Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC.
`
`GOOGLE LLC,
`Petitioner v.
`
`EXPRESS MOBILE INC., Patent Owner
`
`Case No. IPR2021 01456
`
`U.S. Patent No. 9,471,287 B2
`Issue Date: October 18, 2016
`
`Title: Systems and Methods for Integrating Widgets on Mobile Devices
`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,471,287
`B2
`
`Page 1 of 111
`
`GOOGLE EXHIBIT 1019
`
`
`of U.S. Patent No. 9,471,287 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC.
`
`GOOGLE LLC,
`Petitioner v.
`
`EXPRESS MOBILE INC., Patent Owner
`
`Case No. IPR2021 01456
`
`U.S. Patent No. 9,471,287 B2
`Issue Date: October 18, 2016
`
`Title: Systems and Methods for Integrating Widgets on Mobile Devices
`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,471,287
`B2
`
`Page 1 of 111
`
`GOOGLE EXHIBIT 1019
`
`
`
`Petition for Inter Partes Review of U.S. Patent No.
`9,471,287 B2
`
`TABLE OF
`
`Table of Contents
`
`I.
`
`II.
`III.
`
`IV.
`
`V.
`VI.
`
`MANDATORY NOTICES UNDER §42.8(A)(1)
`A.
`Real Party-In-Interest under §42.8(b)(1)
`Related Matters under §42.8(b)(2)
`B.
`Lead and Back-Up Counsel under §42.8(b)(3)
`C.
`Service Information
`D.
`FEE PAYMENT
`REQUIREMENTS UNDER §§ 42.104 AND 42.108 AND
`CONSIDERATIONS UNDER §§ 314(A) AND 325(D)
`A.
`Grounds for Standing
`Identification of Challenge and Statement of Precise Relief
`B.
`Requested
`C.
`Considerations Under §§ 314(a) and 325(d)
`PATENT OVERVIEW
`
`8LEVEL OF ORDINARY SKILL
`A.Level of Ordinary Skill
`B.Specification
`CLAIM CONSTRUCTION
`THE CHALLENGED CLAIMS ARE UNPATENTABLE.
`A.
`Overview of Grounds
`Ground 1: Obviousness of Claims 1-2, 5-7, and 12 Over
`B.
`Anderson, Bowers, Jacobs, Ambrose-Haynes, and Geary
`1
`Claim 1
`(a)
`“A system for generating code to provide
`content on a display of a device, said system
`comprising:” (Claim 1[preamble]) 15
`
`-i-
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`Page
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`Page
`1
`1
`1
`45
`65
`65
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`6
`6
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`6
`76
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`8
`9
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`10
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`10
`11
`11
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`15
`15
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`Petition for Inter Partes Review of U.S. Patent No.
`9,471,287 B2
`
`TABLE OF
`
`(b)
`(c)
`
`Page
`“computer memory storing a registry of:” (Claim 1[a])17
`“an authoring tool configured to:” (Claim 1[b])
`42
`i
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`Page 3 of 111
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`Petition for Inter Partes Review of U.S. Patent No.
`9,471,287 B2
`
`(d)
`
`(e)
`
`(f)
`
`(g)
`
`(h)
`
`(i)
`
`(j)
`
`Table of Contents
`TABLE OF
`CONTENTS
`(continued)
`“define a (UI) object for presentation on the
`display, where said defined UI object
`corresponds to a web component included in
`said registry selected from a group consisting of
`an input of the web service and an output of the
`web service, ” (Claim 1[b][i])43
`“where each defined UI object is either: 1)
`selected by a user of the authoring tool; or 2)
`automatically selected by the system as the
`preferred UI object corresponding to the
`symbolic name of the web component selected
`by the user of the authoring tool,” (Claim
`1[b][ii])
`47
`“access said computer memory to select
`the symbolic name corresponding to the
`web component of the defined UI object,”
`(Claim 1[b][iii]) 49
`“associate the selected symbolic name with
`the defined UI object, where the selected
`symbolic name is only available to UI objects
`that support the defined data format associated
`with that symbolic name, and” (Claim
`1[b][iv])
`53
`the
`including
`“produce an Application
`selected symbolic name of the defined UI
`object, where
`said Application
`is a
`device-independent
`code;
`and”
`(Claim
`1[b][v])
`58
`“a Player, where said Player is a device-dependent
`code,” (Claim 1[b][vi])
`“wherein, when the Application and Player are
`provided to the device and executed on the
`device, and when the user of the device
`provides one or more input values associated
`-ii-
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`Page
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`61
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`9,471,287 B2
`
`Table of Contents
`TABLE OF
`CONTENTS
`with an input symbolic name to an input of the
`(continued)
`defined UI object,” (Claim 1[c])
`63
`
`Page
`
`-ii-
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`Page 5 of 111
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`
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`Petition for Inter Partes Review of U.S. Patent No.
