PTAB

IPR2018-01135

Expedia Inc v. IBM Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Presenting Applications in an Interactive Service
  • Brief Description: The ’967 patent discloses a method for presenting interactive applications over a computer network. The method involves generating a screen display with multiple partitions, where data objects are retrieved either from local storage or from the network to construct a first partition for applications and a second, concurrently displayed partition for command functions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Architecture and BCIS - Claims 1-11 and 17 are obvious over Architecture in view of BCIS.

  • Prior Art Relied Upon: Architecture (a 1985 ACM paper, “An Architecture for Large Scale Information Systems”) and BCIS (the 1985 user manual for the Boston Community Information System).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Architecture and BCIS disclosed all limitations of the challenged claims. Architecture described a networked community information system that presented interactive applications (e.g., news articles) on user PCs. It taught retrieving data objects from shared network servers or a local personal database, with local retrieval providing faster performance. BCIS, the user manual for the system described in Architecture, provided specific user interface details, including the use of various windows (e.g., summary, article, filter) and pop-up command menus that appeared concurrently with the application windows. Petitioner asserted that these windows constituted a "first partition" for presenting applications, while the pop-up command menus constituted a concurrently generated "second partition" for presenting command functions that permitted movement between applications.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings because BCIS is the user manual for a version of the very system described in Architecture. The references were contemporaneous works from the same authoring group directed to the same system. A POSITA seeking to understand or implement the system would naturally consult both. Furthermore, Architecture stated a design goal of a "high-quality user interface," and BCIS’s pop-up menus provided a known, user-friendly method for navigation that would have been an obvious implementation detail.
    • Expectation of Success: A POSITA would have had a high expectation of success. The combination involved implementing a well-known user interface element (pop-up menus) described in the user manual (BCIS) for a system architecture described in a technical paper (Architecture). This was a simple substitution of a known element for predictable results.

Ground 2: Obviousness over Architecture, BCIS, and Baker - Claims 12, 14, and 15 are obvious over Architecture and BCIS in view of Baker.

  • Prior Art Relied Upon: Architecture, BCIS, and Baker (Patent 4,586,035).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Baker to the primary combination to teach the specific windowing features of claims 12, 14, and 15. Petitioner contended that while Architecture and BCIS taught concurrent partitions, Baker explicitly taught a windowing system where multiple application windows could be displayed concurrently and could overlap. Claim 12 requires generating at least a third screen partition for presenting a second application. Petitioner argued that combining Baker's windowing system with the BCIS interface would make it obvious to concurrently display the summary window and multiple article windows, which would overlap. This arrangement would satisfy the limitations of generating a third partition (claim 12) and a window partition that overlays an application partition (claim 14).
    • Motivation to Combine: A POSITA would combine Baker's teachings to improve the user-friendliness of the BCIS system. In BCIS, a user could not view the list of article summaries (in the summary window) at the same time as reading a specific article (in the article window). Baker taught that using overlapping windows avoids the need for a user to switch between full-screen views. A POSITA would have been motivated to apply this known technique to the BCIS interface to allow a user to see the context of the summary list while browsing articles, facilitating easier navigation.
    • Expectation of Success: The combination would have yielded predictable results. Windowing systems that supported multiple, overlapping windows (e.g., Apple's Lisa, Microsoft Windows 2.0) were well-known prior to the ’967 patent’s priority date. A POSITA would have readily known how to implement such a system to concurrently display the windows from BCIS.

4. Key Claim Construction Positions

  • “data object(s)”: Petitioner argued this term should be construed as “data structure(s).” This broad construction was critical for asserting that prior art files, such as the article files and summaries in Architecture and BCIS, met the “data object” limitation. The petition noted this construction was adopted in prior litigation involving the patent owner.
  • “partition(s)”: Petitioner asserted this term refers to “area(s) of the screen” and is not limited to a fixed portion, allowing partitions to overlay one another. This construction was essential for the obviousness argument in Ground 2, as it allowed movable, overlapping windows taught by Baker to be considered “partitions.”
  • “generating concurrently”: Petitioner proposed this phrase encompasses partitions being “concurrently presented” on the screen, not necessarily compiled or built simultaneously. This interpretation was crucial for arguing that user-initiated pop-up menus or windows, which appear on screen alongside an existing application window, satisfy the concurrency requirement of the claims.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-12, 14-15, and 17 of the ’967 patent as unpatentable.