Facebook Inc v. Hypermedia Navigation LLC

1. Case Identification

• Patent #: 9,864,575
• Filed: November 20, 2018
• Petitioner(s): Facebook, Inc.
• Patent Owner(s): Hypermedia Navigation LLC
• Challenged Claims: 1-2, 4-7, 10-12, 14-17, and 20

2. Patent Overview

• Title: System and Method for Creating and Navigating a Linear Hypermedia Resource Program
• Brief Description: The ’575 patent describes methods for creating and navigating web programs that present users with information in a "guided tour" fashion. The system filters unwanted content and directs a user through a series of linearly linked websites along a predetermined path.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 10-12 are obvious over Greer in view of Richardson, Fox, and Behlendorf.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Richardson (Patent 5,809,247), Fox (a 1996 textbook on HTML), and Behlendorf (a 1996 textbook on the Apache web server).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Greer, discloses the core invention: a "guided tour" of websites presented in a specific sequence. Greer teaches using a list of URLs (a "tourPages" array) to define the tour, a "tour map" to display indicators of the tour stops, and a "NEXT" button to advance sequentially, which maps to the "linear program" of the independent claims. Petitioner contended that combining Greer with the secondary references renders the remaining limitations obvious.
    • Fox was cited to teach the common practice of including image elements (like JPEGs) on web pages, thereby rendering obvious a "linear program of image elements."
    • Richardson was cited to teach a "backward link indicator" ("<< Prev" button). This was included to address the Patent Owner's proposed narrow construction of "linear" as requiring exclusive forward and backward links.
    • Behlendorf was cited for its teaching of "Virtual Hosts," a feature of the Apache web server allowing a single physical server to host and serve multiple distinct websites. This addresses the claim limitation of a "server of the World Wide Web" storing and transmitting the tour elements, even if those elements reside on different conceptual websites.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Greer with Fox to make the guided tour more visually appealing, a common and simple enhancement. A POSITA would incorporate Richardson's backward navigation to improve user control, a well-known usability principle. Finally, a POSITA would use Behlendorf's single-server approach for resource conservation and simplified traffic management.
  • Expectation of Success: The combination involved applying conventional web technologies (images, navigation buttons, server configurations) to a known guided tour framework. Petitioner asserted a POSITA would have had a high expectation of success as these were standard, predictable modifications.

Ground 2: Claims 4-7, 14-17, and 20 are obvious over Greer in view of Richardson, Fox, Behlendorf, and Berlin.

• Prior Art Relied Upon: Greer (Patent 6,009,429), Richardson (Patent 5,809,247), Fox (a 1996 textbook on HTML), Behlendorf (a 1996 textbook on the Apache web server), and Berlin (a 1996 textbook on CGI programming).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon Ground 1 to address dependent claims requiring certain functions to be performed by the server. Greer's "guided tour" is implemented with client-side JavaScript. Berlin was introduced to teach that functions performed by client-side JavaScript could be readily and obviously implemented on the server using server-side technologies like the Common Gateway Interface (CGI). This addresses limitations such as the server receiving data from the client indicating a selection of the forward link indicator and the server then determining the next program element.
  • Motivation to Combine: Berlin explicitly states that functions requiring significant processing, such as accessing a database (as described in Greer for creating a tour from search results), are better developed with server-side CGI applications. A POSITA would be motivated to move Greer's client-side logic to the server to improve performance, centralize control, and ensure compatibility with browsers that might not support JavaScript.
  • Expectation of Success: Petitioner argued that shifting logic from client-side to server-side was a well-known design choice for web developers at the time. A POSITA would have found it technologically straightforward to implement Greer's logic using the server-side CGI techniques taught by Berlin, with a high expectation of success.

4. Key Claim Construction Positions

• "map area": Petitioner asserted this term should be construed 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" (in "linear program" / "linear path"): This was a central point of dispute.
  • Petitioner proposed the construction "serially linked websites," based on the patent's description of the invention as solving the problem of navigating across multiple websites.
  • Petitioner noted the Patent Owner's proposed construction was much narrower: "no more than one exclusive forward link and one exclusive backward link."
  • Crucially, Petitioner argued that its invalidity grounds render the claims obvious even under the Patent Owner’s narrower construction, citing Richardson specifically to teach the "exclusive backward link."
• "linear program of image elements": Petitioner proposed this should be construed as a "program of serially linked websites showing image contents suitable for the World Wide Web and web browsing," consistent with its other proposed constructions.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because, with the exception of Richardson, none of the prior art references were cited during the original prosecution.
• It was further argued that while Richardson was listed on an Information Disclosure Statement (IDS), it was never substantively discussed or applied by the Examiner. Therefore, the arguments presented in the petition were not the "same or substantially the same" as those previously before the Office.
• Regarding the co-pending litigation (a factor later codified under Fintiv), Petitioner argued that the IPR petition was filed more than nine months before the statutory deadline, the litigation was at an early stage with no claim construction rulings issued or trial date set, and that other IPRs against related patents involved different petitioners and art, providing no "roadmap" or tactical advantage.

6. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-2, 4-7, 10-12, 14-17, and 20 of the '575 patent as unpatentable.