PTAB

IPR2018-01783

Facebook Inc v. Hypermedia Navigation LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
  • Brief Description: The ’144 patent discloses methods for creating "guided tours" of web content. The system presents users with a series of linearly linked websites or media elements to navigate in a predetermined sequence, intended to prevent users from getting "lost" in the hyperlinked web.

3. Grounds for Unpatentability

Ground 1: Obviousness over Greer, Gundavaram, and Quercia - Claims 44 and 46 are obvious over Greer in view of Gundavaram and Quercia.

  • Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram (a 1996 book on CGI programming), and Quercia (a 1997 book on internet search).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Greer, titled "HTML Guided Web Tour," discloses the core limitations of the challenged claims, including a system that generates a guided tour of web pages in response to a user search. Greer’s system presents a "tour map" (the claimed "map area") and a main viewing window (the claimed "viewing area"). To supply missing details about standard web functionality, Petitioner combined Greer with Gundavaram, which taught using HTML forms and Common Gateway Interface (CGI) to receive search requests with search terms from a user's browser (the "subscriber station"). Petitioner further added Quercia, which taught that standard search engines ranked results by relevance, to disclose the claimed selection of a "first media element" (the top-ranked result) and a "plurality of second media elements" (subsequent results).
    • Motivation to Combine: A POSITA would combine Greer with Gundavaram to implement Greer’s search-based tour generation using well-known, fundamental web technologies for handling user input and database queries. Adding Quercia's teaching of ranking search results was argued to be a natural and predictable improvement to enhance the user experience of Greer's guided tour by presenting the most relevant content first.
    • Expectation of Success: The combination involved applying standard, well-understood web technologies (CGI, HTML forms, search result ranking) to an existing guided tour system, providing a high expectation of success.

Ground 2: Obviousness over Greer, Gundavaram, Quercia, and PC Magazine - Claims 39 and 40 are obvious over Greer in view of Gundavaram, Quercia, and PC Magazine.

  • Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram (a 1996 book), Quercia (a 1997 book), and PC Magazine (a 1997 article).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addresses claims 39 and 40, which specifically require searching for "video media elements." Petitioner asserted that while Greer primarily discusses web pages, it expressly suggests its system could be used for "movies" as web distribution of video became more popular. To implement this, a POSITA would look to existing technologies for video-specific searches. PC Magazine and Quercia both describe the contemporary HotBot search engine, which featured a user interface with a checkbox allowing users to provide an "indication to search for video media elements" and limit results accordingly. The remaining limitations were mapped to Greer, Gundavaram, and Quercia as in Ground 1.
    • Motivation to Combine: Greer provided an express motivation to adapt its system for video tours. A POSITA would have been motivated to incorporate the video-specific search functionality from HotBot (taught by PC Magazine and Quercia) into Greer’s system to provide users with a useful and desirable feature: the ability to generate guided tours specifically for video content.
    • Expectation of Success: Adding a media-type filter to a search query was a known and straightforward technique using standard HTML forms, ensuring a high expectation of success.

  • Additional Grounds: Petitioner asserted two additional obviousness challenges (Grounds 3 and 4) that add Richardson (Patent 5,809,247) to the combinations of Grounds 1 and 2. Richardson was cited to explicitly teach a guided web tour with both "forward" and "backward" navigation buttons. This was presented as an alternative to address the Patent Owner's proposed claim construction for "linear path" that required exclusive forward and backward links. Petitioner argued a POSITA would have been motivated to add Richardson's backward navigation to Greer's system to provide enhanced user control, a well-known and predictable improvement.

4. Key Claim Construction Positions

  • "map area": Petitioner noted the parties in the co-pending litigation agreed to construe this term as "a user interface or a part thereof displaying at least a portion of a linear path."
  • "linear path": This term was disputed.
    • Petitioner's Proposal: "a path of serially linked websites."
    • Patent Owner's Proposal: "a path having no more than one exclusive forward link and one exclusive backward link."
  • Petitioner argued that while its own construction was correct, the prior art rendered the claims obvious even under the Patent Owner's narrower construction, particularly when Richardson is included in the combination (as in Grounds 3 and 4).

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) was inappropriate because none of the primary prior art references were substantively considered during the original prosecution of the ’144 patent.
  • Petitioner acknowledged that the Richardson reference was listed on an Information Disclosure Statement (IDS) during the prosecution of related patents but contended that it was never mentioned in any Office Action or substantively evaluated by the Examiner with respect to the relevant claim limitations.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 39, 40, 44, and 46 of Patent 7,478,144 as unpatentable.