`9,471,287 B2
`
`(k)
`
`(l)
`
`(m)
`
`Table of Contents
`TABLE OF
`CONTENTS
`(continued)
`“1) the device provides the user provided one
`or more input values and corresponding input
`symbolic name to the web service,” (Claim
`1[c][i])
`65
`“2) the web service utilizes the input
`symbolic name and the user provided one or
`more input values for generating one or more
`output values having an associated output
`symbolic name,” (Claim 1[c][ii])
`70
`“3) said Player receives the output symbolic
`name and corresponding one or more output
`values and provides instructions for the display
`of the device to present an output value in the
`defined UI object.” (Claim 1[c][iii]) 75
`Claim 2: “The system of claim 1, where said
`registry includes definitions of input and output
`related to said web service” 78
`Claim 5: “The system of claim 1, where said UI object is an
`input field for a web service.”78
`Claim 6: “The system of claim 1, where said UI object
`is an input field usable to obtain said web component,
`where said input field includes a text field, a scrolling
`text box, a check box, a drop down-menu, a list menu,
`or a submit button.”
`78
`Claim 7: “The system of claim 1, where said web
`component is an output of a web service, is the text
`provided by one or more simultaneous chat sessions,
`is the video of a video chat session, is a video, an
`image, a slideshow, an RSS display, or an
`advertisement.” 79
`Claim 12: “The system of claim 1, wherein said defined
`UI object corresponds to a widget.”
`
`Page
`
`79
`
`2
`
`3
`
`4
`
`5.
`
`6
`
` 6
`-
`iii-
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`Page 6 of 111
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`Petition for Inter Partes Review of U.S. Patent No.
`9,471,287 B2
`
`TABLE OF
`CONTENTS
`
`Page
`Ground 2: Obviousness of Claim 11 Over Anderson, Bowers,
`Jacobs, Ambrose-Haynes and Geary, in Further View of NFS
`Administration
`81
`1
`Claim 11: “The system of claim 1, where said code is provided
`over said network.”
`81
`CONCLUSION
`
`85
`
`C.
`
`VII.
`
`-ii-
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`Page 7 of 111
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`Petition for Inter Partes Review of U.S. Patent
`No. 9,471,287 B2
`
`List of Exhibits
`
`Exhibit
`No.
`1001
`
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`1009
`1010
`1011
`
`1012
`1013
`1014
`
`Description of Document
`U.S. Patent No. 9,471,287 to Steven H. Rempell, David Chrobak,
`and Ken Brown (filed May 8, 2015, issued October 18, 2016)
`(“’287 or “’287 patent”)
`Declaration of Vijay K. Madisetti, Ph.D. (“Madisetti”)
`Excerpts from Gail Anderson & Paul Anderson, Java Studio
`Creator Field Guide (2d ed. 2006) (“Anderson”)
`Excerpts from Bob Bowers & Steve Lane, Advanced FileMaker
`Pro 6 Web Development (2003) (“Bowers”)
`Excerpts from Sas Jacobs, Foundation XML for Flash
`(2006) (“Jacobs”)
`Excerpts from Nicole Ambrose-Haynes et al.,
`Professional ColdFusion 5.0 (2001)
`(“Ambrose-Haynes”)
`Excerpts from UNIX® System V NFSVNFS Administration
`(1993) (“NFS Administration”)
`Excerpts from IBM Dictionary of Computing (1994)
`Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`Affidavit from the Internet Archive
`
`Excerpts from David Geary et al., Core JavaServer Faces
`(2004) (“Geary”)
`Excerpts from The New Penguin Dictionary of Computing (2001)
`Reserved.
`Complaint for Patent Infringement (Dkt. 1) in Express Mobile,
`Inc. v. Facebook, Inc., Case No. 6:20-cv-00803-ADA (W.D. Tex.
`Sept. 1, 2020)
`
`-i
`-
`
`Page 8 of 111
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`
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`Petition for Inter Partes Review of U.S. Patent
`No. 9,471,287 B2
`
`1015
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`List of Exhibits
`Declaration of Sylvia Hall-Ellis (“Hall-Ellis”)
`Preliminary Infringement Contentions and Identification of Priority
`Dates, served February 5, 2021, in Express Mobile, Inc. v.
`Facebook, Inc., Case No. 6:20-cv-00803-ADA (W.D. Tex.)
`Scheduling Order (Dkt. 46) in Express Mobile, Inc. v. Facebook,
`Inc., Case No. 6:20-cv-00803-ADA (W.D. Tex. April 6, 2021)
`Proof of Service of Complaint in Express Mobile, Inc. v.
`Facebook, Inc., Case No. 6:20-cv-00803-ADA (W.D. Tex.)
