Apple Inc. v. Sentius International LLC

1. Case Identification

• Case #: IPR2020-01646
• Patent #: 7,672,985
• Filed: October 1, 2020
• Petitioner(s): Apple Inc.
• Patent Owner(s): Sentius International, LLC.
• Challenged Claims: 1-23, 25-29, 31, 32, and 35-46

2. Patent Overview

• Title: Enhancing Webpages with Hyperlinks to Database Content
• Brief Description: The ’985 patent is directed to a system for enhancing webpages with hyperlinks to content stored in a database. The system identifies terms of interest within a document using predefined rules, compiles the terms and associated supplemental information into a "term database," and then tags the terms within a source document to create links to the supplemental content.

3. Grounds for Unpatentability

Ground 1: Claims 1-23, 26-29, 31, 32, and 35-46 are obvious over Van Hoff in view of Rodkin.

• Prior Art Relied Upon: Van Hoff (Patent 5,822,539) and Rodkin (Patent 6,092,074).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Van Hoff, which was not considered during prosecution, teaches the core elements of the challenged claims. Van Hoff discloses an automated document annotation system that uses a proxy server to parse documents and insert hypertext links. It describes using an "annotation directory" (analogous to the ’985 patent’s "term database") containing a plurality of "paired entries" (analogous to "data objects"). Each entry pairs a "match pattern" (a term or phrase) with a "cross-reference source" (the content, such as a URL). This system performs the claimed steps of parsing documents for terms based on rules, identifying content for those terms, and associating the term with the content by inserting a link.
  • Motivation to Combine (for §103 grounds): While Van Hoff teaches installing annotation directories, it does not explicitly teach periodically updating them. Rodkin addresses this by disclosing a system with a central server that periodically and automatically updates remote content servers with character strings and their associated destination addresses (URLs). A POSITA would combine Rodkin’s teaching with Van Hoff’s system to improve its functionality and reliability by ensuring that the hyperlink destinations in the annotation directories remain current and valid, which is a known problem with web-based links.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in this combination, as it involves implementing known database management techniques (periodic updates) to solve a recognized problem (stale links), requiring only simple programming skills.
  • Key Aspects: For limitations related to sponsorship (e.g., claim 4), Petitioner argued Rodkin explicitly teaches assigning a "preferred status" to destination addresses upon payment of a fee, making it obvious to add a sponsorship model to Van Hoff's system for commercial purposes.

Ground 2: Claim 25 is obvious over Van Hoff in view of Rodkin and in further view of Ingram.

• Prior Art Relied Upon: Van Hoff (Patent 5,822,539), Rodkin (Patent 6,092,074), and Ingram (Patent 6,925,496).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon Ground 1. Claim 25 depends from claim 23 (which depends from claim 21) and adds the limitation that the supplemental content is displayed in a "content window" that is "separate from the source document." While the combination of Van Hoff and Rodkin teaches displaying linked content, it does not explicitly disclose doing so in a separate window. Ingram, also not considered during prosecution, teaches this exact feature. Ingram discloses an enhanced hyperlink system that, upon user interaction, opens the linked page in a new, separate browser window (which can be smaller or overlaid) to allow the user to view the new content while keeping the original page visible in the background.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to add Ingram's separate-window functionality to the combined Van Hoff/Rodkin system to improve user-friendliness. This directly addresses the well-known usability problem of users losing their context or "train of thought" when a hyperlink replaces the current page. This modification would yield the predictable result of an enhanced user experience.
  • Expectation of Success (for §103 grounds): Integrating Ingram's method of displaying content in a new window is a routine programming task and would have been readily implementable with a high expectation of success.

4. Key Claim Construction Positions

• For the purposes of the petition, Petitioner proposed adopting the claim constructions advanced by the Patent Owner in co-pending litigation or as adopted by the district court. This approach aims to demonstrate unpatentability even under the Patent Owner's own proposed term meanings. Key constructions included:
  • "Syndicated/Syndicating": Construed as "making content available for automatic download over a network to one or more remote subscribed computers." This construction is central to the argument for combining Van Hoff with Rodkin, which teaches automatic updates to remote servers.
  • "Term Module for parsing" / "Means for parsing": Construed as a means-plus-function limitation with the function of "parsing one or more documents to identify at least one term based on at least one rule" and the structure of "a computer processor in conjunction with executable code" to perform the function. Petitioner argued Van Hoff’s proxy server is a structure that performs this function.
  • "Template object": Proposed construction of "computer-readable data structure that identifies the rules that should be used in processing." Petitioner argued Van Hoff's proxy server, which includes rules for processing, meets this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) and the Fintiv factors.
• The parallel district court litigation was in its very early stages, with infringement contentions recently served and no trial date set. This early stage weighs against denial.
• Petitioner stated its intent to stipulate that it would not pursue the same invalidity grounds in district court if the IPR is instituted, eliminating concerns of duplicative efforts.
• The prior art references relied upon (Van Hoff, Rodkin, Ingram) are materially different from the art considered during prosecution, presenting a strong case for unpatentability that the U.S. Patent and Trademark Office has not previously considered.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-23, 25-29, 31, 32, and 35-46 of the ’985 patent as unpatentable.