Trials@uspto.gov
`571-272-7822
`
`Paper10
`Date: March 18, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK,INC.,
`Petitioner,
`
`V.
`
`EXPRESS MOBILEINC.,
`Patent Owner.
`
`IPR2021-01457
`Patent 9,928,044 B2
`
`Before JEFFREY S. SMITH, AARON W. MOORE,and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. $314
`
`
`571-272-7822
`
`Paper10
`Date: March 18, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK,INC.,
`Petitioner,
`
`V.
`
`EXPRESS MOBILEINC.,
`Patent Owner.
`
`IPR2021-01457
`Patent 9,928,044 B2
`
`Before JEFFREY S. SMITH, AARON W. MOORE,and
`RUSSELLE. CASS, Administrative Patent Judges.
`
`CASS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. $314
`
`
`
`IPR2021-01457
`Patent 9,928,044 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Facebook,Inc. (“Petitioner”) filed a petition requesting interpartes
`
`review (Paper2,“Pet.”) ofclaims 1, 2, 5—7, 11, and 12 (“the challenged
`
`claims”) of U.S. Patent No. 9,928,044 B2 (Ex. 1001, the “’044 patent”).
`
`See 35 U.S.C. §311. Express Mobile Inc. (“Patent Owner’’) timelyfiled a
`
`Preliminary Response. Paper 6, “Prelim. Resp.” With authorization from
`
`the Board, Petitioner and Patent Ownerfiled, respectively, a Reply (Paper8)
`
`and a Sur-reply (Paper9) addressing discretionary denial issues.
`
`Under 37 C.F.R. § 42.4(a), we have authority to determine whether to
`
`institute review. The standardfor instituting an interpartes review is set
`
`forth in 35 U.S.C. § 314(a), which provides that an interpartes review may
`
`not beinstituted unless the information presentedin the Petition and the
`
`Preliminary Response shows“there is a reasonablelikelihood that the
`‘petitioner would prevail with respect to at least 1 ofthe claims challenged in
`
`the petition.”
`
`Applying those standards, we determinethat Petitioner has
`
`demonstrated a reasonablelikelihood that it would prevail in showing
`
`unpatentability of at least one challenged claim of the ’044 patent. We
`
`institute review onall challenged claims and onall groundsraised in the
`
`Petition.
`
`Ourfindings of fact and conclusionsdiscussed below are based on the
`evidentiary record developed thus far. This Decision to institute trial is not a
`
`final decision as to the patentability of any challenged claim. Anyfinal
`
`decision will be based on the full record developed duringtrial.
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
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`B. Real Parties in Interest
`
`Thepartiesidentify themselvesas the real parties in interest. Pet. 1;
`Paper3, 1.
`|
`C. Related Matters
`
`As required by 37 C.F.R. § 42.8(b)(2), the parties identify various
`related matters, including numerousdistrict court proceedings involving the
`
`’044 patent. Pet. 1-4; Paper 3, 1-4. Amongthe identified related matters
`
`are several interpartes matters involving the ’044 patent: IPR2021-01225
`(“the °1225 IPR”), IPR2021-01 146 (“the ’1146 IPR”), and IPR2021-00711
`(“the ’711 IPR’). Paper3, 2.!
`|
`D. The ’044 Patent (Ex. 1001)
`The ’044patent relates to a platform for generating anddistributing
`programming to mobile devices over a network. Ex. 1001, Abs. The system
`
`includes a database ofwebservices that can be obtained over a network, and
`an authoring tool “configured to define an object for presentation on the
`display, select a component ofa webservice included in said database,
`associate said object with said selected component, and producecode, that
`
`when executed onthe platform,provides said selected componenton the
`
`display of the platform.” Jd. at 1:34-42. The Specification describes
`device-independent programs(“Applications”) and device- or
`platform-specific instructions (“Players”) that are provided to user devices.
`
`1 Petitioner misidentifies several IPR mattersas involving the ’044 patent,
`whichin fact involve different patents owned by Patent Owner. See Pet. 2
`(citing IPR2021-00700 (involving U.S. Patent No. 6,546,397); IPR2021-
`01144 (involving U.S. Patent No. 9,063,755 (“the ’755 patent’’)); and
`IPR2021-01228 (involving the ’755 patent)). We view this misidentification
`as inadvertenterror.