`Comparison between the Current Petition and Petition in
`IPR2021- 01456
`Order Transferring Case to the Northern District of California, Case
`No. 20-cv-00804, Dkt. No. 89 (W.D. Tex. Nov. 16, 2021)
`
`-i
`-
`
`Page 9 of 111
`
`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`I.
`MANDATORY NOTICES UNDER §42.8(A)(1)
`A.
`Real Party-In-Interest under §42.8(b)(1)
`Facebook, Inc.Google LLC1 is the real party-in-interest to this inter partes
`
`review (“IPR”) petition.
`
`B.
`Related Matters under §42.8(b)(2)
`The ’287 patent is the subject of an inter partes review proceeding—
`
`Facebook, Inc. v. Express Mobile, Inc., Case No. IPR2021-01456 (“the
`
`Facebook IPR Proceeding”), which the Board instituted on March 3, 2022. This
`
`Petition is being submitted concurrently with a Motion for Joinder, requesting
`
`institution and joinder with the aforementioned Facebook IPR Proceeding.
`
`The ’287 patent is the subject of the following co-pending civil actions:
`
`1.
`
`2.
`
`3.
`
`4.
`
`Express Mobile, Inc. v. Facebook, Inc., No. 6-20-cv-00803 (W.D.
`Tex.) (ordered transferred to N.D. California on Aug. 26, 2021),
`currently captioned as Express Mobile, Inc. v. FacebookMeta
`Platforms, Inc., No. 5:21-cv- 06657 YGR (N.D. Cal.)
`Express Mobile, Inc. v. Google LLC, No. 6-20-cv-00804 (W.D.
`Tex.) (ordered transferred to N.D. California on Nov. 16, 2021),
`currently captioned as Express Mobile, Inc. v. Google LLC, No.
`3-21-cv-08944 (N.D. Cal.)
`Express Mobile, Inc. v. Dropbox, Inc., No. 3-21-cv-01145 (N.D. Cal.)
`
`Express Mobile, Inc. v. Salesforce.com, Inc., No. 3-20-cv-08461
`(N.D. Cal.)
`
`1 Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of
`Alphabet Inc. XXVI Holdings Inc. and Alphabet Inc. are not real
`parties-in-interest to this proceeding.
`
`- 1-
`
`Page 10 of 111
`
`
`
`6.
`7.
`
`8.
`9.
`
`10.
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`5.
`Express Mobile, Inc. v. Booking.com B.V., No. 3-20-cv-08491
`(N.D. Cal.)
`Express Mobile, Inc. v. SAP SE, No. 3-20-cv-08492 (N.D. Cal.)
`Express Mobile, Inc. v. Oath Holdings Inc. f/k/a Yahoo!, No.
`3-20-cv- 08321 (N.D. Cal.)
`Express Mobile, Inc. v. Pinterest, Inc., No. 3-20-cv-08335 (N.D. Cal.)
`Express Mobile, Inc. v. Amazon.com, Inc., No. 3-20-cv-08339
`(N.D. Cal.)
`Express Mobile, Inc. v. Adobe Inc. d/b/a Adobe Systems Inc., No.
`3-20- cv-08297 (N.D. Cal.)
`Express Mobile, Inc. v. HubSpot, Inc., No. 1-20-cv-01162 (D. Del.)
`Express Mobile, Inc. v. Squarespace, Inc., No. 1-20-cv-01163 (D. Del.)
`Express Mobile, Inc. v. Microsoft Corp., No. 3-20-cv-06152 (N.D.
`Cal.)
`Express Mobile, Inc. v. Expedia, Inc., No. 6-20-cv-00801 (W.D. Tex.)
`Inc. v. Atlassian Corporation PLC, No.
`Express Mobile,
`6-20-cv-00805 (W.D. Tex.) (ordered transferred to N.D. California
`on Nov 17, 2021), currently captioned as Express Mobile, Inc v
`Atlassian Corporation PLC, No. 3-21-cv-08942 (N.D. Cal.)
`Express Mobile, Inc. v. GoDaddy.Com, LLC, No. 1-19-cv-01937
`(D. Del.)
`Express Mobile, Inc. v. Wix.com, Ltd., No. 3-19-cv-06559 (N.D. Cal.)
`Shopify Inc. v. Express Mobile, Inc., No. 1-19-cv-00439 (D. Del.)
`Inc., No.
`Express Mobile,
`Inc. v. Slack Technologies,
`3-21-cv-02001 (N.D. Cal.)
`The ’287 patent is also the subject of Google LLC v. Express Mobile v.
`Expedia, Inc., IPR2021 00700No. 1-21-cv-01141 (PW.TD.A.B Tex.)
`(filed March 31, 2021).
`The ’287 patent is also the subject of SAP Americathe following Board
`- 2-
`
`17.
