PTAB

IPR2024-00103

TurnSignl Inc v. Redmon Jeang LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Mobile Lawyer System and Method of Use
  • Brief Description: The ’861 patent discloses a system and method for connecting a user with a lawyer for a live, face-to-face video consultation during a law enforcement encounter. The system uses a mobile application to automatically identify and notify a lawyer licensed in the user's current jurisdiction, establish a bi-directional video stream, and store a recording of the interaction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Pylant - Claims 1, 6, 7, 10, 11, 15, 16, and 20 are obvious over Pylant in view of the knowledge of a POSITA.

  • Prior Art Relied Upon: Pylant (Patent 11,010,810).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Pylant, which was not considered during prosecution, discloses all key limitations of the challenged claims. Pylant teaches a system for automatically establishing a real-time video conference between a user and a relevant expert. It explicitly identifies an "attorney" as a possible expert and a "traffic stop" for suspected drunk driving as a real-world scenario where the system would be used. Petitioner asserted Pylant discloses the core elements of independent claims 1, 6, and 15, including a mobile device with a video camera and display, a remote server and database, determining the user's location via GPS, automatically searching a database for an expert based on location and credentials, transmitting notifications to the expert's device, receiving an acceptance, and establishing a bi-directional video stream for viewing and remote storage. For dependent claims, Petitioner argued Pylant’s teachings on camera plurality (claim 7), GPS-to-address conversion (claim 10), and automated lawyer searching (claim 11) were either directly disclosed or made obvious to a POSITA.
    • Motivation to Combine (for §103 grounds): The primary argument centered on applying the single Pylant reference as a person of ordinary skill in the art (POSITA) would. A POSITA would be motivated to apply Pylant’s disclosed system—connecting users to experts like attorneys during real-time events—to the specific traffic stop scenario also explicitly disclosed by Pylant. This application would naturally involve using the well-understood and ubiquitous capabilities of smartphones (GPS, video, apps) that were common knowledge at the time.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing Pylant's system because all the required components—mobile applications, location services, client-server communication, and video streaming—were conventional technologies with well-known, predictable results.

4. Key Claim Construction Positions

  • "jurisdiction": Petitioner argued this term should be construed as "state, i.e., the territorial range of a lawyer's license." This construction is based on the specification's equation of "jurisdiction" with the user's location (city and state) and the real-world context that U.S. lawyers are licensed on a state-by-state basis.
  • "automatically": Petitioner asserted this term, which appears only in the claims, should mean "without manual intervention." This is based on the common meaning in the computer art and is central to arguing that Pylant's automated processes meet the claim limitations.
  • "immediately": Petitioner proposed this term should be construed as "without significant delay." This construction reflects the context of a traffic stop, where assistance is needed quickly but not necessarily instantaneously. The terms "automatically" and "immediately" were added during prosecution to overcome rejections.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Entitlement: Petitioner contended that the ’861 patent is not entitled to the July 19, 2016 filing date of its provisional application. The petition argued that key limitations in the challenged claims—such as "receive an acceptance of legal representation," "remote database," "encrypted storage," and a "video camera mounted on a drone"—lack written description support in the provisional. This argument, if successful, establishes a later critical date for the ’861 patent, reinforcing that Pylant, which claims priority to a May 12, 2016 provisional filing, qualifies as prior art.

6. Arguments Regarding Discretionary Denial

  • Discretionary Denial under Fintiv: Petitioner argued that discretionary denial under the Fintiv factors is unwarranted. The petition asserted that while a parallel district court litigation exists, the court's trial date (January 15, 2025) is scheduled three months after the projected statutory deadline for a Final Written Decision (FWD) from the Board (April 2025). Petitioner further argued that trial dates are often unreliable and subject to change. The investment in the parallel proceeding was characterized as minimal, with no depositions conducted and no Markman hearing scheduled at the time of filing. Because the parties, patent, and challenged claims are identical in both proceedings, Petitioner contended that the IPR would simplify issues and promote efficiency, weighing against denial.

7. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 6, 7, 10, 11, 15, 16, and 20 of Patent 11,494,861 as unpatentable.