Google LLC v. Motion Offense, LLC

• Decision Date: 06 March 2023
• Docket Number: IPR2022-01312,Patent 10,613,737 B1
• Parties: GOOGLE LLC, Petitioner, v. MOTION OFFENSE, LLC, Patent Owner.
• Court: Patent Trial and Appeal Board

GOOGLE LLC, Petitioner, v. MOTION OFFENSE, LLC, Patent Owner.

IPR2022-01312

Patent 10,613,737 B1

United States Patent and Trademark Office, Patent Trial and Appeal Board

March 6, 2023

PETITIONER: Naveen Modi Joseph E. Palys Phillip Citroen PAUL HASTINGS LLP

PATENT OWNER: Timothy Devlin DEVLIN LAW FIRM LLC G. Andrew Gordon ANDREW GORDON LAW FIRM, PLLC

Before JEFFREY S. SMITH, JENNIFER S. BISK, and NORMAN H. BEAMER Administrative Patent Judges.

DECISION

BISK Administrative Patent Judge.

Granting Institution of Inter Partes Review 35 U.S.C.§ 314

I. INTRODUCTION

A. Background and Summary

Google LLC ("Petitioner") filed a Petition (Paper 2, "Pet.") requesting inter partes review of claims 1-5, 13, and 14 of U.S. Patent No. 10,613,737 B1 (Ex. 1001, "the '737 patent") pursuant to 35 U.S.C. § 311(a). Motion Offense, LLC ("Patent Owner" or "PO") responded by filing: a Disclaimer in Patent, under 37 C.F.R. § 1.321(a), disclaiming claims 1-5 and 13 (Ex. 2001); and a Preliminary Response (Paper 7, "Prelim. Resp."), pursuant to 35 U.S.C. § 313, defending only claim 14. Petitioner filed a Reply to Patent Owner's Preliminary Response (Paper 10, "Pet. Reply") as "authorized ... to address Patent Owner's arguments regarding discretionary denial under 35 U.S.C. § 314(a) in the Patent Owner's Preliminary Responses" (Ex. 1020 (Board's email, December 29, 2022, to the parties)). Patent Owner filed a Sur-Reply to that Reply (Paper 12 ("Sur-Reply")) as "authorized to . . . address[] the same issue" (Ex. 1020).

Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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 claim 14 of the '737 patent on the sole ground of unpatentability asserted in the Petition (see infra § VI (asserted ground)).

II. REAL PARTIES-IN-INTEREST

Petitioner identifies itself (Google LLC) as its sole real party-in-interest and notes it "is a subsidiary of [entities that] are not real parties-in-interest to this proceeding." Pet. 1. Patent Owner identifies itself (Motion Offense, LLC) as its sole real party-in-interest. Paper 4, 2. III. RELATED MATTERS

Petitioner states that the '737 patent is the subject of the following proceedings: Dropbox, Inc. v. Motion Offense, LLC, Case No. 6:20-cv-00251-ADA(W.D. Tex.); and Motion Offense, LLC v. Google LLC, Case No. 6:21 -cv-00514-ADA (W.D.Tex.). Pet. 1. Petitioner further states they have concurrently filed: an IPR petition challenging U.S. Patent No. 10,303,353 ("the '353 patent") that is also at issue in the above actions; and an IPR petition challenging U.S. Patent No. 11,044,215 ("the '215 patent") that is also at issue in the second of the above actions (Case No. 6:21-cv-00514-ADA) and in Motion Offense, LLC v. Dropbox, Inc., Case No. 6:21-cv-00758-ADA (W.D. Tex.). Id. PTAB records identify the above two petitions as respectively IPR2022-01311 and IPR2022-01313. The above three patents identify their respective applications as being continuation applications of an in-common U.S. patent application (No. 14/274,623).

Patent Owner also identifies each of the above actions and two IPR proceedings as "judicial and/or administrative matters that may affect, or may be affected by, a decision in the Inter Partes Review." Paper 3, 2. Patent Owner describes the relatedness as "[t]wo parallel district court cases [that] involve the same patent, same claim[ 14,] and same art" (Prelim. Resp. 1) and designates the two cases as the above (1) Dropbox litigation of Case Nos. 6:20-cv-00251-ADA and 6:21-cv-00758-ADA ("Dropbox Litigations") and (2) Google litigation of Case No. 6:21-cv-00514-ADA ("Google Litigation"). Prelim. Resp. 1, 22-26.

