Hulu LLC v. Implicit LLC

1. Case Identification

• Case #: IPR2024-00643
• Patent #: 8,056,075
• Petitioner(s): Capital One National Association, Hulu, LLC
• Patent Owner(s): Implicit, LLC
• Challenged Claims: 1-13

2. Patent Overview

• Title: Method for Delivering Applets to Client Computers
• Brief Description: The ’075 patent discloses a method for managing requests for software applets sent from a client to a server. The server receives a request, determines if the applet can be served from a local copy or must be acquired from other network sources, processes the applet (e.g., verifies, optimizes), and transmits it to the client.

3. Grounds for Unpatentability

Ground 1: Obviousness over a Single Reference - Claims 1-13 are obvious over Fowlow.

• Prior Art Relied Upon: Fowlow (Patent 6,260,078).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fowlow, which teaches retrieving code for a client device, discloses every limitation of the challenged claims. Fowlow’s intermediary Object Request Broker (“ORB”) was asserted to be the claimed “applet server manager,” as it is located on a server computer and manages client requests for applets (Java class files). The ORB communicates with one or more networked “class servers,” thereby having access to networks. Petitioner mapped the claim steps by arguing that the ORB receives a request from a client, passes it to the class servers, receives the applet code back, processes the applet using a “filter” capable of performing tasks like compression, and sends the completed applet to the client. The processing steps of verifying and optimizing were argued to be inherently taught by Fowlow’s disclosure of encryption, tracing, and debugging functions.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground.
  • Expectation of Success (for §103 grounds): Not applicable as this is a single-reference ground.

Ground 2: Obviousness over Fowlow and Kimera - Claims 1-13 are obvious over Fowlow in view of Kimera.

• Prior Art Relied Upon: Fowlow (Patent 6,260,078), Kimera (a 1997 publication titled "Kimera: A System Architecture for Networked Computers").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that if Fowlow alone does not render the claims obvious, the combination with Kimera does, particularly for the "processing" limitation. Fowlow provided the base system of a client-broker-server architecture. Kimera was argued to explicitly teach centralizing verification, compilation, and caching services on a server-side "Firewall" to improve security and efficiency and reduce client-side complexity. Adding Kimera's centralized verification and compilation services to Fowlow’s ORB directly supplied the claimed "verifying" and "optimizing" steps at the "applet server manager."
  • Motivation to Combine (for §103 grounds): A Person of Ordinary Skill in the Art (POSITA) would combine Kimera's centralized architecture with Fowlow’s ORB to solve the known problem of significant communication overhead and client-side complexity inherent in Fowlow's recursive dependency-resolution process. This combination would predictably result in a faster, cheaper, and more secure system.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because both references are in the analogous art of acquiring and delivering software over a network, and the combination involved applying a known solution (centralization) to a known problem (inefficiency).

Ground 3: Obviousness over Parthasarathy and Kimera - Claims 1-7 and 9-13 are obvious over Parthasarathy in view of Kimera.

• Prior Art Relied Upon: Parthasarathy (Patent 6,347,398), Kimera (a 1997 publication).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination also rendered the claims obvious. Parthasarathy taught a "software component download module" that resides on the client computer and manages the downloading, verifying, and installing of software. Kimera taught moving such functionality to a centralized server to improve performance. The combination would relocate Parthasarathy's download module to a centralized server, creating the claimed "applet server manager" that performs the required processing steps before sending software to the client.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to centralize Parthasarathy’s client-side module using Kimera’s teachings to overcome the inefficiencies, communication overhead, and high resource requirements of performing these tasks on individual client machines. Kimera explicitly identified and solved this very problem.
  • Expectation of Success (for §103 grounds): The combination was argued to be a predictable substitution of one known component (a client-side module) with another (a server-side module) to gain a known benefit (improved efficiency and security).
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 8 based on the combination of Parthasarathy, Kimera, and Angles (Patent 5,933,811). Angles was cited for its teaching of using cookies in HTTP requests to remember user information, which would have been a well-known and obvious addition to improve the user experience of the Parthasarathy/Kimera system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that the primary prior art references, particularly Kimera, were not submitted in an Information Disclosure Statement (IDS) during the prosecution of the ’075 patent and were never substantively considered by the examiner.
• Petitioner also argued against discretionary denial under Fintiv factors, stating that the parallel district court litigation is in its infancy with no claim construction or significant discovery having occurred and no trial date set. Petitioner further noted it would file a motion to stay the litigation if the IPR is instituted and that this petition challenges more claims than are asserted in the parallel case.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-13 of the ’075 patent as unpatentable.