Apple Inc v. DoDots Licensing Solutions LLC

1. Case Identification

• Case #: IPR2023-00939
• Patent #: 8,510,407
• Filed: May 23, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): DoDots Licensing Solutions LLC
• Challenged Claims: 1-24

2. Patent Overview

• Title: Presenting Distributable Computer Readable Media
• Brief Description: The ’407 patent is directed to a device and method for presenting time-varying internet content to a user via a "Networked Information Monitor" (NIM). A NIM is described as a fully configurable frame, generated from a "NIM template," that presents content outside of and separate from a conventional web browser interface.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6-11, 13-16, and 18-23 are obvious over [Slivka](https://ai-lab.exparte.com/case/ptab/IPR2023-00939/doc/1004) in view of [Powell](https://ai-lab.exparte.com/case/ptab/IPR2023-00939/doc/1013).

• Prior Art Relied Upon: Slivka (Patent 6,061,695) and Powell (HTML: The Complete Reference Guide, 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Slivka’s system for generating a graphical user interface meets the limitations of the challenged claims. Specifically, Petitioner mapped Slivka’s sets of HTML instructions, which define various frames (e.g., a news pane, a ticker frame) on a desktop, to the claimed "NIM template." The resulting HTML frames displayed to the user were mapped to the claimed "NIM." Petitioner contended that Slivka disclosed these frames presenting time-varying content retrieved from the web (via HTML refresh tags) and, crucially, lacking user controls for specifying a network location, thus meeting a key negative limitation of independent claims 1 and 13.
  • Motivation to Combine: Petitioner asserted Slivka taught retrieving web content for its frames but did not explicitly disclose using a URL within its HTML instructions as the content reference. Powell, an authoritative guide on HTML, was introduced to supply this teaching, describing URLs (via the "SRC" attribute) as the standard way to specify content for a frame. A POSITA would combine Powell's well-known technique with Slivka’s system to provide a predictable and standard method for content retrieval.
  • Expectation of Success: A POSITA would have had a high expectation of success, as incorporating a URL into HTML instructions was a minor, commonplace modification that required no complex system changes.

Ground 2: Claims 5 and 17 are obvious over Slivka in view of Powell and [Votipka](https://ai-lab.exparte.com/case/ptab/IPR2023-00939/doc/1014).

• Prior Art Relied Upon: Slivka (Patent 6,061,695), Powell (HTML: The Complete Reference Guide, 1998), and Votipka (Patent 6,185,589).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Slivka and Powell combination to address the additional limitation in claims 5 and 17: modifying the GUI by "adjusting a size of the frame." While Slivka taught frames with a defined size, Votipka was introduced for its teaching of automatically resizing visual banners. Votipka disclosed using HTML tables to create banners that automatically adjust their width to fit the user's display area.
  • Motivation to Combine: A POSITA would combine Votipka's auto-sizing technique with the Slivka/Powell system to improve the user experience. This would allow a single frame template to accommodate various content sizes (e.g., a small sports score vs. a large news image) without requiring multiple, fixed-size templates. This modification provided the known advantage of flexibility and efficient use of screen real estate.
  • Expectation of Success: Success was expected because the modification involved implementing well-known HTML table properties into Slivka’s existing HTML-based framework for a predictable benefit.

Ground 3: Claims 12 and 24 are obvious over Slivka in view of Powell and [Anabuki](https://ai-lab.exparte.com/case/ptab/IPR2023-00939/doc/1006).

• Prior Art Relied Upon: Slivka (Patent 6,061,695), Powell (HTML: The Complete Reference Guide, 1998), and Anabuki (Patent 6,091,518).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed the limitations in claims 12 and 24, which require transmitting a request for a NIM template to a server and receiving the template in response. While Slivka’s system used templates, Anabuki was introduced for its explicit disclosure of a client-server architecture where a client requests an HTML document (the template) from a server, and the server transmits it back.
  • Motivation to Combine: A POSITA would combine Anabuki’s conventional client-server request/response model with the Slivka/Powell system to create a more dynamic and maintainable application. Storing templates on a server allows for easy updates and deployment of new or modified frames to users without updating local software. This was a commonplace and advantageous design pattern for networked applications.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success as this combination represented a standard, well-understood client-server interaction for retrieving resources, which would not require undue experimentation to implement.

4. Key Claim Construction Positions

• Petitioner argued that claim constructions for "NIM" and "NIM template" were previously determined by the PTAB and affirmed by the Federal Circuit in a prior proceeding involving the ’407 patent. Petitioner adopted these constructions for the purposes of the petition:
  • "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 invalidity arguments and cited prior art are consistent with these constructions, which are central to mapping the prior art's HTML-based frames and templates to the challenged claims.

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 parallel district court litigation (the Fintiv factors). Petitioner made a Sotera stipulation, committing that if the inter partes review (IPR) were instituted, it would not pursue in the parallel litigation the same invalidity grounds raised in the petition or any other grounds that it could have reasonably raised. Petitioner asserted that this stipulation aligns with binding agency guidance (the "Fintiv Memo"), which clarifies that the PTAB will not discretionarily deny institution where such a stipulation is made.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-24 of the ’407 patent as unpatentable.