`18.
`19.
`
`11.
`12.
`13.
`
`14.
`15.
`
`16.
`
`20.
`
`Page 11 of 111
`
`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`proceedings:
`
`1.
`
`Facebook, Inc. v. Express Mobile, Inc., IPR2021-0114401456
`(P.T.A.B.) (filed July 2, 2021).Sept. 1, 2021; institution granted
`March 3, 2022)
`The ’287 patent is also the subject of Adobe, Inc. d/b/a Adobe Systems, Inc. v.
`2.
`Booking Holdings Inc. f/k/a Priceline Group Inc. v. Express
`Mobile, Inc., IPR2021 01228 (P.T.A.B.)2022-00248 (filed July
`6Dec. 1, 2021).
`The ’287 patent was also formerly the subject of the following civil actions:
`
`3.
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9.
`
`10.
`
`11.
`
`12.
`
`13
`
`1.Express Mobile, Inc. v. Volusion, LLC et al, No. 2-17-cv-00064
`(E.D. Tex.) (terminated January 19, 2017).
`2.Express Mobile, Inc. v. AppGyver Inc., No. 1-17-cv-00710 (D.
`Del.) (terminated Sept. 1, 2017)
`3.Express Mobile, Inc. v. Big Spaceship LLC, No. 1-18-cv-01167
`(D. Del.) (terminated Jan. 29, 2019)
`4.Express Mobile, Inc. v. Blue State Digital Inc., No.
`1-18-cv-01168 (D. Del.) (terminated Jan. 2, 2019)
`5.Express Mobile, Inc. v. Happiest Minds Technologies Pvt. Ltd.,
`No. 3- 18-cv-04683 (N.D. Cal.) (terminated Jan. 24, 2019)
`6.Express Mobile, Inc. v. Pantheon Systems Inc., No.
`3-18-cv-04688 (N.D. Cal.) (terminated Feb. 14, 2019)
`7.Express Mobile, Inc. v. DreamHost, LLC, No. 1-18-cv-01173 (D.
`Del.) (terminated Aug. 13, 2019)
`8.Express Mobile, Inc. v. Hill Holliday LLC, No. 1-18-cv-01174
`(D. Del.) (terminated Aug. 5, 2019)
`9.Express Mobile, Inc. v. Hostway Services, Inc., No.
`1-18-cv-01175 (D. Del.) (terminated Aug. 8, 2019)
`10.Express Mobile, Inc. v. iCrossing, Inc., No. 1-18-cv-01176 (D.
`Del.) (terminated Aug. 7, 2020)
`11.Express Mobile, Inc. v. Liquid Web, LLC, No. 1-18-cv-01177
`- 3-
`
`Page 12 of 111
`
`
`
`15.
`
`16
`
`17
`
`18
`
`19
`
`14.
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`(D. Del.) (terminated Aug. 7, 2019)
`12.Express Mobile, Inc. v. Namecheap, Inc., No. 1-18-cv-01181 (D.
`Del.) (terminated Sept. 16, 2019)
`13.Express Mobile, Inc. v. Rackspace Hosting, Inc., No.
`1-18-cv-01183 (D. Del.) (terminated May 29, 2019)
`14.Express Mobile, Inc. v. Add2Net, Inc., No. 2-19-cv-05091 (C.D.
`Cal.) (terminated Sept. 30, 2019)
`15.Express Mobile, Inc. v. Evolve Media, LLC, No. 2-19-cv-05093
`(C.D. Cal.) (terminated Mar. 16, 2020)
`16.Express Mobile, Inc. v. InMotion Hosting, Inc., No.
`2-19-cv-05097 (C.D. Cal.) (terminated May 13, 2020)
`17.Express Mobile, Inc. v. Netlancers Inc., No. 2-19-cv-05102
`(C.D. Cal.) (terminated Dec. 16, 2019)
`18.Express Mobile, Inc. v. Possible Worldwide, LLC, No.
`2-19-cv-05110 (C.D. Cal.) (terminated Oct. 18, 2019)
`19.Express Mobile, Inc. v. Advantage AMP, Inc., No.
`2-19-cv-05155 (C.D. Cal.) (terminated Jan. 24, 2020)
`20.Express Mobile, Inc. v. Contus Interactive, Inc., No.
`3-19-cv-03350 (N.D. Cal.) (terminated Feb. 7, 2020)
`21.Express Mobile, Inc. v. e-Zest Solutions, Inc., No.
`3-19-cv-03351 (N.D. Cal.) (terminated Nov. 18, 2019)
`22.Express Mobile, Inc. v. MH Sub I, LLC d/b/a Officite, No.
`3-19-cv- 03352 (N.D. Cal.) (terminated Aug. 13, 2020)
`23.Express Mobile, Inc. v. Rishabh Business Solutions, Inc., No.