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
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`Id. at 5:13-19. A Player transforms device-independentinstructions of an
`
`Application into device-specific instructions that are executable by a user
`
`device to, for example, generate one or more pages onthe display ofthe
`
`device. Jd. at 5:60-63, 6:10—13. The disclosed system allows for
`
`Applications to provide web service interaction and invocation to a device.
`
`Id. at 7:55-64.
`
`Figure 2A illustrates the interaction between system components, and
`
`is reproduced below.
`200
`
`~y
`
`Players
`
`110
`
`Authoring
`Platform
`
`
`
`
`Load Registry
`Applications
`
`
`220
`Registry
`
`
`
`WebComponent
`
`
`Registry
`
`
`
`
`Deploy
`
`Registry
`
`
`
`aio
`
`Response
`Director
`
`
` Content
`.
`
`Server
`
`Cantent
`
`Request
`
`
`Request
`and
`Response 4
`230
`
`Web Service
`
`FIG. 2A
`
`Figure 2A is a schematic illustrating the communications
`betweendifferent system components. Ex. 1001, 2:21—23.
`As illustrated in Figure 2A, authoring platform 110 may generate one
`
`or more Players, which are provided to responsedirector 210. Jd. at 8:15—
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`17. Device 130 requests a Player from responsedirector 210, and recetves
`
`andinstalls the Player. Jd. at 8:18—20. Web service 230 includesa plurality
`
`of services obtainable over the Internet. Jd. at 8:26—27. Each webserviceis
`
`identified in an entry in web componentregistry 220. Id. at 8:27-30. Web
`componentregistry 220 is provided through server 120 to authoring platform
`
`110 so that a user of the authoring platform may bind webservices 230 to
`
`elements to be displayed on device 130. Jd. at 8:30-34. A web component
`
`registry 220 for each registered web service 230 is loaded into authoring
`
`platform 110. Jd. at 8:62-64. The userof the authoring platform can then
`assign componentsofany webservice 230 to an Application without any
`
`need to write code. Id. at 8:64—66.
`
`E.
`
`Illustrative Claim
`
`Of the challenged claims, claim 1 is independent. Challenged claims
`
`2, S—7, 11, and 12 dependfrom claim 1. Claim 1, reproduced below,
`
`illustrates the claimed subject matter:
`
`1. A system for generating code to provide content on a display
`of a device, said system comprising:
`computer memory storing:
`a) symbolic names required for evoking one or more web
`components eachrelated to a set of inputs and outputs
`of a web service obtainable over a network, where the
`symbolic names are character strings that do not
`contain either a persistent address or pointer to an
`output value accessible to the web service, where each
`symbolic namehasan associated data format class type
`corresponding to a subclass of User Interface (UI)
`objects that support the data format
`type of the
`symbolic name, and where each symbolic name has a
`preferred UI object, and
`b) an addressof the web service;
`
`5
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`an authoring tool configuredto:
`define a (UI) object for presentation onthe display,
`where said defined UI object corresponds to a web
`componentincluded in said computer memory selected
`from a group consisting of an input of the web service
`and an outputofthe web service, where each defined UI
`objectis either:
`1) selected by a user of the authoring tool; or
`2) automatically selected by the system as the preferred
`UI object correspondingto the symbolic nameofthe
`web componentselected by the user ofthe authoring
`tool,
`access said computer memory to select the symbolic name
`corresponding to the web componentofthe defined UI
`object,
`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
`formatassociated with that symbolic name,
`store information representative of said defined UI object
`andrelated settings in a database;
`retrieve said information representative ofsaid one or more
`said UI object settings stored in said database, and
`build an application consisting of one or more web page
`viewsfrom at least a portion of said database utilizing
`at
`least one player, where said player utilizes
`information stored in said database to generate for the
`display of at least a portion of said one or more web
`pages,
`wherein when the application and player are provided to
`the device and executed on the device, and
`
`whenthe user of the device provides one or more input
`values associated with an input symbolic nameto an
`input of the defined UI object, the device provides the
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`and
`input values
`user provided one or more
`corresponding input symbolic nameto the webservice,
`the webservice utilizes the nput symbolic name andthe
`user provided one or more input values for generating
`one or more output values having an associated output
`symbolic name,
`and the 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.
