Facebook, Inc. v. Hypermedia Navigation LLC

1. Case Identification

• Patent #: 7,478,144
• Filed: September 24, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 39, 40, 44, and 46

2. Patent Overview

• Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
• Brief Description: The ’144 patent describes a system and method for presenting web content as a "guided tour" through a series of linearly linked websites. The technology aims to solve the problem of users becoming disoriented or "lost" in hypermedia by providing a user interface with a main viewing area for content and a separate "map area" that displays an ordered, linear path of the tour's elements, helping to guide user navigation.

3. Grounds for Unpatentability

Ground 1: 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 entitled Internet in a Nutshell).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Greer taught the core of the invention: an "HTML Guided Web Tour" system that generates a tour from search results. Greer’s interface included a "viewing area" for web pages and a "map area" (a "tour map") displaying a list of tour stops. Petitioner asserted that Gundavaram supplied the well-known, standard web technologies that Greer omitted, such as using HTML forms and Common Gateway Interface (CGI) for a subscriber station (user browser) to send a search request containing search terms to a server. To meet the "selecting" limitations, Petitioner cited Quercia for its disclosure of search engines ranking results by relevance, arguing this taught selecting a "first media element" (the top-ranked result) and a "plurality of second media elements" (the subsequent results) for the tour.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Greer with Gundavaram to implement the search function using ubiquitous, fundamental web technologies. Gundavaram itself characterized CGI as solving the problem of giving users access to server-side data. A POSITA would further add Quercia's teaching on ranking search results to improve the guided tour's utility by presenting the most relevant content first, a known and desirable feature of all contemporary search engines.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success, as the combination involved implementing a known system (Greer's tour) using standard, "astoundingly simple" web components and techniques described by Gundavaram and Quercia.

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

• Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram (1996 book), PC Magazine (a Dec. 1997 article), and Quercia (1997 book).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address the specific limitations of claims 39 and 40, which require searching for "video media elements" and receiving an "indication to search for video media elements." Petitioner pointed to Greer's express suggestion that its system could be used to present "movies" (videos). To supply the "indication" limitation, Petitioner cited PC Magazine and Quercia for their descriptions of the HotBot search engine. HotBot's search form included a checkbox allowing users to restrict their search to specific media types, including "Video," thereby providing the claimed indication.
  • Motivation to Combine: A POSITA would be motivated to integrate the video-filtering feature from HotBot into Greer's guided tour system for the clear benefit of allowing users to more easily and quickly find specific content types. This would enhance the user experience by eliminating the need to manually sift through irrelevant, non-video results, a benefit expressly praised in the secondary references.
  • Expectation of Success: Success would have been expected, as adapting Greer’s system to handle video was expressly suggested by Greer itself, and adding a media-type checkbox to a search form was a trivial implementation using standard HTML.

Ground 3: Claims 40, 44, and 46 are obvious over the combination of art in Grounds 1 and 2, further in view of Richardson.

• Prior Art Relied Upon: The art from the grounds above, plus Richardson (Patent 5,809,247).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to address the Patent Owner's proposed construction of "linear path," which required "no more than one exclusive forward link and one exclusive backward link." While Petitioner argued Greer taught the forward link (e.g., a "NEXT" button), it cited Richardson to explicitly teach the backward link. Richardson disclosed a guided web tour system with both "Next >>" and "<< Prev" buttons, which functioned by incrementing and decrementing an index into a vector of tour stops.
  • Motivation to Combine: A POSITA would combine Richardson's backward navigation with Greer's system to provide users with enhanced control over the tour. The ability to move both forward and backward through a sequence was described as an elementary and well-known concept for improving user control in contemporaneous software like web browsers and music players. This combination was a straightforward application of a fundamental software technique (decrementing an array index) to an existing system.
  • Expectation of Success: The technical implementation was simple and predictable, ensuring a high expectation of success.

4. Key Claim Construction Positions

• "map area": Petitioner noted that all parties in the co-pending litigation agreed to the construction “a user interface or a part thereof displaying at least a portion of a linear path.” This construction was central because it incorporated the disputed term "linear path" into the claims.
• "linear path": This term was highly contested. Petitioner proposed the construction "serially linked websites," based on the patent's specification. In contrast, the Patent Owner advocated for a narrower construction of a path having "no more than one exclusive forward link and one exclusive backward link." Petitioner argued its construction was correct but presented Grounds 3 and 4 to demonstrate that the claims were obvious even under the Patent Owner's narrower definition.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate. It contended that the grounds relied on prior art and arguments that were not the "same or substantially the same" as those before the examiner during the original prosecution.
• While acknowledging that the Richardson reference was cited in an Information Disclosure Statement (IDS) during prosecution of related patents, Petitioner asserted that it was never substantively discussed by the examiner or applied against the specific claim limitations at issue, and therefore its consideration in the IPR was warranted.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 39, 40, 44, and 46 of the ’144 patent as unpatentable.