`3-19-cv- 03356 (N.D. Cal.) (terminated Mar. 13, 2020)
`24.Express Mobile, Inc. v. Rauxa Direct, LLC, No. 3-19-cv-03357
`(N.D. Cal.) (terminated Jan. 17, 2020)
`25.Express Mobile, Inc. v. Web.Com Group, Inc., No.
`1-19-cv-01936 (D. Del.) (terminated October 11, 2019)
`26.Express Mobile, Inc. v. Web.com Group, Inc., No. 3-20-cv-00839
`- 4-
`
`20.
`
`21.
`
`22.
`
`23.
`
`24
`
`25
`
`26.
`
`27
`
`28
`
`Page 13 of 111
`
`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`(M.D. Fla.) (terminated July 28, 2020).
`27.Express Mobile, Inc. v. Dropbox, Inc., No. 6-20-cv-00806 (W.D.
`Tex.) (terminated Feb. 4, 2021)
`Petitioner was first served on September 2, 2020. (Ex. 1018, p.001.)The ‘044
`
`29.
`
`patent was also formerly the subject of the following Board proceedings:
`
`1
`
`2
`
`Google LLC v. Express Mobile, Inc., IPR2021-00710 (P.T.A.B.)
`(filed March 31, 2021; institution denied Oct. 24, 2021)
`SAP America, Inc. v. Express Mobile, Inc., IPR2021-01144
`(P.T.A.B.) (filed July 2, 2021; institution denied Jan. 18, 2022)
`Adobe, Inc. d/b/a Adobe Systems, Inc. v. Express Mobile, Inc.,
`IPR2021-01228 (P.T.A.B.) (filed July 6, 2021; institution denied
`Jan. 18, 2022)
`C.
`Lead and Back-Up Counsel under §42.8(b)(3)
`Petitioner provides the following designation of counsel.Lead counsel: Naveen
`Modi (Reg No 46,224) Backup counsel: (1) Joseph
`
`3.
`
`LEAD COUNSEL
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843 5001
`Fax: (650) 849 7400
`
`BACK UP COUNSEL
`Phil Morton (Reg. No. 57,835)
`pmorton@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington D.C. 20004
`Tel: (202) 728 7055
`Fax: (202) 842 7899
`
`- 5-
`
`Page 14 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`
`Andrew Mace (Reg. No. 63,342)
`amace@cooley.com COOLEY LLP ATTN:
`Patent Group 1299 Pennsylvania Avenue
`NW Suite 700 Washington D.C. 20004
`Tel: (650) 843 5808 Fax: (650) 849 7400
`
`Chih Yun (Steve) Wu (Reg. No.
`69,082) swu@cooley.com COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700 Washington D.C.
`20004 Tel: (650) 843 5665
`Fax: (650) 849 7400
`
`Dustin Knight (Reg. No.
`76,239) dknight@cooley.com
`COOLEY LLP ATTN: Patent
`Group 1299 Pennsylvania
`Avenue NW Suite 700
`Washington D.C. 20004 Tel:
`(703) 456 8024
`Fax: (703) 456 8100
`Mark R. Weinstein (Admission pro
`hac vice to be requested)
`mweinstein@cooley.com
`COOLEY LLP ATTN: Patent Group 1299
`Pennsylvania Avenue NW Suite 700
`Washington D.C. 20004
`
`Tel: (650) 843 5007
`Fax: (650) 849 7400
`
`- 6-
`
`Page 15 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`
`E
`
`Palys (Reg. No. 46,508), (2) Daniel Zeilberger (Reg. No. 65,349).
`
`D.D. Service Information
`This PetitionService information is being served by Federal Express to the
`
`attorney of record for the ’287 patent, Steven R. Vosen, 909 Marina Village
`
`Parkway #138, Alameda, CA 94501 1048Paul Hastings LLP, 2050 M Street NW,
`
`Washington, D.C.
`
`20036,
`
`Tel.:
`
`202.551.1700, Fax:
`
`202.551.1705, email:
`
`PH-Google- ExpressMobile-IPR@paulhastings.com. Petitioner consents
`
`to electronic service at the addresses provided above for lead and back up
`
`counsel.
`
`II.
`
`FEE PAYMENT
`Petitioner requests review of 7 claims, with a $41,500 payment.The PTO is
`
`authorized to charge any fees due during this proceeding to Deposit Account No.
`
`50-2613.
`
`III.
`
`42.104 AND 42.108
`REQUIREMENTS UNDER §§
`AND CONSIDERATIONS UNDER §§ 314(A)
`
`AND 325(D)
`A.
`Grounds for Standing
`Petitioner certifies that the ’287 patent is available for IPR and that
`
`Petitioner is not barred or otherwise estopped.