`
`Ex. 1001, 37:48-38:40.
`
`F. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 1, 2, 5—7, 11, and 12 are unpatentable on
`
`the following grounds:
`
`
`
`Claim(s) Challenged|35 U.S.C. § Reference(s)/Basis
`
`
`
`
`
`Anderson,” Bowers,? Jacobs,’
`Ambrose-Haynes,” and Geary®
`
`
`
`Anderson, Bowers, Jacobs,
`Ambrose-Haynes, Geary, and NFS
`
`Administration’
`
`1, 2, 5-7, 12
`
`11
`
`103(a)
`
`103(a)
`
`
`
`2G. Anderson & P. Anderson, JAVA Studio Creator Field Guide, 2d ed.
`(Prentice Hall 2006) (Ex. 1003, “Anderson”).
`3B. Bowers & S. Lane, Advanced FileMaker Pro 6 Web Development
`(Wordware Pub. 2003) (Ex. 1004, “Bowers”).
`4S. Jacobs, Foundation XMLfor Flash (Springer-Verlag 2006) (Ex. 1005,
`“Jacobs’’).
`‘5. N. Ambrose-Hayneset al., Professional ColdFusion 5.0 (WroxPress. Ltd.
`2001) (Ex. 1006, “Ambrose-Haynes”).
`6D. Geary & C. Horstmann, Core JavaServer Faces (Sun Microsystems
`Press, Prentice Hall 2004) (Ex. 1011, “Geary”).
`” Unix System VNFSAdministration (D. Herman,ed., Prentice Hall 1993)
`
`7
`
`
`
`Reference(s)/Basis
`Claim(s) Challenged|35 U.S.C. §
`
`IPR2021-01457
`Patent 9,928,044 B2
`
`
`
`
`
`11
`
`
`
`
`
`
`
`Anderson, Bowers, Jacobs,
`Ambrose-Haynes,Geary,
`Witkowski
`
`
`
`
`
`Anderson, Bowers, Jacobs,
`Ambrose-Haynes, Geary, NFS
`
`
`
`Administration, Witkowski
`
`As further support, Petitioner offers the Declaration of Vijay K.
`
`Madisetti, Ph.D. Ex. 1002.
`
`Patent Owner submits the Declaration of Kevin C. Almeroth, Ph.D.
`
`Ex. 2001.
`
`Il. ANALYSIS
`
`A. Discretionary Denial
`
`Patent Ownerarguesthat the Petition“is one offive staggered
`
`petitions for interpartes review for the ’044 patent,”citing the ’711 IPR,the
`
`°1146 IPR,the ’1225 IPR,and the ’247 IPR asthe other challengesto the
`
`’044 patent. Prelim. Resp. 24. Patent Owner contendsthat we should deny
`
`institution based on the factors set forth in the Board’s precedential decision
`
`in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (designated precedential in
`
`relevantpart) “and/or § 325(d).” Id. at24—372.
`
`GeneralPlastic sets forth a series of factors to be considered by the
`
`Boardin evaluating whetherto exercise discretion under 35 U.S.C. § 314(a)
`
`(Ex. 1007, “NFS Administration”’).
`8 Witkowskiet al., U.S. Patent No. 6,125,360, issued Sept. 26, 2006 (Ex.
`1013, “Witkowskv’).
`
`
`
`IPR2021-01457
`Patent 9,928,044 B2
`
`4
`
`to denya petition that challenges a patent that was previously challenged
`before the Board. General Plastic, Paper 19 at 15—16. These factors are as
`follows:
`|
`
`1. whether the same petitioner previously filed a petition
`directed to the sameclaimsof the same patent;
`
`2. whetherat the time offiling ofthe first petition the petitioner
`knewofthe prior art asserted in the secondpetition or should
`have knownofit;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`responseto thefirst petition or received the Board’s decision
`on whetherto institute review in the first petition;
`
`'
`
`4.
