PTAB

IPR2024-00144

Apple Inc v. DoDots Licensing Solutions LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Accessing and Displaying Networked Content
  • Brief Description: The ’545 patent is directed to methods for accessing and viewing internet content using software modules termed “networked information monitors” (NIMs). These NIMs are described as configurable frames, defined by templates, through which content is presented to a user.

3. Grounds for Unpatentability

Ground 1A: Claims 1-4, 6-10, and 13-15 are obvious over Brown and Wecker.

  • Prior Art Relied Upon: Brown (Patent 6,278,448) and Wecker (Patent 6,449,638).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Brown taught the core concepts of the challenged claims through its disclosure of a "composite desktop" built from "desktop components" that display web content. These components, which Petitioner equated to the claimed NIMs, were defined by HTML instructions, which correspond to the claimed "networked information monitor template." Brown’s desktop components function as frames for displaying content and include controls. Wecker was argued to supply the teaching of using templates (script files) to render content channels on both desktop and mobile devices. The combination, therefore, disclosed requesting a template that defines a GUI frame, fetching content from a network location specified in the template, and displaying it within that frame on a client device.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Brown and Wecker to apply Wecker's efficient, template-based content subscription model to Brown's composite desktop environment. Both references were directed to viewing internet content, described using Microsoft's Channel Definition Format (CDF), and were assigned to Microsoft, suggesting technical compatibility and a business motivation to provide commonality between products. The combination would improve usability and standardize interfaces across different devices.
    • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success because both systems described operating on a Windows 95 OS, making their techniques readily compatible.

Ground 2A: Claims 1-4, 6-7, 9-10, and 13-15 are obvious over Shimada and Buchholz.

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

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner alleged that Shimada disclosed the claimed NIM and template through its "screen configuration data" (the template) used to display content in configurable screens (the NIMs). Shimada's screens contained controls (anchor tags, buttons) that allow a user to interact with content and request additional content from a server. Buchholz was asserted to teach a wireless system for controlling the display of template data on a portable subscriber unit, where a "pack" comprising a "bundle of templates" is downloaded from a server to format and display information. The combination of Shimada's configurable content screens with Buchholz's efficient template management system for portable devices was argued to render the claims obvious.
    • Motivation to Combine: Petitioner argued that a POSITA would be motivated to combine these references to improve data transfer times and usability, particularly in low-bandwidth environments like the wireless systems contemplated by both references. Both Shimada and Buchholz used HTML-based data structures ("screen configuration data" and "templates," respectively), making their teachings complementary. The primary motivation was to leverage Buchholz's template packaging and delivery mechanism to enhance the performance of Shimada's system for displaying configurable content.
    • Expectation of Success: An expectation of success was based on the compatible, HTML-based nature of the templates and screen data in both references, making their integration straightforward for a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including:

    • Ground 1B: Adding Beer (Patent 5,793,368) to the Brown/Wecker combination for its teachings on using a parsable language (like XML) and dynamically switching visual styles.
    • Ground 2B: Adding Darnell (an HTML guide) to the Shimada/Buchholz combination to provide general knowledge on HTML/XML standards, including parsing and the use of frames and backgrounds.
    • Ground 2C: Adding Krishna (Patent 6,055,522) to the Shimada/Buchholz combination for its disclosure of a separate client-side "viewer program" (application) that interprets a template file to obtain and display content.

4. Key Claim Construction Positions

  • Petitioner did not propose any constructions that differed from the Patent Owner's. Instead, for the purposes of this inter partes review (IPR), Petitioner adopted the constructions for two key terms that the Patent Owner previously advanced and that were adopted in a prior IPR (IPR2019-00988) for the ’545 patent.
  • “networked information monitor” (“NIM”): Construed as “a fully configurable frame, with one or more controls, through which content is presented to the user.”
  • “networked information monitor 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.”

5. Arguments Regarding Discretionary Denial

  • Petitioner presented this petition as a "Joinder Petition" with a conditional motion to join an existing IPR (IPR2023-00756) filed by Samsung, if the Board declines to institute Petitioner's own original petition.
  • Petitioner argued against discretionary denial under the General Plastic factors, stating that its multiple petitions do not prejudice the Patent Owner and that the petition was timely filed within one month of the Samsung IPR's institution, showing diligence.
  • Regarding Fintiv factors, Petitioner argued there is no active parallel litigation because the related district court case was transferred and is not yet active in the new venue, meaning a PTAB decision would likely issue long before any potential trial.
  • Under the Advanced Bionics test, Petitioner argued for institution because the asserted prior art references were never substantively considered by the Examiner during the original prosecution of the ’545 patent.

6. Relief Requested

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