IV. THE '737 PATENT (Ex. 1001)

The '737 patent relates to sharing the contents of a folder using an email message and a file explorer interface without an attachment included with the email message. Ex. 1001, Abstract. An example process is summarized by the steps of Figures 2A and 2B. Id. at 7:6-13. A first part of the process creates and transmits a message including a "mount descriptor." Id. at 27:35-40; 28:44-48; 30:37-40; 31:8-15; Figs. 2B, 8A. A "second" communications agent represents a second user and, in a first step 212, receives data object information identifying a data object in a "second" data store of a "second" execution environment that includes the second communications agent. Id. at 27:35-40; Fig. 2B. In the next step 214, the mount descriptor is created and configured for accessing the data object by a "first" data store in a "first" execution environment that includes a "first" communications agent that represents a "first" user. Id. at 28:44-48. In the next step 216, the second communications agent places the mount descriptor in a "first" message addressed to the first user. Id., 30:37-40. In the next step 218, the second communications agent sends the first message to the first communications agent. Id. at 31:8-11.

A second part of the process uses the mount descriptor to create a representation of the data object in the first data storage and provide access to the data object (from the second data store). Id. at 20:58-66; 22:15; 22:61-62; 25:6-9; Fig. 2A. In the first step 202, the first communications agent receives the first message (which includes the mount descriptor) from the second communications agent. Id. at 20:58-66. In the next step 204, the first communications agent detects the mount descriptor. Id. at 22:15. In the next step 206, the first communications agent determines a "first" location of the data object in the first data store. Id. at 22:61-62. In the next step 208, the first communications agent creates, based on the mount descriptor, the representation of the data object in the first data storage. Id. at 25:6-9.

V. ILLUSTRATIVE CLAIMS

Challenged claim 14 of the '737 patent depends from, and thus incorporates, disclaimed independent claim 3 and intervening claim 13. We reproduce, below, disclaimed claims 3 and 13 and challenged claim 14^[1](with the Petitioner's identifiers of limitations in brackets).

3. [a] An apparatus, comprising:

[b]at least one non-transitory memory storing instructions and

[c]one or more processors in communication with the at least one non-transitory memory, wherein the one or more processors execute the instructions to:

[d] send first hypertext markup language-equipped code via at least one network to a first node, [e] for causing, at the first node, display of at least one first interface with a first user interface element, utilizing the first hypertext markup language-equipped code that is sent via the at least one network, and [f] for allowing receipt, from the first node via the at least one network, an indication of at least one folder that is received via the first user interface element of the at least one first interface;

[g] send second hypertext markup language-equipped code via the at least one network to the first node, [h] for causing, at the first node, display of at least one second interface with a second user interface element, utilizing the second hypertext markup language-equipped code that is sent via the at least one network, [i] for allowing receipt, from the first node via the at least one network, indicia associated with at least one email address that is received via the second user interface element of the at least one second interface and [j] for allowing receipt, from the first node via the at least one network, an indication to share the at least one folder;

[k] based on the receipt of the indication of the at least one folder, the indicia associated with the at least one email address, and the indication to share the at least one folder via the at least one network; cause generation of at least one email message identifying the at least one folder and including a reference to the at least one folder, without including at least one file in the at least one folder as an attachment of the at least one email message;

[1] cause to be sent, to a second node via the at least one network, the at least one email message, without including the at least one file in the at least one folder as an attachment of the at least one email message;

[m] send particular code via the at least one network to the second node for storage at the second node and cooperation with a file explorer interface, [n] for causing, based on the receipt of the indication of the at least one folder, the indicia associated with the at least one email address, and the indication to share the at least one folder via the at least one network: creation of a representation of the at least one folder in a location among one or more folders on the file explorer interface, where the second node is not caused to store the at least one file when the creation of the representation of the at least one folder is caused, and for: [o] causing, at the second node, display of the representation of the at least one folder in the location among the one or more folders on the file explorer interface; [p] allowing detection, at the second node, of an indication to open the at least one file in the at least one folder; and [q] in response to detection of the indication to open the at least one file in the at least one folder, causing retrieval of the at least one file via the at least one network for permitting display of the at least one file at the second node.

13. The apparatus of claim 3, wherein the apparatus is configured such that, when the creation of the representation of the at least one folder is caused, an additional

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