`
`the length oftime that elapsed betweenthe timethepetitioner
`Jearnedofthe prior art asserted in the secondpetition and the
`filing of the secondpetition;
`5. whetherthe petitioner provides adequate explanation for the
`time elapsed betweenthefilings ofmultiple petitions directed
`to the same claimsofthe samepatent;
`the finite resources ofthe Board; and
`
`6.
`
`7.
`
`the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination notlater than 1 year after the date on which the
`Directornotices institution of review.
`
`Id. at 16. These factors are “a non-exhaustivelist,” and “additional factors
`
`mayarise in other cases for consideration, where appropriate.” Jd. at 16, 18.
`
`GeneralPlastic addressedthe situation where the samepetitioner
`
`filed “follow-on petitions” against the samepatents,after a first set of
`
`petitions was denied on the merits. General Plastic, Paper 19 at 2-3. The
`
`Petition here is not a “follow-on petition,” as that term is used in General
`
`Plastic; there was no priorpetition challenging the ’044 patentfiled by
`
`Petitioner, Facebook. The ’711 IPR petition wasfiled by Google LLC
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`(“Google”), the °>1146IPRpetition wasfiled by SAP America, Inc. (“SAP”),
`the ?1225 IPR wasfiled by Adobe,Inc. (“Adobe”), and the ’247 IPRpetition
`
`wasfiled by Booking Holdings Inc. (“Booking”). Prelim. Resp. 24. We
`
`recognize, however, that General Plastic has not been limited to instances
`where multiple petitions are filed by the samepetitioner. Valve Corp.v.
`Elec. Scripting Prods., Inc.,1PR2019-00062, Paper 11 (PTAB Apr.2, 2019)
`
`(precedential). Rather, “whendifferent petitioners challenge the same
`patent, we consideranyrelationship betweenthosepetitioners when
`
`weighing the General Plastic factors.” Id.at 9.
`
`Patent Ownerdoesnot allege any specific relationship between
`
`Petitioner and any of SAP, Adobe, or Booking; rather, Patent Owner’s
`
`arguments focus on analleged relationship between Petitioner and Google.
`
`See Prelim. Resp. 27—30; Sur-reply 1-2. Onthis record, we determine that
`
`the GeneralPlastic factors do not favor denial based on the 1146 IPR,the
`
`1225 IPR,or the ’247 IPR becausethereis no evidenceofany relationship
`
`between Petitioner and any of SAP, Adobe, or Booking that would implicate
`
`GeneralPlastic under Valve.
`
`Patent Ownerarguesthat Petitioner’s alleged relationship with Google
`
`in district court litigations favors denial under General Plastic and Valve.
`
`Prelim. Resp. 25—27; Sur-reply 2-3. In particular, Patent Ownerarguesthat
`it sued Petitioner and Google “in the same court on the same day,” and
`
`“(since then, Google and Petitioner worked as a team to form theories
`
`against the infringementallegations ofthe 044 patent.” Prelim. Resp. 25—
`26. According to Patent Owner, Google and Petitioner“were working
`closely togetherin secret” and have“jointly participated in meet-and-confers
`in the underlying cases and submittedjoint papers to the court expressing the
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`IPR2021-01457
`Patent 9,928,044 B2
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`twoparties’ aligned positions.” Jd. at 26 (citing Exs. 2005-2007). Patent
`
`Ownerasserts, therefore, that “[t]here is a significant relationship between
`
`Petitioner and Google with respect to Patent Owner’s assertion of the 044
`
`patent, as they have been working together underthe veil of common
`
`interest privilege to develop their theories and positions with respectto that
`
`patent.” Jd.;Sur-reply 2.
`
`Petitioner countersthat its relationship with Google with respect to the
`
`°044 patentis simply “a garden variety, arms-length co-defendant
`
`relationship.” Reply 2. Petitioner further notes that such a “common
`
`interest/joint defenserelationship”is the “type of cooperation[that] is
`
`actively encouragedbydistrict courts and often required in multi-defendant
`
`patent cases to conserve resources.” Jd. (citing Exs. 2005, 2006). Petitioner
`
`asserts that it played “no role” in preparing the IPR petition filed by Google.