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested
`
`- 7-
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`Page 16 of 111
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`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`Petitioner requests IPR institution based on:
`
`Ground
`
`Claim
`
`1
`
`2
`
`1-2, 5-7, and 12
`
`11
`
`Basis under §103
`Anderson (EX1003),
`Bowers (EX1004),
`Jacobs (EX1005),
`Ambrose-Haynes (EX1006),
`and Geary (EX1011)
`Anderson,
`Bowers,
`Jacobs,
`Ambrose-Haynes,
`Geary, and
`NFS Administration (EX1007)
`
`Submitted with this Petition is the Declaration of Vijay K. Madisetti,
`
`Ph.D., a qualified technical expert. (EX1002, ¶¶1-12, Ex. A.) As noted above,
`
`this Petition is being submitted concurrently with a Motion for Joinder.
`
`C.
`Considerations Under §§ 314(a) and 325(d)
`Petitioner respectfully requests that the Board decline to exercise its
`
`discretion to deny institution under §§ 314(a) or 325(d).
`
`- 8-
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`Page 17 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`
`§314(a): The litigation is in its early stages Patent Owner commenced
`
`litigation on September 1, 2020 (EX1014, p.0093), and served
`
`Infringement Contentions on February 5, 2021 (EX1016). Petitioner served
`
`invalidity contentions in§314(a): On November 16, 2021, the co-pending
`
`district court, but to mitigate litigation was
`
`transferred from the Western District of Texas to the Northern District of
`
`California. (EX1020.) At the time of filing of this Petition, no trial date has
`
`been set. Moreover, this Petition is being submitted concurrently with a Motion
`
`for Joinder, requesting institution and joinder with the Facebook IPR
`
`Proceeding. This Petition raises identical issues to those in the Facebook IPR
`
`Proceeding. And to alleviate any concerns regardingof duplicative efforts
`
`between the district court and the Board, Petitioner hereby stipulates that it will
`
`not pursue, in district court, invalidity of the ’287 patent in the litigation based
`
`on any instituted IPR ground in this proceeding.
`
`Trial was tentatively scheduled to commence in the Western District of
`
`Texas more than a year from now, on September 12, 2022. (EX1017.) As noted
`
`in Part I.B (Related Matters), on August 26, 2021, the district court transferred
`
`the case to the Northern District of California; thus, it is exceedingly unlikely the
`
`schedule established by the Western District of Texas will continue to apply.
`
`- 9-
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`Page 18 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`Petitioner intends to move to stay the litigation pending IPR.
`
`§325(d): Where a petitioner files a “copycat” petition in conjunction with a
`
`timely motion for joinder and agrees to assume a “passive understudy role,” the
`
`General Plastic factors are “effectively neutraliz[ed].” Apple Inc. v. Uniloc
`
`2017 LLC, IPR2018-00580, Paper 13 at 10-11 (Aug. 21, 2018). While the
`
`present copycat Petition is Google’s second petition challenging the ’287
`
`patent, this case is distinguishable from Apple Inc. v. Uniloc 2017 LLC,
`
`IPR2020-00854, Paper 9 at 4 (Oct. 28, 2020) (precedential) (“Uniloc II”).
`
`Unlike the petitioner in Uniloc II, who “failed to set forth facts or offer an
`
`explanation concerning its knowledge, at the time it filed the first petition, of
`
`the prior art asserted in the [copycat petition],” id. at 9, here, Google represents
`
`that, at the time of filing of the first petition (IPR2021- 00710, Paper 1), counsel
`
`for Google in any of the actions involving Express Mobile
`
`did not identify or consider the prior art used in the Facebook IPR proceeding
`
`and in the present Petition, despite extensive prior art search. While the primary
`
`reference at issue in the Facebook IPR proceeding and in the present Petition
`
`(EX1003) was produced by Express Mobile in the parallel district court
`
`litigation on March 13, 2021, Google was unable to identify this reference by
`
`the time of filing of the first petition on March 31, 2021 (IPR2021-00710, Paper
`
`1), particularly given that it was produced among over three thousand other
`
`- 10-
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`Page 19 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`documents. Moreover, the Facebook IPR petition was filed on September 1,
`
`2021, and thus did not benefit from having received the Board’s October 4,
`
`2021 institution decision in IPR2021- 00710 2 Thus, the present copycat
`
`Petition, which is substantively identical to the Facebook IPR petition, likewise
`
`did not benefit from the filings in response to Google’s first petition. Advanced
`
`Micro Devices, Inc. v. Monterey Research, LLC, IPR2021-00776, Paper 13 at
`
`13-14 (Oct. 13, 2021) (factor 3 does not weigh in favor of denying institution).
