Facebook, Inc. v. Hypermedia Navigation LLC

1. Case Identification

• 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 method for navigating web content in a predefined linear sequence, described as a "guided tour." The system presents a series of "linearly linked" media elements, often from multiple websites, and provides navigation controls to move through the sequence.

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 Greer, titled "HTML Guided Web Tour," discloses the core features of the challenged claims. Greer teaches a method of providing a user with a guided tour of World Wide Web sites in a specific, pre-defined sequence. This corresponds to the claimed "linear Web program." Greer discloses presenting media elements (web pages) from a remote node (web server) on a user's display, including elements from a single website. Greer's system uses a "NEXT" button as a "forward link indicator" which, when activated, causes the system to display the next media element in the tour's sequence. The forward link is implemented by storing the URLs for the tour stops in a serially ordered array and incrementing an index to access the next URL.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that Richardson is combined with Greer primarily to address the Patent Owner's potential claim construction and the explicit limitations of dependent claims 8-10. While Greer teaches forward navigation, Richardson explicitly discloses a guided tour system with both "Next" and "Prev" buttons for forward and backward navigation. A person of ordinary skill in the art (POSITA) would combine Richardson's teaching of backward links with Greer’s system to provide users with enhanced control over the tour, a well-known method for improving any serial program.
  • Expectation of Success (for §103 grounds): Because Greer and Richardson address the same problem (guided web tours) using analogous techniques (ordered URL lists, navigation buttons), a POSITA would have found it technologically straightforward to adapt Richardson’s backward navigation feature into Greer's system with a high expectation of success.
  • Key Aspects: Petitioner contended that the combination of Greer and Richardson renders the claims obvious even under the Patent Owner's narrower proposed claim construction, which requires exclusive forward and backward links. Richardson explicitly teaches this functionality. Dependent claims 7-11, which add limitations such as a forward link button (claim 7), backward links and indicators (claims 8-9), a plurality of ordered addresses (claim 10), and storing the program at the remote node (claim 11), were argued to be taught by the combination of Greer and Richardson.

4. Key Claim Construction Positions

• The petition identified the term "linear Web program" as a key disputed term.
  • Petitioner's Proposed Construction: "a program of serially linked websites." Petitioner argued this construction is consistent with the patent's specification, which repeatedly describes the invention as a "series of linearly linked websites" intended to simplify navigation across multiple sites.
  • Patent Owner's Proposed Construction (from underlying litigation): "a Web program having no more than one exclusive forward link and one exclusive backward link."
  • Petitioner's Rebuttal: Petitioner argued that even if the Board adopted the Patent Owner's narrower construction, the claims would still be obvious. The combination of Greer (which teaches exclusive forward links) and Richardson (which adds exclusive backward links) explicitly meets this narrower definition. Importing this limitation into the term itself would also render the separate recitations of "forward link" in claim 6 and "backward links" in claim 8 superfluous.

5. Arguments Regarding Discretionary Denial

• The petition argued against discretionary denial under 35 U.S.C. §325(d), which bars IPRs based on art previously presented to the USPTO.
  • Petitioner asserted that the primary reference, Greer, was never cited or considered during the prosecution of the ’523 patent.
  • While the secondary reference, Richardson, was listed on an Information Disclosure Statement (IDS) during the prosecution of other patents in the same family, it was never substantively discussed by the Examiner or applicant in any Office Action.
  • Furthermore, Petitioner contended its use of Richardson was for the limited purpose of teaching backward links, distinguishing it from a separate IPR filed by Microsoft which allegedly used Richardson as a primary reference.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 6-11 of the ’523 patent as unpatentable under 35 U.S.C. §103.