`
`Id. In particular, Petitioner statesthat it “had no involvementin Google’s
`
`selection ofprior art, [or in Google’s] preparation of the IPR petition and
`
`supporting documents,”andalsoassertsthat it “had no accessto(let alone
`
`reviewed) the Google IPR petition and supporting materials prior to their
`
`filing,” and also “had no inputinto the timing of Google’s IPRfilng.” Jd.
`
`Weare not persuadedthat Petitioner’s and Google’s status as
`
`defendantsin co-pendinglitigation involving the ’044patentrises to the type
`
`of “significant relationship” described in Valve. In Valve, the Board noted
`that “Valve and HTC were co-defendantsin the District Court litigation and
`
`were accused ofinfringing the [challenged] patent based on HTC’s VIVE
`
`devices that incorporate technology licensed from Valve.” Valve, Paper 11
`
`at 10. The Board determinedthat there was “a significant relationship
`
`between Valve and HTC with respect to Patent Owner’s assertion ofthe
`
`11
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`IPR2021-01457
`Patent 9,928,044 B2
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`[challenged] patent.” Jd. Nothingin the present record indicates any such
`
`relationship betweenPetitioner and Google. Rather, they were sued by
`
`Patent Owneron the same day—aspart of a myriad of similar filings against
`
`dozens of other defendants. See Prelim. Resp. 25; see also Paper 3, 1-4
`(Patent Owner’s MandatoryNoticeslisting forty-six lawsuits involving the
`°044 patentfiled by Patent Owner). The record shows some coordination
`
`among numerous defendantsin various cases on the issue of claim
`
`construction. See Exs. 2005 (Defendants’ List of Proposed Claim Terms and
`
`Phrases for Construction), 2006 (email chain discussing claim construction
`
`issuesin district court). But, as Petitioner argues without refutation by
`
`Patent Owner,this is the “type of cooperation [that] is actively encouraged
`
`by district courts.” See Reply 2.
`
`Patent Ownerarguesthat “the Board has even denied under§ 314(a)
`
`institution of a serial petition filed by a petitioner having noalleged
`
`relationship with an earlier one.” Sur-reply 2 (citng Samsung Elecs. Am.,
`Inc. v. Uniloc 2017 LLC, 1PR2018-01756, Paper7 at 24-30 (PTAB
`
`Mar. 11, 2019)). The Samsung case, whichis not precedential, is readily
`
`distinguishable. The Board denied institution in that case “because the same
`
`or substantially the sameprior art or arguments were previously presented to
`
`the Board.” Samsung, Paper 7 at 25-26 (citing 35 U.S.C. §325(d)). Inthe
`
`present case, by contrast, Petitioner representsthat“prior art referencescited
`
`in this Petition were not cited during prosecution or the other co-pending
`
`IPRpetitions.” Pet. 8. Patent Ownerdoesnotdisputethis assertion.
`
`Based on the foregoing, and underthe circumstancesofthis case, we
`
`are not persuadedthatthere is a “significant relationship” between Petitioner
`
`and Google that would justify discretionary denial.
`
`In view ofthis
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`determination, wealso are not persuaded that the remaining General Plastic
`
`factors favor exercising discretion to deny review. For example, the third
`
`General Plastic factor is “whetherat the timeoffiling of the secondpetition
`
`the petitioner already received the patent owner’s preliminary responseto
`
`the first petition or received the Board’s decision on whetherto institute
`
`reviewin thefirst petition.” General Plastic, Paper 19 at 16. This factor “‘is
`
`directed to Petitioner’s potential benefit from receiving and having the
`
`opportunity to study Patent Owner’s Preliminary Response,as well as our
`
`institution decisions onthefirst-filed petitions, prior to its filing of follow-on
`
`petitions.” Jd. at 17. Here, Petitionerfiled the Petition before the Board
`
`issued its decision in the ’711 IPR, and,therefore, Petitioner received limited
`
`benefit from having been able to review Patent Owner’s Preliminary
`
`Responsein that matter. See Reply 4.
