Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Date: May 6, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`IPR2024-00145
`Patent 8,510,407 B1
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Date: May 6, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`IPR2024-00145
`Patent 8,510,407 B1
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`On November 17, 2023, Apple Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) seeking inter partes review of claims 1–24 (“the
`Challenged Claims”) of U.S. Patent No. 8,510,407 B1 (Ex. 1001, “the ’407
`Patent”). With the Petition, Petitioner filed a Motion for Joinder (Paper 3,
`“Motion” or “Mot.”), conditionally seeking to join as a party to Samsung
`Electronics Co. Ltd. v. DoDots Licensing Solutions LLC, IPR2023-00701
`(“the Samsung IPR”). On February 16, 2024, DoDots Licensing Solutions
`LLC (“Patent Owner”) filed a preliminary response to the Petition (Paper 7,
`“PO Prelim. Resp.”). On April 11, 2024, Patent Owner notified the Board
`through email that Patent Owner “does not oppose Apple’s conditional
`motion for joinder.” Exhibit 3001, 1.
`The Board has authority to determine whether to institute an inter
`partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). Under
`35 U.S.C. § 314(a), an inter partes review may not be authorized unless the
`information in the Petition and any preliminary response “shows that there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`For the reasons that follow, we institute an inter partes review as to
`the challenged claims of the ’407 patent on all grounds of unpatentability
`presented. We also grant Petitioner’s Motion for Joinder.
`Real Parties In Interest
`B.
`Petitioner identifies only itself as a real party in interest. Pet. 90.
`Patent Owner identifies only itself as a real party in interest. Paper 5 (Patent
`Owner’s Mandatory Notices), 1.
`
`2
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`Related Matters
`C.
`In addition to the Samsung IPR, the parties collectively identify
`DoDots Licensing Solutions LLC v. Apple Inc. et al., CA No. 6:22-cv-00533
`(WDTX May 24, 2022), and DoDots Licensing Solutions LLC v. Samsung
`Electronics Co., Ltd. et al., CA No. 6:22-cv-00535 (WDTX May 24, 2022),
`as related to the ’407 Patent. Pet. 90; Paper 5, 1–2.
`Patent Owner additionally identifies that the ’407 patent was also the
`subject of Apple Inc. v. DoDots Licensing Solutions LLC., IPR2023-00939,
`and In re DoDots Licensing Solutions LLC, Case No. 24-100 (Fed. Cir.).
`Paper 5, 2.
`The ’407 Patent (Ex. 1001)
`D.
`The title of the ʼ407 patent is “Displaying Time-Varying Internet
`Based Data Using Application Media Packages.” Ex. 1001, code (54). The
`’407 patent discloses, in part, a software component for accessing and
`displaying network content. Id. at code (57). This component, termed a
`Networked Information Monitor (NIM) is a “fully configurable frame with
`one or more controls” with content optionally presented through the frame.
`Id. at 2:61–63, 5:21–24. When a NIM is opened by a user, the frame is
`presented in the user’s display and network content is retrieved and
`presented in a viewer enclosed by the frame. Id. at 19:63–20:30. The
`network content may be identified via URLs (uniform resource locators)
`included in the NIM definition. Id. at code (57), 20:24–27. The network
`content is time-varying, e.g., as in an image that varies over time. Id. at code
`(57). The Specification describes that the frame according to the invention
`“stands in contrast to present web browsers, which are branded by the
`browser vendor and which have limited means by which to alter the controls
`associated with the browser.” Id. at 5:24–28.
`
`3
`
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`IPR2024-00145
`Patent 8,510,407 B1
`Figure 9B, reproduced immediately below, illustrates a pack, that is a
`customized arrangement of NIMs created by a user. Id. at 3:50–51, 16:10–
`29,
`
`Figure 9B illustrates pack 139, which includes five NIMs 133-1 through
`133-5. Id. at 16:65–66. Each NIM 133 includes viewer 135 for viewing
`
`
`
`4
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`IPR2024-00145
`Patent 8,510,407 B1
`content and frame 137 for providing user functionality. Id. at 16:66–17:1.
