PTAB

PGR2021-00111

Roku Inc v. Flexiworld Technologies Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Software Application for a Mobile Device to Wirelessly Manage or Wirelessly Setup an Output System or Output Device for Service
  • Brief Description: The ’031 patent specification discloses a method for "universal output" where an information apparatus (e.g., a computer) can output content to a device (e.g., a printer) without needing a dedicated driver by sharing raster image processing operations. The challenged claims, however, are directed to an "optional discovery process" for finding, authenticating, and connecting to a networked output device.

3. Grounds for Unpatentability

Ground 1: Claims 1-39 are ineligible under 35 U.S.C. § 101

  • Prior Art Relied Upon: This ground is based on patent eligibility under 35 U.S.C. § 101 and the framework from Alice Corp. v. CLS Bank Int'l, not on prior art references.
  • Core Argument for this Ground:
    • Directed to an Abstract Idea (Alice Step 1): Petitioner argued that the claims are directed to the abstract idea of "accessing resources over a communications network." Representative claim 1 recites a sequence of functions performed by generic components: (1) discovering an output system, (2) displaying it to a user, (3) receiving the user's selection, (4) sending security or authentication information, and (5) establishing a wireless link to access services. Petitioner contended this process is a long-standing, fundamental practice analogous to a physician discovering a pharmacy, selecting one, providing identification, and establishing communication to access prescription services. The claims merely apply this abstract process in the context of generic computing devices and wireless networks.
    • Lacks an Inventive Concept (Alice Step 2): Petitioner asserted that the claims fail to provide an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The recited hardware components—a "mobile information apparatus" with a touch screen, processor, and wireless unit, and a generic "output system"—were argued to be routine and conventional. The claimed functions were likewise described as well-understood activities lacking any technical improvement. For example, discovering devices via known protocols (e.g., Bluetooth, UPnP), displaying discovered devices in a list for user selection, and providing a password for access were all conventional steps in computer networking at the time of the invention. Petitioner argued that performing these conventional functions in their expected order on generic hardware does not supply an inventive concept. The dependent claims were argued to add only trivial limitations, such as specifying the use of well-known wireless standards (IEEE 802.11) or narrowing the apparatus to a "smart phone," which do not confer patentability.

4. Key Technical Contentions (Beyond Claim Construction)

  • Disclosed Invention vs. Claimed Invention: Petitioner's central technical contention was the significant disconnect between the purported invention described in the specification and the subject matter actually claimed. The specification heavily promotes a novel approach to shared raster image processing that purportedly obviates the need for device-specific drivers. However, Petitioner argued that the challenged claims have nothing to do with this disclosed technical solution. Instead, the claims are directed solely to a high-level, functional recitation of a conventional process for device discovery and connection, which the patent itself describes as an "optional" preliminary step.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that multiple factors favored institution of the Post-Grant Review (PGR). It was noted that the parallel district court litigation was in its infancy, with no trial date set and minimal investment by the parties. Petitioner further argued that it acted diligently by filing the PGR petition less than one month after the complaint was filed. To mitigate concerns of issue overlap, Petitioner stipulated that if the Board institutes trial, Petitioner will not pursue the same §101 ineligibility ground in the district court proceeding. Petitioner concluded that the strength of its ineligibility challenge and the Fintiv factors weighed heavily in favor of institution to promote the efficiency and integrity of the patent system.

6. Relief Requested

  • Petitioner requests institution of post-grant review and cancellation of claims 1-39 of the ’031 patent as unpatentable under 35 U.S.C. § 101.