Google Inc v. EMG Technology LLC

1. Case Identification

• Case #: CBM2013-00036
• Patent #: 7,441,196
• Filed: July 15, 2013
• Petitioner(s): Google Inc.
• Patent Owner(s): EMG Technology, LLC
• Challenged Claims: 1-3, 6, 8-12, 14, 16, 18, 20-23, 25-28, 30, 32, 35-38, 40, 42-43, 46-50, 52, 54, 56, 58-60, 63, 65-66, 68, and 71-76

2. Patent Overview

• Title: System for Simplified E-Commerce Navigation on Limited-Capability Devices
• Brief Description: The ’196 patent relates to methods for adapting e-commerce websites for devices with limited displays and input capabilities, such as cell phones and televisions. The invention involves reformatting web content from a standard format (e.g., HTML) to a simplified format (e.g., XML) to create a "sister site" with a matrix-based navigation interface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Martin and Yu - Claims 1-3, 6, 8-12, 14, 16, 18, 23, 25-28, 30, 32, 38, 40, 42-43, 49-50, 52, 54, 56, 58-60, 63, 65-66, 68, and 74-76 are obvious over Martin in view of Yu.

• Prior Art Relied Upon: Martin (6,610,105) and Yu (6,684,087).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Martin taught the core concept of reformatting web content from HTML to an XML-based format (WML) to generate a simplified "sister site" for mobile devices. Martin also disclosed synchronizing navigation and displaying hyperlinks between the original and sister sites. Yu was argued to teach transforming content into a reduced version divided by a grid or "matrix" into subareas, where each subarea is linked to a more detailed version, creating hierarchical layers of navigation corresponding to keypad inputs.
  • Motivation to Combine: A POSITA would combine these references because they addressed the identical problem of displaying web content on devices with limited input capabilities. Petitioner noted both patents were assigned to Openwave Systems, indicating they were known works in the same field. A POSITA would be motivated by design incentives to apply Yu's user-friendly grid navigation to Martin's transcoding framework.
  • Expectation of Success: Combining Yu's known navigation interface with Martin's known reformatting methods was a straightforward application of existing technologies to achieve the predictable result of an improved user experience on mobile devices.

Ground 2: Obviousness over Martin, Yu, and Apte - Claims 1-3, 6, 8-12, 14, 16, 18, 20-23, 25-28, 30, 32, 35-38, 40, 42-43, 46-50, 52, 54, 56, 58-60, 63, 65-66, 68, and 71-76 are obvious over Martin and Yu, further in view of Apte.

• Prior Art Relied Upon: Martin (6,610,105), Yu (6,684,087), and Apte (EP 0822535).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that the combination of Martin and Yu taught the simplified navigation interface, while Apte provided the missing e-commerce and advertising elements. Apte taught partitioning a display into browser and advertising areas, providing targeted interactive advertisements, and including purchasing interfaces and search forms. Apte also explicitly disclosed displaying a hyperlink on a main web page to navigate to a "lite" version, addressing the alternative hyperlink direction claimed.
  • Motivation to Combine: A POSITA would combine Apte's teachings to extend the functionality of the mobile interface taught by Martin and Yu to include well-known e-commerce features. Market forces, including the rapid emergence of web-capable mobile devices, would have provided a strong incentive to implement Apte's advertising schemes to reach customers on these new platforms.
  • Expectation of Success: Integrating standard advertising and e-commerce functionalities into the mobile web interface of Martin and Yu would have been a predictable implementation with a high expectation of success.

Ground 3: Obviousness over Leak, W3C, and Apte - Claims 1-3, 6, 8-12, 14, 16, 18, 20-23, 25-28, 30, 32, 35-38, 40, 42-43, 46-50, 52, 54, 56, 58-60, 63, 65-66, 68, and 71-76 are obvious over Leak, W3C, and Apte.

• Prior Art Relied Upon: Leak (WO 98/43381), W3C (publication "Reformulating HTML in XML"), and Apte (EP 0822535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative combination focusing on TV-based browsing. Leak taught the WebTV system, which used a proxy server to transcode HTML pages for simplified navigation on a television with a remote control. W3C provided explicit technical guidance for reformatting HTML to XML and using table modules to create the claimed "layer of cells." Apte supplied the teachings for targeted advertising and e-commerce functions.
  • Motivation to Combine: Market pressures to display HTML content on diverse platforms like televisions would have motivated a POSITA to use the standardized tools of W3C to implement Leak's transcoding for WebTV. Extending the functionality of Leak’s interface to include the advertising and e-commerce features taught by Apte was a logical step to commercialize the platform.
  • Expectation of Success: The combination was a predictable implementation, as W3C expressly encouraged using its methods to reformat HTML for devices like TV-based browsers.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Leak, W3C, Yu, and D'Arlach (6,026,433), as well as Kanevsky (6,300,947), W3C, Hsu (6,549,220), and Apte. Petitioner also asserted that independent claims 1, 9, 25, and 58 are indefinite under 35 U.S.C. §112.

4. Key Claim Construction Positions

• Sister Site: Petitioner argued this term should be construed as "any site that provides for navigation using a simplified navigation interface." This broad construction was central to applying prior art systems that create simplified or mobile-friendly versions of websites, even if not explicitly called "sister sites."
• Navigation Options: Petitioner proposed this term means "links that bring up a new layer." This construction equated the patent's idiosyncratic terminology with standard, well-known web navigation elements, making the claims readable on prior art hyperlink functionalities.

5. Key Technical Contentions (Beyond Claim Construction)

• Covered Business Method Status: A central contention was that the ’196 patent is a Covered Business Method (CBM) patent and not an exempt "technological invention." Petitioner argued the patent's contribution was not a technical solution to a technical problem, but rather an application of well-known technologies (HTML, XML, transcoding, hyperlinks) to a business problem of making e-commerce more convenient. The patent itself allegedly solved a problem of user "comfort or convenience," not a technical one, making it eligible for CBM review.

6. Relief Requested

• Petitioner requested institution of a Covered Business Method Patent Review and cancellation of claims 1-3, 6, 8-12, 14, 16, 18, 20-23, 25-28, 30, 32, 35-38, 40, 42-43, 46-50, 52, 54, 56, 58-60, 63, 65-66, 68, and 71-76 as unpatentable.