`Frame 137 for each NIM 133 provides functions and controls for
`manipulating the visual manifestation of NIM 133, for example dismiss
`button 141 that can be used to dismiss the NIM, menu button 143 that causes
`a menu to appear, control button 145 that can resize the NIM, and forward
`and backward controls. Id. at 17:16–43, 22:24–61. Content may be
`retrieved from content servers via URLs identified in the NIM definition for
`placement in the NIM frame. Id. at 21:21–31.
`
`Figure 11, reproduced immediately below, is a flow chart of steps
`taken to present a NIM to a user. Id. at 3:56–58, 20:7–8.
`
`Figure 11 depicts a user’s client device making requests to an
`applications server and a content server, leading to the display of a NIM. Id.
`
`
`
`5
`
`
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`IPR2024-00145
`Patent 8,510,407 B1
`at 20:7–30. The applications server responds to a request by the user’s client
`for a NIM definition and transmits it to the client. Id. at 20:18–23. The
`client requests the necessary content elements from the URLs in the NIM
`definition from the corresponding content server that supplies them to the
`client. Id. at 20:24–30. The client creates the NIM frame and places the
`content in a viewer within the frame. Id. at 20:23–24, 20:28–32. This
`allows the user to preview the NIM or to “collect” it (add it to their user
`profile), and to interact with the NIM as displayed. Id. at 14:20–35, 19:51–
`60, 20:30–46, 20:66–21:4.
`Illustrative Claim
`E.
`Claims 1 and 13 are the two independent claims among the challenged
`claims. Claim 1 is reproduced below with Petitioner’s limitation
`designations added in brackets for ease of reference:
`1. A client computing device configured to access content over a
`network, the client computing device comprising:
`[1.1] electronic storage configured to store networked
`information monitor
`template associated with a
`networked
`information monitor,
`the networked
`information monitor
`template having
`therein a
`definition of a viewer graphical user interface having a
`frame within which time-varying content in a web
`browser-readable language may be presented on a
`display associated with the client computing device,
`wherein the frame of the viewer graphical user
`interface lacks controls for enabling a user to specify a
`network location at which content for the networked
`information monitor is available; and
`[1.2] one or more processors configured to execute one or
`more computer program modules, the one or more
`computer program modules being configured to access
`the networked information monitor defined by the
`networked information monitor template, wherein
`
`6
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`IPR2024-00145
`Patent 8,510,407 B1
`accessing the networked information monitor defined
`by the networked information monitor template results
`in:
`[1.3] transmission, over a network to a web server
`at a network location, of a content request for
`content to be displayed within the frame of the
`viewer graphical user interface defined by the
`networked information monitor template;
`[1.4] reception, over the network from the web
`server at the network location, of content
`transmitted from the web server in response to
`the content request, the content being time-
`varying;
`[1.5] presentation, on the display, of the viewer
`graphical user
`interface defined by
`the
`networked information monitor template outside
`of and separate from any graphical user interface
`of any other application; and
`[1.6] presentation, on the display within the frame
`of the viewer graphical user interface defined by
`the networked information monitor, of the time-
`varying content received from the web server.
`
`Ex. 1001, 42:28–64.
`Evidence
`F.
`Petitioner relies on the following references:
`Reference
`Description
`US 5,793,368
`US 6,088,340
`US 6,278,448 B1
`US 6,449,638 B1
`US 6,789,263 B1
`
`Beer
`Buchholz et al. (“Buchholz”)
`Brown et al. (“Brown”)
`Wecker et al. (“Wecker”)
`Shimada et al. (“Shimada”)
`
`
`Exhibit
`Ex. 1007
`Ex. 1009
`Ex. 1005
`Ex. 1006
`Ex. 1008
`
`Petitioner additionally relies on a declaration of Douglas C. Schmidt (Ex.
`1003). Pet. 1.
`
`7
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`Prior Art and Asserted Grounds
`G.
`Petitioner asserts that claims 1–24 would have been unpatentable on
`the following grounds:
`35 U.S.C. §1
`Claim(s) Challenged
`1–4, 7–11, 13–16, 19–23 103
`1–4, 7–16, 19–23
`103
`5, 6, 17, 18
`103
`5, 6, 17, 18
`103
`1–24
`103
`Pet. 1.
