described as configurable frames through which content is presented to a user on a client device.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Brown and Wecker - Claims 1-4, 6-10, and 13-15 are obvious over [Brown](https://ai-lab.exparte.com/case/ptab/IPR2023-00756/doc/1005) in view of [Wecker](https://ai-lab.exparte.com/case/ptab/IPR2023-00756/doc/1006).

• Prior Art Relied Upon: Brown (Patent 6,278,448), Wecker (Patent 6,449,638).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Brown taught a computer-implemented method of creating a "composite desktop" from web content using "desktop components" defined by HTML instructions. Petitioner contended these components are analogous to the claimed NIMs, as they are configurable frames (floating frames) that display content. Wecker taught a method for rendering information on both desktop and mobile devices using templates (script files) and channel definition format (CDF) files to define content structure. The combination allegedly disclosed a client requesting a template, receiving it, and using it to fetch and display content from a network location within a defined graphical user interface (GUI).
  • Motivation to Combine: Petitioner asserted a POSITA would combine Brown and Wecker because both addressed accessing internet content and described using Microsoft’s CDF. A POSITA would combine Wecker’s mobile-friendly template system with Brown’s desktop components to create a standardized interface across different devices, improve usability, and yield predictable results.
  • Expectation of Success: Petitioner claimed success was expected because both references were assigned to Microsoft, described use on a common Windows 95 platform, and involved the application of known techniques (rendering content via templates) to a known system (a composite desktop).

Ground 1B: Obviousness over Brown and Wecker in view of Beer - Claims 5, 11-12, and 16-21 are obvious over Brown and Wecker in view of [Beer](https://ai-lab.exparte.com/case/ptab/IPR2023-00756/doc/1007).

• Prior Art Relied Upon: Brown (Patent 6,278,448), Wecker (Patent 6,449,638), and Beer (Patent 5,793,368).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Brown/Wecker combination, adding Beer to teach limitations related to XML and client-side parsers. Petitioner argued Beer disclosed a Programmable Graphical User Interface (PGUI) that parses a user interface definition file to render a display, which could be in XML format. This PGUI parser was described as a separate application that retrieves and parses a template to generate the GUI, thereby meeting the limitations of claims 5 and 11.
  • Motivation to Combine: A POSITA would incorporate Beer’s PGUI parser into the Brown/Wecker system to enhance functionality. Specifically, Beer’s system allowed a user to select from various visual styles, providing a business advantage in a market with competing operating systems. This addition was presented as a predictable improvement to the base system.

Ground 2A: Obviousness over Shimada and Buchholz - Claims 1-4, 6-7, 9-10, and 13-15 are obvious over [Shimada](https://ai-lab.exparte.com/case/ptab/IPR2023-00756/doc/1008) in view of [Buchholz](https://ai-lab.exparte.com/case/ptab/IPR2023-00756/doc/1009).

• Prior Art Relied Upon: Shimada (Patent 6,789,263), Buchholz (Patent 6,088,340).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Shimada taught a system for displaying multiple "screen configurations" on a single screen using HTML-based screen configuration data, which Petitioner equated to the claimed NIM template. Buchholz taught a wireless communication system where a portable device downloads a "pack" containing a "bundle of templates" to format and display data. The combination allegedly taught a client requesting a pack of templates from a server and using them to define and display content from a network location.
  • Motivation to Combine: Petitioner argued that both references were directed at reducing data transfer times in networks with limited capacity. A POSITA would combine Shimada's method of generating display areas with Buchholz's template-pack system for portable devices to mitigate latency and improve performance on wireless networks, a known problem area.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Shimada and Buchholz in view of Darnell (for XML and framing features) and Krishna (for a separate viewer program), but relied on similar design modification theories.

4. Key Claim Construction Positions

• "networked information monitor" ("NIM"): Petitioner adopted the Patent Owner's prior construction of this term to mean "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 claims.
• "networked information monitor template": Petitioner adopted the construction "a data structure which defines the characteristics of a NIM... and which excludes executable applications/compiled code." This was used to argue that prior art HTML instructions and screen configuration data, which are markup languages and not compiled code, met the claim limitations.

5. Arguments Regarding Discretionary Denial

• General Plastic Factors: Petitioner argued against discretionary denial based on a prior IPR filed by a different party (Lenovo). Petitioner contended this was its first challenge, it used new prior art not applied in the Lenovo case, and it only identified the art after Patent Owner sued Samsung more than two years after the Lenovo IPR concluded.
• Fintiv Factors: Petitioner argued against discretionary denial based on a co-pending district court case, asserting the case was in its early stages with minimal investment. It argued that the PTAB’s Final Written Decision (FWD) was likely to precede the trial date, especially considering median time-to-trial statistics for the district.
• Advanced Bionics (§ 325(d)): Petitioner contended that denial under §325(d) was inappropriate because six of the seven prior art references were never cited or applied by the examiner during the original prosecution of the ’545 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-21 of the ’545 patent as unpatentable.