PTAB

IPR2023-00937

Apple Inc v. DoDots Licensing Solutions LLC

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Method and Device for Presenting Distributable Computer Readable Media
  • Brief Description: The ’545 patent relates to a method for obtaining and displaying network content in a graphical user interface called a “Networked Information Monitor” (NIM). A NIM is described as a fully configurable frame defined by a data structure called a “NIM template,” which allows content to be displayed on a user's device separate from and outside of a conventional web browser.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 6-21 are obvious over Slivka in view of Anabuki and Powell.

  • Prior Art Relied Upon: Slivka (Patent 6,061,695), Anabuki (Patent 6,091,518), and Powell (HTML: The Complete Reference Guide, 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Slivka teaches the core invention: a system that uses sets of HTML instructions to generate independent HTML frames for displaying web content directly on a user’s desktop. Petitioner mapped Slivka's "sets of HTML instructions" to the claimed "NIM template" and its "HTML frames" (e.g., a news pane or stock ticker) to the claimed "NIM." While Slivka disclosed the fundamental structure, Petitioner contended it did not explicitly teach every claimed step. Anabuki was introduced to supply the teaching of a client requesting and receiving HTML documents from a server, fulfilling the claim limitation of requesting a template from a server. Powell, a reference guide on HTML, was used to supply standard, well-known HTML practices allegedly missing from Slivka, such as using a URL (e.g., an SRC attribute) to reference the network location of the content to be displayed in a frame. Powell was also cited for its teachings on using HTML to control the size, location, and interaction between frames, addressing various dependent claim limitations.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Slivka with Anabuki to implement a standard client-server architecture, allowing the HTML templates to be centrally stored and dynamically retrieved, which is more efficient than relying solely on local files. A POSITA would combine Slivka’s system with the teachings of Powell because Powell simply described the conventional and predictable ways to implement the functionality Slivka broadly disclosed, such as using URLs to fetch content and HTML attributes to control frame appearance. This would have been a straightforward application of known techniques to improve a known system.
    • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success because the combination involved applying well-understood web technologies (client-server communication, HTML, URLs) for their intended and ordinary purposes to achieve a predictable result.

Ground 2: Claim 5 is obvious over Slivka in view of Anabuki, Powell, and Melbin.

  • Prior Art Relied Upon: Slivka (Patent 6,061,695), Anabuki (Patent 6,091,518), Powell (HTML: The Complete Reference Guide, 1998), and Melbin (Patent 6,397,217).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 to specifically address claim 5, which requires the NIM template to include instructions in Extensible Markup Language (XML) format. Petitioner argued that while the primary combination taught using HTML, Melbin explicitly taught using XML in combination with HTML in templates for web content. Melbin disclosed that XML tags could be used to describe logic and locate content, which a server would then process.
    • Motivation to Combine: A POSITA would have been motivated to incorporate Melbin’s teachings into the Slivka/Anabuki/Powell framework to gain the widely recognized benefits of using XML. Specifically, combining XML with HTML allowed for the advantageous separation of data and logic from the presentation layer, a common and desirable goal in web development at the time for creating more flexible and maintainable systems.
    • Expectation of Success: Success would have been reasonably expected, as combining XML and HTML was a known technique, and Melbin provided instructions for doing so. This modification would have required only minor additions to Slivka’s existing HTML instructions.

4. Key Claim Construction Positions

  • Petitioner stated it accepts, for the purposes of the petition, key claim constructions determined in a previous Board proceeding involving the ’545 patent, which were affirmed by the Federal Circuit. These constructions were central to Petitioner's argument that its cited prior art aligns with the claims.
  • "NIM": construed as "a fully configurable frame, with one or more controls, through which content is presented to the user[.]"
  • "NIM template": construed as a "data structure which defines the characteristics of a NIM, including the NIM frame, view and control characteristics, and which excludes executable applications/compiled code."
  • Petitioner leveraged these constructions to argue that Slivka’s non-executable HTML instructions and the resulting HTML frames directly correspond to the claimed "NIM template" and "NIM," respectively.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention was that the fundamental building blocks of the early web, as disclosed in the prior art, meet the limitations of the patent’s specialized terminology. Petitioner consistently mapped Slivka’s basic "sets of HTML instructions" to the patent’s "Networked Information Monitor template" and Slivka's "HTML frames" to the patent’s "Networked Information Monitor." This interpretation framed conventional web technology as anticipating or rendering obvious the claimed invention.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on the Fintiv factors, which consider parallel district court litigation.
  • To support this, Petitioner provided a Sotera stipulation, committing that, if the inter partes review (IPR) is instituted, it will not pursue in the parallel litigation the same invalidity grounds raised in the petition or any other grounds that it reasonably could have raised in the IPR. Petitioner argued this stipulation mitigates concerns of inconsistent outcomes and judicial inefficiency, weighing strongly against discretionary denial.

7. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-21 of Patent 9,369,545 as unpatentable.