`
`Reference(s)/Basis
`Brown
`Brown, Wecker
`Brown, Beer
`Brown, Wecker, Beer
`Shimada, Buchholz
`
`II. ANALYSIS
`Institution of Inter Partes Review
`A.
`We instituted an inter partes review in the Samsung IPR on all
`challenged claims and all asserted grounds of unpatentability. Samsung
`IPR, Paper 10; see also Samsung IPR, Paper 2 (the “Samsung Petition”).
`Petitioner here challenges the same claims and asserts the same grounds of
`unpatentability as those on which we instituted the Samsung IPR. Compare
`Pet. 1, with Samsung Petition, 1. Petitioner also relies on an identical
`declaration from the same declarant as relied upon by the petitioner in the
`Samsung IPR. Mot. 6 & n.2; Ex. 1003.
`Because the grounds of unpatentability in the instant Petition are
`identical to those in the Samsung IPR, for the same reasons stated in our
`Decision to Institute in the Samsung IPR we institute inter partes review in
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the claims at
`issue have an effective filing date prior to the effective date of the AIA’s
`amendments to 35 U.S.C. § 103, we apply the pre-AIA version of § 103 in
`this Decision. See Ex. 1001, codes (22), (63).
`
`8
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`this proceeding on the grounds presented in the Petition. See Samsung IPR,
`Paper 10, 21–47 (analyzing challenges in the Samsung Petition).
`B. Motion for Joinder
`Joinder in an inter partes review is subject to the provisions of 35
`U.S.C. § 315(c):
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`To join Petitioner to the instituted Samsung IPR, the Board first
`determines whether the Petition “warrants” institution under § 314, which
`we determined above. See Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321, 1332 (Fed. Cir. 2020). The Board next determines whether
`to exercise “discretion to decide whether to ‘join as a party’ the joinder
`applicant,” who is the Petitioner in this proceeding. Id.
`Petitioner timely filed its Motion for Joinder on November 17, 2023.
`See Mot. Petitioner’s Motion was conditional and requested that the Board
`grant joinder if, and only if, the Board had previously denied IPR2023-
`00939. Id. at 2. Conversely, if the Board instituted review in IPR2023-
`00939, Petitioner would withdraw the motion. Id. The Board denied
`institution of review in IPR2023-00939. IPR2023-00939, Paper 12 (PTAB
`Jan. 3, 2024). Director Review of the decision denying institution was
`requested by Petitioner but denied by the Director. IPR2023-00939, Paper
`13 (Petitioner’s Request for Rehearing by Director, filed Feb. 2, 2024);
`IPR2023-00939, Paper 14 (PTAB Mar. 27, 2024) (denying Director Review
`request); see IPR2023-00939, Ex. 3100; IPR2023-00939, Ex. 3101.
`
`9
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013).
`We determine that Petitioner has met its burden of showing that
`joinder is appropriate because, as set forth above, the Petition (1) is
`materially the same as the Samsung Petition, (2) contains the same grounds
`based on the same evidence, and (3) would promote efficiency. See Mot. 3,
`6. Petitioner represents that joinder will not unduly burden Patent Owner or
`negatively impact the Samsung trial schedule. Id. at 7.
`Petitioner also represents that it will join “in an understudy role” and
`will not assume an active role unless the current petitioner in the Samsung
`IPR ceases to participate in the Samsung IPR. Id. Petitioner represents that
`in its understudy role, it agrees that the following conditions will apply:
`a) all filings by Apple in the Samsung [IPR] shall be
`consolidated with the filings of the current petitioner, unless a filing
`concerns issues solely involving Apple;
`
`b) Apple shall not be permitted to raise any new grounds not
`instituted by the Board in the Samsung [IPR], or introduce any
`argument or discovery not introduced by the current petitioner;
`
`c) Apple shall be bound by any agreement between Patent
`Owner and the current petitioner concerning discovery and/or
`depositions; and
`
`d) Apple at deposition shall not receive any direct, cross-
`examination or redirect time beyond that permitted under either 37
`
`10
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`C.F.R. § 42.53 or any agreement between Patent Owner and the
`current petitioner.
