Facebook, Inc. v. Hypermedia Navigation LLC

1. Case Identification

• 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 method for presenting web content to users as a "guided tour." The system creates a linear path of hypermedia resources, such as web pages or videos, allowing a user to navigate them sequentially, thereby simplifying the experience of browsing related content across the web.

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 entitled CGI Programming on the World Wide Web), and Steele (Patent 5,884,056).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these references teaches all limitations of the challenged claims. Greer disclosed the core invention: an "HTML Guided Web Tour" that presents web pages in a specific sequence. Greer's interface included a "map area" with textual links to navigate the tour. To address claim elements related to server-side processing of user requests (like a search), Petitioner combined Greer with Gundavaram, which taught the then-standard use of Common Gateway Interface (CGI) for a web server to receive user input, process it, and dynamically generate a responsive web page. To meet the claim requirement of using "icons" in the map area, Petitioner cited Steele, which taught using selectable thumbnail images as hyperlinks to video content.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Greer with Gundavaram because using CGI was a standard, well-known method to implement the dynamic, search-based tour functionality described as an embodiment in Greer. The motivation to add Steele’s teachings was to improve Greer's user interface by substituting its textual links with more intuitive and descriptive graphical icons (thumbnails), a known design alternative, especially for video content.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying routine and predictable web technologies (CGI, hyperlinked images) to implement features in Greer's guided tour system.

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), Steele (Patent 5,884,056), and Richardson (Patent 5,809,247).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented to address a disputed claim construction for "linear path" from a concurrent litigation, where the Patent Owner asserted the term requires "one exclusive forward link and one exclusive backward link." While Greer taught a forward link ("NEXT" button), Petitioner introduced Richardson to explicitly teach the backward link. Richardson disclosed a guided web tour system that included both "Next >>" and "<< Prev" buttons for navigating sequentially, thus satisfying the Patent Owner's narrower construction. The mappings of Greer, Gundavaram, and Steele remained the same as in Ground 1.
  • Motivation to Combine: A POSITA would be motivated to incorporate Richardson's backward navigation functionality into Greer’s system for the simple and powerful reason of improving user control. Providing users the ability to move both forwards and backwards through sequential content was an elementary and well-known concept for enhancing usability.
  • Expectation of Success: Implementing a "previous" button by decrementing an array index, as taught by Richardson, was a fundamental and technologically straightforward software technique. A POSITA would have expected this to work predictably within Greer's system.

4. Key Claim Construction Positions

Petitioner argued that specific claim constructions were central to the invalidity analysis, particularly for the term "linear path."

• "map area": Petitioner proposed construing this term as "a user interface or a part thereof displaying at least a portion of a linear path," noting this construction was agreed upon by the parties in the related district court litigation.
• "linear path": This term was the subject of a central dispute.
  • Petitioner's Position: Argued for a construction of "a path of serially linked websites." This construction was based on repeated descriptions in the ’830 patent's specification that characterize the invention as solving the problem of navigating across "a series of linearly linked websites."
  • Patent Owner's Position: In litigation, the Patent Owner had advanced a narrower construction: "a path having no more than one exclusive forward link and one exclusive backward link."
  • Importance: Petitioner's primary arguments in Ground 1 relied on its broader construction. However, Petitioner strategically included Ground 2, incorporating the Richardson reference, to demonstrate that the claims were obvious even under the Patent Owner's narrower construction requiring an explicit backward link.

5. Arguments Regarding Discretionary Denial

Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate.

• The petition asserted that it raised new questions of patentability because the primary references (Greer, Gundavaram, Steele) were never cited or substantively analyzed by the USPTO during the original prosecution of the ’830 patent.
• While Richardson was listed on an Information Disclosure Statement (IDS) during the prosecution of related patents, it was never substantively discussed by the examiner. Petitioner argued its use in the petition was for the narrow purpose of teaching a backward link to rebut a litigation-specific claim construction, a context not before the original examiner.
• Petitioner also noted that this petition presented no overlap with a pending IPR on the same patent filed by a third party (IPR2018-01286), as 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 the cancellation of claims 1-4, 12, 15, 16, 18, 19, 24, and 25 of the ’830 patent as unpatentable.