`
`Furthermore, the Board should “decline to speculate on whether [Facebook]
`
`will settle with Patent Owner,” especially given that “the Board
`
`Petitioner is mindful of the limited resources of the Board. This Petition
`
`only challenges seven claims, and Petitioner has endeavored to set forth a
`
`streamlined and straightforward challenge based on a limited number of grounds
`
`and references.
`
`§325(d): This Petition relies on new prior art to disclose limitations
`specifically found to be missing from the prior art cited during prosecution.
`
`The prior art references cited in this Petition were not cited during prosecution or
`
`the other co pending IPR petitions relating to the challenged claims identified in
`
`Part I.B above. Petitioner was not involved in the preparation or filing of those
`
`2 Patent Owner’s July 13, 2021 preliminary response in IPR2021-00710 relates to
`whether the Board should exercise discretion to deny institution (IPR2021-00710,
`Paper 6 at 13-31) and prior art references not at issue in the Facebook IPR
`proceeding and in the present Petition (id. at 4-12).
`- 11-
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`Page 20 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`petitions.has already allocated resources to complete the [Facebook] IPR
`
`[Proceeding].” Id. at 17 (factor 6 does not weigh in favor of denying
`
`institution). Accordingly, unlike Uniloc II, the General Plastic factors favor
`
`institution and joinder here.
`
`IV.
`
`PATENT OVERVIEWLEVEL OF ORDINARY SKILL
`A.Level of Ordinary Skill
`A person of ordinary skill as of April 2008 would have had at least a
`
`bachelor’s degree in software engineering, computer science, computer
`
`engineering, or electrical engineering with at least two years of experience in
`
`web-based software application development,
`
`including experience
`
`in
`
`developing software and systems for storing, retrieving, and transmitting
`
`information (such as text and images) over a computer network such as the
`
`Internet (or equivalent degree or experience). (EX1002, ¶16.)
`
`- 12-
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`Page 21 of 111
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`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`B.Specification
`The ’287 patent discloses a system for generating code to provide content
`
`on a display of a device. (’287, 1:34 35.) The system includes a database of web
`
`services that can be obtained over a network and an authoring tool “configured to
`
`define an object for presentation on the display, select a component of a web
`
`service included in said database, associate said object with said selected
`
`component, and produce code, that when executed on the platform, provides said
`
`selected component on the display of the platform.” (Id., 1:36 42.) FIG. 1A
`
`illustrates an embodiment of the system including an authoring platform and a
`
`server:
`
`(Id., FIG. 1A.) The specification explains that “a user of authoring platform 110
`
`may produce programming instructions or files that may be transmitted over
`Network N to operate device 130.” (Id., 3:6 9.) The result of this authoring process
`is “publishing an Application.” (Id., 3:10 11.) The disclosed device independent
`program (the “Application”) and a set of device or platform specific instructions
`(called a “Player”) are provided to a device. (Id., 5:8 14.) The Application and
`Player work together to execute programming from the authoring tool. (Id., 5:20 24.)
`The Application is code in a device independent format that is interpreted and/or
`executed by the Player to generate one or more pages on the display of a device. (Id.,
`6:4 8.) The disclosed system, similar to known systems and platforms (e.g., Java
`Studio Creator and QEDWiki), allows for Applications to provide Web service
`interaction and invocation to a device. (Id., 7:47 56.) The authoring platform permits
`a user to “associate objects, such as objects for presenting” on a screen, with
`“components of one or more web services 230 that are registered in web component
`registry 220.” (Id., 8:36 42.)
`V.
`CLAIM CONSTRUCTION
`Various claim terms have been either previously construed by courts or
`
`- 13-
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`Page 22 of 111
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`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`constructions have been proposed by Patent Owner or various defendants, as
`
`summarized in the below table. Petitioner does not believe express claim
`
`construction is necessary at this time; as explained below, Petitioner’s analysis
`
`accommodates even the narrowest versions of the constructions set forth below.
`
`Disputed
`Term
`
`“Application”
`
`“Player”
`
`“registry”
`
`“UI object”
`
`Petitioner’s Construction
`
`“Device-independent code which
`contains instructions for a device, is
`separate from the Player, and is
`interpreted or executed by the
`Player”
`
`is
`that
`“Device specific code,
`separate from the Application and
`interprets
`or
`executes
`the
`Application”
`“Database, XML file, or Portable
`Description Language file that
`exists on a computer”
`“Object(s) placed on a canvas that are
`intended for interaction with a user of
`a device”
`
`Patent Owner’s
`Construction
`“Device-independent
`software code
`containing
`instructions for a
`device”
`“Software code that
`facilitates the
`execution of an
`application on a
`device”
`No construction
`necessary
`
`No construction
`necessary
`
`VI.
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE.
`A.