`Id. at 9–10.
`
`Patent Owner did not timely file an opposition to the motion.
`See 37 C.F.R. § 42.23 (setting default filing times). In its Preliminary
`Response, Patent Owner presented certain arguments “to bring to the
`Board’s attention and make of record [Patent Owner]’s objections to the
`conduct of this and related proceedings” and to argue that Petitioner should
`only be able to pursue one inter partes proceeding against the ’407 patent.
`PO Prelim. Resp. 1, 6. Patent Owner communicated with the Board via
`email on April 11, 2023, stating that it was writing “to inform the Board that
`[Patent Owner] does not oppose Apple’s conditional motion for joinder”
`here. Exhibit 3001, 1.
`
`We determine above that the Petition warrants the institution of an
`inter partes review. Under these circumstances, we agree with Petitioner
`that joinder is appropriate and will not unduly impact the ongoing
`proceedings of the Samsung IPR. We limit Petitioner’s participation in the
`Samsung IPR as follows: (1) the current petitioner is responsible for all
`petitioner filings in the proceeding until such time that it is no longer an
`entity in the proceeding; and (2) Petitioner is bound by all filings by the
`current petitioner in the proceeding, except for (a) filings regarding
`termination or settlement, and (b) filings where Petitioner receives
`permission to file an independent paper. Petitioner must obtain prior Board
`authorization to file any paper or take any action on its own in the
`proceeding, so long as the current petitioner remains as a non-terminated
`petitioner in the proceeding. In the event the Board terminates Samsung as a
`
`11
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`party in the Samsung IPR, Petitioner shall take on the role of lead petitioner
`in the Samsung IPR.
`
`This arrangement promotes the just and efficient administration of the
`ongoing trial in the Samsung IPR, and protects the interests of Samsung as
`the original petitioner in that proceeding and of Patent Owner.
`
`
`III. CONCLUSION
`For the foregoing reasons, we institute inter partes review of the
`challenged claims of the ’407 patent based on the grounds of unpatentability
`set forth in the Petition. We grant the Petitioner’s Motion for Joinder and
`join Petitioner to IPR2023-00701, with the limitations set forth herein.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1–24 of the ’407 patent on all the
`grounds set forth in the Petition;
`FUTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and 37
`C.F.R. § 42.122, Petitioner’s Motion for Joinder is granted, and Petitioner is
`joined as a petitioner in IPR2023-00701, subject to the above-described
`limitations in Petitioner’s participation in that proceeding;
`FUTHER ORDERED that the asserted grounds of unpatentability on
`which the Board instituted inter partes review in IPR2023-00701 are
`unchanged and remain the only instituted grounds;
`FURTHER ORDERED that the schedule order in IPR2023-00701,
`and any modifications thereto, shall govern the schedule of the proceeding;
`
`12
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`FURTHER ORDERED that all further filings are to be made in
`IPR2023-00701;
`FURTHER ORDERED that the case caption in IPR2023-00701 for all
`further submissions shall be modified to add Apple Inc., as a named
`Petitioner via footnote indicating the joinder of Petitioner as a party to that
`proceeding, as indicated in the attached sample case caption; and
`FURTHER ORDERED that a copy of this decision shall be entered
`into the record in IPR2023-00701.
`
`
`13
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`FOR PETITIONER:
`
`Paul R. Hart
`Adam P. Seitz
`Kevin Rongish
`ERISE IP, P.A.
`paul.hart@eriseip.com
`adam.seitz@eriseip.com
`kevin.rongish@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Jason S. Charkow
`Richard Juang
`Chandran B. Iyer
`DAIGNAULT IYER LLP
`jason.s.charkow@ gmail.com
`richard.juang@gmail.com
`cbiyer@ daignaultiyer.com
`
`
`
`14
`
`
`
`IPR2024-00145
`Patent 8,510,407 B1
`
`Sample Case Caption
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,1
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 The Board joined Apple Inc. as a party (Petitioner) to this proceeding.
`
`15
`
`
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