Apple Inc v. DoDots Licensing Solutions LLC

1. Case Identification

• Case #: IPR2023-00938
• Patent #: 8,020,083
• Filed: May 23, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): DoDots Licensing Solutions LLC
• Challenged Claims: 1-16

2. Patent Overview

• Title: Systems and Methods for Presenting Internet Content
• Brief Description: The ’083 patent relates to systems using "Application Media Packages," also called "Dots" or "Networked Information Monitors" (NIMs), to display internet content to a user. Each NIM is defined by a corresponding "NIM Template" that specifies the content and characteristics of a unique frame, which is presented independently of a traditional web browser application.

3. Grounds for Unpatentability

Ground 1: Obviousness over Slivka and Powell - Claims 1-5 and 9-13 are obvious over Slivka alone or in view of Powell.

• Prior Art Relied Upon: Slivka (Patent 6,061,695) and Powell (HTML: The Complete Reference, 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Slivka teaches the core concepts of the ’083 patent through its disclosure of using sets of HTML instructions to generate distinct HTML frames within a graphical user interface. Petitioner mapped Slivka’s sets of HTML instructions to the claimed “NIM templates” and the resulting HTML frames (e.g., a "news pane" and a "ticker frame") to the claimed “NIMs.” Slivka’s HTML instructions were asserted to be data structures that define the characteristics of a frame (size, position, color) and, as a markup language, inherently exclude executable or compiled code. Petitioner further argued that Slivka’s frames, such as the news pane, lack controls for manual network navigation (e.g., a URL bar or back/forward buttons), thereby meeting a key negative limitation of the claims.
  • Motivation to Combine (for §103 grounds): Petitioner contended that while Slivka teaches its frames are populated with content from the web, its exemplary HTML code does not explicitly show a content reference (like a URL). Powell, a standard HTML guide, teaches using a URL with an "SRC" attribute as the conventional method for specifying content within an HTML frame. Therefore, a Person of Ordinary Skill in the Art (POSITA) would combine Powell’s teaching with Slivka’s system to implement the well-known and standard technique of using a URL to retrieve and display content in Slivka’s frames.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because adding a URL to a set of HTML instructions was a minor, straightforward, and routine modification that required no undue experimentation.

Ground 2: Obviousness over Slivka, Powell, and Anabuki - Claims 6-8 and 14-16 are obvious over Slivka (alone or with Powell) in view of Anabuki.

• Prior Art Relied Upon: Slivka (Patent 6,061,695), Powell (HTML: The Complete Reference, 1998), and Anabuki (Patent 6,091,518).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address claims requiring a user to request further NIM templates from a server. Petitioner argued that while Slivka discloses retrieving web content, it does not explicitly teach a user requesting and downloading new HTML instruction sets (i.e., new templates) from a server. Anabuki was asserted to cure this deficiency by teaching a system where a user explicitly requests an HTML document from a remote server, which then transmits the document to the user. The received HTML document, once stored locally, could then be executed by the client device.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Anabuki’s teachings with Slivka’s system to improve its functionality. This combination would allow a user to request and acquire new templates on demand, enabling them to update an existing frame or implement a new one with different features (e.g., weather or stock information). This was argued to be an advantageous and predictable improvement, as downloading resources from a server was a commonplace and well-understood client-server interaction at the time.
  • Expectation of Success (for §103 grounds): Success was reasonably expected because the modification involved a known technique for improving a computer system. It would not require extensive memory or complex system changes, but rather straightforward modifications to Slivka's existing client-server architecture.

4. Key Claim Construction Positions

• Petitioner argued for adopting claim constructions for “NIM” and “NIM template” from a prior Federal Circuit-affirmed Board decision involving the ’083 patent (Lenovo ’083 FWD).
• "NIM": "a fully configurable frame, with one or more controls, through which content is presented to the user[.]"
• "NIM template": "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 asserted that its primary prior art, Slivka, which uses sets of HTML instructions, aligns with these constructions, particularly the negative limitation that the template "excludes executable applications/compiled code," because HTML is a markup language, not a compiled one.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) based on Fintiv factors.
• Petitioner made a Sotera stipulation, agreeing that if the IPR is instituted, it will not pursue in the parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner contended this stipulation aligns with recent USPTO guidance and mitigates concerns of inconsistent outcomes, warranting institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-16 of Patent 8,020,083 as unpatentable.