Facebook Inc v. Hypermedia Navigation LLC

1. Case Identification

• Case #: IPR2018-01809
• Patent #: 7,769,830
• Filed: September 26, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 1-4, 12, 15, 16, 18, 19, 24, and 25

2. Patent Overview

• Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
• Brief Description: The ’830 patent describes a system for presenting web content to users as a "guided tour" or a pre-defined "linear path" of hypermedia elements. The invention aims to simplify web navigation by filtering unwanted information and presenting desired content in a structured, sequential manner.

3. Grounds for Unpatentability

Ground 1: Obviousness over Greer, Gundavaram, and Steele

Claims 1-4, 12, 15, 16, 18, 19, 24, and 25 are obvious over Greer in view of Gundavaram and Steele.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram (a 1996 book on CGI programming), and Steele (Patent 5,884,056).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Greer, titled "HTML Guided Web Tour," discloses the core concept of the challenged claims: a system that presents a sequence of web pages to a user. Greer’s interface includes a main viewing area and a "tour map" area that lists the stops on the tour. However, Petitioner asserted Greer does not explicitly detail standard web server mechanics or the use of icons. Gundavaram, a well-known text on Common Gateway Interface (CGI) programming, was cited to supply the then-conventional knowledge of how a web server receives a user request (e.g., a search) from a browser and dynamically generates a web page in response. Steele was cited to teach the obvious substitution of Greer's textual links in its "tour map" with graphical icons (specifically, thumbnail images of videos), as claimed.
  • Motivation to Combine: A POSITA would combine Greer with Gundavaram to implement Greer’s search-based tour generation feature using standard, well-understood CGI techniques for processing user input and dynamically creating web pages. This was a common and powerful method for providing database-driven content on the web. A POSITA would be further motivated to incorporate Steele's teachings to replace Greer's text-based links with more intuitive graphical icons, which Steele teaches is a simple and interchangeable way to implement hyperlinks, especially for video content.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involves implementing a known concept (Greer's guided tour) using standard, widely-used web technologies (Gundavaram's CGI, Steele's hyperlinked icons) for their intended purposes.

Ground 2: Obviousness over Greer, Gundavaram, Steele, and Richardson

Claims 1-4, 12, 15, 16, 18, 19, 24, and 25 are obvious over the combination of Ground 1 in further view of Richardson.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Gundavaram (a 1996 book on CGI programming), Steele (Patent 5,884,056), and 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 narrow construction of "linear path" from a concurrent district court litigation, which required "no more than one exclusive forward link and one exclusive backward link." Petitioner argued that while Greer’s “NEXT” button taught the exclusive forward link, it did not explicitly disclose a backward link. Richardson was added to the combination to explicitly teach a guided web tour system that includes both a "Next >>" button and a "<< Prev" button, thereby providing exclusive forward and backward navigation between tour stops. The teachings of Greer, Gundavaram, and Steele were applied for all other claim limitations, consistent with Ground 1.
  • Motivation to Combine: A POSITA would combine Richardson's teachings with the Greer system to enhance its functionality. The motivation was to provide users with improved control over the guided tour, allowing them not only to advance but also to return to a previously viewed page. This is a basic and highly desirable feature for any sequential content presentation system. Both Greer and Richardson address the same problem of guided web navigation, making them analogous art.
  • Expectation of Success: Success was predictable, as adding a "previous" button functionality to a system that already managed a sequence of URLs in an array (as in Greer) was a technologically straightforward application of fundamental programming logic.

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."
• "linear path": This was the central disputed term.
  • Petitioner's proposed construction: "a path of serially linked websites." Petitioner argued this was consistent with the patent's specification, which repeatedly describes the invention as a solution for navigating across different websites.
  • Patent Owner's proposed construction: "a path having no more than one exclusive forward link and one exclusive backward link."
• Petitioner asserted its invalidity arguments prevail under either construction, with Ground 2 specifically added to address the Patent Owner's narrower proposal by introducing Richardson's teaching of a backward link.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), contending that the petition did not present the same prior art or arguments previously presented to the Office. None of the references in the asserted grounds were cited during the original prosecution of the ’830 patent.
• While Petitioner acknowledged that Richardson was listed on an Information Disclosure Statement (IDS) during the prosecution of related family members, it argued that the reference was never substantively discussed by the Examiner or applied against any claims, and therefore its consideration in the IPR would not be redundant.
• Petitioner also noted the existence of a separate, pending IPR against the ’830 patent filed by a third party (IPR2018-01286) but argued that it raised no barrier to institution because that petition relied on an entirely different set of prior art references.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-4, 12, 15, 16, 18, 19, 24, and 25 of the ’830 patent as unpatentable.