PTAB

IPR2026-00120

NRG Energy Inc v. Malikie Innovations Ltd

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1. Case Identification

2. Patent Overview

  • Title: System and Method for Controlling Updates to Internet-Things Devices
  • Brief Description: The ’756 patent discloses a system for managing software updates for an Internet of Things (IoT) device (a "controlled device") using another device with a user interface, such as a smartphone (a "controlling device"). The system uses a central server to coordinate receiving device status, determining update readiness, and executing user-approved updates.

3. Grounds for Unpatentability

Ground 1: Obviousness over Storto - Claims 1-4, 6-10, 12-17, 19-20 are obvious over Storto.

  • Prior Art Relied Upon: Storto (Application # 2017/0351503).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Storto, which was not considered during prosecution, discloses every limitation of the challenged claims. Storto describes a cloud-based remote management system for updating firmware on appliances with limited or no user interface (the controlled device) using a smartphone (the controlling device). Petitioner asserted that Storto’s system performs the same four fundamental steps recited in the ’756 patent’s independent claims (e.g., representative claim 14):
      1. Receiving state information: Storto’s cloud system receives state information from the controlled device, such as its connection status or a "download complete" message.
      2. Determining readiness: Based on this state information, the cloud system determines that the controlled device is in a condition ready to perform the update (e.g., it is connected and has finished downloading).
      3. Receiving an update indication: After notifying the user via the smartphone that the device is ready, the cloud system receives an "opt-in API call" from the smartphone, which constitutes an indication to update the device.
      4. Sending an update command: After receiving the user's approval, the cloud system sends an "apply update" command to the controlled device, which then begins the update without further direct user interaction.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner’s argument focused on Storto’s complete disclosure rendering the claims obvious. Petitioner contended that Storto addressed the same problem as the ’756 patent—updating IoT devices with limited interfaces—using an identical system architecture and method.
    • Key Aspects: Petitioner emphasized that during the prosecution of the parent patent, the applicant overcame a rejection by adding the limitation of "determining... that the second device is in a condition where the second device is ready to perform the update." Petitioner argued Storto explicitly teaches this allegedly distinguishing feature.

Ground 2: Obviousness over Storto and Won - Claims 5, 11, and 18 are obvious over Storto in view of Won.

  • Prior Art Relied Upon: Storto (Application # 2017/0351503) and Won (Application # 2006/0031828).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targets dependent claims 5, 11, and 18, which require the controlled device to be configured to download the update in response to the command to begin the update. Storto primarily discloses an embodiment where the update is downloaded automatically once the device is connected, before the user gives final approval to install it. Won, however, explicitly teaches a system where a control device, upon receiving a user's update command, downloads the necessary files and transmits them to the controlled device for installation. Won’s method combines the download and installation steps into a single sequence triggered by the user’s update command.
    • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to modify Storto’s system with Won’s teachings. Both references solve the same problem of updating devices with limited user interfaces. A POSITA would have recognized that the choice of when to download the update—either automatically beforehand (as in Storto) or in response to a user command (as in Won)—was a simple and well-known design choice. Combining them would simplify Storto's update process by reducing the number of required message exchanges (i.e., eliminating a separate download command and a "download complete" notification).
    • Expectation of Success: A POSITA would have a reasonable expectation of success in implementing this modification. It would involve a simple programmatic change: using Storto’s existing "apply update" command to initiate both the download and installation by the controlled device, which is a straightforward and predictable software design task.

4. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of the ’756 patent as unpatentable.