PTAB

IPR2018-01136

Expedia, Inc. v. International Business Machines Corporation

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1. Case Identification

2. Patent Overview

  • Title: Presenting Applications in an Interactive Service
  • Brief Description: The ’967 patent relates to a method for presenting applications in an interactive computer service. The method involves generating a screen display with multiple partitions constructed from data objects, where the objects are retrieved from local storage or, if unavailable locally, from a network.

3. Grounds for Unpatentability

Ground 1: Claims 1-12, 14-15, and 17 are obvious over Teitelman in view of Schroeder.

  • Prior Art Relied Upon: Teitelman (“A Tour Through Cedar,” IEEE Software, Apr-Jun 1984) and Schroeder (“A Caching File System for a Programmer’s Workstation,” Operating Systems Review, Dec 1985).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the combination of Teitelman and Schroeder taught every limitation of the challenged claims. Teitelman disclosed the Cedar networked computing environment developed by Xerox, which presented interactive applications (e.g., document editors, email) in separate screen areas, or partitions. These partitions were constructed from "objects" like viewers, icons, and files. Teitelman taught displaying applications and command functions concurrently, including a command bar with icons at the bottom of the screen for navigating between applications.

    • Petitioner contended that the key limitation added during prosecution—retrieving objects "from the objects stored at the respective reception system, or if unavailable... then from the network"—was explicitly taught by combining the references. While Teitelman mentioned retrieving files from a network to a local disk, it lacked implementation details. Schroeder, which described a Caching File System (CFS) designed specifically for Teitelman's Cedar environment, supplied these details. Schroeder taught a system for caching remote files on a local disk and checking the network to retrieve the most current version of a file if it was not present locally, thus rendering the combination obvious.

    • For dependent claims, Petitioner asserted the combination taught the required features. For claim 2, both Teitelman (email headers) and Schroeder (file property pages) disclosed objects with a header and data segments. For claims 3 and 4, Schroeder taught storing files according to a "predetermined plan" using versioning and a "storage control parameter" (e.g., version number, creation time) in the header to manage storage. For claim 5, this storage control parameter was dependent on the object's currency (i.e., its version). For claims 6-9, Teitelman's user interface, with its clickable icons and menus, was argued to be an index and directory providing physical and textual analogies for navigating applications.

    • Motivation to Combine (for §103 grounds): A Person of Ordinary Skill in the Art (POSITA) would combine Teitelman and Schroeder because they described interconnected parts of the same Xerox Cedar system. Schroeder explicitly stated its Caching File System was developed to support the Cedar environment described in Teitelman. A POSITA seeking to understand how Cedar handled file retrieval, as mentioned in Teitelman, would have been motivated to look to Schroeder for the specific implementation.

    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in combining the systems, as it involved applying a known caching technique (Schroeder) to a known user interface environment (Teitelman) to achieve the predictable result of efficient file management and reduced server load.

4. Key Claim Construction Positions

  • “data object(s)”: Petitioner argued this term should be construed broadly as "data structure(s)." This construction, supported by the specification and prior court rulings involving the ’967 patent, encompasses not just complex data but also any separate entity like a file, program, pixel, or window border. This broad scope was critical to mapping prior art elements to the claims.
  • “the objects being retrieved from... [local storage], or if unavailable... then from the network”: Petitioner contended this phrase covers three scenarios: objects permanently stored locally (e.g., OS components), objects retrieved from the network because they are not present locally, and objects retrieved from the network to obtain an updated version. This interpretation was central to leveraging Schroeder’s teachings on caching and versioning.
  • “partition(s)”: Petitioner argued a partition is simply an "area" of the screen, which need not be fixed and can overlay other partitions, such as a pop-up window appearing over an application. This construction prevents the claims from being narrowly limited to tiled, non-overlapping screen areas.
  • “generating concurrently”: Petitioner asserted this means the partitions are "concurrently presented" on the display, not necessarily compiled or instantiated simultaneously. This allows a second partition, like a menu, that appears in response to a user action to satisfy the limitation, as it is displayed at the same time as the first partition.

5. Relief Requested

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