PTAB

IPR2024-00287

Dropbox, Inc. v. Motion Offense LLC

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1. Case Identification

2. Patent Overview

  • Title: Processing a data object identification request in a communication
  • Brief Description: The ’520 patent relates to systems and methods for requesting a file from another user. The technology involves a first user at a "first node" creating a "file request" via a user interface and sending a message to a second user at a "second node," who then uploads the requested file, which becomes accessible to the first user.

3. Grounds for Unpatentability

Ground 1: Claims 9, 10, 14, and 15 are obvious over Riepling.

  • Prior Art Relied Upon: Riepling (Application # 2013/0046833).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Riepling teaches a content-sharing system where a registered user can send a "digital invitation" to a contact requesting a data upload. Riepling allegedly discloses displaying interfaces at a first node to receive a file description and an expiration date, generating a message with a link for upload, sending it to a second node, receiving the upload, and then sending a notification message back to the first node to allow access. Petitioner contended these teachings map to the core limitations of independent claims 9 and 14. For dependent claim 10, Riepling’s "invitation expiration field" was asserted to teach a time-based criterion for receiving the file.
    • Motivation to Combine (for §103 grounds): Petitioner argued that any minor differences, such as the order of UI steps for collecting parameters versus recipient information, represented an obvious design choice. A person of ordinary skill in the art (POSITA) would be motivated to try the finite, predictable variations of UI workflow to optimize user experience, as there is no technical dependency between the steps.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in making simple UI modifications because the underlying function of collecting information and sending a file request remains unchanged and predictable.

Ground 2: Claims 11-13, 16, and 22-24 are obvious over Riepling in view of Manzano.

  • Prior Art Relied Upon: Riepling (Application # 2013/0046833), Manzano (Application # 2010/0005138).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Riepling provides the base system for file requests, while Manzano was introduced to teach the creation of a "representation" of the uploaded file within a "client-based file explorer application" at the first node, as required by claims 11, 16, and 22. Manzano discloses a file-transfer application that displays a "ghosted" (semi-transparent) icon for a remotely stored file. This representation indicates the file's non-local status and only becomes a fully downloaded file after the user explicitly requests it.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Manzano's on-demand download feature with Riepling's file request system to provide the requesting user with more control over when to download a file and to conserve local storage space. Petitioner argued both references are from the same field of file sharing over a network, making the combination logical.
    • Expectation of Success (for §103 grounds): The combination was presented as a straightforward implementation. Adding a client-side file explorer component that uses placeholder icons for cloud-based files was a known and predictable technique at the time of the invention.

Ground 3: Claims 9-16 and 22-24 are obvious over Riepling and Meisels or Riepling, Manzano, and Meisels.

  • Prior Art Relied Upon: Riepling (Application # 2013/0046833), Manzano (Application # 2010/0005138), and Meisels (Application # 2012/0278404).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that to the extent Riepling and Manzano do not explicitly teach a notification message ("second message") that contains a UI element (like a link) instead of a file attachment, Meisels remedies this deficiency. Meisels explicitly teaches replacing file attachments in electronic messages with a link to a shared network location where the file is stored. This was argued to directly teach the claim limitations requiring a message with a UI element that does not include the file itself.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to incorporate Meisels's teaching into the Riepling/Manzano system to gain the known benefits of using links over attachments, such as preventing multiple file copies, reducing message size, and enabling more flexible permission management. All three references concern the common problem of sharing files over a network.
    • Expectation of Success (for §103 grounds): The proposed modification is a simple substitution of a file attachment with a link, which was a well-understood, predictable, and widely used technique in email and file-sharing systems.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Garcia (Patent 9,633,125), which was argued to further teach the display of file and folder representations within both web-based and client-based file explorer interfaces.

4. Arguments Regarding Discretionary Denial

  • To weigh against discretionary denial under the Fintiv factors for co-pending district court litigation, Petitioner offered a Sotera stipulation. Petitioner stipulated that if an IPR is instituted, it will not pursue in the parallel litigation the same grounds presented in the petition or any other grounds that it reasonably could have raised before the Board.

5. Relief Requested

  • Petitioner requests institution of an inter partes review of the ’520 patent and cancellation of claims 9-16 and 22-24 as unpatentable.