Facebook, Inc. v. Hypermedia Navigation LLC

1. Case Identification

• Patent #: 7,383,323
• Filed: September 13, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 10-11

2. Patent Overview

• Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
• Brief Description: The ’323 patent discloses methods for presenting web content to users via a "guided tour" that guides the user through media items in a predetermined, linear sequence. The system purports to filter unwanted information by presenting desired content as a series of linearly linked websites.

3. Grounds for Unpatentability

Ground 1: Claims 10-11 are obvious over Greer, Gundavaram, PC Magazine, Quercia, and Steele

• Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram (a 1996 book on CGI programming), PC Magazine (a Dec. 1997 article), Quercia (a 1997 book on the Internet), and Steele (Patent 5,884,056).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references taught all limitations of claims 10 and 11. Greer, the primary reference entitled "HTML Guided Web Tour," was alleged to disclose the core invention: a method of presenting a guided tour of web pages in a specific sequence, including a "map area" with links for navigation. Gundavaram was cited to supply the well-known background mechanics of web server-browser interaction (e.g., receiving requests and creating files for a user interface via CGI) that were implicit but not detailed in Greer. Steele was cited for the obviousness of using icons (specifically, thumbnail images) to represent hyperlinked video content, a simple substitution for the text-based links in Greer's map area. PC Magazine and Quercia, which describe the HotBot search engine, were cited conditionally to teach filtering search results specifically for video, in the event the term "request" in claim 10 is narrowly interpreted to require a user's specific desire for video content.
  • Motivation to Combine: A POSITA would combine the references to improve upon Greer’s basic guided tour. It would be obvious to implement Greer’s system using the fundamental web technologies described in Gundavaram. A POSITA would substitute Steele's graphical icons for Greer's text links to provide a more intuitive user interface, a well-known design choice. If a video-specific search was needed, a POSITA would look to known search engines like HotBot (disclosed in PC Magazine and Quercia) and incorporate their filtering capabilities.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved applying standard, ubiquitous web technologies (CGI, HTML forms, hyperlinked icons) to a known system (a guided web tour) to achieve predictable results.

Ground 2: Claims 10-11 are obvious over Greer, Gundavaram, PC Magazine, Quercia, Steele, and Richardson

• Prior Art Relied Upon: All references from Ground 1, plus Richardson (Patent 5,809,247).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented to address a potentially narrower claim construction of "linear path" advanced by the Patent Owner in co-pending litigation, which required "no more than one exclusive forward link and one exclusive backward link." While Petitioner argued Greer taught the forward link, it added Richardson to explicitly teach the backward link. Richardson discloses a guided tour system with both "Next>>" and "<<Prev" buttons, allowing a user to move both forward and backward one stop at a time. The other limitations were mapped to the prior art as in Ground 1.
  • Motivation to Combine: This ground's primary motivation was to preemptively address the Patent Owner's claim construction. A POSITA would combine Richardson's bidirectional navigation with Greer's guided tour system for the express and obvious benefit of enhancing user control. Allowing users to move backward as well as forward in a tour is an elementary improvement to any serial presentation of content. Both Greer and Richardson refer to such navigation controls as "control buttons," suggesting their common purpose.
  • Expectation of Success: Adding a "previous" button functionality, as taught by Richardson, to Greer's system would be a technologically straightforward application of basic programming logic (e.g., decrementing an array index instead of incrementing it). A POSITA would have every expectation of successfully implementing this feature.

4. Key Claim Construction Positions

• "linear path": This term was the central point of dispute. The term is incorporated into the construction of "map area."
  • Petitioner's Proposed Construction: "a path of serially linked websites." Petitioner argued this construction was consistent with the patent's specification, which repeatedly describes the invention as a solution for navigating across multiple websites.
  • Patent Owner's Asserted Construction (in litigation): "a path having no more than one exclusive forward link and one exclusive backward link."
  • Relevance: This dispute was the primary reason for asserting two separate grounds. Ground 1 was based on Petitioner's broader construction, while Ground 2 was designed to show obviousness even if the Patent Owner's narrower construction requiring a "backward link" was adopted.
• "map area": The parties in litigation had reportedly agreed to construe this term as "a user interface or a part thereof displaying at least a portion of a linear path." Petitioner adopted this construction for the IPR.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. While acknowledging that Richardson (cited in Ground 2) was listed on an Information Disclosure Statement (IDS) during prosecution of related patents, Petitioner asserted that the reference was never substantively discussed by the Examiner or applicant. The Examiner never relied on Richardson to reject any claims, nor was it discussed in any Office Action. Therefore, Petitioner contended that the "same or substantially the same prior art or arguments" were not previously presented to the Office, and the Board should consider the new arguments made in the petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 10 and 11 of the ’323 patent as unpatentable.