Expedia Inc v. IBM Corp

1. Case Identification

• Case #: IPR2018-01136
• Patent #: 5,796,967
• Filed: 05/29/2018
• Petitioner(s): Expedia, Inc.; Homeaway.com, Inc.; Hotels.com L.P.; Hotwire, Inc.; and Orbitz, LLC
• Patent Owner(s): International Business Machines Corp.
• Challenged Claims: 1-12, 14, 15, and 17

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. The method involves generating a screen display with multiple partitions, including a partition for applications and a separate, concurrent partition for command functions, where the display is generated from data objects retrieved either from local storage or from the 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.-June 1984)
  • 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 Teitelman, which describes the Xerox Cedar networked computing environment, discloses nearly all elements of the challenged claims. Teitelman taught a graphical user interface with multiple concurrent partitions (windows) for presenting interactive applications (e.g., document editors, mail readers) and command functions (e.g., a persistent icon bar at the bottom of the screen). These displays were generated from data objects like files, viewers (icons, buttons), and emails. The only element Petitioner contended Teitelman did not explicitly detail was the specific mechanism for retrieving an object from the network if it is unavailable locally. Schroeder, which describes a Caching File System (CFS) expressly developed for the Cedar environment, supplies this missing element. Schroeder taught a system for caching remote files on a local disk, retrieving the most current version from a file server only if it was not already present locally. Petitioner asserted that combining Schroeder’s caching mechanism with Teitelman’s user interface renders the claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Teitelman and Schroeder because both references describe and operate within the same Xerox Cedar environment. Schroeder was explicitly created to support the Cedar system described in Teitelman and to solve a known problem: reducing the load on file servers. Teitelman taught retrieving network files (like fonts and documentation) to a local disk but did not specify the retrieval details. Schroeder provided the exact mechanism for this process—caching remote files locally—making it a natural and logical solution for a POSITA to integrate.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved applying a well-known caching technique (Schroeder) to a known user interface environment (Teitelman) to achieve the predictable result of efficient network resource management.

4. Key Claim Construction Positions

• “data object(s)”: Petitioner argued this term should be construed as “data structure(s).” This broad construction, supported by the specification and prosecution history, was crucial for asserting that elements like files, icons, buttons, and email messages in the prior art qualify as “data objects.”
• “the objects being retrieved from the objects stored at the respective reception system, or if unavailable... then from the network”: Petitioner contended this phrase requires no special construction and is met when objects are retrieved only locally (e.g., permanent UI elements), only remotely, or retrieved remotely only when unavailable locally. This interpretation was central to the argument for combining Schroeder’s caching system, which implements this exact logic, with Teitelman’s UI.
• “generating concurrently”: Petitioner asserted this term means “concurrently presented” on the screen, not necessarily compiled or instantiated at the same time. This construction allowed temporary UI elements like pop-up menus or windows that appear over an existing application partition to satisfy the limitation of generating a second partition “concurrently with the first partition.”
• “partition(s)”: Petitioner argued this term refers to “area(s) of the screen” and is not limited to fixed, non-overlapping portions of the display. This construction, consistent with Patent Owner’s own arguments in prior litigation, allowed pop-up windows and other overlaying elements to be considered partitions.

5. Relief Requested

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