`
`The second, fourth, andfifth General Plastic factors are “to assess
`
`and weigh whethera petitioner should haveor could haveraised the new
`
`challengesearlier.” General Plastic, Paper 19 at 18. Here, Petitioner has
`
`filed only onepetition against the ’044 patent, and, as discussed above,the
`
`evidence does not showarelationship between Petitioner and previous
`
`petitioners that would justify denial. Therefore, we are not persuaded that
`
`Petitioner neededto raise the challenges in this Petition earlier.
`
`Finally, we do not view the sixth GeneralPlastic factor (“thefinite
`
`resources ofthe Board”) or the seventh General Plastic factor (“the
`
`requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not
`
`later than 1 year after the date on which the Director notices institution of
`
`review’) as favoring exercise of our discretion to denyinstitution.
`
`Therefore, weighing all of relevant factors, we decline to exercise
`
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`discretion under 35 U.S.C. § 314 to deny the Petition.
`
`Patent Owneralsoassertsthat its arguments warrant our exercise of
`
`discretion under 35 U.S.C. § 325(d) to deny review. Prelim. Resp. 31-32.
`
`Patent Ownerdoesnot, however, explain howthepriorart or the arguments
`
`asserted in the Petition are the sameor substantially the same asart or
`
`arguments previously presentedto the Office. See id.; see also 35 U.S.C.
`
`§ 325(d) (“In determining whetherto institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take into account
`whether, andreject the petition or request because, the sameor substantially
`the samepriorart or arguments previously were presented to the Office.”).
`Indeed, Patent Owner acknowledgesthe lack of overlap. Sur-reply 2 (noting
`
`that“there is no overlap in art between the Petition and [the °711 IPR
`
`petition],” but asserting that does “not somehow makethis not harassment”).
`Patent Owneralso assertsthat Petitioner had “the opportunity to view Patent
`
`Owner’s argumentsand the Board’s reasons for denial” beforeit filed the
`Petition. Id. at 4. Patent Owneris incorrect with regardto the timing ofthe
`
`denial of the ’711 petition, which was denied on October 4, 2021—-overa
`
`month after the Petition wasfiled in this matter. The Board’s reasonsfor
`denial ofthe ’711 petition could not have factoredinto Petitioner’s choice of
`prior art in the presentPetition.
`We,therefore, also decline to exercise discretion under 35 U.S.C.
`§ 325(d) to deny review.
`
`B. Principles ofLaw
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences betweenthe claimed subject matterand the prior art are suchthat
`the subject matter, as a whole, “would have been obviousat the time the
`
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`invention was madeto a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’] Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question ofobviousnessis resolved on the basis of underlying
`
`factual determinationsincluding:
`
`(1) the scope and contentof the priorart;
`
`(2) any differences between the claimed subject matter and thepriorart;
`
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`
`evidence of nonobviousness.? Graham v. John Deere Co., 383 U.S. 1,
`
`17-18 (1966).
`
`“Tn an [interpartes review], the petitioner has the burden from the
`
`onset to show with particularity why the patentit challenges is
`
`unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3)
`
`(requiring interpartes review petitions to identify “with particularity .
`
`.
`
`. the
`
`evidence that supports the groundsfor the challenge to each claim”)). This
`
`burdenofpersuasion nevershifts to Patent Owner. See Dynamic Drinkware,
`
`LLC v. Nat’l Graphics, Inc. ,800 F.3d 1375, 1378 (Fed. Cir. 2015)
`
`(discussing the burdenofproofin interpartes review).
`
`* Neither party presents argumentsor evidence of secondary considerations
`at this stage. Therefore, secondary considerations do not constitute part of
`our analysis herein.
`
`15
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`IPR2021-01457
`Patent 9,928,044 B2
`
`C. Level ofOrdinary Skill in the Art
`
`Thelevel of skill in the art is a factual determination that provides a
`
`primary guaranteeofobjectivity in an obviousnessanalysis. A/-Site Corp.v.
`VSI Int'l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)(citing Graham, 383
`
`U.S. at 17-18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`
`1991)).
`Relying on the declaration testimony of Dr. Madisetti, Petitioner
`
`~~ asserts:
`
`A person ofordinary skill as ofApril 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 networksuch as the
`Internet (or equivalent degree or experience).
