Facebook Inc v. Hypermedia Navigation LLC

1. Case Identification

• Case #: IPR2018-01791
• Patent #: 8,250,173
• Filed: September 25, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 15, 16, 24, and 25

2. Patent Overview

• Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
• Brief Description: The ’173 patent describes a method for presenting web content to users as a "guided tour" through a series of linearly linked websites or media elements. The system aims to simplify web navigation by filtering unwanted information and presenting desired content in a predetermined sequence.

3. Grounds for Unpatentability

Ground 1: Claims 15, 16, 24, and 25 are obvious over Greer, Gundavaram, and Steele.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram ("CGI PROGRAMMING ON THE WORLD WIDE WEB," a 1996 book), and Steele (Patent 5,884,056).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Greer, titled "HTML Guided Web Tour," discloses the core elements of the challenged claims, including presenting a sequence of web pages based on a user search request. Greer’s interface includes a "tour map" that displays textual links representing the steps in the tour, satisfying the "map area" limitation of independent claim 15. Petitioner argued that while Greer described presenting web pages, it expressly suggested adapting the system for video ("movies") as web distribution of video became more popular. Gundavaram was cited for its disclosure of standard Common Gateway Interface (CGI) techniques for receiving a user search request via an HTML form from a browser and dynamically generating a web page in response, which Petitioner contended were well-known functionalities that Greer’s web-based system would have employed. Steele was cited for teaching the use of selectable icons (thumbnail images) to represent and link to video elements on the web, making it obvious to replace the textual links in Greer’s tour map with icons as claimed.
  • Motivation to Combine: A POSITA would combine Greer and Gundavaram because Gundavaram taught the standard, well-understood CGI methods for implementing the dynamic, search-based tour functionality described in Greer. The combination was presented as a predictable application of known web technologies. The motivation to incorporate Steele’s teachings was to provide a more intuitive and visually representative user interface for a video-based tour, as icons are more descriptive of video content than text labels.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success because the combination involved implementing known, standard web technologies (CGI, hyperlinked icons) that were designed to work together to enhance a known system (a guided web tour).

Ground 2: Claims 15, 16, 24, and 25 are obvious over Greer, Gundavaram, and Steele in further view of Richardson.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram ("CGI PROGRAMMING ON THE WORLD WIDE WEB," a 1996 book), Steele (Patent 5,884,056), and Richardson (Patent 5,809,247).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was asserted to address a potentially narrower claim construction of "linear path" advanced by the Patent Owner in co-pending litigation, which allegedly required "no more than one exclusive forward link and one exclusive backward link." While Petitioner argued Greer taught the exclusive forward link (via a "NEXT" button and an incrementing array index), it did not expressly teach a backward link. Richardson was introduced to supply this teaching, as it discloses a guided web tour system that explicitly includes both a "Next >>" button for forward navigation and a "<< Prev" button for backward navigation. Richardson taught achieving this by incrementing or decrementing an index into a vector of tour stops.
  • Motivation to Combine: A POSITA would combine Richardson with the other references to improve the user experience of Greer’s guided tour. Adding a backward navigation control was argued to be an elementary and predictable improvement that provided users with enhanced control over the serial presentation of content. This motivation was said to be expressly suggested by the references, which described such features as "control" buttons.
  • Expectation of Success: The expectation of success was high, as adapting Richardson's backward navigation to Greer's system involved the fundamental software technique of decrementing an array index—the direct reverse of the incrementing operation Greer already used for forward movement.

4. Key Claim Construction Positions

• "map area": Petitioner noted the parties in the related litigation had 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.
• "linear path": This term was disputed. Petitioner proposed a construction of "a path of serially linked websites." The Patent Owner had proposed a narrower construction requiring "no more than one exclusive forward link and one exclusive backward link." Petitioner argued the claims were obvious under either construction but asserted Ground 2 specifically to address the Patent Owner’s narrower definition by introducing the Richardson reference.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that the petition did not present the "same or substantially the same prior art or arguments" previously considered by the USPTO. It was emphasized that the core prior art references of Greer, Gundavaram, and Steele were never cited or considered during the original prosecution of the ’173 patent.
• Petitioner acknowledged that Richardson was listed on an Information Disclosure Statement (IDS) during prosecution of related patents but argued it was never substantively discussed by the Examiner or applied against the relevant claim limitations. Therefore, its application in the petition constituted a new argument that had not been previously evaluated by the Office.

6. Relief Requested

• Petitioner requested the Board institute an inter partes review and issue a final written decision cancelling claims 15, 16, 24, and 25 of the ’173 patent as unpatentable.