Capital One NA v. WApp Tech Corp

1. Case Identification

• Case #: IPR2025-01325
• Patent #: 8,924,192
• Filed: July 18, 2025
• Petitioner(s): Capital One, N.A. and Capital One Services, LLC
• Patent Owner(s): Wapp Tech Corp
• Challenged Claims: 60-69

2. Patent Overview

• Title: Systems Including Network Simulation For Mobile Application Development And Online Marketplaces For Mobile Application Distribution, Revenue Sharing, Content Distribution, Or Combinations Thereof
• Brief Description: The ’192 patent discloses systems and methods for emulating a mobile application on a separate processor. The emulation uses a model based on the mobile device’s performance characteristics to monitor and display the application’s resource utilization during execution in the emulated environment.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Lee - Claims 60-65 are obvious over Lee

• Prior Art Relied Upon: Lee (Korean Patent Publication No. KR 2003-0049670).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 60 is an improper product-by-process claim where the patentability is determined by the product itself, not the process of making it. The product is an "application configured to enable a user to modify a photo on the mobile device." Petitioner contended Lee disclosed this product by teaching a mobile phone with a "program having an algorithmic structure" (an application) that "supports organizing and editing photos or pictures," allowing users to add content like text, images, and borders. Dependent claims 61-65 were also argued to be obvious, as Lee’s "decorating" functions explicitly teach adding content (claim 61), including text/messages (claim 62) that function as captions (claim 63), and overlapping other pictures (claim 64). Lee’s disclosure of sending the modified photo as "photo mail" through a communication network and WAP server was argued to render claim 65’s distribution limitation obvious.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground relies on a single reference.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 1B: Obviousness over Lee in view of Jiang - Claim 66 is obvious over Lee in view of Jiang

• Prior Art Relied Upon: Lee (Korean Patent Publication No. KR 2003-0049670) and Jiang (Application # 2005/0102638).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 66 adds the limitation of allowing a user to "manage or update the modified photo or photo application through a server." While Lee taught the base photo-editing application, Jiang was alleged to supply the server management functionality. Jiang disclosed an "online album" feature that allows a user to access, manipulate, store, and upload photo images to a server from a mobile device, including rearranging or deleting photos.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Lee and Jiang to improve the user interface and utility of Lee’s photo modification application. Given the increasing reliance on mobile devices, a POSITA would have sought to add Jiang’s server-based image management capabilities to provide users with more efficient ways to handle the growing number of photos on their devices.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success, as Jiang explicitly taught that its techniques could be implemented in various applications running on mobile camera phones like the device disclosed in Lee.

Ground 2A: Obviousness over Lee in view of Poulin-910 - Claims 60-65 are obvious over Lee in view of Poulin-910

• Prior Art Relied Upon: Lee (Korean Patent Publication No. KR 2003-0049670) and Poulin-910 (Patent 7,813,910).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative, assuming the Board found the "wherein" process clause of claim 60 to be limiting. Petitioner asserted that Lee provided the "product" portion (a photo modification application), while Poulin-910, the inventor's own earlier patent, provided the "process" portion. Poulin-910 taught a "software authoring platform" used to develop and test mobile applications. This platform emulates a plurality of hardware characteristics (e.g., processor speed, memory) and visually displays performance data (e.g., resource utilization) in profile display windows, allegedly meeting all limitations of the process clause.
  • Motivation to Combine (for §103 grounds): A POSITA developing the photo modification application of Lee would have been motivated to use a development and testing environment like that in Poulin-910. Poulin-910 expressly solved the problem of the costly and time-consuming process of testing applications on numerous physical devices by providing an emulation platform. This offered clear benefits of reduced cost and faster development time.
  • Expectation of Success (for §103 grounds): Success would have been expected, as the combination merely applied a known software development tool (Poulin-910) to create a known type of application (Lee’s photo editor), which was a predictable and routine software development task.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claim 66 over Lee, Poulin-910, and Jiang (Ground 2B), and for claims 67-69 over combinations of Lee, Tran (Application # 2006/0015404), and Poulin-910 (Grounds 1C and 2C), relying on similar combination rationales.

4. Key Claim Construction Positions

• "Claims 60-69 are Product-By-Process Claims": Petitioner’s primary argument was that the "wherein the application is developed using a software authoring platform..." clause in independent claim 60 describes the process of making the application but imparts no structural or functional difference to the final product. Citing Federal Circuit precedent, Petitioner argued that the patentability of such claims rests on the product itself ("an application configured to enable a user to modify a photo"), not the method of its creation. This construction was foundational to all "Ground 1" challenges.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: As a basis for its "Ground 2" challenges, Petitioner contended the ’192 patent was not entitled to its claimed priority date earlier than its filing date of November 9, 2012. Petitioner argued that the parent ’543 application lacked written description support for the key limitation of an "application configured to enable a user to modify a photo on the mobile device." Because the priority chain was broken, the inventor's own grandparent patent, Poulin-910, qualified as prior art under pre-AIA §102(b).

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §325(d) and §314(a) (Fintiv).
  • §325(d): Petitioner asserted that the primary prior art (Lee, Jiang, Tran) was never presented to or considered by the Examiner. While Poulin-910 was cited in an IDS, it was never substantively discussed or applied in a rejection, meaning the specific arguments in the petition were not previously before the Office.
  • Fintiv Factors: Petitioner contended that the parallel district court case was at a very early stage, filed only a few months prior, with no answer, substantive pleadings, or trial schedule yet in place. Combined with the strong merits of the petition, these factors were argued to weigh heavily in favor of institution.

7. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 60-69 of the ’192 patent as unpatentable.