`Pet. 9 (citing Ex. 1002 4 16).
`At this stage, Patent Ownerdoesnot propose analternative
`assessment. Wenote that Patent Owner’s declarant, Dr. Almeroth, describes
`
`the level of ordinary skill in the art similarly to the assessmentoffered by
`
`Petitioner. See Ex. 2001 7 31.
`
`Tothe extent necessary, and for purposes ofthis Decision, we accept
`
`the assessmentoffered by Petitionerasit is consistent with the ’044 patent
`
`and the assertedpriorart.
`
`D. Claim Construction
`
`In interpreting the claims of the ’044patent, we “us[e] the same claim
`construction standard that would be usedto construe the claim[{s] in a civil
`
`action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. §42.100(b) (2021). The
`
`16
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`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`claim construction standard includes construing claims in accordance with
`
`the ordinary and customary meaning of such claims as would have been
`
`understood by one ofordinary skill in the art in light of the written
`
`description and the prosecution history pertaining to the patent. See id.;
`Phillipsv. AWH Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc).
`
`Neither party proposes any terms for constructionat this stage.
`
`Petitioner notes some constructions of certain terms that were proposed by
`the parties in underlyinglitigation involving the ’044patent,'° but states that
`“Petitioner does not believe express claim construction is necessary at this
`
`time.” Pet. 11-12. Patent Owneralso does not propose any constructions.
`
`See generally Prelim. Resp.
`
`Wedetermine,at this stage, that no explicit construction of any other
`
`terms is neededto resolve the issues presented by the arguments and
`
`evidence of record. See Nidec Motor Corp. v. ZhongshanBroad Ocean
`MotorCo., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms
`need to be construed“only to the extent necessary to resolve the
`
`controversy”(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,200 F.3d
`
`795, 803 (Fed. Cir. 1999))).
`
`10 The parties include Patent Ownerand several defendants(including
`Petitioner as well as Expedia, eBay, Google, and Atlassian). See Ex. 2009.
`The underlyingdistrict court litigation wasoriginally filed in the Western
`District of Texas, and that is where the parties submitted their claim
`construction briefing. See id. Before the court entered a final claim
`construction order, however, the case wastransferred to the Northern
`District of California. See Pet. 1; Paper 3, 2.
`
`17
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`E. Overview ofCitedReferences
`
`1. Anderson (Ex. 1003)
`Andersonis an excerpt from a book published in 2006. Ex. 1003, 4.1"!
`Petitioner asserts that Andersonis prior art because it was published before
`
`April 2008. Pet. 16. Petitioner also relies on the Declaration of Sylvia Hall-
`
`Ellis, Ph.D., who provides additionaldetails as to the publication and public
`
`availability ofAnderson. Ex. 1015 4] 43-49. Patent Ownerdoesnot, at this
`
`stage, dispute the prior-art status of Anderson.
`
`Petitioner bears the burdenatthe institution stage “to identify with
`
`particularity evidencesufficient to establish a reasonablelikelihood that the
`
`reference was publicly accessible before thecritical date of the challenged
`
`patent, and therefore that there is a reasonablelikelihood thatit qualifies as a
`
`printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-
`
`01039, Paper 29 at 16 (PTAB Dec. 20, 2019) (precedential). We determine
`
`that, at this point in the case and for purposesofinstitution, and based on the
`
`totality of the evidence to date, Petitioner has submitted sufficient evidence
`
`to establish a reasonablelikelihood that Anderson was publicly accessible
`before thecritical date ofthe challenged patent, and, thus Petitioner has
`established a reasonablelikelihood that the reference qualifies as a printed
`
`publication. In particular, the face of Anderson bears a copyright date of
`2006, a publication date ofMay 2006, an ISBN (“International Standard
`
`Book Number’), and identifies an established publisher (Prentice Hall).
`
`Ex. 1003,4. See Hulu at 19 (noting that Petitioner had met its burden
`
`'! References to page numbersfor this exhibit are to the page numbersas
`provided by Petitioner on the exhibit.
