Granting in Part Institution Finding Time Bar on Challenge to Parent Application Does Not Bar Challenge to Child Application IPR2015-01090


Takeaway: A time bar to challenging a parent application does not prevent a petitioner from filing a challenge against a child application.

In its Decision, the Board granted institution of inter partes review (“IPR”) of claims 1, 2, 4-7, 9-12, and 14 of the ’529 patent, but denied institution of claims 3, 8, and 13 of the ’529 patent. The ’529 patent relates to managing mobile applications on mobile devices by associating a user profile with each user using a mobile device. Petitioner alleged that (1) claims 1-14 are anticipated by Mehta; (2) claims 4, 9, and 14 are obvious over Mehta and Herschberg; (3) claims 1-3, 5-8, and 10-13 are anticipated by Clare; and (4) claims 1-3, 5-8, and 10-13 are obvious over Clare and Mehta.

Regarding claim construction, the Board disagreed with Petitioner that the term “policy” should be given a construction other than plain and ordinary meaning. Specifically, the Board determined that Petitioner’s proposed construction that policy means “a rule that may be used to filter an application catalog based on one or more attributes of a user and/or a user’s device” is too narrow because it is redundant to other phrases recited in a dependent claim.

The Board then turned to the obviousness ground based on Clare and Mehta. The Board noted that Petitioner provided a limitation-by-limitation analysis of where each limitation of claims 1, 2, 5-7, and 10-12 is allegedly taught in Clare and Mehta. Patent Owner contended that the rationale for combining Clare and Mehta is deficient. The Board stated that Petitioner’s rationale included that “one of ordinary skill in the art would recognize combining Clare’s downloading of mobile applications based on user attributes within a user profile and Mehta’s analogous downloading and installation of mobile applications based on user attributes within a user profile, creates ‘predictable variations’ of two individual systems to modify the software of one system to implement the related functions of the other system.” The Board disagreed with Patent Owner that there is no motivation to combine Clare and Mehta because “[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.” The Board also disagreed with Patent Owner finding that Clare teaches filtering the applications based on user entered selection criteria and that Mehta teaches “installation” as recited in the claims.

However, the Board agreed with Patent Owner with regard to claims 3, 8, and 13. Specifically, the Board agreed that Petitioner had not established that Clare teaches the limitation “the user profile comprises . . . and . . . the catalog of applications is filtered based at least in part on . . . enterprise group identifiers” (the “enterprise group identifiers limitation”) because the group identifiers in Clare are preference groups, not user groups. The Board was “not persuaded that Petitioner’s combination of the discussion of runtime environments in the background section with the later disclosure of user profiles and group identifiers, which may be used to filter the catalog of applications, meets the enterprise group identifiers limitation.” For example, the Board determined that “[e]ven if Petitioner’s combination of two different sections of Clare were proper, which it is not, the mere statement in Clare that ‘Qualcomm products, for example, utilize the binary runtime environment for wireless’ (emphasis added) fails to teach or suggest ‘enterprise group identifiers’ because other companies could still use binary runtime environment products, such that no particular enterprise is necessarily identified by its use of this particular runtime environment.” The Board also agreed that Petitioner had “not established Mehta teaches the enterprise group identifiers limitation because Mehta fails to teach filtering a catalog of applications based on such an enterprise group identifier, as recited in the claims.” Accordingly, the Board was “not persuaded that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to claims 3, 8, and 13 on this ground.”

The Board was persuaded that Petitioner had established a reasonable likelihood of prevailing in its challenge to claims 4, 9, and 14 of being obvious over Mehta and Herschberg, while noting that Patent Owner did not make any substantive arguments with regard to this ground. The Board was not persuaded that Petitioner had established a reasonable likelihood of prevailing in its challenge to claims 1-3, 5-8, and 10-13 of being anticipated by Clare, because Clare merely disclosed downloading and executing, rather than the claimed “installation.”

The Board further considered Patent Owner’s arguments that the “Petition was filed for improper purposes and should be denied because: Petitioner is harassing Patent Owner; Petitioner is adding negotiating leverage; and Petitioner is attempting to circumvent a 35 U.S.C. § 315(b) time bar to challenging the parent of the ’529 patent.” The Board disagreed with Patent Owner finding that there is no requirement to have been sued for or charged with infringement over the patent challenged, and that a time bar to challenging the parent does not prevent Petitioner form filing a petition challenging the child application. The Board also considered “Patent Owner’s argument that the Petition should be denied under 35 U.S.C. § 325(d) because Petitioner’s references and invalidity arguments were previously presented to the Patent Office,” but chose not to exercise its discretion to reject the Petition.

Good Technology Software, Inc. v. MobileIron, Inc., IPR2015-01090
Paper 7: Decision on Institution of Inter Partes Review
Dated: September 28, 2015
Patent: 8,731,529 B2
Before: Justin Busch, Jennifer Meyer Chagnon, and Jason J. Chung
Written by: Chung
Related proceedings: Good Technology Corp. v. MobileIron, Inc., Case No. 5:12-cv-05826-PSG (N.D. Cal.)