`Overview of Grounds
`The term “web service” refers to a series of industry standard
`
`technologies introduced in the early 2000s that allowed web applications to
`
`access services provided by third parties. (EX1002, ¶47.) Prominent companies
`
`such as Google and Amazon began offering web services that enabled
`- 14-
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`Page 23 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`developers to incorporate certain functionalities (such as performing searches)
`
`into their web applications. (Id., ¶¶47-48.) For example, anyone who had used a
`
`third-party web site that could show search results from Google, or show items
`
`from the Amazon product catalog, would have been familiar with the basic
`
`concept of web services.
`
`The challenged claims seek to lay claim to a combination of two
`
`well-known and widely-used technologies: (1) creating a web application that
`
`uses a “web service” provided by a third party, and (2) making that application
`
`platform- independent using Java. Claim 1 (the sole challenged independent
`
`claim) resorts to excessive length, verbosity and jargon to obscure this fact, but
`
`its limitations describe little more than a conventional process for creating a
`
`Java application capable of accessing a web service.
`
`The primary prior art reference cited in this Petition Anderson
`
`(EX1003) describes an authoring tool (Java Studio Creator) for creating Java
`
`applications. Anderson describes a sample Java application that allows users to
`
`enter a search query and then access Google web services to perform a search
`
`based on that query. Anderson describes in detail how to design the user
`
`interface for the application, including incorporating the ubiquitous Google
`
`logo, text field entry box, and search button, to interface with Google’s servers
`
`to utilize Google web services to perform the search and display the results.
`
`- 15-
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`Page 24 of 111
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`(EX1002, ¶¶49-51.) Figure 10-9 shows a screenshot from an example Java
`
`application described in Anderson that incorporates these capabilities:
`
`(EX1003, p.00307, Fig. 10-9.) Ground 1 below demonstrates how the sample
`
`Java web application from Anderson cleanly maps straight down claim 1,
`
`disclosing and rendering obvious each of its limitations.
`
`For example, as shown below, the first third of the claim (claim 1[a])
`
`describes a registry for storing symbolic names for a web service. These
`
`limitations are merely a restatement of the industry-standard Web Services
`
`Description Language (WSDL), an established XML-based format that web
`
`- 16-
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`service providers (such as Google) used to describe the inputs and outputs of
`
`the web service. The second part of the (claim 1[b]) describes known
`
`techniques for building a Java
`
`application that incorporates a web service, which would leverage Java’s
`
`built-in capabilities for cross-platform portability. And the third part of the
`
`claim 1[c] describes nothing more than the end-result of actually executing the
`
`same Java application to access Google web services.
`
`Ground 1 relies primarily on Anderson, but also cites Bowers (EX1004)
`
`and Jacobs (EX1005), which provide additional detail about the same Google
`
`search web services described in Anderson. See Shopify, Inc. et al. v. DDR
`
`Holdings, LLC, Case IPR2019-1011, Paper 34, at 19 (PTAB Feb. 14, 2020)
`
`(holding that skilled artisan would have been motivated to combine publications
`
`describing common system). Bowers and Jacobs provide additional details
`
`including the specific content and format of the actual WSDL file for the
`
`Google web service, and the format and content of actual input and output
`
`messages sent and received using that service. (EX1002, ¶¶53-54, 56-57.)
`
`Ground 1 also relies on Ambrose-Haynes (EX1006), for its description of
`
`well-known characteristics of Java that Anderson takes for granted, including
`
`cross-platform capabilities enabled by use of the Java Virtual Machine (JVM).
`
`(Id., ¶¶59-61.) Ground 1 also relies on Geary (EX1011) for its description of
`
`- 17-
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`Page 26 of 111
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,471,287 B2
`standard Java technologies (such as classes and subclasses) for incorporating
`
`user interface components into Java web applications.
`
`Ground 2 addresses dependent claim 11, which merely adds the ability to
`
`retrieve code from a remote network-connected server. Claim 11 recites nothing
`
`of
`
`patentable significance and is rendered obvious over well-known network filing
`
`techniques as described in NFS Administration (EX1007). (Id., ¶¶66-70.)
`
`Anderson, Bowers,
`
`Jacobs, Ambrose-Haynes, Geary and NFS
`
`Administration all qualify as prior art to the challenged claims because each
`
`reference was published before April 2008, as shown by their public
`
`accessibility and indexing in public libraries. (Hall-Ellis, EX1015, ¶¶49, 57, 65,
`
`73, 81, 89.)
`
`B.
`
`Ground 1: Obviousness of Claims 1-2, 5-7, and 12 Over
`Anderson, Bowers, Jacobs, Ambrose-Haynes, and Geary
`1.
`Claim 1
`(a)
`“A system for generating code to provide content on
`a display of a device, said system comprising:”
`(Claim 1[preamble])
`Anderson describes a “system for generating code.” As noted
`
`previously, Anderson describes
`
`the Java Studio Creator, a software
`
`d
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