`
`18
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`sufficiently for institution by submitting a copy of a referencethat bore “a
`
`copyright date of 1990, a printing date ofNovember 1992, and an ISBN date
`
`of 8/94,” and waspart of “a textbook from an established publisher . .. and a
`
`well-known bookseries”). Dr. Hall-Ellis testifies that Exhibit 1003is a true
`
`and correct copy of the selected pages from the book as held by the Library
`
`of Congress, and also attests that the book waspublicly available by or
`
`shortly after June 28, 2007, because bythatdate it had been received,
`
`cataloged, and indexedat the Library of Congress and madepart of the
`
`Online Computer Library Center’s (““OCLC’s”) bibliographic database.
`
`Ex. 1015 YJ 43, 49; see id. 928 (describing OCLC).
`
`Andersonis an excerpt from a bookdescribing a software
`
`development tool known as Java Studio Creator(or “Creator”), which
`developers may use to create webapplications. Ex. 1003, 35. For example,
`
`Anderson describes a Java application (Google1) that allows users to enter a
`
`search query and then access a Google webservice (using a methodcalled
`
`doGoogleSearch) to perform a search based on that query. Jd. at 285, 289.
`
`Anderson also describes how to design the user interface for such
`
`application, including incorporating the Google logo, a text field entry box,
`
`and a search button, and to interface with Google’s serversto utilize Google
`
`webservices to perform the search and display the results.
`
`/d. at 286-288.
`
`19
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`2. Bowers (Ex. 1004)
`Bowersis an excerpt froma booktitled “Advanced FileMaker® Pro 6
`Web Development,”published in 2003. Ex. 1004, 3.!? Petitioner asserts
`
`that Bowersis prior art because it was published before April 2008. Pet. 16.
`
`Petitioner also relies on the Declaration of Dr. Hall-Ellis, who provides
`
`additionaldetails as to the publication and public availability of Bowers.
`
`Ex. 1015 9] 50-57. PatentOwnerdoesnot, at this stage, dispute the prior-
`
`art status of Bowers.
`
`Wedeterminethat, at this point in the case and for purposes of
`
`institution, and based onthetotality of the evidenceto date, Petitioner has
`
`submitted sufficient evidence to establish a reasonable likelihood that
`
`Bowerswaspublicly accessible before the critical date ofthe challenged
`
`patent, and, thus Petitioner has established a reasonable likelihood that the
`
`reference qualifies as a printed publication. In particular, the face of Bowers
`bears a copyright date of 2003, a publication date of 2003, and an ISBN,and
`identifies an established publisher (Wordware Publishing). Ex. 1004, 3;
`
`see Huluat 19. Dr. Hall-Ellis testifies that Exhibit 1004is a true and correct
`
`copy of the selected pages from the bookas held by the Library ofCongress,
`and also attests that the book waspublicly available by or shortly after April
`19, 2004, becauseby that date it had been received,cataloged, andindexed
`at the Library of Congress and madepart of the OCLC bibliographic
`
`database. Ex. 1015 § 50, 56.
`
`12 References to page numbersfor this exhibit are to the page numbersas
`provided byPetitioner on the exhibit.
`
`20
`
`
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`IPR2021-01457
`Patent 9,928,044 B2
`
`Bowersdescribes techniques for developing web applications using
`
`FileMaker Pro, acommercially-available database software program.
`
`Ex. 1004, 68-121. Bowers describes the GoogleSearch web service—the
`
`sameservice discussed in Anderson—asa concrete example of how to
`
`incorporate a web service into an application. Jd. at 97-110.
`
`3. Jacobs (Ex. 1005)
`Jacobsis an excerpt from a booktitled “Foundation XMLfor Flash,”
`
`published in 2006. Ex. 1005, 3.!3 Petitioner asserts that Jacobsis priorart
`because it waspublished before April 2008. Pet. 16. Petitioneralso relies
`on the Declaration of Dr. Hall-Ellis, who provides additionaldetails as to the
`
`publication and public availability of Jacobs. Ex. 1015 9] 58-65. Patent
`
`Ownerdoesnot,at this stage, dispute the prior-art status ofJacobs.
`
`Wedeterminethat, at this point in the case and for purposes of
`
`institution, and basedonthetotality of the evidenceto date, Petitioner has
`submitted sufficient evidencet
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