PTAB

IPR2018-01135

Expedia, Inc. v. International Business Machines Corporation

Log In

1. Case Identification

2. Patent Overview

  • Title: Method for Presenting Applications in an Interactive Service
  • Brief Description: The ’967 patent describes a method for presenting interactive applications on a computer network where a user's "reception system" generates a screen display from data objects. The display includes a plurality of partitions, with a first partition for presenting applications and a second partition for presenting command functions, where the data objects can be retrieved from local storage or from the network if unavailable locally.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 and 17 are obvious over Architecture and BCIS.

  • Prior Art Relied Upon: Architecture (D. Gifford et al., “An Architecture for Large Scale Information Systems,” a 1985 ACM Symposium Proceeding) and BCIS (J. Lucassen et al., “Boston Community Information System User Manual,” a 1985 MIT Technical Report).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Architecture disclosed the foundational system of the ’967 patent, including a computer network with multiple reception systems (PCs), servers, and the concept of retrieving data objects from either a local database or a remote server to minimize network latency. However, Architecture lacked detail on the user interface. BCIS, a user manual for the system described in Architecture, supplied the missing details, disclosing a graphical user interface (GUI) with multiple windows (partitions) for applications (e.g., article summaries) and concurrent pop-up command menus (a second partition) for navigating between those applications.
    • Motivation to Combine: A POSITA would combine the references because BCIS explicitly documents the user interface for the system described in Architecture. Combining the user-friendly pop-up menus of BCIS was a logical step to achieve the "high-quality user interface" that was an expressed design goal of Architecture. This represents a simple substitution of a known GUI element (from BCIS) into the system it was designed for (Architecture) to achieve predictable results.
    • Expectation of Success: A POSITA would have a high expectation of success, as implementing known command menus in the system they were designed for would be a straightforward and predictable task.

Ground 2A: Claims 12, 14, and 15 are obvious over Architecture, BCIS, and Baker (Petitioner's Construction).

  • Prior Art Relied Upon: Architecture, BCIS, and Baker (Patent 4,586,035).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground adds Baker, which disclosed contemporaneous windowing systems where multiple windows could be displayed concurrently and could overlap. Petitioner argued that while BCIS showed separate windows for applications and command menus, it did not show them overlapping. Baker taught the use of overlapping windows to avoid forcing a user to switch between different full-screen displays. This combination taught the limitations of claims 12, 14, and 15, which require concurrently generated third partitions and/or window partitions that overlay an application partition.
    • Motivation to Combine: A POSITA would combine Baker's well-known overlapping window technique with the Architecture/BCIS system to improve user-friendliness. For instance, it would allow a user to view a list of article summaries (from the BCIS summary window) while simultaneously viewing a specific article (in the BCIS article window), an improvement over the non-concurrent display in BCIS alone. This would facilitate easier browsing and navigation, a known benefit of overlapping windows as taught by Baker.
    • Expectation of Success: Implementing a well-known windowing system with overlapping capabilities into the Architecture/BCIS interface would yield the predictable result of a more functional and user-friendly multi-window display.

Ground 2B: Claims 1-2, 12, and 14-15 are obvious over Architecture, BCIS, and Baker (Patent Owner's Construction).

  • Prior Art Relied Upon: Architecture, BCIS, and Baker.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this ground as an alternative, arguing the claims are obvious even under the Patent Owner's narrower construction from prior litigation, which allegedly required the second "command function" partition to also be constructed from objects retrieved from local/network storage. Petitioner argued that in an overlapping window arrangement taught by Baker, the BCIS summary window (displaying a list of summaries) could serve as the "second partition" of command functions that overlays the "first partition" (the BCIS article window). The summaries themselves are objects constructed from article files (also objects), which are stored locally or retrieved from the network, thus satisfying the Patent Owner's narrower construction.
    • Motivation to Combine: The motivation remains the same as in Ground 2A: to improve user experience by combining the known benefits of overlapping windows (Baker) with the information system of Architecture/BCIS.
    • Expectation of Success: The combination was argued to be predictable, as it integrates known UI components to achieve their expected functions.

4. Key Claim Construction Positions

Petitioner argued for specific constructions of several key terms, asserting they are consistent with the specification, prosecution history, and prior court rulings.

  • "data object(s)": Should be construed as “data structure(s).” Petitioner contended this broad construction is supported by the specification and was adopted by a district court in prior litigation involving the Patent Owner, rejecting a narrower construction.
  • "generating concurrently with the first partition at least a second partition": Should be construed as the partitions being "concurrently presented" on the display. Petitioner argued this does not require the partitions to be compiled or built at the same time, allowing it to cover pop-up menus or windows that appear after a user action but are displayed at the same time as the first partition.
  • "partition(s)": Should be construed as "area(s)" of the screen that are not necessarily fixed and can overlay one another. Petitioner noted this is consistent with the specification's description of "pop-up windows" and the patent owner's own arguments in prior litigation.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-12, 14, 15, and 17 of Patent 5,796,967 as unpatentable.