PTAB

IPR2024-00145

Apple Inc v. DoDots Licensing Solutions LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Accessing and Viewing Internet Content
  • Brief Description: The ’407 patent is directed to accessing and viewing internet content using software components called “networked information monitors” (NIMs). These NIMs are defined by templates and are presented as configurable frames for displaying content separate from other applications.

3. Grounds for Unpatentability

Ground 1A/1B: Obviousness over Brown and Wecker - Claims 1-4, 7-16, and 19-24 are obvious over Brown, alone or in view of 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 Brown discloses a method for creating a composite desktop from web content using "desktop components" implemented as floating frames defined by HTML instructions. These components were asserted to be the claimed "networked information monitors" (NIMs), and the defining HTML instructions were asserted to be the claimed "networked information monitor template." Brown’s components display time-varying content (e.g., stock tickers) in a frame that can lack user controls for specifying a network location. Wecker was introduced to explicitly teach storing script templates in a cache memory, which Petitioner mapped to the claim limitation of storing the template in electronic storage.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Brown and Wecker because both references are assigned to Microsoft, address accessing internet content, and describe using the Channel Definition Format (CDF). Brown explicitly directs a reader to other references discussing CDF, which would lead a POSITA to Wecker. Combining them would improve data transfer times and usability by leveraging Wecker’s caching for Brown’s desktop components.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as the combination involves applying known techniques (Wecker's caching) to a known system (Brown's desktop) using compatible technologies like HTML and the Windows operating system.

Ground 1C: Obviousness over Brown/Wecker and Beer - Claims 5-6 and 17-18 are obvious over Brown, alone or combined with Wecker, in view of Beer.

  • Prior Art Relied Upon: Brown (Patent 6,278,448), Wecker (Patent 6,449,638), and Beer (Patent 5,793,368).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the Brown/Wecker combination to address dependent claims requiring modification of the GUI's features, such as frame size or color. Petitioner asserted Beer teaches a Programmable Graphical User Interface (PGUI) that responds to events by modifying its appearance, such as redrawing to adjust size or changing colors and borders based on different "visual styles." This teaching was mapped to the limitations of adjusting frame size (claim 5) and changing frame border/background color (claim 6).
    • Motivation to Combine (for §103 grounds): A POSITA would incorporate Beer's teachings to provide the ability to display content with multiple visual styles across different operating systems, a benefit explicitly described by Beer. This would enhance the user experience of Brown's composite desktop.
    • Expectation of Success (for §103 grounds): Success would be expected because Beer's User Interface Language is a text file format similar to HTML, making it straightforward to integrate its style-modification capabilities into the HTML-based system of Brown.

Ground 2: Obviousness over Shimada and Buchholz - Claims 1-24 are obvious over Shimada in view of 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 argued that Shimada discloses a system for converting and displaying "screen configuration data" (the template) as screens or anchor tags (the NIMs) that present content in a frame. Buchholz discloses a wireless system where a portable unit receives a "pack" containing a bundle of templates used to format and display up-to-date information (e.g., stocks, news) received from a server. The combination allegedly teaches all limitations of the challenged claims.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Shimada and Buchholz to reduce data transfer times and improve usability on networks with limited transmission capacity, a problem addressed by both references. The combination would apply Shimada's efficient screen data configuration to Buchholz's template-based system for portable devices.
    • Expectation of Success (for §103 grounds): A POSITA would expect success because both systems are implemented using HTML, ensuring their compatibility and requiring little to no modification for integration.

4. Key Claim Construction Positions

  • "networked information monitor" ("NIM"): Petitioner adopted the Patent Owner's prior construction, proposing it should mean "a fully configurable frame, with one or more controls, through which content is presented to the user."
  • "networked information monitor template": Petitioner also adopted the Patent Owner's prior construction, proposing it should mean "a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code."

5. Arguments Regarding Discretionary Denial

  • General Plastic Factors: Petitioner argued that this is a conditional "Joinder Petition," filed in the alternative to its "Original Petition" (IPR2023-00939). This avoids duplicative litigation and potential prejudice to the Patent Owner, as Petitioner is not seeking multiple proceedings on different grounds.
  • Fintiv Factors: Petitioner contended that there is no active parallel litigation between the parties. The co-pending district court case was transferred from the Western District of Texas to the Northern District of California, and no new proceedings had been opened in the transferee court at the time of filing.
  • Advanced Bionics Test: Petitioner asserted that denial is not warranted because this petition presents new prior art and arguments. Four of the five references relied upon (Wecker, Shimada, Beer, and Buchholz) were never cited or applied during the original prosecution of the ’407 patent.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of the ’407 patent as unpatentable under 35 U.S.C. §103.