Roku Inc v. Flexiworld Technologies Inc

1. Case Identification

• Case #: PGR2021-00112
• Patent #: 11,029,903
• Filed: September 15, 2021
• Petitioner(s): Roku, Inc.
• Patent Owner(s): Flexiworld Technologies, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: System for Pervasive Output of Digital Content
• Brief Description: The ’903 patent describes a system that enables a user's computing device ("information apparatus") to send digital content to an output device (e.g., a printer) without needing a pre-installed device driver. The system offloads the content processing to a remote server, which formats the content for the specific output device and sends the processed data back to the information apparatus for final transmission to the output device.

3. Grounds for Unpatentability

Ground 1: Lack of Written Description - Claims 1-20 are invalid under 35 U.S.C. §112(a).

• Core Argument: Petitioner argued that the claims are invalid for lack of written description because they recite a system configuration that is fundamentally different from the one disclosed in the specification. The specification consistently describes a two-part architecture where a user's "information apparatus" (e.g., a laptop or PDA) performs all communication with remote servers. This information apparatus sends content to a server for processing, receives the processed data back, and then transmits it to a separate "output system" (e.g., a printer or a television with a controller box).

  However, the challenged claims improperly shift the server-communication functions away from the information apparatus and assign them to the "output system" itself. For example, independent claims 1, 8, and 15 require the "output system" or "wireless output device" to perform steps such as connecting to servers over the Internet, sending data objects to the server, and receiving processed output data from the server. The petition asserted that the specification provides no disclosure to support an output system performing these roles. Instead, the specification exclusively describes the information apparatus as the device that interacts with servers. By claiming an architecture where the output system communicates directly with the server, the claims recite an invention that the specification does not describe, failing to demonstrate that the inventor was in possession of the claimed subject matter.

Ground 2: Subject Matter Ineligibility - Claims 1-20 are unpatentable under 35 U.S.C. §101.

• Core Argument: Petitioner asserted that the claims are directed to patent-ineligible subject matter under the two-step framework from Alice Corp. v. CLS Bank Int'l.
  • Alice Step One (Abstract Idea): Petitioner argued the claims are directed to the abstract idea of "obtaining content for output." The claims recite a generic process of a computing device connecting to a server, downloading selected content, processing it, and delivering it to an output device. The petition cited Federal Circuit precedent holding that similar concepts, such as delivering user-selected media content to portable devices, are abstract ideas. Petitioner contended that the numerous steps and repeated use of the term "wireless" do not make the claims any less abstract, as they merely describe the conveyance of information using conventional technology.
  • Alice Step Two (No Inventive Concept): Petitioner argued the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The petition asserted that each element of the claims, viewed individually and as an ordered combination, recites only conventional, routine, and well-understood components and activities from as early as 2000.
    • Conventional Components: The "output system," "servers," and "client device" were described as generic computing devices (e.g., a conventional PC connected to a printer, a standard web server) performing their ordinary functions.
    • Conventional Functions: The claimed steps were argued to be routine computer functions, including obtaining authentication information, connecting to a wireless LAN, downloading data, performing generic processing operations (e.g., decoding, compression), and executing device discovery protocols (e.g., Bluetooth, UPnP).
    • No Inventive Combination: Petitioner contended that the ordered combination of these elements adds nothing inventive, merely reflecting the normal operation of a client-server architecture. The final steps of discovering the output system via a client device were characterized as insignificant post-solution activity.

4. Arguments Regarding Discretionary Denial

• Discretion under §325(d): Petitioner argued that discretionary denial would be inappropriate because the invalidity arguments presented in the petition were not previously considered by the USPTO. The challenges based on lack of written description under §112 and subject matter ineligibility under §101 were not raised during the prosecution of the ’903 patent. While a §101 rejection was made in a parent application, Petitioner argued its current challenge is substantially different, identifying a different abstract idea and supported by extensive new evidence of conventionality.
• Discretion under §324(a) (Fintiv): Petitioner asserted that the Fintiv factors weigh strongly in favor of institution. The parallel district court litigation was in its infancy, filed less than three months prior to the petition, with no trial date set and minimal investment by the parties. Petitioner further stipulated that if review is instituted, it will not pursue the same invalidity grounds in the district court, which mitigates concerns of issue overlap and inefficiency.

5. Relief Requested

• Petitioner requested institution of a Post-Grant Review and cancellation of claims 1-20 of Patent 11,029,903 as unpatentable under 35 U.S.C. §§ 112 and 101.