Facebook, Inc. v. HYPERMEDIA NAVIGATION LLC

1. Case Identification

• Patent #: 9,772,814
• Filed: November 16, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 14-18 and 20

2. Patent Overview

• Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
• Brief Description: The ’814 patent describes a method for creating and navigating web programs that present information to a user in a "guided tour fashion" through a series of linearly linked websites. The system aims to filter unwanted information and guide the user along a predetermined path.

3. Grounds for Unpatentability

Ground 1: Obviousness over Greer and Behlendorf - Claims 14, 15, 18, and 20 are obvious over Greer in view of Behlendorf.

• Prior Art Relied Upon: Greer (Patent 6,009,429) and Behlendorf (a 1996 book titled Running a Perfect Web Site with Apache).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Greer disclosed the core of the invention, an "HTML Guided Web Tour" that presents serially linked web pages ("tour web pages") in a specific sequence using a "tourPages" array to store URLs. This system included a "NEXT" button for forward navigation and a "map area" listing the tour stops, mapping to the limitations of independent claims 14 and 20. Petitioner asserted that Behlendorf, which described the widely used Apache web server, taught using "Virtual Hosts" to serve multiple websites from a single server machine. This teaching rendered obvious the claim limitations requiring that the "linear Web program" and its "media elements" be stored on a single "network node" or "server."
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Greer's guided tour with Behlendorf's server technology for predictable reasons of efficiency and simplicity. A POSITA would be motivated to conserve computing resources and simplify traffic monitoring by hosting both the guided tour application and the underlying tour websites on a single server, a standard practice taught by Behlendorf.
  • Expectation of Success: The combination was a straightforward application of a well-known server configuration (Behlendorf) to a web-based application (Greer), presenting no technical hurdles and thus carrying a high expectation of success.

Ground 2: Obviousness over Greer and Behlendorf in view of Stevens and Appleman - Claim 16 is obvious over the combination of Greer, Behlendorf, Stevens, and Appleman.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Behlendorf (Running a Perfect Web Site with Apache (1996)), Stevens (a 1995 textbook, Designing Electronic Performance Support Tools), and Appleman (a 1993 textbook, PC Magazine Visual Basic Programmer's Guide to the Windows API).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claim 16, which added a "highlighting" step. Petitioner contended that Greer did not explicitly disclose highlighting. Stevens taught using visual feedback, such as highlighting on-screen objects or links in a navigational map, to confirm a user's action and improve usability. Appleman taught a specific API function, "FlashWindow," used to flash a window to attract the user's attention to new or updated content.
  • Motivation to Combine: A POSITA would be motivated to incorporate the teachings of Stevens and Appleman into Greer's system to provide essential user feedback, a fundamental principle of user interface design. Stevens provided an express motivation to highlight navigational links to confirm link execution. Appleman provided an express motivation to flash a window to alert a user to new content being presented, which is directly applicable to when Greer's system advances to the next tour stop.
  • Expectation of Success: Implementing visual feedback was a common and well-understood practice in graphical user interfaces at the time, and a POSITA would have easily integrated these known highlighting techniques into Greer's guided tour system.

Ground 3: Obviousness over Greer, Behlendorf, and Richardson - Claims 14-15, 17-18, and 20 are obvious over the combination of Greer, Behlendorf, and Richardson.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Behlendorf (Running a Perfect Web Site with Apache (1996)), 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 proposed claim construction for "linear," which required both an "exclusive forward link" and an "exclusive backward link." While Greer taught a forward link ("NEXT" button), Petitioner argued it might not expressly disclose a backward link. Richardson disclosed a similar guided web tour system that explicitly included both a "Next >>" button for forward navigation and a "<< Prev" button for backward navigation.
  • Motivation to Combine: The motivation to add Richardson's backward navigation capability to Greer's system was to provide users with enhanced control over the tour. Petitioner argued that improving user control by adding both forward and backward navigation to any serial program (like a web tour or music playlist) was an elementary and well-known concept to a POSITA.
  • Expectation of Success: Adapting Richardson's teaching of a backward link indicator to Greer's system would have been technologically straightforward, as both references described similar guided web tour architectures based on ordered lists of URLs.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 3 (challenging claim 17 over Greer, Behlendorf, and Richardson) and Ground 5 (challenging claim 16 over Greer, Behlendorf, Richardson, Stevens, and Appleman), which relied on the same core prior art combinations and rationales.

4. Key Claim Construction Positions

• "linear" terms (e.g., "linear path," "linear program"): Petitioner noted a dispute in co-pending litigation. Petitioner's primary position was that "linear" should be construed as "serially linked websites." However, to preemptively address the Patent Owner's narrower proposed construction of "no more than one exclusive forward link and one exclusive backward link," Petitioner presented grounds including the Richardson patent, which explicitly taught both.
• "video element": Petitioner argued this term should be construed as "video content suitable for the World Wide Web and web browsing." This was proposed to counter a potentially narrower construction of "video clip" that the Patent Owner had advanced in a separate proceeding, arguing that the ’814 patent itself describes using any known video format (like MPEG) and is not limited by length.
• "map area": Petitioner argued this term should be construed as "a user interface or a part thereof displaying at least a portion of a linear path," a construction the parties had reportedly agreed upon in the co-pending litigation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because its primary reference, Greer, was never cited during the original prosecution and thus had not been previously presented to the USPTO. While Richardson was on an IDS, it was never substantively discussed by the Examiner.
• Petitioner further argued against discretionary denial under §314(a) (e.g., Fintiv factors). It noted that a prior IPR filed by Microsoft against the ’814 patent was terminated before a preliminary response or institution decision due to settlement. Petitioner contended that its petition was not a "follow-on" petition, as it was not involved in the Microsoft IPR and presented substantially different prior art and arguments.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 14-18 and 20 of the ’814 patent as unpatentable.