BigCommerce Inc v. Express Mobile Inc

1. Case Identification

• Patent #: 6,546,397
• Filed: March 6, 2018
• Petitioner(s): BigCommerce, Inc.
• Patent Owner(s): Express Mobile, Inc.
• Challenged Claims: 1-6 and 8

2. Patent Overview

• Title: Browser Based Website Generation Tool and Run Time Engine
• Brief Description: The ’397 patent describes a method and apparatus for designing a website using a browser-based, what-you-see-is-what-you-get (WYSIWYG) tool. The system purports to improve on conventional tools by using a full-featured, browser-based programming language like Java, combined with HTML and JavaScript, to provide a more powerful and accurate website authoring environment that runs directly in a browser.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 6 under §102(b)

• Prior Art Relied Upon: SilverStream (a publicly accessible website and associated software documentation from February 1998).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that SilverStream, a Java-based web application development platform, disclosed every element of claims 1 and 2. SilverStream allegedly taught a browser-based HTML editor with a “familiar Word-like user interface” that functioned as a viewable menu with selectable settings (e.g., insert table, format font). This editor ran within a browser and corresponded to commands for a Java Virtual Machine (JVM). Petitioner asserted SilverStream taught generating a display contemporaneously with user selections, storing the resulting HTML content in a relational database, and using a Java applet as a "run time file" to retrieve information from the database and generate the final website display.
  • Key Aspects: For claim 6, which recites a Markush group of website elements, Petitioner argued SilverStream anticipated the claim by expressly disclosing the ability to insert a "table," one of the enumerated elements in the group.

Ground 2: Obviousness of Claims 3-5 over SilverStream in view of Colliat

• Prior Art Relied Upon: SilverStream (website) and Colliat (G., OLAP, Relational and Multidimensional Databases Systems, SIGMOD RECORD, 1996).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of SilverStream, which used a relational database. Claim 3 requires the database to be a "multi-dimensional array structured database." Petitioner asserted that Colliat, a pre-critical date journal article, extensively detailed the significant performance advantages of multidimensional databases over relational ones, including "several orders of magnitude faster data retrieval" and reduced disk space. The combination of SilverStream’s system with Colliat’s database structure would have rendered claim 3 obvious. Dependent claims 4 and 5, which add limitations for data types (Boolean, numeric, string) and multimedia objects (image, text area, URL), were allegedly either expressly taught by SilverStream or made obvious by the combination.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would be motivated to modify SilverStream’s relational database to the multidimensional structure taught by Colliat to achieve significant, well-documented performance improvements in data retrieval and processing, especially for a data-intensive application like a website builder. SilverStream itself taught that its database structure could be modified.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because implementing a known database structure (from Colliat) into a modifiable database system (SilverStream) was a predictable design choice to achieve known benefits.

Ground 3: Obviousness of Claim 8 over SilverStream in view of Gever

• Prior Art Relied Upon: SilverStream (website) and Gever (Patent 6,313,835).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground argued that claim 8, which depends from claim 2 and adds a limitation for describing elements as a "transition or an animation," was obvious over SilverStream combined with Gever. SilverStream provided the foundational browser-based website creation tool. Gever was introduced to supply the missing animation element, as it expressly taught a system for creating web page components with user-selectable and customizable animation sequences using standard HTML and Java.
  • Motivation to Combine: A POSITA would combine SilverStream's web page designer with Gever's animation features to meet the known market demand for more dynamic and graphically rich web pages. Gever explicitly disclosed creating web pages with "graphical and/or animation formats," providing a clear reason to add this functionality to a general-purpose tool like SilverStream.
  • Expectation of Success: Because both SilverStream’s editor and Gever’s animation component were based on the same standard technologies (Java and HTML), a POSITA would have found it straightforward to integrate them and would have had a high expectation of success.

4. Key Claim Construction Positions

• The petition argued that while most terms did not require explicit construction, the term "run time file" was central to its anticipation argument. Petitioner noted that in related district court litigation, both parties had agreed to a construction for "run time file" as "one or more files, including a run time engine, that are downloaded or created when a browser is pointed to a web page or website." The petition relied on this construction to argue that the Java applet in SilverStream met this limitation because its code is downloaded and executed by the browser's JVM when the user accesses the page.

5. Key Technical Contentions (Beyond Claim Construction)

• Relational vs. Multidimensional Databases: A central technical contention for Ground 2 was the significant, quantifiable superiority of multidimensional array databases over the relational databases used in SilverStream. The petition, citing Colliat, argued that for searching and indexing data across multiple dimensions (like wine type, vineyard, and year in SilverStream's examples), a multidimensional structure is logarithmically faster and more efficient. This technical advantage was presented as the primary driver for a POSITA to modify SilverStream's database.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 and 8 of the ’397 patent as unpatentable.