Facebook Inc v. Hypermedia Navigation LLC

1. Case Identification

• Case #: IPR2018-01763
• Patent #: 9,083,672
• Filed: September 20, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 14-19

2. Patent Overview

• Title: System and Method for Creating and Navigating A Linear Hypermedia Resource Program
• Brief Description: The ’672 patent describes systems and methods for making the World Wide Web easier to navigate by presenting content as a "guided tour." The technology provides users with a pre-defined, linear sequence of web resources, aiming to solve the problem of users becoming "lost" in the non-linear environment of hypermedia.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 14, 15, 18, and 19 over Greer

• Prior Art Relied Upon: Greer (Patent 6,009,429).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Greer, titled "HTML Guided Web Tour," discloses all limitations of independent claim 14. Greer's browser interface features a "taskFrame" that serves as the claimed "map area," which displays a "tour map" with a plurality of text indicators (e.g., 'VM Home Pg') representing stops in a guided web tour. Greer's "NEXT" button functions as the "forward link indicator," which upon selection, causes the system to select and display the next tour stop in the main "viewing area" ("urlFrame"). Petitioner asserted that adapting Greer's tour of web pages to a tour of video elements would have been a simple and obvious modification, especially since Greer expressly suggested its system could be used to present movies. The video elements would be stored on World Wide Web servers as is conventional.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. The motivation to adapt Greer's web page tour to video elements came directly from Greer itself, which stated that its techniques could be used for movies "when the web distribution of sound and video become more popular."
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in applying Greer's guided tour framework to video content, as distributing video over the web was well-known and technologically straightforward at the time of the invention.

Ground 2: Obviousness of Claim 16 over Greer in View of Stevens and Appleman

• Prior Art Relied Upon: Greer (Patent 6,009,429), Stevens (a 1995 textbook titled Designing Electronic Performance Support Tools), and Appleman (a 1993 book titled PC Magazine Visual Basic Programmer's Guide to the Windows API).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed the "highlighting" limitation in dependent claim 16. While Greer taught selecting an indicator from the tour map to jump to a tour stop, it did not explicitly disclose highlighting the corresponding element in response. Stevens taught using visual highlighting (e.g., changing color) in navigational maps to provide essential feedback to a user that a link selection was successful. As an alternative or supplement, Appleman disclosed the "FlashWindow" API function, a well-known technique for making a specific window flash to attract the user's attention, which Petitioner argued also meets the "highlighting" limitation.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Stevens's highlighting techniques with Greer's guided tour to implement a basic, well-understood principle of user interface design: providing feedback. The motivation to add Appleman was to solve the known problem of drawing a user's attention to new content loaded in a different frame or window, which was directly applicable to Greer's multi-frame interface.
  • Expectation of Success (for §103 grounds): Success was predictable, as combining these known user interface feedback techniques with a web navigation system was a straightforward application of conventional design principles.

Ground 4: Obviousness of Claims 14, 15, and 17-19 over Greer in View of Richardson

• Prior Art Relied Upon: Greer (Patent 6,009,429) and Richardson (Patent 5,809,247).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to address a narrow claim construction for "linear program" and "linear path" advanced by the Patent Owner, which required "no more than one exclusive forward link and one exclusive backward link." Petitioner argued Greer's "NEXT" button and sequential tour array taught the exclusive forward link. To provide the required exclusive backward link, Petitioner cited Richardson, which disclosed a guided tour system with both a "Next>>" button and a "<<Prev" button for moving forward and backward one stop at a time, respectively.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Richardson's backward navigation with Greer's system for the simple and compelling purpose of enhancing user control. The ability to navigate both forwards and backwards is an elementary and highly desirable feature for any system presenting content in a sequence. Both references addressed the same problem of providing guided web tours.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as adding a "previous" button function to a sequential navigation system was a technologically simple and well-known improvement.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 3 (Claim 17 over Greer and Richardson for a "backward link indicator") and Ground 5 (Claim 16 over Greer, Richardson, Stevens, and Appleman), which applied the logic of Grounds 4 and 2 to specific dependent claims.

4. Key Claim Construction Positions

• "map area": Petitioner noted the parties agreed to the construction: "a user interface or a part thereof displaying at least a portion of a linear path."
• "linear path" / "linear program": This was a central point of dispute.
  • Petitioner's proposed construction: "path of serially linked websites" or "program of serially linked websites," based on the patent's specification consistently describing the invention as solving navigation problems across different websites.
  • Patent Owner's proposed construction: "no more than one exclusive forward link and one exclusive backward link." Petitioner argued this construction was improperly narrow but presented Ground 4 to show the claims were obvious even if it were adopted.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the petition raised new arguments and prior art not considered during prosecution.
• The primary reference, Greer, was never presented to the Examiner.
• Although Richardson was listed on an Information Disclosure Statement (IDS), it was never substantively discussed or applied by the Examiner.
• Petitioner further distinguished its petition from a prior-filed IPR by Microsoft (IPR2018-01518), noting that Microsoft used Richardson as a primary reference, whereas this petition used Richardson only for a limited, secondary purpose to address specific claim limitations.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 14-19 of the ’672 patent as unpatentable.