Samsung Electronics Co Ltd v. Mobile Data Technologies LLC

1. Case Identification

• Case #: IPR2025-00541
• Patent #: 9,922,348
• Filed: February 6, 2025
• Petitioner(s): Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Mobile Data Technologies LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Network-Based Communications Systems and Methods
• Brief Description: The ’348 patent relates to network-based communication systems, and particularly to techniques for managing information content. The system allows users to author and share content, such as messages and media, via a mobile site accessible by mobile devices.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 6-9, 12-14, and 17-18 are obvious over Neibauer in view of Cheng and Ausems.

• Prior Art Relied Upon: Neibauer (a 2000 book, "How to Do Everything With Yahoo!"), Cheng (Patent 7,574,486), and Ausems (Patent 6,434,403).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Neibauer taught the core functionality of the independent claims through its description of Yahoo! Clubs, a service that allowed users to create web-based communities to share photos, messages, and links. This feature constituted a "web-based shared information channel." To make this desktop-based feature available to mobile devices, Petitioner asserted that Cheng taught using a proxy server to automatically convert any existing webpage into a format suitable for mobile devices. Finally, to meet the "device-captured data" limitation, Petitioner pointed to Ausems, which disclosed mobile devices (PDAs combined with wireless telephones) that incorporated a digital camera for capturing, storing, and transmitting images.
  • Motivation to Combine: A POSITA would combine Neibauer and Cheng to meet market demand for accessing popular internet services on the growing number of mobile devices. Cheng provided a straightforward "bolt-on" solution that would not require changing Neibauer's underlying server architecture. A POSITA would further incorporate the teachings of Ausems to allow users to share images captured directly on their mobile devices, expanding the utility and convenience of the photo-sharing feature described in Neibauer.
  • Expectation of Success: Success was expected because the combination relied on applying known technologies for their intended purposes: using a proxy server to format content for mobile devices and using a camera-enabled mobile device to capture and upload photos.

Ground 2: Claims 4-5 are obvious over Neibauer in view of Cheng, Ausems, and in further view of Squibbs.

• Prior Art Relied Upon: Neibauer, Cheng, Ausems, and Squibbs (Application # 2001/0015759).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address dependent claims 4 and 5, which require the device-captured data to include location coordinates. Petitioner argued that Squibbs taught a photo album system where a digital camera with a GPS receiver stamped photos with location data. The system could then display these photos on a map, associating the image with its capture location. This directly taught the limitations of including "device-captured location coordinates" with the captured image data.
  • Motivation to Combine: A POSITA would be motivated to add the location-tagging feature of Squibbs to the system of Ground 1 to improve the user experience. Associating photos with a geographic location would provide a clear benefit for organizing, classifying, and understanding the context of shared photos, a problem Squibbs explicitly sought to solve. Neibauer itself disclosed a Yahoo! Maps feature, suggesting a natural synergy.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as combining GPS data with digital photos was a known technique implemented using conventional technology.

Ground 3: Claims 10-11, 15-16, and 19-20 are obvious over Neibauer in view of Cheng, Ausems, and in further view of McElfresh.

• Prior Art Relied Upon: Neibauer, Cheng, Ausems, and McElfresh (Patent 6,907,566).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims requiring the system to identify and periodically obtain data from a "data feed" and integrate it, with the data feed comprising at least one advertisement. Petitioner asserted that McElfresh taught a system for optimizing ad placement on webpages by having the website request ads from a central ad server (a "data feed"). The ad server would then deliver ads for integration into the webpage content.
  • Motivation to Combine: The motivation to add the teachings of McElfresh to the base system of Ground 1 was primarily economic: to increase advertising revenue. Petitioner noted that Neibauer already disclosed placing static ads on club pages. McElfresh taught a clear improvement by enabling the display of multiple, dynamically-selected advertisements, which would increase revenue generation for the website operator.
  • Expectation of Success: Integrating third-party ad server content into webpages was a standard and well-understood practice in the art, ensuring a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges in Grounds 4-6, which were substantially similar to Grounds 1-3, respectively, but added Harvey (Patent 6,487,583). Harvey was included solely to address an alternative, narrower construction of "web-based shared information channel" proposed in co-pending litigation.

4. Key Claim Construction Positions

• "Mobile Device": Petitioner argued against the Patent Owner's proposed narrow construction from a co-pending IPR, which would exclude conventional laptop computers. Petitioner contended that the ’348 patent’s own specification explicitly defines "mobile device" to include, without limitation, "a laptop computer." Petitioner argued its unpatentability arguments hold even under the narrower construction by relying on the combination of Neibauer's disclosure of PDAs with Cheng's proxy server technology.
• "Web-Based Shared Information Channel": Petitioner noted that the parties in a co-pending IPR had agreed to the construction "a medium for transferring information accessible to more than one user via the web." Petitioner also addressed a narrower construction proposed in litigation, which required a "content management site," arguing that the combination of Neibauer and Harvey satisfied even this narrower definition.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors, asserting that the co-pending district court case is in its early stages, with no claim construction hearing scheduled until after the institution decision and minimal discovery having occurred.
• Petitioner also argued against denial under §325(d), contending that while some references were cited during prosecution, the Examiner materially erred by failing to use them to reject the claims. Petitioner highlighted that the PTO previously relied on Neibauer and Cheng to cancel all claims of a parent patent in a reexamination, demonstrating the strength of the art.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’348 patent as unpatentable.