Facebook Inc v. Hypermedia Navigation LLC

1. Case Identification

• Case #: IPR2018-01808
• Patent #: 7,424,523
• Filed: September 26, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 6-11

2. Patent Overview

• Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
• Brief Description: The ’523 patent discloses a system for navigating web content in a predefined, linear sequence. The method creates a "guided tour" that presents a series of media elements (e.g., web pages) to a user with forward and backward links, intended to simplify navigation across multiple websites.

3. Grounds for Unpatentability

Ground 1: Claims 6-11 are obvious 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: Petitioner argued that the combination of Greer and Richardson rendered all challenged claims obvious. Greer, titled "HTML Guided Web Tour," was asserted to be the primary reference, disclosing the core limitations of independent claim 6. Greer taught a method of providing a user with a guided tour of the World Wide Web, presenting web sites in a "specific sequence." Its user interface included a "NEXT" button to advance the tour, fulfilling the claim requirements for a "linear Web program" with a "forward link indicator" that sends data from a remote node (a web server) to display sequential media elements. Petitioner contended that Greer's system of storing URLs in an array and incrementing an index to display the next page in the sequence taught the claimed "series of forward links."

  • Motivation to Combine (for §103 grounds): Petitioner asserted that Greer did not explicitly disclose backward navigation. Richardson was introduced to supply this missing element, as it taught a guided web tour system with both "Next >>" and "<< Prev" buttons for forward and backward navigation. The motivation to combine was based on improving the user experience of Greer's system. Petitioner argued that a person of ordinary skill in the art (POSITA) would have recognized that adding backward navigation functionality to a guided tour was a simple and desirable improvement, providing users with enhanced control. Both Greer and Richardson were presented as analogous art addressing the same problem of guiding users through web content, making their combination straightforward and predictable.

  • Expectation of Success (for §103 grounds): Petitioner argued that a POSITA would have had a high expectation of success in combining the references. Implementing backward navigation, as taught by Richardson (e.g., by decrementing an array index), was a well-understood and technologically simple task for a web developer at the time.

  • Key Aspects: The combination was specifically tailored to address the Patent Owner's proposed claim construction of "linear Web program," which required both exclusive forward and backward links. By combining Greer's forward-linking tour with Richardson's backward-linking capability, Petitioner argued the claims were obvious even under this narrower interpretation. Dependent claims reciting backward links (claims 8-9), a forward link button (claim 7), ordered addresses (claim 10), and storing the program on a remote node (claim 11) were also argued to be taught or rendered obvious by the combination.

4. Key Claim Construction Positions

• The petition highlighted a dispute over the term "linear Web program" from the underlying district court litigation.
• Petitioner's Proposed Construction: "a program of serially linked websites." Petitioner argued this construction was consistent with the patent's specification, which described the invention as solving the problem of navigating across multiple websites.
• Patent Owner's Proposed Construction: "a Web program having no more than one exclusive forward link and one exclusive backward link."
• Relevance: Petitioner argued that its obviousness ground rendered the claims unpatentable under either construction. The inclusion of Richardson, with its disclosure of backward links, was specifically intended to address the Patent Owner's narrower construction for both independent claim 6 and the explicit "backward links" limitations of dependent claims 8 and 9.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), which allows the Board to reject petitions that raise the same or substantially the same art or arguments previously presented to the Office.
• Petitioner contended that its primary reference, Greer, was never cited or considered during the original prosecution of the ’523 patent.
• While acknowledging that the secondary reference, Richardson, was listed on an Information Disclosure Statement (IDS) during the prosecution of other patents in the same family, Petitioner argued that Richardson was never substantively discussed by the examiner or the applicant in any office action. Therefore, the examiner had not previously considered the specific combination and arguments presented in the petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 6-11 of Patent 7,424,523 as unpatentable under 35 U.S.C. §103.